The news on the Trademark Protection Act passed by the Utah Legislature earlier this year is that it likely will not be enforced when it goes into effect today. This news came after Utah lawmakers met, one might argue rather belatedly, with high-tech execs who aired their concerns about the law. Eric Goldman at the Technology & Marketing Law Blog weighs in on the news here. Hat tip to Techdirt.
John Welch at The TTABlog discusses another victory by Google, Inc. at the TTAB, this time against the mark BLOGLE. As he points out, the numbers that Google offered up in support of the "fame" factor are "staggering." I don't know which is more amazing, the 300 million visitors per day or the explosive growth in revenue over just four years.
A long-standing dispute between the two daily Seattle newspapers--the Seattle Post-Intelligencer and The Seattle Times--that are run under a Joint Operating Agreement has been settled, at least for now, with the result that Seattle will continue to enjoy two daily newspapers.
For coverage of the settlement and background on the dispute:
From the Seattle P-I
From The Seattle Times
From the Committee for a Two-Newspaper Town
I highly recommend checking out Eric Goldman's March 2007 Quick Links, Google Edition and March 2007 Quick Links Part 2 at the Technology & Marketing Law Blog. As usual, well worth the read.
Given the often staid practice of law, it's hard to resist a fart joke particularly when it appears in the context of a well-written, yet smartly funny discussion of, among other things, copyright law penned by Judge Diane P. Wood of the Seventh Circuit.
The dispute in JCW Investments, Inc. v. Novelty, Inc., No. 05-2498 (7th Cir., March 20, 2007) arose in the context of competing farting dolls. On the one hand was Pull My Finger Fred, described by Judge Wood as a "white, middle-aged, overweight man with black hair and a receding hairline, sitting in an armchair wearing a white top and blue pants." When you squeezed Fred's extended finger he, rather unsurprisingly given his name, farts and makes, according to the Seventh Circuit, "somewhat crude, somewhat funny statements" about his bodily noises. On the other hand was Fartman, described as a "white, middle-aged, overweight man with black hair and a receding hairline, sitting in an armchair wearing a white tank top and blue pants." As with Fred, when you squeeze Fartman's extended finger, he emits both farts and jokes about those farts, two of which jokes were the same as those cracked by Fred.
But unfortunately for Fartman, his farts and jokes were no laughing matter for Tekky Toys, the manufacturer of Fred. Tekky Toys sued Fartman's maker, Novelty, Inc. for copyright infringement, trademark infringement, and unfair competition, eventually winning on all of the claims with an award of lost profits, punitive damages (under state unfair competition law) and more than $575,000 in attorneys' fees.
In affirming the judgment of the District Court, the Seventh Circuit dealt handily with Novelty's claim that the District Court had protected too much of Fred in the context of Tekky's copyright infringement claim, extending protection not only to the expression of the idea of Fred but also to the idea or common elements known as scenes a faire, which are "incidents, characters or settings which are as a practical matter indispensable or at least standard, in the treatment of a given topic." The Seventh Circuit disagreed, concluding that it was not the idea of a "farting, crude man" that was protected but rather Tekky's particular embodiment of that concept in the form of Pull My Finger Fred.
It seems to me that Novelty had a tough row to hoe as its president apparently testified in deposition that when Novelty creates a new item, they "try to copy---or try to think of some relevant ideas" and further admitted that his idea for Fartman was based on Fred, whom he had seen in a showroom of a manufacturer of the Fred doll.
William Patry at The Patry Copyright Blog also has an interesting and thorough discussion of Pull My Finger Fred vs. Fartman.
With the Second Circuit's recent decision in ITC Ltd. v. Punchgini, Inc., No. 05-0933-cv, the Ninth Circuit (some might argue unsurprisingly) stands alone among the federal appeals courts in recognizing the so-called "famous marks doctrine" under federal trademark law. The famous mark doctrine provides an exception to the territoriality principle that a trademark has a separate legal existence under each country's laws and that ownership of a mark (even a famous one) in one country does not automatically confer the exclusive right to use that mark in another country. But the famous marks doctrine recognizes an exception to this principle "for those foreign marks that, even if not used in the United States by their owners, have achieved a certain measure of fame within this country."
ITC held a federal registration for the mark "BUKHARA" for restaurant services that it used in connection with two restaurants in New York and Chicago. But ITC closed the New York BUKHARA restaurant in 1991, followed by the cancellation of the franchise BUKHARA restaurant in Chicago in 1997. Since that time, ITC admittedly has not owned, operated or licensed any restaurant in the United States using the BUKHARA mark.
Meanwhile, in 1999, the defendants decide to open an Indian restaurant in New York City and apparently thought "Bukhara Grill" seemed like a fine name. Notably, each of the individual defendants had previously worked at ITC's New York Bukhara restaurant or the Bukhara restaurant in New Delhi. ITC, however, wasn't particularly pleased about the defendants' name choice or the decor of their restaurant and sued them for, among other things, federal trademark infringement, unfair competition and false advertisement as well as parallel claims under New York common law.
As to the claims asserted under federal law, the Second Circuit had no good news for ITC. It first affirmed the District Court's conclusion that ITC had abandoned its registered BUKHARA mark for restaurant services as well as its corresponding order that the registration be canceled. Then, in a detailed discussion, the Second Circuit declined to join with the Ninth Circuit in recognizing the famous mark doctrine noting that although a "persuasive policy argument" could be advanced for recognizing the doctrine, that alone "is not a sufficient ground for its judicial recognition, particularly in an area regulated by statute." And finally, the Second Circuit affirmed the District Court's conclusion that ITC lacked standing to assert a false advertising claim under the Lanham Act.
Happily for ITC though this isn't baseball and despite three strikes, all may not be lost for ITC. The Second Circuit concluded that it could not determine the propriety of the District Court's dismissal of ITC's parallel state unfair competition claim because that determination depended on whether New York recognized the famous mark doctrine as a matter of state law. Therefore, the Second Circuit chose to certify the following question to the New York Court of Appeals: "Does New York common law permit the owner of a famous mark or trade dress to assert property rights therein by virtue of the owner's prior use of the mark or dress in a foreign country?" If New York does recognize the famous mark doctrine, the Second Circuit also asked the New York Court of Appeals to indicate the scope of that doctrine.
Rebecca Tushnet also has a good synopsis of the case at the ever thorough 43(B)log.
Much has already been said (mostly bad but some good) about the Trademark Protection Act recently adopted by the Utah Legislature, which, according to the Act's general description, "establishes a new type of mark, called an electronic registration mark, that may not be used to trigger advertising for a competitor and creates a database for use in administering marks."
Whatever the merits of the legislation, the debate over the pros and cons of the Act has demonstrated the power and reach of blogs (if that still needed to be demonstrated) with even the Act's sponsor, Utah Senator Dan Eastman, taking to the blogosphere to defend the Act from its critics (or "the fringes" as he rather uncharitably characterizes them). See here for an interesting critique of the Senator's defense from Eric Goldman of the Technology & Marketing Law Blog.
Check back for more on the Utah Trademark Protection Act as events unfold but for now, see here for the letter from the Electronic Frontier Foundation, Professor Eric Goldman and others to the Utah Attorney General asking him to stay implementation of the Act pending further investigation (hat tip to Martin Schwimmer at The Trademark Blog).
Welcome to IP Law Chat, where I plan to focus on legal news about trademarks, copyright, technology, media and whatever else strikes my legal fancy and that I can tie into one of these areas of the law. Look for discussion of recent cases and IP news as well as links to informational and news items. I'm very excited about joining the discussion of IP-related legal issues and news that was begun by a number of excellent IP blogs and am looking forward to what I hope will be both an interesting and educational adventure.
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