Guide Through the Legal Jungle

Righthaven's Questionable Domain Name Grab

Righthaven has filed over 100 copyright infringement lawsuits against bloggers and website owners who re-post news articles without permission. The lawsuit that has drawn much media attention is a lawsuit against Sharron Angle, who is running for the Nevada senate seat and whose website, sharonangle.com, posted two Las Vegas Review Journal news articles without permission.

Righthaven’s Modus Operandi

Righthaven’s method involves searching the internet for unauthorized postings of news articles, obtaining the copyright in those news articles, and then filing suit. Righthaven has been heavily criticized and called a “copyright troll”. Righthaven launches suits in circumstances where many content owners would simply issue a DMCA take-down letter, directly request the blogger/website owner remove the news article, - or frankly just ignore the situation. Many of the sites sued by Righthaven operate on a small-scale and do not generate significant revenue.

Righthaven’s Illogical Pursuit of Domain Names

One aspect of these cases that has received less attention is Righthaven’s quest for the website owner’s domain name. It is possible to obtain someone else’s domain name through a legal proceeding under the Uniform Domain Name Dispute Resolution Policy, the Anticybersquatting Consumer Protection Act, or a federal or state trademark statute.

However, such claims have nothing to do with copyright – and everything to do with trademark. In order to succeed in taking someone’s domain name under any of those theories, Righthaven must demonstrate that the website’s domain name is the same as or confusingly similar to a trademark in which Righthaven has rights. In the Righthaven complaints I’ve read, Righthaven makes no mention of any trademarks it seeks to protect.

I agree with Attorney Evan Brown that Righthaven’s pursuit of domain names makes no legal sense. It may have some Machiavellian strategic sense by serving as an additional incentive for the website owner to settle quickly by paying Righthaven a few thousand dollars.

Do You Need an Attorney to Register a Trademark?

Technically, No Attorney Is Needed for a Trademark Registration Filing

Fortunately, the Trademark Office does not give a trademark application filed by a lawyer any preferential treatment. Trademark examiners (and the online trademark registration system) actually take steps to provide additional guidance to trademark applicants working without a lawyer.

What Really Counts in Your Trademark Registration Application

What counts is whether your application is correctly completed and whether your proposed trademark actually qualifies for federal registration. People often make the mistake of trying to register a trademark that simply doesn’t qualify for registration because, for example, the trademark is generic/descriptive or the trademark is too similar to an already-registered trademark.

How a Trademark Attorney Can Help in the Registration Process

The trademark application itself appears deceptively simple. However, there are some application mistakes which can only be corrected by starting over again and filing a new registration application. The trademark application becomes more complicated if you seek to register a design or logo rather than just a word. Using a trademark attorney should help you avoid many common application mistakes.

If someone opposes your trademark registration application, that is the point where you should definitely consider retaining a lawyer. Fortunately, most trademark registration applications do not generate oppositions from third parties.

Some Trademark Registration Tips for Those Not Using a Trademark Attorney

I offer several trademark registration tips as well as a sample completed trademark application in my book, The Cyber Citizen’s Guide Through the Legal Jungle: Internet Law for Your Professional Online Presence. Although the focus of the relevant chapter is registering domain names as trademarks, many aspects of the discussion apply to all trademark applications.

One tip is to try to take the description of your goods and services directly from The Trademark Office’s Acceptable Identification of Goods and Services Manual. As part of the application process, you must describe the goods and/or services with which you use the trademark. In trademark jargon, this description is called an identification.

Describing your goods/services sounds easy, right? However, unacceptable identification(s) is a common reason for the issuance of Office Actions (i.e., an initial rejection of your trademark application). The Trademark Office’s Acceptable Identification of Goods and Services Manual lists identifications for specific goods and services that the trademark examiner will accept without further inquiry as long as the specimens (i.e., examples of how you use your trademark) submitted with your application are consistent with the identification.

Another Louis Vuitton Lesson on Using Trademarks in Media

Last year, I blogged about "Lessons from Louis Vuitton on the Risk of Unauthorized Product Placements". That dispute featured LV’s objection to the appearance of its products and trademarks in videos and album art for Danity Kane, a group released through Sean Combs’ Bad Boy Records label.

As I’ve previously said when evaluating the risks of using copyrighted and other protected works without permission, one of the factors to consider is whether the rights owner previously objected to similar uses. It is a good bet that rights owners who have been aggressive in protecting their rights in the past will continue to be aggressive in protecting their rights in the future.

Louis Vuitton is proving the accuracy of this principle. Louis Vuitton now has an ongoing trademark lawsuit against Hyundai which showed the LV trademark for about five seconds in its Super Bowl luxury commercial.

While Hyundai probably wants this dispute to disappear quickly, getting a court opinion on the substantive issues would be a boon for media producers and the attorneys who advise them on when and how one can permissibly use product appearances in creative works.

Lessons from Louis Vuitton on the Risk of Unauthorized Product Placements

With all the media attention on the settlement reached between Sean Combs/P. Diddy and Louis Vuitton, I thought this would be a good opportunity to blog about the potential risks of unauthorized product placements.

General Rule about Product Placements

Putting brand name products in your films and other creative products raises trademark questions. Several court rulings say the unauthorized appearance of a brand-name product in your production is okay as long as the appearance does not (i) tarnish the product’s reputation, (ii) draw on the goodwill associated with the product, or (iii) mislead people to believe that the product manufacturer has endorsed or sponsored the production.

However, even if you meet those standards, it doesn’t mean the trademark owner will not still initiate legal action against you if it views your treatment of its trademark as negative.

In the Sean Combs case . . .

Louis Vuitton objected to the appearance of its products and trademarks in videos and album art for Danity Kane, a group released through Combs’ Bad Boy Records label. As part of the settlement agreement, Combs agreed to remove all visual references to the Louis Vuitton trademarks from future releases of the videos and album

A Few Unknowns (at least to me) and Caveats about Louis Vuitton/Sean Combs Case:

• I have not seen the Danity Kane videos and album art so I can’t comment on the extent to which they feature Louis Vuitton products.
  
• The case was filed in France. I haven’t located a copy of the original complaint so thanks in advance to anyone who wants to forward me a copy or link. Anyway, I presume that the case would not have been decided under United States law.
  
• Since Combs decided it was more advantageous to settle, we won’t find out whether a court would have ruled that the use of the Louis Vuitton products was improper.

So while the Louis Vuitton-Sean Combs settlement is not authoritative, the lesson for creative types to take away is that using other people’s trademarks can carry consequences. While, in many circumstances, you may have a First Amendment right to use the trademark, you do want to consider the risks and perhaps seek legal guidance before incorporating trademarks into your music, films, domain names, and other creative endeavors.

Trademarks & Potatoes

A Guide Through the Legal Jungle Trivia Question

Mary has a business in which she sells potatoes that are grown in Idaho. Mary is trying to decide on a name for her business that will give her strong trademark. She has chosen two potential names: Mary’s Idaho Potatoes and Maidpotes.   In which name is Mary likely to have the stronger trademark and why?

1. Mary’s Idaho Potatoes, because the name says exactly what the product is and who is selling it.
2. Mary’s Idaho Potatoes, because the name is simple and easy for consumers to remember.
3. Maidpotes, because the name is distinctive and no other Idaho potato seller is likely to have the same name.
4. Maidpotes, because the name is one word instead of three.

Investigating Genericide

A Guide Through the Legal Jungle Trivia Question

Generic terms do not qualify for trademark protection. Sometimes distinctive terms become generic and lose their trademark status (“genericide”). Which of the following were once distinctive, and have experienced genericide?  Choose all that apply.

1. Cellophane
2. Escalator
3. Band-Aid
4. Kleenex
5. Chapstick
6. Aspirin

March Madness

A Guide Through the Legal Jungle Trivia Question

Which one of the following sports organizations first coined the phrase March Madness to describe an athletic tournament?

A. Illinois High School Association
B. National Collegiate Athletic Association (NCAA)
C. Olympics
D. National Basketball Association (NBA)

Google Makes It Into the Dictionary

A Guide Through the Legal Jungle Trivia Question

The 2006 editions of the Merriam-Webster dictionary and the Oxford English Dictionary include the term “google”. What validation for the California-based search company that goes by the same name! How likely is it that those in the Google corporate boardroom began back-slapping and high-fiving each other in celebration when they heard the news?

A.    Likely

B.    Not Very Likely