Archive for February, 2010

Wordle and Cloudy Trademark Claims

Early this morning, TechCrunch reported that Wordle, a popular text cloud generator, was down because the site’s admin was facing a trademark dispute from the owner of the registered Wordle trademark.  The Internet went nuts.  We here at 95years care about things that make the Internet go nuts, so I’ve decided to skip my usual Sunday morning ritual of watching Face the Nation and Meet the Press followed by a marathon of horrible VH1 reality TV to provide a little bit of clarity on the issues at hand. This should in no way be construed as legal advice, and is simply my ruminations on what is a somewhat murky area of trademark law.

Wordle is a registered trademark, belonging to Mark Jordan Koeff, a photographer from California.  Mr. Koeff  registered the mark under classes protecting, amongst other things, paper goods, board games, and textiles.  This may prove pivotal in sorting out the dispute.  When a trademark is registered, the registrant must provide classes of goods for which they are registering the mark.  That’s why Apple, for instance, can trademark the word for protection over computers, but has no claim over fruit, or perhaps more notably, record labels bearing the same name.  Thus, identical trademarks can in fact coexist on dissimilar products.  Jonathan Feinberg, the owner of, probably has no intention of creating a Wordle board game or Wordle textiles.  I dare not speak for the man, but gut instinct tells me I’m probably not wrong on this one.  As such, he may in fact be in the clear.  As we’ve mentioned before,  a trademark claim generally rests on a likelihood of confusion for consumers.  The burden is on Mr. Koeff to show that consumers will be confused as to the origin of the Wordle site in relation to Koeff’s goods or services, none of which I can track down after a rather cursory search.  Koeff could also bring a claim for trademark dilution, stating that the wordle site lessen’s the uniqueness of Koeff’s mark.  This will get shot down with a quickness, though, as dilution claims are generally reserved for famous marks.  No offense to Koeff, but I’ll eat my hat if Wordle is a famous mark.

At its face, Koeff’s not wrong to dispute the name of the site.  An owner of a trademark is required to actively police his mark in order to avoid dilution.  Monster Cable is infamous for adamant policing of their mark.  Feinberg didn’t necessarily have to take the extreme measure of taking down his site, but it can be extra scary when someone with a piece of paper from the government threatens legal action.  There’s a chance Feinberg will have to rebrand his site, but that really does rest upon the class registration and whether the marks are used in concurrent channels. Hopefully this will come to a speedy resolution for all parties involved.


More on Copyright Protection for Tweets and Other Short Phrases

In researching my post entitled “Can You Copyright Your Tweets?” I came across some great articles debating the protectability of short phrases.

William Bonk writes on “Tweet Copyrightability” and concludes, “If the product of data and professional analysis, then copyrightability is likely. Otherwise, the tweet must exhibit increasing creativity with decreasing length.”

Consuelo Reinberg writes in “Are Tweets Copyright-Protected?” that “[m]ost experts agree the response should not be an all-or-nothing answer, but rather ‘it depends.’  While most tweets would not pass the ‘copyrightability’ test, some might meet the minimum amount of originality demanded by copyright law.”

William Patry discusses “Jokes and Copyright,” in which he reveals that comedians often enforce their own moral rights in jokes in sub rosa ways, and identifies Robin Wiliams and Carlos Mencia as inveterate joke thieves.

David Giacalone opines on “Haiku and the Fair Use Doctrine.”


Can You Copyright Your Tweets?

Ross Grady (@rossgrady) just alerted me to a blog post by graphic designer Jeffrey Zeldman that’s generating discussion on Twitter today. Zeldman assures his readers that they don’t need to worry about copyright issues with regard to Twitter because tweets, as “short phrases,” can’t be copyrighted. If you have a really good one, you can trademark it, but otherwise, “they are in the public domain the instant you publish them,” because “your Tweets are like the air. Anyone can do anything like to them, including quoting them with or without your permission.”

This is bracing advice! Of course, it’s also completely wrong.

Zeldman’s post relies heavily on a circular from the Copyright Office entitled “Copyright Protection Not Available for Names, Titles or Short Phrases.” The circular explains that “[u]nder section 102 of the Copyright Act (title 17 of the U. S. Code), copyright protection extends only to ‘original works of authorship.’ The statute states clearly that ideas and concepts cannot be protected by copyright. To be protected by copyright, a work must contain a certain minimum amount of authorship in the form of original literary, musical, pictorial, or graphic expression. Names, titles, and other short phrases do not meet these requirements.”

If Zeldman had read a little more closely, he would have seen that the Copyright Office is explaining that short phrases in the manner of names and titles are not copyrightable, not all short phrases.

What the Copyright Office is hoping to get across to the thousands of people who send in copyright applications each year is that you cannot copyright, say, the name of a book or a movie. You have to trademark it, because the name alone isn’t a freestanding work of original expression, it’s a means of distinguishing that work in the marketplace, which is a function protected by the issuance of a trademark.

The Copyright Office is also trying to keep people from attempting to register copyrights in, say, movie pitches – “astronaut falls in love with robot.” There’s not enough original expression in that sentence — it’s just an idea written down, and you can’t copyright ideas.

If you write an original and distinctive twelve-word poem about an astronaut falling in love with a robot, however, there may be protectible expression in that poem despite its brevity. As Richard Stim explains in “I May Not Be Perfect but Parts of Me Are Excellent: Copyright in Short Phrases,” copyright protection of short phrases is disfavored, but it is available in certain circumstances where the short phrase demonstrates originality and distinctiveness. For instance, as one of Zeldman’s commenters pointed out, the epigrammatist Ashleigh Brilliant successfully sued to prevent a t-shirt transfer company from appropriating two of his epigrams. The epigrams were twelve and fifteen words, respectively (one of them became the title of Stim’s article). The court found that the phrases were entitled to copyright protection despite their brevity because of their distinctiveness and cleverness. The case is Brilliant v. W.B. Productions, Inc. Civ. No. 79-1893-WMB (S.D. Cal Oct. 22, 1979).

Zeldman’s statement regarding trademarking short phrases — “If you write a clever Tweet and wish to assert ownership (and if money is no object), you may apply for a trademark” – also misreads the Copyright Office circular, which explains that “[s]ome brand names, trade names, slogans, and phrases may be entitled to protection under laws relating to unfair competition, or they may be entitled to protection and registration under the provisions of state or federal trademark laws. The federal trademark statute covers trademarks and service marks—words, phrases, symbols, or designs that distinguish the goods or services of one party from those of another.”

Here, the key phrase is “distinguish . . . goods and services.” As noted above, trademarks distinguish goods and services. A “clever tweet” that is not used to distinguish goods and services in the marketplace is not amenable to trademark registration. For instance, the phrase “life is good” is not eligible for copyright protection, but when it is combined with a stick figure strumming an acoustic guitar with its dog at a campsite and slapped on a whole line of products, it becomes a means of distinguishing that particular line of products, and thus may be registered as a trademark.

Zeldman’s post is full of other confident misstatements of copyright law, such as, “[y]ou needn’t ask for permission to quote me. This is covered under fair use. You will not break any copyright law in quoting a short excerpt. This is covered under fair use.” In fact, I direct Mr. Zeldman to the case of Harper & Row v. Nation Enterprises, in which the United States Supreme Court found that republishing even brief verbatim quotes can amount to infringement under certain circumstances.

Twitter has largely avoided copyright disputes among its users by creating its own attribution and licensing convention, the retweet, which essentially supplants copyright in the Twitterverse. The functionality of this alternative system is proof that copyright law has not caught up with the reality of the Internet. However, it doesn’t mean that copyright law doesn’t apply to the Twitterverse. As always, it lurks in the background wherever people are creating reproducible works of expression.


Law Students Win Downloading Victory; Corporations Contemplate Political Speech; Gaga Trademarks Self

Students from Franklin Pierce Law Center’s clinics are declaring victory for their client in a music downloading suit against the Recording Industry Association of America (RIAA). Students from the Consumer and Commercial Law and Intellectual Property and Transaction Clinics aided a New Hampshire woman, Mavis Roy, in reopening a default judgment lodged against her for allegedly illegally downloading hundreds of songs. The case was then set for trial and the students spent months preparing. After Roy’s counsel obtained an expert report which “seriously challenged RIAA’s evidence linking the downloading activity to Roy’s computer,” the two sides reached a settlement highly favorable to Roy — the suit was dismissed with prejudice and she paid no damages. Thanks to @piercelaw for the tip.

As you might expect, law firms are already advising corporate clients about how to direct corporate spending to political campaigns in the wake of Citizens United v. FEC. According to K & L Gates, they should proceed with caution and keep a low profile. For more information on Citizens United, see our earlier post, “Citizens United v. FEC: Eight Unanswered Questions.”

Gawker reports that Lady Gaga has applied for a trademark in her name for use in conjunction with an extremely wide range of products, including gift cards, tank tops, and pens. The application is here.


On Redbox, Netflix, and the First Sale Doctrine

The picture at left is of the video shelf of my parents’ media closet.  You’ll notice that nothing’s been added to it in close to twenty years.  There are two DVDs there.  One is a copy of Ghost still in its wrapper.  The other is a music DVD by electronic musician Tipper.  The rest of the closet is stacked to the point of overflowing with CDs, software,  books and magazines.  We’re voracious consumers of media.  However, we don’t buy tapes or DVDs.  We rent them.  Some of my most vivid memories as a kid involved the video store.  Maybe in part because I used to KICK ASS at the skill crane machine at our local Blockbuster and would always come home with a toy, but I digress.  As the video stores closed, we moved onto Netflix.  Netflix, along with its rival Redbox, has made a rather frustrating concession to the film industry that makes it harder for members to watch new releases.

Early this week, Redbox, Coinstar’s drugstore/supermarket DVD rental service, announced that it settled its lawsuit with Warner Bros. Films and would no longer offer Warner DVDs for rental in their kiosks until 28 days after their release.    Netflix struck a similar deal with Warner last month, though no litigation was involved.  The agreements grant the rental services deep discounts, rumored to be up to a 50% markdown, on wholesale discs.  The measure, which other studios will undoubtedly attempt to mimic in the near future, comes after  nearly a year of legal sparring between Redbox and the big studios.  In 2009, Redbox’s $1 a night fees accounted for nearly 20% of all money spent on DVDs.  Seeing their bottom line cannibalized by the rental services, the movie studios sprang into action, strongarming wholesalers to not sell to Redbox.  Redbox sprang into action and just sent employees to Target and Wal-mart to buy DVDs in bulk.  Absurd, hilarious, expensive, but effective.  And furthermore, completely legal under US copyright law.

Redbox, Netflix, Blockbuster, and their ilk rely on the first sale doctrine for their business.  The first sale doctrine is a carve-out in the Copyright Act that allows anyone, commercial or otherwise, to sell, lend or give away a lawfully obtained, legal copy of copyrighted material. You know that whole “For Promo Use Only” caveat on CDs sent to DJs, PR firms, industry types and radio stations?  It means nothing.  The first sale doctrine makes it completely legal to resell promo discs (assuming, of course, that the actual release date has passed).    Thus, the rental services are in the clear legally when they undercut the movie studios.  Mediawonk has a great breakdown of all the issues between the rental services and the studios as they relate to the first sale doctrine.

The big question, then, is what does this mean for the consumer?  The tech blogs are convinced that the studios’ embargo period will damn new releases to piracy, even further than they already are.  Of course, the industry vehemently disagrees. The fact of the matter is that we live in an on-demand society.  The increasing ubiquity of broadband internet makes this more and more prevalent every day.  A humorous infographic hit the net yesterday showing how much less frustrating a pirated copy of a film is versus the commercial version. People want things quick and easy.  This new move flies in the face of that.  There are very few films that will realize that much of a benefit from this move.  How many people are going to run out and buy a copy of Sherlock Holmes, The Blind Side or The Book of Eli just because they can’t get it from Redbox for a month?  Probably not that many.  Netflix won’t lose subscribers because of it, and Redbox users not way up on release dates probably won’t notice.  They’ll just rent something else.  Or go home, fire up BitTorrent and download it for free.  Good luck to the studios, though.  Keep on fighting that losing battle.


Legislators Attempt to Bar Foreign Law from Arizona Courts

Eugene Volokh reports on a bewildering new bill making its way through the Arizona state legislature which would ban the application of foreign or “religious sectarian law” in Arizona courts.

To wit:

A. A court shall not use, implement, refer to or incorporate [any] tenet of any body of religious sectarian law into any decision, finding or opinion as controlling or influential authority.

B. A court shall not use, implement, refer to or incorporate any case law or statute from another country or a foreign body or jurisdiction that is outside of the United States and its territories in any decision, finding or opinion as either:

1. Controlling or influential authority.

2. Precedent or the foundation for any legal theory.

C. Any decision or ratification of a private agreement that is determined, on the merits, by a judge in this state who relies on any body of religious sectarian law or foreign law is null and void, is appealable error and is grounds for impeachment and removal from office.

D. This section applies to a federal court sitting in diversity jurisdiction. . . .

Justice Anthony Kennedy of the United States Supreme Court has received significant media attention in the past decade for citing foreign law in Supreme Court cases. Apparently some Arizona legislators are concerned that this practice, which has been running rampant in the Supreme Court since the 19th century, will infect the otherwise pristine Arizona state court system. Accordingly, they’re taking steps to outlaw it.

Setting aside “religious sectarian law” entirely, this bill’s bar on the application of foreign law is misguided for the following reasons.

The bill misunderstands its own subject matter.

The bill bars the use of foreign law as “controlling or influential authority” or “precedent or foundation for any legal theory.” Generally we discuss authority in terms of “mandatory authority” and “persuasive authority,” and it seems likely that here, “controlling” means “mandatory” and “influential” means “persuasive.”

For our non-lawyer friends, “mandatory authority” means a judge is bound to follow certain legal precedent. For instance, rulings of the Arizona Supreme Court are mandatory authority — lower state court judges are bound to follow them. “Persuasive authority” means that a judge, finding no mandatory authority on a particular point, cites another judge’s approach to the same legal problem as persuasive. Citing to persuasive authority has the effect of saying, “We haven’t decided how we address this problem yet in Arizona, but here’s how they address it in [California, or New York, or Great Britain], and we should consider addressing it in the same way.”

At the risk of circularity, foreign law generally isn’t applied as mandatory authority in the United States because it’s foreign law. It doesn’t apply here. In some circumstances, however, foreign law is relevant and must be interpreted; for instance, when a contract which is the subject matter of a dispute between an American company and, say, a Canadian company states that the contract must be performed according to Canadian law. American courts would have to look at Canadian law in such circumstances to determine if the contract had been breached. If every Arizona contract case involving Canadian law was forced out of Arizona courts and into the Canadian judicial system, some number of American companies would pay a significant price in convenience and expense.

United States courts will occasionally look to foreign law as persuasive authority. In those circumstances, the judge is not “following” foreign law or “applying” it. The judge is merely stating that its reasoning is persuasive. In other words, foreign law cannot be seen as governing the judge’s decision. The thought process behind the foreign law is merely informing the domestic decision. Binding precedent can only be created if a number of other courts in the same legal system follow this initial decision, in which case other judges are confirming that they think the developing precedent is sound. Under the new Arizona law, the underlying line of cases in this situation would stem from a “foundation” of foreign law, despite the fact that the judges would be coming to their own conclusions and developing an independent basis for their decisions, and would thus be invalid despite the application of individual judgment.

Finally, this law’s stated purpose is to prevent the misapplication of legal authority. There is already a remedy for the misapplication of legal authority, whether mandatory or persuasive — appeal. In fact, appeal is asserted as one of the remedies in the bill. Parties have always been able to petition for review of decisions rooted in inappropriate reasoning. This law seems to contemplate a conspiracy among every judge in Arizona to infect the common law with foreign legal principles, or some other situation in which the court system couldn’t be trusted to identify its own mistakes.

Portions of the bill are probably unconstitutional.

While it purports to restrict the ideas judges are permitted to espouse, and thereby restricts speech, the bill is probably not unconstitutional under current First Amendment jurisprudence. The United States Supreme Court ruled in Garcetti v. Ceballos that statements made by public employees pursuant to their official duties are not protected by the First Amendment. Judicial opinions are certainly statements made in the course of public employees’ official duties.

However, the bill is probably unconstitutional, at least as it applies to federal judges, because it violates principles of federalism. It purports to dictate the conduct of federal judges, who are vested with authority under the Constitution and over whom state governments have no authority. When federal judges sit in diversity jurisdiction, they apply the substantive law of Arizona. Now the substantive law of Arizona says that federal judges can’t consult foreign law as part of applying the substantive law of Arizona, even if such law intersects with the substantive law of Arizona. However, while federal judges must interpret Arizona law in such instances, states can’t tell federal judges specifically how to interpret the law, because it’s the job of the federal judiciary to “say what the law is,” and that seems to be exactly what the state legislature is doing in limiting the means by which federal courts can address the cases before them.

Finally, a sufficiently determined judge will find ways to introduce ideas he or she finds persuasive.

Although it is no longer as popular as it once was to be a vulgar legal realist, I fear I still may be one. In simplest terms, I mean that I believe that within the bounds of professionalism, judges often reach conclusions first and then reach back into the law to find support for those conclusions. An appeal to foreign law, then, may be just another means of supporting a position a judge has already reached.

Here, if judges find the insights of foreign legal authorities useful but cannot use them directly, I predict that they will not simply throw their hands up and abandon those insights. I am sure they will find other ways or working those insights into their own work. Who would know any better, and who is going to go to the trouble of investigating the provenance of every supposedly original idea in a judicial opinion?


Google Deletes Music Blogs – What’s Going On? (Plus: How to Respond to a DMCA Takedown Notice)

The scandal already has a name – Blogocide 2010. In the first week of February, Google deleted several music blogs entirely for alleged violations of the Digital Millennium Copyright Act. Bloggers reacted with outrage. As I write this, Google has just posted an explanation of their actions, which specifies, “[w]hen we receive multiple DMCA complaints about the same blog, and have no indication that the offending content is being used in an authorized manner, we will remove the blog.”  Google has restored one blog which Google concedes did not receive notification of DMCA complaints, but the others remain deleted as of the evening of February 11th.

If you’re a music blogger who uses Blogger or any other remote hosting service, you may be wondering if you will be the next to lose your blog. You may have already received a DMCA takedown notice. Below, we discuss the chain of events that likely led up to Google’s deletions of the offending blogs, as well as what you can do if your blog receives a DMCA takedown notice.

How Does This Happen?

The chain of events doesn’t start with Google. DMCA notifications are sent by copyright holders or their representatives to entities hosting allegedly infringing content. In this case, Google owns Blogger, which hosts the content of the music blogs, so copyright holders send notifications to Google regarding particular Blogger accounts. Then Google contacts the individual Blogger account holders and says “we received a notification that Content Item X potentially infringes on someone else’s copyright, so take it down or else.”

Some people seem to believe that the DMCA itself is an organization. It’s not — it’s a law. As seen in the following post to Blogger’s complaint forum by Bill Lipold, the owner of the deleted blog IRockCleveland, the organization seeking to enforce the DMCA in his case was the International Federation of the Phonographic Industry, a multinational lobbying organization which represents record labels in pursuing anti-piracy enforcement on a worldwide basis.

In Lipold’s case, Google forwarded him approximately three takedown notices in fall 2009. Lipold seems to have ignored them until his blog was deleted, at which point he posted a complaint on the Blogger support forum. In his post, he informs Google that he believed he had permission to post an mp3 from the band BLK JKS and posts an email from the record label Secretly Canadian, whose publicist expresses confusion about the takedown notice and apologizes.

Looking at the IFPI’s roster of labels, it appears Secretly Canadian is not an IFPI member. However, BLK JKS’s album on Secretly Canadian is distributed by the Alternative Distribution Alliance (ADA), a distributor which is 95% owned by Warner Music Group (WMG). Warner Music Group is an IFPI member. The other two artists about which Lipold received DMCA notices, Spindrift and Jay Reatard, also have releases distributed by ADA.

In other words, the likely chain of events was as follows: indie label’s publicist sends out a promo mp3 to a blogger. Blogger posts mp3, as publicist intends. Indie label’s major distributor reports blogger’s posting of mp3 to blogger’s ISP as infringement. Blogger’s ISP deletes blogger’s blog.

They have a word for this sort of thing. However, it appears that Lipold made an important mistake of his own: he ignored the takedown notices simply because he believed he had permission to post the mp3s he posted. Blogger, ADA and the IFPI, on the other hand, likely did not know that Lipold had permission, presumably because Lipold’s posts were not reviewed by a human being, but by a bot crawling the web looking for infringing music files. Although he may have been entirely in the right legally, Lipold did not take steps to address and clarify the dispute until it was too late. Now his blog is strumming a digital harp in Internet heaven.

Why is Google Being So Mean?

Google is not being mean. Google is trying to avoid secondary liability for the copyright infringement of others by demonstrating that Google responds to reports of potentially infringing material on its own site (Blogger) as quickly as possible. In other words, Google is trying to avoid being sued itself for allowing copyright infringement to continue after Google itself has been notified of illicit activity. Google is simply trying to protect itself. It is most likely not targeting any particular blog out of malice.

I Got a DMCA Takedown. What Can I Do?

Lipold and his fellow bloggers should have taken affirmative steps to respond to the takedown notices and protect themselves. Below, we’ll discuss what you can do if you find yourself in a similar situation.

DISCLAIMER: The following is meant only to sketch out potential courses of action. It is not legal advice; please do not rely upon it as if it were.

1) Send a counter-notification ASAP. The DMCA includes its own means of responding to a DMCA takedown notice — the DMCA counter-notification, a form in which a notice recipient explains why the notice is in error. Google’s own instructions for creating and sending a counter-notification can be found here. Note that you have to assert a legitimate reason why the takedown was in error. Alternatively, Chilling Effects, which is a clearinghouse for information about DMCA takedowns, has an automated form here which you can use to create a counter-notification. Note that you must submit your counter-notification by snail mail or fax. Don’t wait to respond — it appears that the blogs targeted in Blogocide 2010 may not have responded promptly to the DMCA notices forwarded by Google. When Google sent notices and got no response, it felt it had no choice but to proceed as if the offending blogs were posting material without authorization.

2) Contact a lawyer. If you are really not sure what is going on, talk to a lawyer who is familiar with copyright and the DMCA. He or she can advise you how to proceed and prepare correspondence to record labels, ISPs and other parties on your behalf. You might have to pay your attorney for a few hours of work, but you’ve put a lot of time and energy into your blog.

3) Alternatively, try contacting the Electronic Frontier Foundation. The EFF is a public interest organization which works on behalf of electronic freedom and privacy. If you have a meritorious claim, the EFF may be able to put you in touch with a lawyer who can assist you on a pro bono basis. They host the Takedown Hall of Shame and offer very good advice on dealing with Youtube DMCA takedowns which can be applied to other takedown scenarios as well.


LegalZoom Sued for Unauthorized Practice of Law

I’ve been a little skeptical of LegalZoom, which bills itself as “the best legal document service on the web,” since I learned the site charges $149 to do a copyright registration. That’s a bit pricey given that the federal government’s copyright filing fee is only $35 and you don’t need to be a lawyer to file a copyright registration. LegalZoom further asserts on their site that “[a] lawyer would charge you approximately $780.00 to create and file a copyright application.” Without going into detail, I’ll simply say I am doubtful that is the case.

Given LegalZoom’s high profile on the Internet and its success selling its legal forms nationwide at sometimes-premium prices, the site was bound to step on a few Gucci-loafer-clad lawyer toes. In fact, a number of bloggers — and the great state of North Carolina’s bar association — have opined that LegalZoom’s practices may amount to the unauthorized practice of law.

Now word comes from Inventblog and IPWatchDog that LegalZoom has been hit with a class action lawsuit in Missouri which alleges that LegalZoom’s business goes beyond simply placing information into a form and enters the realm of “drawing . . . document[s] or instrument[s] affecting or relating to secular rights,” which under Missouri law may constitute the practice of law. The named plaintiffs in the suit used LegalZoom to incorporate and to purchase a will.

The complaint is available here at IPWatchDog.

Gene Quinn at IPWatchDog thinks that “while the LegalZoom model is one that has a lot of appeal, it seems to me that it is just too difficult to pull off without engaging in the unauthorized practice of law.” What do you think? Do LegalZoom’s practices cross legal or ethical lines? Would you be sorry to see its practice restricted? Had a good or bad experience with LegalZoom? Leave us a comment.


Don’t Mess With “Don’t Mess With Texas”

I first encountered the phrase “Don’t Mess With Texas” on t-shirts and stickers sometime in the 1990s. At the time, I thought it was just a generic expression of Texan bravado — it took a few years for me to find out that it was actually an anti-littering slogan adopted by the Texas Department of Transportation (TxDOT).

Apparently I’m not the only one who thought the slogan was free for the taking. In a recent case, Texas Department of Transportation v. Richard Tucker, TxDOT was forced to lay the smackdown on an interloper for messing with “Don’t Mess With Texas.”

Tucker, a businessman, attempted to register “Don’t Mess With Texas” with the United States Patent and Trademark Office for use on two different categories of articles of clothing in 1995 and 2000, claiming first use in 1993 and 1999, respectively. TxDOT filed a petition to cancel with the Trademark Trial and Appeal Board in 2000 and an opposition to trademark renewal in 2004, claiming prior use going back as far as 1985. Interestingly, TxDOT did not actually file its first trademark registration for the slogan until 2000.

Tucker argued, among other things, that TxDOT did not use its slogan outside Texas, but TxDOT presented plenty of evidence of prior use of the mark, including use on t-shirts, and evidence that the mark is a famous mark due to its use in a “massive and far-reaching publicity campaign.” Worse for Tucker, he admitted in his own filing that TxDOT had actually used the slogan first.

Read the rest of this entry »


Thursday Afternoon Link Explosion

The owner of a restaurant called the Heart Attack Grill has filed a trade dress lawsuit against a similarly themed eatery called Heart Stoppers Sports Grill. Reading about this suit will either turn your stomach or make you ravenously hungry. [Story and photo courtesy the  Wall Street Journal Law Blog]

I can haz damajes? ICanHasCheezburger and Failbooking owners sue alleged competitor who supposedly just stuck Failbooking in a frame to provide content for his own (some say better) URL, Failbook. [Techdirt via Erik J. Heels]

The first textbook on fashion law has just been published. It covers everything from intellectual property to employment disputes. [Stylelist]

Remember the FTC’s new stricter rules for blogger endorsements? Jezebel is highlighting why they might have come into existence by pointing the finger at a number of fashion bloggers who received gift cards from Ann Taylor in exchange for covering an Ann Taylor event. Was the coverage favorable? Guess. [Jezebel via Erik J. Heels]

A great post on “Ten Smart Reasons to Learn About IP Law” from the new blog IP Law for Startups. Aspiring entrepreneurs should read this post twice.