American Needle v. NFL is out ….
Some interesting commentary on Sotomayor and the First Amendment from Paul Levinson:
I haven’t had time yet to dig into Sotomayor on intellectual property, telecomm, and other information law issues, but this is discouraging.
Franken of course I have hopes for: After Fox News sued him for trademark infringement for putting its logo “Fair and Balanced” on the cover of his book (Lies and the Lying Liars Who tell Them: A Fair and Balanced Look at the Right) Franken ought to have a good sense of why trademark fair use, at least, is important.
New York’s state tourism board is seeking to reclaim their “I heart NY” slogan. (link from michele) According to the article, the slogan was developed for them pro bono by graphic designer Milton Glaser in the early 1970s. It was used prolifically as a mark; then they let their registration lapse and stopped policing it; and then everybody and their sister started selling products with “I heart NY” on them. Over the last few years the tourism board (“Empire State Development”) realized the “error” (read: revenue stupidity) of their non-policing ways so they renewed their registration and began policing the mark.
How did they begin? By threatening to sue Mr. Glaser (the original graphic designer, remember, who donated the logo pro bono), who had, after 9/11, designed an “I heart NY More Than Ever” logo. He was naturally outraged.
random aside: My browser (Firefox 2.0/Mac 10.5) displayed the “heart” ♥ on the browser bar (generated by the title tag) but on the headline text itself and throughout the rest of the body of the article, I saw only a junk ascii character. Looking at the source, they used ♥ in both the title and throughout the body. No problem with display (either of the NYT article or this post) in Safari. Apparently, this is some kind of Firefox rendering problem. Hmm.
… Anyway, just a note on terminology. Here again we have people talking about “fakes”, which is the accepted jargon within trademark circles for unlicensed products. Note, however, that they’re not “fake” in any way that ordinary people would understand fake: It’s not like the t-shirt or mouse pad or bumper sticker is not really a t-shirt or mouse pad or bumper sticker. “Fake” means “unauthorized” — that the NY tourism board didn’t license the use of their registered mark to the t-shirt, mouse pad, or bumper sticker maker.
Well, “unlicensed” or “unauthorized” might arguably be serious when people are actually paying good money for the brand. Traditionally marks are meant to help consumers identify the source of a good or service, so that they can choose to pay top dollar for goods and services with good reputations for high quality. Quality might be quality of components — well-made, true cotton and not poly-blend, etc. Or it might be more money than the bare physical elements of the product are worth, for instance, as in paying top dollar for a Gucci purse. Here we’re getting into more ephemeral attributes and qualities: quality of design, maybe, and of course “authenticity”.
But how does that apply to “I heart NY”? Slogans can be marks; you can associate a slogan with a particular good or service. “I can’t believe it’s not butter.”
A few days ago, the Village Voice wrote an article about a series of World of Warcraft-inspired porn; their article was duly picked up by BoingBoing.
Strangely, BoingBoing missed the IP angle — that “Whorelore”‘s original name was “Whorecraft” but they ran into an “IP” issue, presumably trademark. You can still see “Whorecraft” on some of the pictures at the Village Voice article. (see caption and photo)
In theory, the article makes it sound promising: Attempts to act, an ongoing storyline, warrior women, etc. But sadly, the photo gallery demonstrates that the porn is about as “inspired” and “imaginative” as Star Trek’s aliens: Heterotastic, male-centered, dominant-paradigm-of-female-beauty, and very white. Ho hum.
This LA Times article reports on consumer attitudes in LA about “piracy” of goods. Of course, the author (Richard Verrier) seems mortally confused about the differences between trademark and copyright.
Although previous studies have documented piracy’s toll on the Los Angeles economy, the U.S. Chamber report is the first to focus on the attitudes and behavior of consumers here who knowingly buy fake goods, including bootleg movies, illegally copied CDs, knockoff handbags and counterfeit auto parts.
“The study confirmed what we already knew: That the buying of these products is widespread and is viewed as a victimless crime,” said Caroline Joiner, executive director of the chamber’s global anti-counterfeiting and piracy initiative.
Of course, since trademark laws are designed to protect the consumer against confusion, if the consumer isn’t confused then there is neither crime nor victim. That doesn’t stop the government from trying to stop imports from China of counterfeit goods, but is this really the best way to spend our money? Wouldn’t we all really rather our good-inspection dollars be spent on looking for lead in children’s toys and poisons in our cat food? (Or, hell, how about bombs and suitcase nukes?)
The bottom line is that companies treat their trademarks like property, and work very hard to get governments to do the same. Traditionally trademark enforcement has been handled by the trademark owners, as it should be. Trademark owners have cost/benefit analyses to apply to enforcement. So they take on only the serious threats, and make reasonable decisions about what to pursue and not to pursue.
Shifting those costs to the public — which is what trademark (and copyright) owners want to do — means that companies owners can be as persnickety as they want about their rights, regardless of the human cost. Hence the cost to taxpayers of, what, probably thousands of dollars in pressing criminal charges against a 19 year old girl for recording 20 seconds of a film in a movie theater. (She ended up pleading guilty, by the way, paying a $71 fine and having a criminal record for at least a year.) She was prosecuted under a new Virginia bootleg law, intended to beef up federal copyrights with state criminal law.
But the public benefit to putting public funds toward policing private trademarks is negligible, even less than the putative benefit of policing private copyrights. Again, trademarks are designed to protect the consumer against being defrauded. If consumers are happily and knowingly buying knock-offs and counterfeits, then no consumers are being defrauded. There is no public good to justify use of public funds and the full weight of the state’s mechanisms of criminal law against vendors or buyers. While to my knowledge no state has tried to criminalize the purchase of counterfeit trademark goods, I will be wholly unsurprised to see such legislation sometime in the next ten years. Combining the government’s ramping up of trademark & copyright enforcement with the trend in legislation to get at tertiary support of illegal activities is not much of a reach.
Consider this ominous quote, for instance:
Nonetheless, Joiner drew encouragement from another finding: Seventy-two percent of the respondents believed counterfeiting and piracy laws should be stricter, and 90% said they wouldn’t have acquired the fake products if they knew doing so supported organized crime.
So, can we now look to Hollywood to tell us that the mob is behind filesharing? They’ve already linked P2P to child porn and terrorism so I suppose I shouldn’t be surprised.
Suggesting that Americans “get” IP law but just aren’t that interested in following it, Justin Hughes at Cardozo opined that “Most Americans do understand copyright and trademark laws ….” Not if crappy news reporting is where they get their information, they don’t. And while the IP policy cognoscenti may argue back & forth about the benefits and costs of IP, the lobbyists for Hollywood are happy for Americans to not get the full picture. The US Chamber of Commerce (which commissioned this survey from Gallup) might like to consider asking Americans, not just whether or not they think stronger C/TM laws are in order, but to do some ranking of customs & law enforcement priorities: bootleg purses? or lead-paint on toys. crappy recordings of crappy movies? or mad cow disease-infected beef.
It’ll be interesting to see a major company actually litigate such a completely jury-unfriendly case. It will also be interesting to see if how licenses for intellectual “property” survive when the property — in this case, consumer identification of a mark — no longer exists. Or, at least, when consumer identification of the mark is much stronger with the “licensee” than the “licensor”.
One might think it would sometimes be in the best interests of a corporation to take the high road, but McDonald’s has chosen to go for the glory. McD’s slapped a cease and desist letter on an art gallery selling “Cokespoon #2″ — a gold-plated versions of a 1980s vintage McD’s coffee stirrer that was frequently used for white powder outside the context of coffee.
The C&D and response are posted by citizen-citizen.com in a really obnoxious flash format.
You can see the original and Cokespoon #2 on papermag 2/19.
aka “Pokémon Producers Pissed”
Pier Paolo Pandolfi of Sloan-Kettering Cancer Center has apparently received a trademark cease & desist from the Pokémon company (Nintendo) after cancer-related research on the Pokemon gene — which Pandolfi’s lab named four years ago, in 2001 — received headlines like “Pokemon Causes Cancer”. Sloan-Kettering has knuckled under, now calling the gene Zbtb7. See Nature, v. 438 no. 7070 (15 Dec. 2005) [html and pdf] (subscription access may be required).
Maybe. And some likely confusion
between trademark & copyright.
I would love to see that cease and desist letter. I’m sure they claimed both trademark infringement and dilution, and the kitchen sink, but come on. Trademark infringement is really a wash: consumer confusion between a Japanese video game and a cancer-causing gene? I’d like to see them try to prove that one in court.
Trademark dilution initially sounds like a stronger claim. Let’s just grant that “Pokémon” is “famous”. Dilution requires first of all the defendant’s “commercial use in commerce”. 115 U.S.C. 1125(c). I’d like to see the plaintiffs try to prove this one, too: that Professor Pandolfi’s pioneering medical research at a nonprofit cancer center is a “commercial use in commerce”.
After they passed that hurdle, the Pokémon plaintiffs would then have to prove actual blurring or tarnishment. Id.; Moseley v. V Secret Catalogue, Inc., 537 U.S. 418 (2003). “Blurring” involves the “whittling away” of distinctiveness caused by use of the mark on even dissimilar products. It seems unlikely but not completely impossible that the use of the word “Pokemon” to name a gene discussed largely by scientists and occasionally in the scientific press could “whittle away” at the distinctiveness of a video game chiefly adored by 10-year-olds. That would have to be actual blurring, though, so bring on the surveys of 10-year-olds. Prepubescents, that is, preferably evaluated both pre- and post-exposure to that pernicious purveyor of Pokemon pandemonium, Professor Pandolfi.
So what about tarnishment? I presume that Nintendo was most concerned about tarnishment, since the C&D notices apparently went out only after bloggers & news reporters styled their stories “Pokemon causes cancer”. “Tarnishment” is a more interesting claim than blurring, at least to me — perhaps just because I have fantasies of seeing a brilliant oral argument explaining the science: Plaintiffs: The defendants’ association of our perfectly upstanding product with a cancer-causing gene is unsavory! Defendants: Your Honor, plaintiffs clearly lack any understanding of science. Genes may have multiple functions. “Good” or “bad” is a matter of context. That which causes cancer in one instance is also necessary for cellular function …. Etc. Eric Rothschild could do it, since by all accounts he did a bang-up job in Kitzmiller. (1)
And once again, it has to be actual tarnishment, not potential: Perhaps Nintendo could show its profits were imperilled by potential customers’ unsavory associations of computer games and cancer, but Nintendo merely being petrified of unsavory connotations of one application of a gene shouldn’t suffice.
So the claims look pretty paltry to me. And Nintendo took its time in raising them, too. Pokemon (the gene) has been in the literature since at least 2002, and Nature reported that it had been used in this way as early as 2001. (2) This doesn’t seem like punctual policing to me.
You’d think Nintendo would have been more upset by, say, studies which actually used the animated TV show “Pokémon” to study inducement of epileptic seizures — a phenomenon that was actually named “Pokemon phenomenon”. See, e.g., Fisher et al 2005; Furusho et al 2002. Or one might have expected that Nintendo would have seen that discretion was the better part of valor in this instance, and decided not to risk recalling media attention to the Pokemon-medical connection. And why didn’t their PR people chime in on this one? Suppose Nintendo actually made good on its threats; can’t you see the headlines? Video game company sues cancer research institute? Not the best PR in the world.
And btw — please pardon the persistent placement of “p” in this post. I couldn’t help myself.
(2) I tried to get a history of the name from Flynome, which has the history and source of various amusing fly gene names. (I’ve blogged it before.) But alas Flynome does not include Pokemon. It doesn’t have Sonic Hedgehog, either, another videogame/gene name, this one owned by Sony who has chosen wisely to remain silent on this potential ‘dilution’. Flynome does include ken and barbie whose litigious TM-owner Mattel has, like Sony, somehow managed to refrain from temptation in this instance.
and hey — a word to the San Francisco Art Institute: using a trademark to describe, criticize, or compare to the referenced entity is trademark fair use. look it up.