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Tactical IP’s Latest Bully Award Nominations

jfischer1975 — Tue, 20 Oct 2009 21:10:45 +0000

For a couple of weeks now, Tactical IP has been putting together a list of companies that deserve recognition for their *outstanding* intellectual property enforcement efforts. Below is their latest list of "IP Bully of the Month" nominees. You can check out all the recent entries here. Feel free to comment on who you think deserves honors for the month.

The Sex Pistols — for demanding that London-based Icecreamists stop using its "God Save the Cream" advertising campaign for ice cream, which they allege is confusingly similar to the design of their "God Save the Queen" logo. Oddly enough, the pioneers of punk haven’t yet demanded that the Icecreamists stop selling its absinthe-flavored ice cream called "The Sex Pistol." (source)

Google Inc. — for demanding that independent software developer, Steve Kondik a/k/a Cyanogen, stop distributing his free software, CyanogenMOD, that greatly expands the functionality of Google’s Android smartphone operating system. (source)

The U.S. Olympic Committee (USOC) — for successfully requiring Olympic Meat Packers, Inc. to change its name to Olympia Meat Packers, Inc. after nearly 40 years of use. Congratulations! (source)

Texas Instruments (TI) — for sending cease-and-desist letters to TI-83 owners who hacked their calculators to run "unapproved operating systems," which added new functionality to the devices. TI claims that the Digital Millennium Copyright Act (DMCA) justifies their demands. (source)

The International Olympic Committee (IOC) — for sending a cease-and-desist letter to amateur photographer, Richard Giles, after finding roughly 300 pictures on Flickr, which were taken by Mr. Giles during his trip to the 2008 Beijing Games. (source)

And our “IP Bully of the Week” Award goes to…

jfischer1975 — Wed, 07 Oct 2009 09:30:04 +0000

Ralph Lauren — for sending DMCA take-down letters in an attempt to suppress some negative blog commentary about the photo below, e.g., comments like “Dude, her head’s bigger than her pelvis” (source).

You can read about what happened here and here.

UPDATE: Ralph Lauren has issued a statement, apologizing for the poor photoshop job. We’re still waiting for an apology about their DMCA abuses.

This story was originally published on The Tactical IP Blog.

The North Face claims that consumers don't know their heads from their asses

jfischer1975 — Sat, 03 Oct 2009 19:49:25 +0000

Clothing producer, The North Face (TNF), recently got a lesson in how bad trademark enforcement decisions can make a company look silly. It seems a St. Louis teen thought that it would be amusing to create a clothing line parody, calling it “The South Butt,” — south being the logical opposite of north and butt being… well… you get the idea. TNF was not amused, however, and they set their attorneys to attack mode, sending a cease and desist letter to the college freshman (source).

TNF’s letter asserted that use of the “South Butt” logo (pictured below) constitutes an infringement of their own federally registered trademark (pictured above). On its face, TNF’s claim is not so unreasonable. As any trademark owner (who has a decent attorney) can tell you, trademark rights can be lost if you don’t enforce them. TNF must, in order to maintain its ability to sue legitimate infringers, actively look for unauthorized uses of its logo. However, owning federal trademark rights does not mean you can stop every use of your mark that you don’t like. Federal trademark law was created to prevent consumers from becoming confused about the source of goods, not give complete exclusionary rights in logos, words, and phrases. It certainly wasn’t meant to give companies the power to stifle criticism — a point that corporate attorneys seem to frequently fail to explain to their clients.

In order to be actionable as an infringement, the South Butt logo must be likely to cause confusion in the minds of the consuming public. In other words, if “a moron in a hurry” would not be able to tell the difference between these two logos, then TNF could conceivably stop South Butt from using their logo. I think South Butt’s attorney states the issue with TNF’s claim pretty well:

I did try to explain with a great deal of candor to counsel for the North Face that the general public is aware of the difference between a face and a butt. (source)

The irony is that, as many other companies have learned in the past, over enforcing your trademark rights can have the exact opposite effect from the one that you intended. In this case, only a few people were even aware of the “South Butt” brand before TNF took any action. Presumably, TNF wanted to suppress this innocent gibe at their popular brand, but instead, they only managed to boost web traffic at shop.thesouthbutt.com.

This story was originally published on The Tactical IP Blog.

Confusion?… We don’t need no stinkin’ confusion!

jfischer1975 — Tue, 07 Apr 2009 16:00:21 +0000

The Wall Street Journal published a story about how Monster Cable was trying to bully the owners of a mom-and-pop business into changing their name. According to David Tognotti, Monster Cable’s general manager and an attorney, the company considers “Monster” a famous mark — on a par with Barbie dolls or Camel cigarettes, giving them the right to prevent an indoor mini golf establishment from calling itself “Monster Mini Golf.” (I guess Mr. Tognotti’s IP professor didn’t fill him in on how much success Mattel has had keeping people from using its “Barbie” trademark. See here and here.) He even cites to “McCarthy on Trademarks” as his authority. However, WSJ interviewed Professor McCarthy, who pointed out that federal courts get to decide which marks are famous, not general managers of stereo cable manufacturers.

Other ridiculous enforcement efforts, pursued by Monster Cable:

Monster Garage (a show on the Discovery Channel about modding cars and trucks)
Monster Energy Drink
Monster HTPC (a maker of high-end gaming PCs)
Snow Monsters (a kid’s skiing group)
MonsterVintage.com (a small used clothing store)
Monsters, Inc. (an animated feature film, produced by Pixar)
Monsters of the Midway (a nickname of the Chicago Bears football team)
Green Monster seats (taking their name from the left field wall at Fenway Park)
Monster.com (an employment website)

This story was originally published on The Legal Satyricon.