THResq points us to a fun, but thorough, law journal article by law student Benjamin Arrow, looking at whether or not Duff Beer, from the Simpsons, is protectable as a trademark in the real world (or you can go directly to the paper) (pdf). The analysis is actually more complex than you would think, noting that as you shift from the fictional world of the Simpsons to the real world of beer production, the issue switches from being a trademark issue to a copyright issue, where the beer is a form of a derivative work on the copyrighted expression known as the cartoon of Duff Beer.

Fox and The Simpsons’ creator, Matt Groening, developed the
idea for the fictional brand, Duff. Therefore, when a real-world
manufacturer puts out a product by the same name, one might
think that it has stolen Fox’s idea and that, as a matter of equity,
intellectual property law ought to furnish a remedy. But
intellectual property law does not protect ideas in the abstract.
While a real-world Duff manufacturer may have taken more than
just an idea, it is difficult to articulate how much more. Part of the
reason it is so difficult to conceptualize the injury Fox suffers
when another producer introduces a Duff Beer to the marketplace
stems from the fact that Duff Beer is a fictional product sold in a
fictional universe under a fictional brand name. Fox’s injury looks
very different when we suspend our disbelief and plunge into the
fictional world of Springfield, accepting the fictional reality as our
own and when we pull back, remind ourselves that The Simpsons is
nothing more than a cartoon and view Duff Beer as one element of
a vividly imagined work of animated fiction. As a consequence of
this puzzle of perspective, Fox suffers a different intellectual
property injury depending on our vantage point.

An analogy to Internet law helps explicate the puzzle. Writing
on the problem of perspective in this area of the law, Professor
Orin Kerr posits that “whenever we apply law to the Internet, we
must first decide whether to apply the law to the facts as seen from
the viewpoint of physical reality or virtual reality.” Kerr terms
the perspective from inside virtual reality the “‘internal
perspective’ of the Internet” and the point of view of an “outsider
concerned with the functioning of the network in the physical
world rather than the perceptions of a user” the “external
perspective.” In attempting to apply law to the Internet, our
perception of who is doing what to whom is not a mere cognitive
tool for conceptualizing difficult problems, Kerr contends.
Instead, our selection of perspective is itself outcome
determinative, because “[b]y choosing the perspective, we choose
the reality; by choosing the reality, we choose the facts; and by
choosing the facts, we choose the law.” While Kerr suggests
that courts may dismiss this problem of perspective as “a minor
skirmish in the ‘battle of analogies,’” he notes that courts “already
choose perspectives when they apply law to the Internet” without
realizing it.

While this may just seem like a fun, little intellectual query, the second paragraph above highlights why it’s actually pretty important. For nearly a decade, we’ve been pointing out the problems that occur when you take laws from the real world and pretend you can just apply them naturally into a virtual world. The same thing applies here to some extent. In this case, it’s resolved via copyright law, since the creation of Duff Beer may be protectable under copyright in the real world, and any such beer would be derivative. Trademark, on the other hand, which would apply in the fictional world, does not apply in the real world, since there’s no real “use in commerce” of a product known as Duff Beer.

Either way, the paper is a fun read, and actually raises a series of issues that are important and worth thinking about when discussing how the real world law applies on the internet in general and in wider “virtual” worlds.

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Techdirt Mike Masnick

Boston can be a sleepy little legal community at times.  And a good trademark case isn’t likely to wake-up too many lawyers, but I took notice when I saw this story about an interesting trademark case (well, interesting to me at least) taking shape in Washington, D.C. involving a 60 year old Massachusetts non-profit corporation.

Apparently, The American Legion (“TAL”), which owns a trademark in the term “The American Legion,” has decided to sue The Greek-American Legion of Massachusetts, Inc. (“TGALM”) in the D.C. federal district court (where TAL is based) alleging infringement over TGALM’s use of the mark.  According to the complaint, TAL contacted TGALM several times in 2010 about its use of the mark, but the parties were unable to reach a resolution.  So naturally TAL eventually filed suit in D.C. (thereby robbing TGALM of the opportunity it had to at least file suit in its home turf of Massachusetts).  Such is often the danger of a tit-for-tat exchange when the opposing party is located in a different state.

Anyway, what makes the case interesting is that TAL has an exclusive statutory right under  36 U.S.C. 21705 to use The American Legion name, which it has been using since 1919—a long time, to be sure.  However, TGALM has, according to records at the Secretary of the Commonwealth’s office, been in existence in Massachusetts since 1946 and has (presumably) been using its name continuously during that time.  Interestingly, that little tidbit didn’t make into TAL’s complaint.  The omission wasn’t accidental.

Obviously, given that this is a blog post only, I haven’t researched the specifics of the case and the statute upon which TAL relies (and when it passed), but it sure seems to me that TAL is awfully late to the party to now contest TGALM’s use of The American Legion mark.  I can easily see how it could take a few years in some circumstances for a trademark holder to become aware of another user of its mark, but over 60 years?  Someone at TAL wasn’t doing their job—to put it mildly—to police the mark’s use.  And even though one of TAL’s main registrations didn’t issue from the USPTO until 2000, it has used the mark since 1919.  (And why the long delay in registering it anyway?)

Even a basic trademark search report, which typically culls over the names of companies registered in all 50 states, should have picked-up on the mark a long time ago.  Did TAL ever do one?  Even a free search in various online search engines might have picked-up on the mark.  Has anyone at TAL ever used—what’s that little search engine called again—oh yeah … Google?  Somebody at TAL was asleep for a long time. 

The point is this:  Notwithstanding TAL’s claim to exclusive statutory use, no right is absolute and there may be strong defenses available to TGALM such as waiver, estoppel, and laches.  Laches in particular may be a strong argument.  Laches is a defense that amounts to unreasonable delay by a plaintiff in bringing suit and pursuing a claim such that it significantly prejudices the other party.  In trademark law, if the other party has built a substantial amount of goodwill in its mark, then the plaintiff may be out of luck because it sat on its hands for too long. 

And after 60 years of TGALM using its own name, I think it’s reasonable to conclude that it built a great deal of goodwill in the name of its organization.  Even if TAL only recently became aware of TGALM, the question is whether it should have known about the organization much sooner.  Besides, TAL would still have to show “likelihood of confusion” and it would be interesting to see if there was any evidence of actual confusion given the long co-existence of the two organizations—some courts do look at that factor.  It will be interesting to see if TGALM will be forced to change its name by the district court.  Unless of course there’s some type of confidential settlement.  That would just be a bummer to trademark geeks like me.

In Deutsche Steinzeug Cremer & Breuer AG v OHIM, the General Court has upheld a decision of the Fourth Board of Appeal finding that the word mark CHROMA was descriptive. Among other things, the court found that a faithful transcription of the Greek word ‘colour’ in letters of the Latin alphabet, which is known by the Greek-speaking consumers concerned, was capable of being immediately grasped by these consumers.

World Trademark Review World Trademark Review

In Masters v UHS of Delaware Inc, the US Court of Appeals for the Eighth Circuit has affirmed the district court’s verdict of $2.4 million in favour of plaintiff Mary Masters on her claims of trademark infringement of the mark MASTERS AND JOHNSON. Among other things, the Eighth Circuit found that proof of actual confusion was not necessary to sustain monetary relief.

World Trademark Review World Trademark Review

Last summer, when I read about the Susan G. Komen Foundation’s aggressive enforcement efforts against other charities to protect its “FOR THE CURE” trademark used in breast cancer research, I thought back then that it could be problematic for the company.  Not necessarily from a legal perspective, but from a public relations one.  And that’s extremely important to keep in mind, because the sorts of issues the Komen Foundation are facing now are the things that keep trademark lawyers up at night.  And when I read about the Foundation’s continued efforts last month, the story wasn’t going to die so quickly.  Such is the nature of the internet.

Before you condemn the Komen Foundation, keep in mind that what’s smart from a legal perspective isn’t always the best PR strategy.  The 2 areas can at times be mutually exclusive.  I’ve had several instances over the years when advising clients that the way in which they’re using their trademarks could be problematic—just think back to trademarks that have become generic such as escalator, aspirin, and cellophane—to understand what I mean. 

The companies which owned those marks failed to police and enforce the ways they were being used (both internally and by others), only to have the marks enter the English lexicon and become unprotectable.  Remember, it’s not VELCRO, but VELCRO brand hook-and-loop fastener.  So it’s not unusual for friction to exist between a company’s legal department and its marketing department, let alone its PR department.  What makes sense legally sometimes translates into a poor PR strategy.  And there’s no easy fix. 

Just ask North Face when it pursued a teenager a couple of years ago who sold a line of clothing called “SOUTH BUTT.”  North Face’s cease-and-desist letter not only circulated throughout cyberspace, but as a result of the company’s enforcement efforts, the story garnered a great deal of media coverage—with the theme being that a big, bad company was “bullying” a teenage entrepreneur.  He garnered a lot of public support and sold a lot of clothes.  North Face eventually settled with him.  Like I said, it’s these sorts of stories that keep trademark lawyers up at night.  You’re damned if you do and damned if you don’t.

The Komen Foundation must—not should, may, or could—but must police the use of its trademark by others or else it risks losing rights in it.  That’s a legal question not open for debate.  And the Foundation is no different than many companies, such as Intel, which also vigorously protect their marks.  As to whether it’s being too aggressive by going after hundreds of smaller local cancer charities which incorporate some derivation of ”FOR THE CURE” into their marketing efforts, that’s both a legal and PR question, but when Steven Colbert makes fun of you like he did recently, you’ve got a PR problem. 

Legally, how much enforcement is enough isn’t set in stone and is highly dependent on the facts of each case.  If a company is taking reasonable steps to notify potential infringers and demands that they cease-and-desist their use of the mark in question, that’s an important first step—which is what the Komen Foundation is doing.  Of course, whether they have to send out hundreds of letters to even small local charities trying to support cancer research in each and every instance is another matter, but such a strategy is sound from a legal perspective.   And deterrence is an important part of enforcement too.  

From a PR perspective, however, raising money for cancer research is quite a sympathetic cause—more so than a kid selling SOUTH BUTT jackets.  And just because you have the legal right to do something doesn’t mean that you should.  Or at least exercise it to such a degree that it could cost the Foundation more down the road, especially a charity which only exists due to the good grace and generosity of others.  But I leave those questions to the PR experts.

I love it when tech giants battle over stuff, particularly in the legal arena.  When you have two parties with virtually unlimited resources and an unfettered willingness to spend money on lawyers, it makes for interesting reading … and hopefully for more interesting law at some point down the line.  We don’t always have such excitement in the Boston legal community.

Such is the case with Microsoft’s recent filing at the Trademark Trial and Appeal Board (“TTAB”) (of the United States Patent and Trademark Office) contesting Apple’s attempt to trademark the term “APP STORE.”  Microsoft argues that “APP STORE”  is “generic for retail store services featuring apps and unregistrable for ancillary services such as searching for and downloading apps from such stores.”  The company further contends that “APP”  is “a common term for mobile software applications, while “STORE” is a common term for a “place where goods are sold.” 

Following so far?  A generic term can’t be registered for use as a trademark because it refers to the actual product class of which a particular product is a member and therefore can’t be protected as a mark.  It would be like trying to register the term “VIDEO GAME” for video games or—for those of us over 40 who still remember video games’ predecessors—the term “PINBALL” to describe pinball machines.

Microsoft’s argument has merit and the company has a reasonable basis to contest the mark.  Of course, this doesn’t mean that Apple won’t win in the end, but it should be an interesting read when the TTAB decision come out—at least to us trademark lawyers.  (And the parties may then have the opportunity to fight it out in federal court.)  Needless to say, neither party suffers from a lack of resources to fight to the bitter end.  But they could settle too, if for instance, Apple lets Microsoft use the term to describe its own “App Store.”

There are numerous factors which the TTAB and a court can take into consideration when determining whether a mark is generic, including:  how the potential trademark owner itself uses the term; whether third parties use the term as a common name for their own products; what the dictionary definition is (if any) for the term as a common name for a particular type of product; whether there are other available terms to describe the common name for the products; the period of time in which the trademark has been in use; how the press and others use the term; and of course, the results of any survey evidence that either party introduces (which are usually subject to vigorous attack by the other party).  There are other factors too, but these tend to be the main ones for determining “genericness.” 

Without going into too much detail here, Microsoft does have some favorable evidence to support its claim, as does Apple.  While there are a ton of trademark cases that discuss generic marks, a 4th Circuit decision comes to mind, Hunt Masters, Inc. v. Landry Seafood Restaurant, Inc., 240 F.3d 251 (4th Cir. 2001).  In that case, the court found that the term, “CRAB HOUSE” to describe a restaurant that, uh, served crabs “is a generic term referring to a class of restaurants that serve crabs.”  It found:

Here, the meaning of the individual words is fairly clear. A crab is “any of numerous chiefly marine broadly built crustaceans,” while “restaurant” is one of the many definitions of the word “house.”  Webster’s New International Dictionary 1096 (3d ed. 1961). Other common words that are often used as synonyms for “restaurant” include bar, parlor, and shop. When preceded by a type of food, these words describe various classes of restaurants, such as ale houses, tapas bars, ice cream parlors, and coffee shops. Each term denotes a class of restaurant serving a particular type of food, just as”crab house” denotes a class of restaurant that serves crabs. 

The court also rejected the plaintiff’s survey evidence when assessing genericness.  So “CRAB HOUSE” was deemed to be unprotectable.  While there are a few factors that differentiate this case and some of its principles from what Microsoft is arguing at the TTAB (such as time frame related to evaluating genericness), given the abundance of legal precedent in this area, the company can reasonably argue that ”APP STORE” is a generic term (or a merely descriptive one) for a place that sells applications.  Much of the fight will be over the term “APP.”

Of course, as any intellectual property or technology lawyer will tell you, trademark law is a highly nunaced area of practice, so these cases can turn on distinctions that at times seem more imaginary than real—especially in a sector as fast-paced as technology.  We’ll just have to wait and see.

Sigh.  Although I’m not surprised–especially given this pernicious and false belief that if it’s on the internet then it must be free–it’s been estimated that 43 sites which engage in digital piracy account for about 21 billion visits per year.  That’s roughly 3 times the current population of the Earth.  As an intellectual property attorney, I always find such statistics sobering given the rampant copyright and trademark infringement which occurs on the internet.  Predictable, but sobering nonetheless.  And no doubt the public hates those lawyers who pursue the infinitesimally small percentage of infringers that they’re able to find and sue, let alone actually stop or collect against.  The battle continues!

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.