Posts Tagged ‘Trademark’

“Hon”believable: Can Cafe Hon’s Denise Whiting Trademark Baltimore’s Famous Term of Endearment?

Cafe Hon is a Baltimore restaurant. It takes its name and theme from what is sometimes known as the “hon culture” of the Charm City: the exuberant, slightly tacky, working-class world which serves as the background for many a John Waters movie and whose stereotypical representative is a beehive-bedecked lady inclined to greet everyone as, you guessed it, “Hon.” Over the nearly twenty years of its existence, Cafe Hon’s owner, Denise Whiting, has sold “Hon” logo mugs, t-shirts, and other paraphernalia, and created HonFest, a celebration of “Hon” culture, among other endeavors.

Recently, Whiting let slip in a newspaper article about her new gift shop Hontown that she has federally registered “Hon” as a trademark and recently licensed the term back to the City of Baltimore for use in a public transit advertising campaign.

Soon afterwards, the Baltimore Sun wrote an article subtly mocking Whiting’s trademark registration, pointing out the relatively large number of products for which she has registered the mark and registering protest from other local businesspeople, one of whom says, “['Hon'] belongs to the city of Baltimore.” The Sun also quotes University of Maryland trademark law adjunct professor and trademark practitioner James Astrachan, who says, “She’s taken the vernacular and is trying to create proprietary rights, and that’s just wrong… How many people know she’s the source of ‘hon’ when every waitress in the city who plops down a piece of pie in front of you says, ‘Enjoy this, hon’?”

The Sun’s editorial board, sensing a controversy to be milked, piled on with a sarcastic and, dare I say, stupid editorial calling Whiting’s registration “a betrayal of the civic trust” and omitting the word “hon” throughout because, according to the unnamed editorialists, “we would not want Café You-Know-What owner Denise Whiting to demand we turn over the entire press run of the newspaper, as she did with some unfortunate soul who was selling H-word paraphernalia at the airport a few years ago.”

Sun blog post indicates that the Sun has run at least five pieces on the “Hon” trademark flap in the past week, including a Web poll.

In her defense, Ms. Whiting’s attorney, Kathryn Miller Goldman, states, “[Whiting's] not trying to suggest that people can’t use the word ‘Hon’; it’s that they can’t sell things using the word ‘Hon”…. People can’t take her mark and put it on their goods. That’s what trademark is all about.”

Ms. Goldman is correct. Whiting’s registration protects her ability to use the word “Hon” in commerce as a mark: as the name of a product, service or business. Given that she owns several businesses with “Hon” in their names and sells many products featuring her distinct “Hon” logo, this is an entirely sensible registration. More importantly, none of the news coverage cites any evidence of Whiting enforcing her trademark inappropriately. Most negative news coverage of trademark holders focuses on bullying and overreaching in enforcement, and none of the news coverage indicates that Whiting has been unfair in dealing with other potential users of the mark, with the possible exception of her aforementioned seizure of some “Hon”-labeled merchandise at the Baltmore airport.

With all due respect to Mr. Astrachan, his waitress analogy is poor. As a teacher of trademark law, he should know that the issue is not whether a waitress is allowed to use the term “Hon,” or whether Ms. Whiting invented the term. The issue is whether she is allowed to limit the use of the term by others as a mark for a product or service in order to avoid consumer confusion.

Obviously the use of the term has been widespread in Baltimore, but clearly not in a commercial sense, as Ms. Whiting managed to open several “Hon”-branded businesses without encountering anyone else already using the term as a mark. Today, if someone were to open a restaurant called “Hon City” or a store called “Honworld,” it seems quite likely that a casual observer would incorrectly assume such establishments were part of Ms. Whiting’s “Hon” empire, and consumer confusion of that order is exactly what trademark registration is supposed to prevent.

While Ms. Whiting is in the right, there are nonetheless a few lessons to be gleaned from the “Hon” controversy for unwary trademark registrants.

First, even if you’re proud of the hard work you’ve put into the goods or services associated with your mark, and the mark itself, don’t say anything that could be taken as bragging about having been the first person to have registered a particular mark. You want the goodwill associated with the mark to support your claim to the mark, not the simple fact of your having gotten to the mark first. Consumers are often suspicious of business strategies that can be portrayed as sneaky, especially where the law comes into play.

Second, be very cautious about the claims you lay to terms or phrases that large groups of people might feel are important to a group identity, regardless of your legal right to do so. You might win the trademark battle but lose the public relations war. For further reference, see the New Orleans Saints “Who Dat?” controversy.

Photo of menu and mug at Cafe Hon by ktylerconk.

 

Sandwich Law Roundup: Jimmy John’s Takes Bite Out of Halsted St. Deli; Steptoe and Johnson Smokes Out Burger Joint Rogue States

http://farm3.static.flickr.com/2621/4051719297_b3444fe2cc.jpgSandwich chain Jimmy John’s is suing a Chicago rival, Halsted St. Deli, for naming two of its sandwiches the “Turkey Tom” and the “Hunt Club.” Jimmy John’s reportedly holds federal trademark registrations for the names “Turkey Tom” and “Hunter’s Club.” George Maglares, a student at the Univerity of Chicago, wrote a brief blog post on the suit for Prof. Randal Picker’s class “The Legal Infrastructure of Business” (law school classes have their own blogs now, or at least at Chicago they do) and there’s more on the suit from NBC Chicago.

Maglares calls the suit frivolous and the situation “rather absurd” and I agree. It’s difficult to imagine consumer confusion, even initial interest confusion, arising from the use of these names. Even a moron in a hurry wouldn’t expect to be served an actual Jimmy John’s sandwich at a sandwich shop that isn’t Jimmy John’s.

Jimmy John’s has a better argument that Halsted St.’s use amounts to dilution, but a finding of dilution first requires a finding that a mark is famous, and I don’t think either “Turkey Tom” or “Hunter’s Club” is a famous mark. Of course, I base that conclusion on the fact that I personally have never heard of either sandwich. Courts may disagree.

In other news, the Washington, DC office of law firm Steptoe and Johnson has been fuming about unpleasant emissions from Rogue States, a burger joint on the ground floor of its building. Rogue States’s kitchen exhaust exits the building at the second floor, near Steptoe’s air intake, and has allegedly caused health problems for Steptoe employees. Rogue States installed an exhaust scrubber to clean its emissions, but to no avail: Steptoe filed suit against Rogue States, claiming that the emissions amounted to a private nuisance. After a three-day trial (read coverage from the Washington City Paper here), the D.C. Superior Court ruled in favor of Steptoe, and the grills at Rogue States have gone cold. Given that routing its exhaust to the roof of the building, Steptoe’s favored remedy, would cost $150,000 and is opposed by the building’s landlord, it’s unlikely that Rogue States will reopen in that location.

To learn more about sandwich law issues, read the following:

Our post “This Week in Junk Food Trademark Fiascos,” which analyzed trademark suits by Subway and Chik-fil-A.

A 2006 Wall Street Journal blog post about an attempt by McDonalds to obtain patents for some of its sandwich-making processes. The Legal Satyricon weighed in as well with an interesting post that uses the McDonalds application as a jumping-off point for a larger explanation of the patent process.

A truly outstanding 1907 article from the New York Times entitled “Coney Grieves Most Over Sandwich Law; Some Old Friends Were Eaten with Drinks Yesterday,” which wittily describes the fallout from a new interpretation of a New York state law known as the Raines law. Passed in 1896, the Raines law restricted Sunday alcohol sales to hotels which served food. Many sleazy bars quickly complied with the letter of the law, becoming “Raines law hotels” by renting out an adjacent room and setting a sandwich or two out for sale. Customers would come and go, but the sandwiches remained on sale, day after day, untouched and hardening. Terrifyingly, a state court then ruled that the “Raines law sandwich” had to be ordered and served “in good faith,” and saloon owners began to demand that patrons attempt to consume the ancient sandwiches before being served their Sunday libations, resulting in general unhappiness and indigestion. (The Raines law is also mentioned in passing in a recent New York Times article about the speakeasy revival.)

 

“Life is Rad” Legal Strategy All Wet

An entity selling radiology-themed apparel using the mark “Life is Rad” (groan) attempted some radical moves in a suit against a surfing-themed competitor using the mark “Life’s Rad” and the Internet t-shirt behemoth CafePress recently, only to emerge from the waters of the Northern District of California with an ice-cream headache.

“Life’s Rad” (surfing) and “Life is Rad” (radiology) both sold merchandise on CafePress. Life’s Rad filed a takedown notice with CafePress, asserting a violation of Life’s Rad’s federal trademark, which CafePress honored. Life is Rad then filed a lawsuit against both Life’s Rad and CafePress.

Unfortuntely, Life is Rad’s owner, apparently representing himself pro se, asserted a number of sunstroke-induced legal arguments against CafePress, including interference with prospective economic advantage (sorry, dude, CafePress is just one place to sell shirts on the ‘Net, and they had a legit reason to deep-six the Life is Rad goods) and violation of the Digital Millennium Copyright Act’s takedown provisions (bro, the DMCA only applies to copyright, not trademark, bro!)

Life is Rad’s suit against Life’s Rad proceeds, but all the claims against CafePress were dismissed without leave to amend.

As Eric Goldman writes on his Technology and Marketing Law Blog, “This is a great win for CafePress, especially because the court implicitly upholds CafePress’ user agreement. Further, this ruling is yet another data point showing that vendors have a lot of discretion to take down their users’ offerings without fear of liability to the user.”

 

This Week in Junk Food Trademark Fiascos

Those of you not following us on Twitter (we’re at @95years) might have missed out on a remarkable run of news stories about questionable trademark enforcement efforts by fast food companies.

First out of the gate in the mad dash towards trademark enforcement infamy was Subway, which, as detailed by NPR’s Planet Money blog, sent a cease and desist letter to the Coney Island Drive Inn, a hot dog vendor which owns and uses the URL GotFootlongs.com.

The C & D stated that “DAI [Subway's parent company] has applied for the trademark FOOTLONG(TM) in association with sandwiches . . . DAI has become aware that your restaurant is using the term FOOTLONG(TM) in violation of DAI’s trademark rights.”

As TechDirt noted, “There are all sorts of problems with this.” DAI has only attempted to register a federal trademark in “footlong”; it hasn’t yet established that it has any rights to the mark. Immediately after DAI concedes in its own letter that DAI doesn’t yet hold the trademark, however, DAI invokes its “trademark rights” and accuses the hot dog vendor of violating those rights. Mind you, a federal trademark registration isn’t necessary to assert trademark rights, but “footlong” is a common term, and one which Coney Island Drive Inn has been using in its domain name since at least 2006, years before Subway’s “$5 Footlong” campaign took flight.

A separate issue is that DAI is asserting rights in the word “footlong” — a word which is almost certainly merely descriptive of the length of Subway’s sandwiches, and thus not registrable as a trademark (and if the photo above is to be believed, “footlong” doesn’t accurately describe every full-size Subway sandwich).

Even Subway conceded that they only sought to trademark “footlong” with regard to sandwiches, and hot dogs aren’t necessarily sandwiches.

(An aside: Subway is free to use the TM symbol in connection with “footlong” in its letter because the TM symbol may be used by any party which wishes to put other parties on notice that it asserts rights in a mark, regardless of whether its mark has been registered. The circle-R symbol is reserved solely for registered trademarks.)

Chik-fil-A got into the act this week as well, sending a cease and desist letter to a Florida produce stand named “Eat More Produce,” which Chick-fil-A’s counsel claims is “playing off of and imitating Chick-fil-A’s valuable Eat Mor Chikin Intellectual Property by using a domain name and trade name that are confusingly similar to Chick-fil-A’s.”

Arguing that “Eat More Produce” is “confusingly similar” will likely be a legal dead end for Chick-fil-A, as Eat More Produce is a produce stand, has a tomato as a logo, and doesn’t sell fried chicken sandwiches, meaning that the likelihood of any sort of consumer confusion between Eat More Produce and Chick-fil-A is basically nil.

We can assume that Chick-fil-A will additionally assert, though, that the use of “Eat More Produce” as a mark will result in trademark dilution. Under the doctrine of trademark dilution courts will allow holders of famous marks (and “Eat Mor Chikin” is certainly famous if you live in the South like I do) to enjoin uses of similar marks if the use of such similar marks would tend to lessen the association between the famous mark and the product or products which it advertises. Trademark dilution has a little more heft as a legal theory in these circumstances, but if I were representing Eat More Produce, I’d argue that the “Eat More Produce” mark is actually a parody of “Eat More Chikin,” since it serves to advertise (healthy) vegetables and implicitly mocks Chick-fil-A’s trade in (unhealthy, though delicious) fried chicken sandwiches, and is therefore potentially exempt under at least federal anti-dilution statutes.

For those of you who are not well-versed in trademark law and therefore inclined to conclude that these companies are completely nuts, they have merely gotten carried away in necessary efforts to do what’s known as trademark policing. In American trademark law, holders of trademark rights must consistently patrol the marketplace for infringement upon those rights and assert those rights against competing users — or risk losing them. It’s usually better to be overzealous in one’s policing than insufficiently aggressive, though overzealous policing may lead to enforcement actions which confound common sense.

Two bonus food-related trademark stories (what is it about this week?):

In Spain, the term “donut” is trademarked, so Dunkin Donuts is known as Dunkin Coffee.

A Pakistani restaurant across the street from the New York Times displeased the Gray Lady by changing its name to the Times Cafe and employing a certain famous font on its awning.

 

Milkcrate Athletics Files Trademark Suit Against Nike Over LeBron James’s Milkcrate-Themed Shoes

The humble milkcrate has a special place in the urban landscape. Nailed to a telephone pole, the milkcrate becomes a basketball hoop. Filled with vinyl records, the milkcrate becomes an essential component of a DJ rig.

Sturdy, useful, and poorly kept track of, milkcrates were routinely stolen from shopping center sidewalks before supermarkets wised up and stopped storing them outside.

Now Aaron LaCanfora, AKA DJ Aaron LaCrate, owner of a clothing company named Milkcrate Athletics (pictured), is accusing Nike of stealing his Milkcrate trademark.

LaCrate, an enterprising sort who has DJed for Lily Allen and peddles his own brand of Baltimore club music under the name B-More Gutter Music, has been operating an urban clothing line called Milkcrate Athletics since the 1990s, advertising the line with a logo of a milkcrate full of records.

Since 2007 or so, Nike has been manufacturing a line of shoes endorsed by superstar LeBron James featuring images of milkcrates and milkcrate-inspired details and soles (see Milkcrate Digest for images). Some of the shoes bear the legend “Milk Crate Technology.” Nike has also manufactured “Crate”-branded clothing, like these LeBron Crate Men’s Basketball Shorts. According to Nike, the milkcrate-related branding was inspired by James’s formative years playing basketball on a milkcrate hoop.

LaCrate’s trademark suit against Nike, filed today in the U.S. District Court for the Southern District of New York and made available on The Trademark Blog, asserts claims of trademark infringement and Lanham Act false designation of origin against Nike, arguing that Nike’s LeBron Milkcrate shoes and apparel are confusingly similar to Milkcrate Athletics shoes and apparel (in addition to his clothing line, LaCrate released a limited-edition Milkcrate shoe with Vans in 2006).

Does LaCrate have a LaCase? His federal trademark registration seems solid (he registered “Milkcrate” in connection with “clothing” in 2001 and in connection with “basketball sneakers” in 2009). However, as always, the fundamental question in trademark infringement analysis is whether there is a likelihood of confusion. Applying the factors set out in Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492, 495 (2d Cir. 1961) (factors include the strength of the plaintiff’s mark, the degree of similarity between the parties’ respective marks, and the existence of actual confusion), I think Nike has the advantage. The marks are similar and used on somewhat similar products, but the marks themselves just don’t look that much like each other. Nike’s products don’t use a drawing of a milkcrate, as LaCrate’s do; they use photographs of milkcrates or stylized criss-cross patterns, which suggests Nike is not using the milkcrate as a mark, but rather as a design element. When it does employ some variant of the word “milkcrate” as a mark, Nike generally uses the words “Milk Crate” or “Crate” rather than “Milkcrate,” suggesting the company has consciously attempted to avoid confusion with the Milkcrate trademark. If LaCrate’s suit makes it past summary judgment, LaCrate and Milkcrate will need to present the court with strong evidence of actual consumer confusion, usually obtained through consumer surveys, to persuade the court that an infringement has taken place.

If “Milkcrate” was a famous mark, LaCrate would have an easier time with a “dilution-by-blurring” claim under the Trademark Dilution Revision Act (“TDRA”) (see this post regarding Starbucks Corp. v. Wolfe’s Borough Coffee Inc., a recent Second Circuit case, for an example of TDRA analysis). I don’t think, though, that there is much of an argument to be made that Milkcrate is presently a famous mark.

In an interesting footnote for electronic music fans, LaCrate’s attorney in this matter, Gary Adelman, was one of the founders of the label Liquid Sky.

 

Craft Brewers Shun Product Name Dispute, Create “Collaboration not Litigation Ale”

In 2004, two craft brewers, Adam Avery of Avery Brewing of Colorado and Vinnie Cilurzo of Russian River Brewing of California, met at the Great American Beer Festival. Comparing notes about their respective product lines, they came to the uncomfortable realization that one of Avery’s beers shared the name “Salvation” with one of Cilurzo’s. Worse, both beers were Belgian ales — Avery’s Salvation is a Belgian golden ale and Russian River’s Salvation is a Belgian strong ale.

The two brewers found themselves on the brink of a product name dispute. Rather than calling in the lawyers, however, they drew upon their brewing talents to concoct a unique solution. Together, they set to work on a blend of the two Salvations. Cilurzo’s wife dubbed the blend “Collaboration Not Litigation Ale.” Two years later, the blend went into production as a seasonal brew.

Collaboration Not Litigation Ale, variously categorized as a Belgian strong ale or a Belgian brown ale, gets fairly high marks at RateBeer. At 8.97% ABV, however, lawyers with court in the morning might want to opt for something a little tamer.

While perusing the beer aisle in my local Whole Foods yesterday, I came across a fresh shipment of Collaboration Not Litigation Ale. As a conscientious lawyer, I was happy to see people avoid unnecessary litigation, and as a beer drinker, I was even happier to see that creative negotiation had brought more delicious beer into the world.

 

Burlesque Law News, Part I: Pussycat Dolls Tribute Acts Take Copyright and Trademark Dispute to Court

In burlesque-law news, a Seattle woman, Kristen Colliander, has sued her former employer, Goldberg Entertainment Inc., for whom she claims she created and developed “The Angels: A Pussycat Dolls Tribute.” (For those of you unfamiliar with mid-2000s pop-dance music, the Pussycat Dolls, per Wikipedia, are “an American pop girl group and dance ensemble founded by choreographer Robin Antin in 1995 as a burlesque troupe.”)

Colliander and Goldberg parted ways and are now competitors. Goldberg has continued to use the name “The Angels” for its PCD tribute act. Colliander, nonplussed, alleges that she holds a common-law trademark in the word “Angels” for the show, and that Goldberg is infringing not only upon that trademark, but upon her copyright in various promotional materials and on the “unique pseudonyms, images and likeness [sic]” allegedly created by Colliander for “The Angels.” She also alleges Lanham Act violations and violation of Washington’s right of publicity statute. We’ve made Colliander’s complaint available here. (Read more about the case at Seattle Trademark Lawyer and at Property, intangible.)

I’ve never looked into legal issues surrounding tribute acts, but asserting one’s intellectual property rights in material created in the process of performing another group’s songs while dressed up like that group is courageous, to say the least. However, there are indeed some distinct similarities in the two groups’ promotional material that might support Colliander’s allegations.

Colliander’s current PCD tribute group, the “Pussycat Angels,” is featured here on the website of Titan Entertainment. Goldberg Entertainment’s website advertises the Colliander-less “Angels” here.

A glance at both pages (see above) reveals that the “Pussycat Angels” and “Angels” logos are basically identical. The complaint alleges only common-law copyright infringement in what it describes as “Plaintiff’s ‘Angels’ common-law trademark” (see Complaint, p. 7.). However, the complaint doesn’t distinguish between a mark in the common word “Angels” and the more distinctive “Angels” logo used by both acts. Assuming Colliander created the “Angels” logo, a comparison of the logos at the very least suggests something is awry. (Additional trademark or unfair competition analysis would require information not provided in the complaint, such as whether Colliander has any evidence supporting a finding of a likelihood of confusion, or actual confusion, between the two groups due to the similarity of the marks.)

Additionally, Goldberg’s “Angels” are advertised as “[o]ne part dance. One part vocal chops. Mix well with personality plus, sexy costumes, and a band that rocks the house.” Colliander’s “Pussycat Angels” are advertised as, you guessed it, “[o]ne part dance. One part vocal chops. Mix well with personality plus, sexy costumes, and a band that rocks the house.”

If Colliander wrote the advertising copy, her copyright infringement claims might well survive a motion to dismiss. I would expect Goldberg Entertainment’s defense to focus on the extent to which there is evidence that, because Colliander was a Goldberg employee, her efforts were work for hire and therefore the property of Goldberg, not Colliander.

We’ll be bringing you more burlesque law news shortly. No, I am not kidding.

 

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 wordle.net, 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.

 

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.