Fart.  Fart.  Fart.  It’s not often a lawyer gets to use that word in a courtroom once, let alone repeatedly.  But sometimes the practice of law in these modern times lends itself to some unusual—dare I say fun?—cases that are not your traditional fare.  Or perhaps I should say, “iFart,” which is a bit more apropos here.  

Flatulence—or more specifically, fart noises—is apparently big business in software today, especially for the iPhone.  Who knew?  And this story underscores the lengths that some companies will go to protect their trademarks and brands in this digital age.  It seems that two companies which make competing “flatulence noise simulation software” for the iPhone have gotten themselves into a bit of a, uh, legal stink. 

InfoMedia, which makes “iFart Mobile,” a popular novelty application for the iPhone, has filed for a declaratory judgment in a Colorado district court against Air-O-Matic (”AOM”), which makes “Pull My Finger,” a competing application which was apparently the leading fart simulation software before iFart, uh, exploded onto the scene.  A copy of the complaint can be viewed here.  I, for one, had no idea that digital fart simulation technology had advanced so rapidly.

AOM filed for a trademark on the term “Pull My Finger” at the Patent and Trademark Office (”PTO”) in December of 2008.  The application is pending.  InfoMedia alleges in its complaint that its use of the term “pull my finger” in its advertising and other marketing constitutes a “fair use” under trademark law and does not and will not infringe upon any of AOM’s trademark rights.   It also wants the court to declare that “Pull My Finger” is a “descriptive” phrase and therefore doesn’t qualify for protection.

According to letters and e-mails between the parties, in addition to using “pull my finger” in press releases, AOM has also accused InfoMedia of posting a YouTube video prominently using the term, posting false negative reviews and testimonials of “Pull My Finger” (while extolling the virtues of iFart), and spamming AOM customers on Twitter with ads for iFart.  While I’m not exactly sure what makes one fart application better than another—and my expertise is strictly limited to my own personal experiences with flatulence—these differences are apparently quite significant.

So what did InfoMedia do?  Exactly what it should have.  It beat AOM to the punch and filed for a declaratory judgment in its home state of Colorado.  Even though AOM is located in Florida, it now has to defend itself in a Colorado court.  That’s not necessarily a bad thing, but InfoMedia now has the “home field” advantage and AOM doesn’t have the option of suing in Florida.  It now has to find a Colorado law firm.

I’ve only seen InfoMedia’s complaint and attachments and not AOM’s response, so I’ll reserve my opinion on the case’s merits.  Trademark law can be quite complex anyway, and intellectual property cases in general can turn on factual or legal nuances.  If, however, this case was only about InfoMedia using “pull my finger” descriptively in some of its press releases, then it would probably have a strong case that it didn’t infringe. 

But if InfoMedia kept using “Pull My Finger” in fake testimonials and reviews and ran a deceptive ad campaign on Twitter, than AOM’s claim could be stronger.   As noted by AOM’s counsel:  “InfoMedia’s efforts have been directing at merging Pull My Finger and iFart in the consumers’ minds, so that searches for Pull My Finger pull up the iFart application.”

Of course, all of this depends upon whether or not the court finds “Pull My Finger” to be protectable.  InfoMedia has alleged that the term is “descriptive” and doesn’t qualify for registration.  So what does descriptive mean?  According to the PTO’s Trademark Manual of Examining Procedure:  “A mark is considered merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services.”

InfoMedia correctly notes in its complaint—and cites that most revered of internet sources, Wikipedia—that the term “pull my finger” is synonymous with flatulence.  The company is essentially alleging, among other things, that the term merely describes the function or feature of AOM’s software. 

So is “Pull My Finger” descriptive?  It’s hard to say.  The PTO notes that the ”great variation in facts from case to case prevents the formulation of specific rules for specific fact situations.  Each case must be decided on its own merits.”  Translation:  The court will have to make the call after carefully considering all of the flatulence-related evidence.

If the term is found to be descriptive, AOM would then have to show that the phrase has acquired “secondary meaning” in order to get it registered.  Secondary meaning is defined as “proof that [the mark] has become distinctive as applied to the applicant’s goods or services in commerce.”  In other words, ”it must be shown that the primary significance of the term in the minds of the consuming public is not the product but the producer.” 

Thus, AOM would have to show that customers primarily associate the term, “Pull My Finger,” with AOM and not just with the application itself.  This isn’t easy to do, especially if a product just entered the marketplace and hasn’t been in use for a long period of time, and been extensively marketed and advertised. 

So we’ll have to wait and see what happens.  The parties may very well settle and not take the risk that litigation often entails—somebody’s got to lose, after all.  I hope they don’t settle, though.  I would love to read a court opining on flatulence and fart noises.  It would be quite entertaining.  You know, a real gas.

When I first heard about the Associated Press (”AP”) accusing Shepard Fairey, the artist who created the ubiquitous red and blue Obama poster emblazened with the word “HOPE,” for copyright infringement, the first thing I thought of was “fair use,” most notably the concept called “transformative use.”  The AP alleged that Fairey infringed its photograph of Obama when he developed his poster.

Then I read the story shortly thereafter about Fairey filing a “declaratory judgment” lawsuit in New York asking a federal court in Manhattan to “declare” that he was not infringing the AP’s photograph.  Fairey doesn’t deny that he based the painting on the photograph, but claims that it was a fair use, which is a defense against copyright infringement. 

Although I haven’t had a chance to read the complaint yet, transformative use is the principal part of Fairey’s defense.  And it’s a meritorious one that will make for an interesting legal analysis—assuming the case gets that far.  So what is “transformative use” exactly?  The Supreme Court addressed this issue most recently in Campbell v. Acuff-Rose Music, Inc. in 1994.  The Court described a transformative use as follows:

The enquiry here may be guided by . . . looking to whether the use is for criticism, or comment, or news reporting, and the like. The central purpose of this investigation is to see . . . whether the new work merely “supersede[s] the objects” of the original creation or instead adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message; it asks, in other words, whether and to what extent the new work is “transformative.”  Although such transformative use is not absolutely necessary for a finding of fair use, the goal of copyright, to promote science and the arts, is generally furthered by the creation of transformative works. . . . and the more transformative the new work, the less will be the significance of other factors, like commercialism, that may weigh against a finding of fair use.  (emphasis added)

So the court will be focusing on to what extent Fairey’s painting adds something new to the original AP photograph, i.e., its “expression, meaning, or message” and thereby “transforms” it.  While a fair use analysis can be quite lengthy and complicated (and is very fact-specific), Fairey will certainly be able to make a credible argument that his colorful and abstract painting combined with the word “HOPE” alters and transforms the photograph’s meaning or message. 

In fact, it’s unclear to me exactly what message the original photograph would be communicating by itself.  Is Obama looking confident?  Reflective?  Poised?  Attentive?  Presidential?  It’s somewhat subjective and it will be interesting to see how the AP characterizes the picture’s message.  It’s really more a question of opinion, which works strongly in Fairey’s favor.  (And what does “hope” consist of anyway?)  So Fairey has a strong defense in this regard.  But one thing that I learned about litigation over the past 15 years or so is that it’s a very fluid and dynamic environment and can change rapidly.  Unforeseen things happen.

So in practical terms, what’s the lesson to be learned here?  Here’s the basic one:  Contacting a party or sending a cease and desist letter can be risky business sometimes.  In any type of infringement action—whether it’s patent, trademark, or copyright—notifying the other side that you believe it’s infringing on your intellectual property rights gives them the ability to go running into federal court and seek declaratory relief.  After all, you’ve just told them that a problem exists.

Your notification to them of possible infringement creates what’s called a “justiciable controversy” and can give them the ability and standing to go into court to seek a declaration that they’re not infringing, just as Fairey has done.  Of course, each federal circuit has its own rules as to what creates a justiciable controversy, so Massachusetts may use a different standard than another state—although the standards will usually not differ all that much.

So why is this a problem?  If you’re located in Boston, Massachusetts and the possible infringer is located in California, that party can now go into a federal court in California and file its action and get the “home field” advantage.  The court would very likely have jurisdiction over you.  So in addition to now having to hire counsel in California to defend yourself, you would also be forced to go there to give and take depositions and engage in other forms of “discovery.”  It can be very incovenient and expensive.  That’s the point.

This is why whenever somebody contacts me about either sending a cease and desist letter or is the recipient of one, it’s crucial to really sit down and strategize as to what your next move should be.  If litigation is a probable outcome and you’re dealing with a well-financed adversary, then it may be best to strike first and file an action in your home state where it would be most convenient for you.  (It’s been my experience, however, that many clients—especially those who have never been through the litigation process before—are somewhat leery of filing litigation first given its potential expense and duration.) 

Of course, these are general guidelines only and each situation will have its own facts and nuances that will dictate how best to proceed.  The practice of law doesn’t usually lend itself to easy answers, particularly where issues of infringement are concerned.  Many factors need to be taken into consideration.

So, Fairey did the smart thing.  Rather than wait and let the AP sue him—especially given the meritoriousness of his case—he struck first.  It will be interesting to see how things develop.  And it’s always possible that the case will settle before the court has a chance to rule.  In many instances, filing an action such as this is simply designed to show the other side that a person is serious about protecting his/her rights and that a compromise might be in everyone’s best interest.  But Fairey has a strong case.  We’ll have to wait and see.

Does the flood of information ever end?  Do we have to know everything about everyone—in real time?  While location-tracking software is not new (well, not too new, anyway), Google’s expected move into this market only further reinforces Scott McNealy’s eerily prophetic saying, “You have zero privacy anyway.  Get over it.”  But now when you “get over it,” all of your friends will be able to see exactly where you were and when.

Google just launched its Latitude software that lets mobile phone users share their mapped location with their network of contacts—if they so choose.  This is nothing new, per se, given the existence of other companies such as Loopt, BrightKite, and Dopplr (for example), as well as most people’s familiarity with GPS, but Google’s entry into the marketplace provides further evidence that the technology is becoming even more widespread.  Maybe too much so.  But when the 800 pound gorilla talks, everyone listens.

According to the article, Google “hopes it will help people find each other while out and about and keep track of loved ones.”  Those are helpful and noble intentions.  What parents wouldn’t want to know where their teenagers are?  Or be able to direct a lost friend to your precise location?  But hope is a fickle thing.  And what Google hopes for and how Latitude will actually be used are two entirely different things.  We all know what the road to hell is paved with.  Lawyers make their living off of it (more on that in a moment).

Google requires that people expressly sign-up for the service and gives them the opportunity to tailor their preferences as to who they can share their location with, as well as the type of information shared.  While that gives the user some degree of control, it’s probably only a matter of time before a bored 16 year-old in hacks into the system and tracks people. 

Even if this doesn’t occur anytime soon, a disgruntled ex-husband may be able to track his ex-wife who forgot to take him out of her “network.”  While entire companies have sprung-up offering this type of GPS-based (and typically illegal) service, now a person can do so without any special equipment whatsoever.  Just a little bit of software and a forgetful spouse.  It goes without saying that stalking is a very real problem in this digital age and tools that used to be available only to law enforcement are becoming increasingly more common.

The fact that such software is even available is part of the larger privacy debate that will be with us for quite some time.  There are no easy answers in a society that never seems to have enough information about others.  Yet from a litigation perspective, few people may realize that all of this location data is stored by a provider for varying degrees of time and subject to subpoena and disclosure in the proper circumstances. 

Thus, in criminal or civil cases where a person’s time and location is an issue, it provides yet one more tool for lawyers to pursue when representing their clients.  Just ask those divorce attorneys in Massachusetts and elsewhere about getting all of that “E-Z Pass” toll information to discover cheating spouses.  Modern convenience has its costs.

So the age old Perry Mason question, “Where were you on February 4, 2009?” now becomes, “Why were you on the corner of 53rd and 7th Avenue at 3:12 p.m. on February 4, 2009?”  And while it may—may—help lawyers such as myself get to the truth faster in a courtroom, the human part of me (and yes, that still exists) finds it it to be unsettling.  So bad grammar aside, the question, ”Where you at?” now becomes, “Why you there?”  Ah technology . . . .

As any of my clients will tell you, I’m not a fan of arbitration for many reasons, which I detail here and here.  One of the reasons is the biases of the arbitrators that can creep into the process—sometimes subtly, sometimes not.  According to a study just released by three law school professors, they found that arbitration awards in securities cases were 7.5% lower when the arbitration panels were composed of attorneys who also represented brokers and brokerage firms.

The authors studied over 6,700 awards from the Financial Industry Regulatory Authority (”FINRA”) (which was formerly known as the National Association of Securities Dealers).  FINRA has apparently come under fire in the past for using arbitrators with potential conflicts-of-interest due to their brokerage ties.  According to the study, over 82% of the arbitrators were attorneys.

7.5% might not sound like a big deal, but if an investor is awarded $1 million, that extra $75,000 sure helps to pay attorney’s fees and other costs.  And bias is bias any way you look at it.  But this is hardly surprising and nothing new.  In one of my articles, I talk about the favoritism that arbitrators can show one side or the other, depending upon their background and how they’re chosen.

The important thing to glean from this article, which applies to ANY type of arbitration no matter what the type or size of the claim, is that the “background of the arbitrators matters to the outcome.”  When you have a choice in the matter, make sure that you or your attorney carefully consider the backround of any potential arbitrator.  (Actually, if you have a choice in the matter—which many contracts these days don’t give you—litigation really may be the best option sometimes, as painful as it sounds.  It depends on the circumstances.) 

For example, when possible, I generally like to choose former judges as arbitrators and typically (but not always) steer clear of other attorneys.  First, many judges, depending upon how long they were on the bench and on the court upon which they sat, have a paper trail that allows you to take a look at their past decisions to get a sense of how they may have decided issues germane to your case, as well as their judicial temperments.  Most lawyers don’t have such a trail.  

Second, judges are trained to be fair to both sides.  Lawyers are trained to be advocates for one side.  Even though they may undergo training to be arbitrators, lawyers are inherently advocates.  After all, are you hiring your lawyer to be fair to the other side or to zealously represent your interests?  This is why the study didn’t really reach any groundbreaking conclusions as far as I’m concerned, i.e. lawyers that represent brokers as clients favor them as arbitrators.

Finally, judges are often put in the position of having to make unpopular decisions.  They know that someone will almost always be unhappy.  Over time, they’ve typically developed a thicker skin so they may be more willing to make the tough call.  This isn’t always the case, but all judges recognize that being unpopular comes with the job.  I like to believe that even after they leave the bench and join the world of alternative dispute resolution, they keep some of these important characteristics.  But there are always exceptions, too.  Former judges have to make a living also.  They need to be vetted like anyone else.

Of course, as mentioned above, all of this depends upon whether you have a choice in the matter.  Depending upon the arbitration clause, you may be robbed of this as well.  Still, knowledge is power and as this study concluded, bias is an ever-present problem in arbitration.  So I try to avoid it when I can.  Does that make me biased?