Keep fighting the good fight, Lamebook, so you can continue to remind us how funny ignorance can be.

This article was originally posted on The Legal Satyricon

As an example, when someone goes shopping for clothing, they are able to quickly pick out which garments are desirable, and which ones are not, simply by looking at the tag or emblem stitched on the left breast.  If you see a silhouette of a man riding on a horse and swinging a polo mallet, you immediately know something about the characteristics of that shirt, whether it’s from your own experience or from what you may have heard from other satisfied purchasers.  You know a little something about the quality and whether it falls into your intended price range – all without having to spend the time, effort, and expense of buying one of each brand of shirt and conducting your own comparative analysis.  You know, before even opening it, that when you take a sip from that can that has “Coca-Cola” printed on it, it will taste a certain way, and you likely made your purchase (or selected the one with “Pepsi” printed on it instead) based on that knowledge.

This special kind of nonverbal communication of information only works, however, if we let a single shirt maker to use the polo playing man silhouette.  If three different companies used the same symbol, no one would know which one is the good one and which one’s seams come undone after one washing.  This phenomenon is aptly named, in the parlance of trademark law, consumer confusion – where two or more companies use marks that are so similar that consumers have trouble associating a single producer with a particular product.  As a method of preserving the economic advantage embodied in this product/producer association, our federal government, and each state, has created a legal cause of action, which allows a producer to sue others who try to use her trademark in a way that creates consumer confusion.  It makes sense to put the job of enforcement into the hands of the parties whose interests are most closely aligned with the government’s, keeping the size of government down and minimizing taxpayer costs.  Toyota will be as motivated as the government, if not more, in preventing someone from selling lemons with a rounded “T” symbol on them.

The only potential problem with this enforcement schema is that some producers, usually because they are not informed, misunderstand the purpose of trademarks and try suing anyone who uses their mark, even when there is little or no danger for consumer confusion.  Usually, those mark owners believe that they “own” a particular word that they’ve used as a trademark, such that they can prevent the whole world from using that word without their permission.  This perception of trademark ownership, while completely incorrect, is unfortunately held by many.  As a result, many a demand letter is sent to an unhappy customer who wrote about their unpleasant experience with a particular company, for example, on their Facebook or Twitter page.  Preventing criticism couldn’t be further from the intended goal of trademark law, and many companies find out the hard way that trying to use your trademark rights to silence an unfavorable review only draws attention to a bad customer experience – one which is likely an anomaly.

As an entrepreneur, registering and enforcing your trademarks can be an incredibly powerful way of building your brand and, as a result, your business.  Just be careful to keep in mind the real reason why the government has given you the power to sue and try to use an attorney who is experienced in these matters, who can help you see the unintended consequences of filing an infringement suit.

This article was originally published on The Tactical IP Blog.

This 2 hour seminar will examine social attitudes toward law, lawyers, and legal institutions through the viewing and examination of Hollywood films.  Film depictions of law students, juries, and judges will also be considered.  Each seminar session will focus in as much depth as possible on a particular film or films and a particular problem or aspect of law, law practice, ethics, or the image and status of the lawyer in American culture raised by the film(s).  The majority of the films will be viewed outside the classroom and will be considered as texts providing contemporary depictions of the subject matter to be examined in class.  In addition, readings will be assigned for each film and will form the basis for class discussion.  The films will be reserved in the library.  This will be a paper course which may be used to satisfy the Upper Level Writing Requirement.

My understanding is that this course is just another excuse for chicks in law school to watch Legally Blonde (2001) for the 4,821st time.  What a great way to spend your tuition dollars at a professional school!

Normally, I’m not the one in this forum to bitch about the state of legal education.  Marco & Co. do it regularly enough that I don’t have to.  (See here, here, and here.)  On the whole, my law school experience was a good one.  I took as much advantage of our externship program as I could, and I went out of my way to take classes from adjunct professors who I knew actually practiced what they were preaching.  What I object to is courses that have students watch reruns of “L.A. Law” (1986), or other fictional portrayals, as a means for teaching about the practice of law.  Aren’t there other subjects that could be presented that have more merit?

One subject jumps quickly to my mind, and regular readers of this blog will recognize it immediately.  I would call it “Streisand 101,” taking its name from actress and singer, Barbara Streisand, who effectively demonstrated that simply filing a lawsuit can bring about the exact opposite result from what you hoped to achieve.  It would be a skills course, aimed at training young lawyers to talk their clients down from filing certain kinds of lawsuits — the kind that end up splashed all over blogs like this one, fueling negative publicity for the client.  The intent would be to teach how to 1) determine the unintended consequences of a particular cause of action; and 2) effectively communicate those consequences to the client, giving them the opportunity to back away before doing any real damage.  The primary pedagogical tools would be roll playing and reviewing news stories about past P.R. blunders.

Finding great teaching examples would be about as challenging as falling off of a log.  Just this week, outdoor clothing maker, The North Face (TNF), is in the news again, moving forward with their lawsuit against The South Butt (TSB).  (You can find my previous coverage of the case here.)  Before TNF filed their lawsuit, TSB had a whopping $5,000 in gross sales — after months of being in business.  Now, TSB’s selling that much every hour.  Their attorney claims that, with 14 new employees, TSB has created more jobs in its home state than the Obama’s $800 billion stimulus plan.  (Source.)

The only downside that I see to so educating the next crop of attorneys is that a huge source of entertainment will be snuffed out.  What will we read about for fun when Micheal Jordan’s attorney convinces him not to sue the people who congratulate him?

This article was originally published on The Legal Satyricon

The bottom line is that you can’t sue anyone for “stealing your idea” or “taking that movie plot you thought of.”  This concept is hard for some to grasp, and every so often, a big player in the IP world may take advantage of this common misunderstanding.  While perusing sites that sell graphic tees (one of my favorite forms of communication – e.g., here, here, or here), I came across an example of this that I think is worth sharing.

It seems that Ian Bogost, a video game professional, associate professor, blogger, and amateur t-shirt designer, decided that it would be clever to put a Spanish phrase, “Por favor manténgase alejado de las puertas,” on a t-shirt, adjacent to various theme park graphics.  If you’ve spent any time in a Disney theme park, you may recognize the foreign equivalent for “Please stand clear of doors,” which can be heard over and over on the monorail, as the automated recording paternally berates passengers.

When Mr. Bogost put his t-shirts up for sale on Zazzle, one of his designs was quickly yanked from the virtual shelves.  He was told that it was due to copyright infringement.  The response to his requests for additional information came as follows:

The Disney castle concept is the protected intellectual property of Disney Inc. and may not be used on Zazzle products without permission, regardless of who the original artist or photographer may be.  We are sorry for any inconveniences this may have caused. (Source.)

The above statement is legally incorrect.  Disney may have several registered copyrights in various depictions of a castle.  They more than likely have multiple trademark registrations that include a castle design.  They may even own the copyright in the architectural plans that were used to construct the castles that appear in their theme parks.  But no one owns the concept of a castle.  It is free for all the world to use.

Now, as an attorney, I have a duty to qualify that last statement.  While the concept of a castle may be free for all the world to use, you will want to consider your risk tolerance when you do so.  If you draw your own castle, and it looks too much like the Disney castle, they can certainly accuse you of copyright infringement – and when I say “accuse,” I mean “sue.”  They may not win, but they can certainly make life rough for you until they lose.  Disney can also “accuse” you of trademark infringement, or more likely, trademark dilution.

My guess here is that Zazzle got some communication from Disney, which threatened all of these causes of action, if Zazzle didn’t remove Mr. Bogost’s t-shirt design.  More than likely, Disney used some language that wasn’t quite so questionable, and Zazzle either misunderstood or misquoted them in responding to Mr. Bogost.  Could be that Zazzle has had a previous run in with Disney, over a completely different t-shirt design, and Zazzle has taken a proactive approach to avoiding similar disputes in the future.  Either way, that company’s not going to stick its neck out on Mr. Bogost’s account – it just doesn’t make business sense to do such a thing.  And Disney knows this.  As a result, they succeed in asserting that they own the “concept” of a castle – a dubious claim at best, from an academic perspective.

The article was originally posted on The Tactical IP Blog

This post was originally published on The Tactical IP Blog.

The Back Story

Most will probably remember that there was an annoying pop song, which was recorded back in the 90′s, called “Barbie Girl.”  The group Aqua‘s single claim to fame was a huge success, despite being about as appealing to listen to as nails on a chalkboard — don’t let the number of stars assigned to this YouTube clip fool you.

If anything, I have to admit that I find the song amusing, and unlike 2 Live Crew’s “Pretty Woman,” I can believe that Aqua actually created the song to poke fun at the materialistic nature of Mattel’s Barbie franchise, instead of coming up with that justification after a lawsuit has been filed.  True to form in those days, Mattel was not amused with Aqua’s parody, and decided to do what it always did back then… file an infringement lawsuit.  While the case was pending, a Mattel spokesperson went on record, criticizing the defendants for not respecting their intellectual property rights, which of course spurred a defamation counterclaim.

The trial court made short work of both sides’ allegations, dismissing all with a summary judgment.  The court determined that the Aqua song incorporated Mattel’s trademark as a means of identifying Mattel, not to unfairly compete with the toy company.  That’s fair use.

Everyone appeals, hilarity ensues

Hon. Judge Kozinski (who is probably better known for more recent events) sets the tone for his now-famous opinion in the first line:  “If this were a sci-fi melodrama, it might be called Speech-Zilla meets Trademark Kong.”  From there, he explores a brief history of the Barbie doll’s origins as an adult toy, modeled after a German hooker — something I’m sure that Mattel would rather not have reported on.  Moving on to an expert legal analysis of the balance between the First Amendment and intellectual property rights, Kozinski concludes by boiling down the defamation claim as unsustainable:

MCA filed a counterclaim for defamation based on the Mattel representative’s use of the words “bank robber,” “heist,” “crime” and “theft.”  But all of these are variants of the invective most often hurled at accused infringers, namely “piracy.”  No one hearing this accusation understands intellectual property owners to be saying that infringers are nautical cutthroats with eyepatches and peg legs who board galleons to plunder cargo.  In context, all these terms are nonactionable “rhetorical hyperbole,” Gilbrook v. City of Westminster, 177 F.3d 839, 863 (9th Cir. 1999).  The parties are advised to chill.

Mattel slunk away, licking the wounds of its latest intellectual property litigation defeat.  For the next several years, it appeared as if they had not learned their lesson (see, e.g., here, here, here, and here).  However, yesterday morning, the doll maker launched an ad campaign that demonstrates that they may have finally hired a decent attorney who gives better advice grown up.  (source)