Tale of a Trench-Coat

Luxury retailer Burberry has made excellent use of Facebook’s Timeline feature, using the tool to showcase advertisements and other photographs showing their products over the years.  (If you scan down to the 1910s, you can check out some Burberry-brand aviator suits which I’m pretty sure would be tough to track down today.)  This all sounds well and good, but this is a law blog and not a paid endorsement for Burberry, so you know there’s conflict ahead.

When Bogart, LLC, the company that manages Humphrey Bogart’s celebrity rights, got wind of the fact that Burberry had included a photograph of Bogart wearing a Burberry trench in the film Casablanca they threatened Burberry, claiming violation of right of publicity as well as trademark infringement and unfair competition. Burberry fired back, requesting declaratory judgment of non-infringement.

So who’s correct here?  It’s first important to note that copyright and ownership in the photo itself is not an issue here– Burberry had obtained a proper license to use the photo.  With copyright off the table, the question then becomes whether Burberry’s use of the photo constituted a trademark infringement or, failing that, a violation of Bogart’s right of publicity.

Burberry should have a fairly good argument as to the trademark issue.  It’s not as though they’ve launched a retail campaign with advertisements, signage, and other media that trades on the image.  The use in the Facebook Timeline, they’d argue, when taken in context, is one of many factual statements the company is making about its history.

When it comes to the right of publicity claim, things are less clear.  As the Bose Media Law Blog explains nicely, when it comes to these claims, it’s good to be in California.

Looking past the legal analysis under these doctrines, this case raises much larger questions that brand owners, marketing professionals, and lawyers will want to watch closely.  Depending on how this case proceeds, the court may address important issues regarding social media, advertising, and free speech.

Right now, the lines are a bit blurry (which could help or hurt Burberry here).  It’s clear that Burberry enjoys some commercial advantage by being on Facebook (oh, and it probably doesn’t hurt to have 12 million fans).  But does that mean that all of the company’s activities on Facebook are strictly commercial and not legitimate instances of story-telling or commentary (thus entitled to First Amendment protection)?

Courts are going to face more and more difficult determinations such as this one and must be careful to craft rules that provide clarity, fairness, and workability to all parties involved.  There’s no question that the law should recognize and protect the rights of celebrities as relates to unwelcome endorsements or false sponsorship, but the law should be careful, too, to leave room for story-telling.

New Tech Blog: Pittsburgh Cyberlaw

Good karma and name-dropping (though not necessarily in that order) will get you everywhere in blogging (and perhaps in life in general).

So it is with much gratitude to the bloggers who gave me that initial street cred every blogger needs in the early days, that I introduce the Pittsburgh Cyberlaw blog (part of my firm, Elliott & Davis, PC’s new Cyberlaw site), that Megan Costello (see introduction below) has recently rolled out.  (It’s a tumblr, which makes it prima facie much cooler than yours truly’s humble blog.)  Welcome to the club, Megan!  Happy blogging!

Book ‘em, Danno: Facebook Updates User Agreement to Protect Trademark Rights in “Book”

Much of the discussion around Facebook’s changes in policy have revolved around privacy.  But a recent revision to the company’s Statement of Rights and Responsibilities has people talking about Facebook’s inclusion of a term designed to protect its trademark rights in the word “book.”

Jon Brodkin over at ars technica breaks it down nicely:

So, what exactly is Facebook changing? If you view the current Statement of Rights and Responsibilities, you’ll find this sentence:

“You will not use our copyrights or trademarks (including Facebook, the Facebook and F Logos, FB, Face, Poke, Wall and 32665), or any confusingly similar marks, without our written permission.”

If you’re wondering, 32665 is the number allowing Facebook users to update their pages through text message. The newly revised user agreement reads as follows (emphasis ours):

“You will not use our copyrights or trademarks (including Facebook, the Facebook and F Logos, FB, Face, Poke, Book and Wall), or any confusingly similar marks, except as expressly permitted by our Brand Usage Guidelines or with our prior written permission.”

Not accepting the terms isn’t really an option for anyone with a Facebook account. “By using or accessing Facebook, you agree to this Statement,” the document says.

This isn’t the first time the company has asserted rights in the word “book.”  There have been disputes (involving “Teachbook” and “Lamebook,” among others), but the move to include “book” among marks protected in its new terms is seen as newsworthy because “book” is not among the company’s extensive list of marks registered by the USPTO.

According to the ars technica piece, “Facebook has a pending trademark application on ‘book’ listed in the European Union’s trademark database, but the current status is ‘application opposed’ with ‘likelihood of confusion’ listed as the reason for opposition.”

Most readers of this blog already know that you don’t need to have a registered mark in order to have enforceable trademark rights in the United States.  And by incorporating this mark into its user terms, Facebook (potentially, depending on what a court would say) is adding breach of contract claims to its menu of options in enforcing its trademark rights.  And when you have, oh, 845 million or so contracts out there, well, that can’t hurt either.

SOPA Blackout

Wow.  So you take some time off for the holidays (and then catching up from the holidays) and aren’t IP blogging for a little while and then– all of a sudden– the whole web is talking (or not talking, out of protest) about copyright law.

You didn’t have to venture too far beyond a simple Google search (which we, as a planet, only do a billion or so times a day) to notice something strange was going on today.  Visitors to a laundry list of sites including Google, Wikipedia, and Twitter were greeted by blacked-out logos and missing content in protest of SOPA and PIPA, two IP reform bills currently in Congress.

And, according to the Los Angeles Times, this protest might have already had an impact as three co-sponsors of the SOPA and PIPA antipiracy bills have publicly withdrawn their support for the legislation.  From the Times:

Sen. Marco Rubio (R-Fla.) withdrew as a co-sponsor of the Protect IP Act in the Senate, while Reps. Lee Terry (R-Neb.) and Ben Quayle (R-Ariz.) said they were pulling their names from the companion House bill, the Stop Online Piracy Act. Opponents of the legislation, led by large Internet companies, say its broad definitions could lead to censorship of online content and force some websites to shut down.

In a posting on his Facebook page, Rubio noted that after the Senate Judiciary Committee unanimously passed its bill last year, he has “heard legitimate concerns about the impact the bill could have on access to the Internet and about a potentially unreasonable expansion of the federal government’s power to impact the Internet.”

 

iCloud Communications Sues Apple for Trademark Infringement

If you’ve been reading this blog long enough, you should know that I love following David and Goliath stories.  Unlike most of the stories I’ve covered, however, this one involves David taking the first swing.

In a Complaint filed last week in United States District Court in Arizona, iCloud Communications, a Phoenix-based voice over IP provider, alleges that Apple has infringed on its “iCloud” trademark.  The Complaint alleges that “Apple has a long and well known history of knowingly and willfully treading on the trademark rights of others,” citing to the company’s previous scuffle with the Beatles over the “APPLE” trademark.

Apple has a lot riding on this one (as evidenced by the company’s 11 pending trademark applications with the USPTO), and it is likely that a settlement of some sort will be reached here– though it probably won’t have the sort of warm, fuzzy ending as the Beatles lawsuit did.

Perhaps the most interesting question that’s raised here is this: what trademark rights do the parties have in the stylistic, prepended “i” in their names?  For a while, anything bearing the prefix “i” would automatically be associated with Steve Jobs and company.   But as Tom Galvani cleverly notes, the use of the “i” prefix is widespread, bordering on cliche.  I took Tom’s challenge (think of good/service, tack an “i” onto its name, and see if it already exists), and it looks like Tom was right.

Lamebook Sues Facebook

Via Ryan Gile:

You may have heard already that Facebook has been pretty aggressive of late in attempting to enforce its trademark rights– particularly against those using trademarks that incorporate either “–book” or “face-“.

If you’ve visited the website Lamebook, and, like me, were wondering when the other shoe would drop, here’s your update: it has.

But this time, Facebook is on the other side of the “v.”

After receiving a cease-and-desist letter from Facebook, Lamebook has filed a declaratory judgment action seeking a declaration of non-infringement and non-dilution.  One reason for this might be, as Robin Wauters of TechCruch points out, that Lamebook, an Austin-based company, wants to keep the lawsuit in Texas.

Ultimately, the issue in this case may to come down to whether Lamebook is engaged in a valid parody.  This opens up the following question: to the extent that trademark parody doctrine is grounded on free speech/First Amendment concerns, what are Lamebook’s relevant speech interests here?

Pittsburgh, Plumbers, and Cybersquatting

In case you thought cybersquatting had gone away since its heyday in the 1990s, you should know that it’s alive and well in Western Pennsylvania, if this morning’s Post-Gazette is any indicator.

According to the P-G article, Fagnelli Plumbing Co., a Pittsburgh-based plumbing company is accusing Gillece Services, a larger competitor of cybersquatting related to Gillece’s purchase of the domain “fagnelli.com,” which, according to the article, redirected visitors to the website of Gillece Services– at least until May 4, when Gillece stopped rerouting traffic, apparently in compliance with a demand letter from Fagnelli.

This case doesn’t have the soap opera qualities of an early cybersquatting case such as Kremen v. Cohen.  This case involves plumbing, not porn.  And (as far as I know) no one involved in this dispute is on the lam in Mexico.

Will Fagnelli be able to prove cybersquatting?  It will be interesting to see how this one plays out. 

The elements of cybersquatting under the UDRP, requires that plaintiff show: (1) that the domain is confusingly similar to its trademark; (2) that the registrant does not have a legitimate interest in the domain name; and (3) that the registrant registered and is now using the domain in “bad faith.”

One final fact that’s worth noting here is the alleged volume with which Gillece has been registring domain names.  According to the complaint, Gillece has registered more than 180 domain names that are “identical or confusingly similar,” to the marks of competitors in the Greater Pittsburgh area.

April Fools’ Day: Topeka, Kansas Edition

If you visit Google.com today, you’re in for a surprise.  That’s right– your eyes aren’t playing tricks on you– Google has changed its name to “Topeka.”  This is just the latest in a long line of Google’s April Fools’ hoaxes.

But why Topeka?  If you haven’t been following the ongoing competition among cities vying for Google’s ultra-fast, experimental fiber network, you might have missed the recent news that Topeka, Kansas, one of the cities competing for the network, has officially changed its name to “Google.”

The trademark wonks among us will appreciate “Topeka’s” guidance on proper usage of the moniker so as to avoid the problem of descriptiveness/genericide:

And I would be doing a disservice to my fellow Pittsburghers out there if I didn’t point out that the Steel City is in the running for Google’s Topeka’s experimental fiber network.  I was happy to see that members of the Greater Pittsburgh community are making a compelling case for bringing the project here.  I mean, what’s not to like?  Pittsburgh has excellent universities and a burgeoning high-tech industry.  Plus, as the Pittsburgh Google Fiber Project aptly notes, we’ve got the parking chair:

Are All the Good Band Names Already Taken?

John Paul Jones seems to think so.  The former Led Zeppelin bassist recently told the Wall Street Journal about the challenges he faced in coming up with a name for his new band.

“Every other name is taken,” said Jones.  “Think of a great band name and Google it, and you’ll find a French-Canadian jam band with a MySpace page.

Trademark rights are pretty much worthless if they can’t be used to prevent others from using a the same name, or even a confusingly similar name.   And given that trademark rights are generally established by being the first to use a name in commerce, the quest for the perfect band name takes on certain aspects of a footrace.  (I mean, once someone stakes their claim on “Someone Still Loves You Boris Yeltsin,” aspiring rock bands can just pack it in and starting thinking of other world leaders to whimsically evoke.)

So why is this a hot issue all of a sudden?  Apart from the obvious mathematical law that states that, as time proceeds, the number of available band names inevitably approaches zero, there is a more interesting and relevant issue that’s in play: technology.

I couldn’t put in any better than the Wall Street Journal does:

“The last decade’s digital revolution not only transformed the way people listen to music, it changed the way bands establish identities. In the past, identically named acts often carved out livings in separate regions, oblivious or indifferent to one another. Now, it takes only moments for a musician to create an online profile and upload songs, which can potentially reach listeners around the world.”

So what’s an up-and-coming band in search of a good name left to do?  Two things.

First, be creative.  You’re in a band, after all; so this should be the easy part.

Second, be careful.  In the present marketplace, with Rovi Corp., the owner of a large artist name database reporting a total inventory of 1.4 million artist names, I can’t stress enough the importance of clearing your rights to a name.

Finally, if you’re in the mood for a laugh and/or procrastination device, check out the “Most Annoying Indie Rock Band Name Generator.”  (I clicked until I stumbled upon my favorite: “Jimmy Hoffa Community College.”)

A Tweet by Any Other Name…

There’s an interesting story in yesterday’s Washington Post about the ongoing saga involving Twitter’s trademark rights in the word “TWEET.”

Twitter, Inc. is a San Francisco-based company that runs the popular social networking site, Twitter.  Over the last year, Twitter has struggled to determine what rights, exactly, it maintains in the word “TWEET.”  In April, 2009, Twitter filed a trademark application for the word mark  “TWEET.”  The word “tweet” is a verb, referring to act of posting content to Twitter.

The status of Twitter’s rights in the TWEET mark are complicated by the fact that a number of third-parties are using the word “tweet” in software platforms and other applications that are created for Twitter’s users.  These applications have names such as  TweetDeck, TweetMeme, Tweetie, BackTweets, and Tweetboard.   Initially, Twitter tried the “good cop” approach, issuing the following message on the Twitter Blog:

“…we have no intention of “going after” the wonderful applications and services that use the word in their name when associated with Twitter. In fact, we encourage the use of the word Tweet…”

Recently, however, according to the Washington Post article, Twitter has gone after a service called “TweetKnot” for its use of the mark in connection with a Facebook Application.

And although this may seem inconsistent with its earlier message, right from the start (in the very same post to the Twitter Blog, in fact) Twitter has made it very clear that, even if it tries to play “good cop,” it still has every right to play “bad cop” when there is a possibility of damage to its brand:

“However, if we come across a confusing or damaging project, the recourse to act responsibly to protect both users and our brand is important.”

So here’s the million dollar question.  Who owns the rights to the “TWEET” mark?  Right now, however, there is no clear answer.  In January, the United States Patent and Trademark Office (USPTO) issued a Notification of Letter of Suspension in Twitter’s trademark application on the basis that there are a number of pending applications (such as this one for “TWEETMARKS“) containing the word “tweet,” and that the USPTO needed to sort out who had priority over whom.  In other words, Twitter will have to wait and see what rights it has in the TWEET mark.

In the meantime, a more theoretical question looms.  How strong are “tweet” based marks?  We’re all familiar with classic examples of “genericide,” the process by which a mark loses its distinctiveness through the public’s use of the mark as a descriptive term, often a verb.  For example, using the words “XEROX” or “GOOGLE” as verbs may undercut the distinctiveness of the respective marks and, thus, undermine their trademark rights.  So how about the verb “tweet?”  Although “tweet” is obviously derivative of “TWITTER,” it is distinguishable from the XEROX and GOOGLE examples in that it is new word in itself and is not just a use of the mark as a verb.  Is that enough to make it a strong mark?  Who will come out on top in the “Battle of the Tweets?”  You’ll have to stay tuned.  And, in the meantime, we will be tweet– er, strike that– making posts to our Twitter account with all the latest news.