Owners, Borrowers & Thieves 2.0 : Husch Blackwell Sanders LLP : First Amendment, Commercial Speech

Coming soon to a blogoshpere near you . . .

As regular readers of this blog know, we have often used this space as a means to follow and comment on the continuing tension that results from trying to fit new technologies, new types of content and new content delivery systems into old paradigms of intellectual property law.  Sometimes it's copyright -- for example, YouTube's assault on (or defense behind) the DMCA;  sometimes its trademark -- for example, whether Google Keyword ads constitute trademark use for purposes of an infringement claim; sometimes it's even Comics!

Recently we've realized that our mutual interest in emerging technologies and how the law practice can adapt to a changing IP environment has been prompting us to adapt our blogging to fit our own new paradigm.  We're very excited about some changes that will be coming shortly, including adding a fresh new voice or two.

We hope we've been "fairly useful" (to borrow Professor Sag's great blog title) so far, and hope you'll check in regularly as we go forward.

Stay tuned . . .  

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Back from Comic-con. With comic-book litigation absorbing the majority of my time, it is sometimes easy to forget that not everyone sues to protect their intellectual property rights. Comic-con is a case study in the practicality of IP protection and enforcement. Just walking the exhibition floor, you can locate pirated and bootleg merchandise (just because the TV network or movie studio has not released material on DVD doesn't mean that you can sell a DVD version without obtaining rights).

Individuals and companies that own valuable intellectual property could spend all of their time and resources suing people who attempt to benefit from the goodwill associated with that property. Therefore, they need to pick and choose which thefts, misappropriations, and infringements they will attempt to stop. Sometimes, they will let obvious infringement go. A great example was just two blocks outside the Comic-con door.

Click on images to see full size menu.

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It has been a long time since my last posting. In part, this has been because I have been trying to get enough work off of my desk to attend Comic-Con International in San Diego. Now I am here, and it is a wonderful world of fair and not-so-fair uses of intellectual property. I'll have enough material to blog about for a month. As busy as it is keeping me, I'll keep this post short.

How about a bumper sticker. Can't get much shorter.

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No, that's not a headline from The Onion.

In a recent precedential opinion, the TTAB held that evidence from the immensely popular online encyclopedia Wikipedia can be admitted even though -- by its very nature -- such evidence may be unreliable.  See In re IP Carrier Consulting Group, TTAB, Serial No. 78542726 (June 18, 2007).   At issue were applications to register two trademarks: "ipPICS" for online image services and "ipPIPE" for communications services.  The PTO rejected both applications on the grounds that they were merely descriptive of the services provided.  In doing so, it relied in part on numerous online and print sources showing that the abbreviation "ip" was commonly used to refer to "Internet Providers" such as the applicant.  On appeal to the Board, the applicant cited Wikipedia's entry on "Internet Service Provider" to show that the most common abbreviation for Internet Provider was "ISP", not "IP."  The Board accepted and considered the Wikipedia evidence, but still affirmed the examiner's descriptiveness finding and refused the applications.

In the process, the Board spent some time discussing the relative merits of evidence from Wikipedia and other user-edited online sources and concluded that the fact that such sources may sometimes be unreliable does not make them automatically inadmissible, provided the non-moving party has an opportunity to introduce rebuttal evidence.

Does this make sense?  John Welch at the TTABlog doesn't think so.

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I am falling in love.  The object of my affection is the prose of a judge from the Seventh Circuit named Terrence T. Evans who seems equally at home in the worlds of jurisprudence, hip hop and baseball.  My infatuation began with Judge Evans' opinion in United States v. Murphy, 406 F.3d 857 (7th Cir. 2005), an otherwise run-of-the-mill drug case in which he famously paused to drop a footnote correcting the court reporter's misspelling of the term "ho":

The trial transcript quotes Ms. Hayden as saying Murphy called her a snitch bitch "hoe." A "hoe," of course, is a tool used for weeding and gardening. We think the court reporter, unfamiliar with rap music (perhaps thankfully so), misunderstood Hayden's response. We have taken the liberty of changing "hoe" to "ho," a staple of rap music vernacular as, for example, when Ludacris raps "You doin' ho activities with ho tendencies."

If that footnote doesn't make you swoon, check out his latest opinion, Central Manufacturing, Inc. v. George Brett, et al. -- a trademark infringement case in which the lead defendant is indeed THAT George Brett, now enshrined in the Baseball Hall of Fame.  The Gods of Serendipity sent the appeal to a panel that included Judge Evans, and the resulting opinion will surely please them.

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Eric Goldman's Technology & Marketing Law Blog offers an excellent analysis of the latest district court decision to weigh in on the question of whether the purchase of a Google keyword ad that uses a competitor's trademark or the use of that trademark in the defendant's metatags constitutes a trademark use "in commerce" under the Lanham Act (and the equivalent state trademark laws).  Better yet, Eric saves me from having to update Pete's update of my original post on the topic. This latest decision, FragranceNet.com, Inc. v. FragranceX.com, Inc., (E.D.N.Y. June 12, 2007), is the fourth one in a Second Circuit jurisdiction holding that buying a keyword ads is not a trademark use in commerce.  The lesson for would-be trademark plaintiffs: sue outside the Second Circuit.

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The rulings contained within District Judge Dean Pregerson's opinion dismissing Carol Burnett's lawsuit against Twentieth Century Fox could have been predicted the moment we heard about the case. If ever there were a textbook example of the "fair use" doctrine in copyright law and the "parody" exception in trademark and dilution law, this was it.

Burnett had sued over a short clip from Fox's animated television show, Family Guy. In the scene, Griffin family patriarch Peter Griffin and his pals visit a porn shop. Upon entering the store, Peter remarks that it is cleaner than he expected. One of his friends explains that "Carol Burnett works part time as a janitor."  The scene shifts to an animated figure resembling the Charwoman character from the Carol Burnett Show mopping the floor next to bin of life-size blow-up dolls and  a rack of XXX movies.  Judge Pregerson explains:

"As the 'Charwoman' mops, a slightly altered version of Carol's Theme from The Carol Burnett Show is playing.  The scene switches back to Peter and his friends.  One of the friends remarks, 'You know, when she tugged her ear at the end of that show, she was really saying goodnight to her mom.'  Another friend responds, 'I wonder what she tugged to say goodnight to her dad,' finishing with a comic's explanation, 'Oh!'"

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Geoff's musings over porn star names aroused, er, got me thinking about a related  "fair use" issue, namely, the porn industry's unauthorized use of slightly altered titles of famous motion pictures.  Such as On Golden Blonde.  Breakfast on Tiffany. Inspect Her Gadget.  And any on the Top Ten list compiled by BBspot, which begins, at #10, with Forrest Hump.

Each use is an obvious commercial attempt to cash in on the widespread awareness and recognition of the original title.  Each use is also an obvious commercial attempt to capture the prospective buyer's attention, to stand out in a crowd of titles.

But are these uses "fair uses"?

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Mike Kahn had a post recently about the growing split among courts in different Circuits regarding whether use of a competitor's trademark in metatags or keywords was a "use in commerce" under the Lanham Act.  Discussing a recent Northern District of California case that found such a use to be actionable, Mike argued persuasively that if the trademark does not appear in the sponsored link or anywhere else in relation to the competitor's products or services, it is not "used" as defined under the Act. 

Today a judge in the Eastern District of New York weighed in on Mike's side of the argument.  In Site Pro-1, Inc. v. Better Metal, LLC, No. 1:06-cv-06508, EDNY, May 9, 2007, the court found that the defendant's use of the plaintiff's trademark in both metatags and key words in a sponsored search on Yahoo! did not violate the Lanham Act because the trademark did not appear on the defendant's sponsored link, or website, or anywhere else in connection with any products or services offered by the defendant: 

"The key question is whether the defendant placed plaintiff's trademark on any goods, displays, containers, or advertisements, or used plaintiff's trademark in any way that indicates source or origin.  Here, there is no allegation that Better Metal did so, and therefore no Lanham Act "use" has been alleged.  Indeed, the search results submitted as an exhibit to the complaint make clear that Better Metal did not place plaintiff's SITE PRO 1 trademark on any of its goods, or any advertisements or displays associated with the sale of its goods.  Complaint, Ex. B.  Neither the link to Better Metal's website nor the surrounding text mentions SitePro1 or the SITE PRO 1 trademark.  The same is true with Better Metal's metadata, which is not displayed to consumers."

As with Mike's analogy to beer billboards near baseball stadiums in St. Louis and Milwaukee, the court found such use to be simply the latest version of side-by-side advertising.  Quoting another district court case from within the Second Circuit, Merck & Co., Inc. v. Mediplan Health Consulting, Inc., 431 F. Supp. 2d 425, 427 (SDNY 2006), the court concluded: 

" . . . this use is more akin to the product placement marketing strategy employed in retail stores, where, for example, a drug store places its generic products alongside similar national brand products to capitalize on the latter's name recognition.  The sponsored link marketing strategy is the electronic equivalent of product placement in a retail store."

Once you get past the initial reaction that use of one party's trademark to drive traffic to a competing website somehow just seems wrong, this holding makes sense and is more consistent with traditional trademark principles.  This reasoning has not yet taken hold outside of the Second Circuit, however, so for now, at least, the geographic divide on this issue continues. 

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In the strange new world of sponsored links and metatags, when does a "use of a trademark" qualify as a "trademark use."  Or, more precisely, where does a "use of a trademark" qualify as a 'trademark use"?  Not in New York, yes in New Jersey, Illinois and Minnesota.  And now yes, at least tentatively, in California. In Google Inc. v. American Blind & Wallpaper Factory, Inc., U.S. District Judge Jeremy Fogel of the Northern District of California confronted the "use" issue when Google moved for summary judgment seeking dismissal of American Blinds' trademark infringement claim, which arose out of Google's AdWords program,  Under that program, Google sold American Blinds' trademarks as keywords to competitors.  As a result, when a user typed in a search for "american blinds,"  that search term triggered a "sponsored link" to a competitor on Google's search results pages. But because the American Blinds trademark would not appear in the sponsored link or, for that matter, anywhere in the search results other than in connection with legal references to American Blinds products, the question was whether Google's use of the trademarks was in fact a trademark "use" under the Lanham Act.

The question is hardly academic, since a "use in commerce" is a jurisdictional prerequisite under the Lanham Act. And it is hardly a settled question, as Judge Fogel's opinion makes clear.

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