From the category archives:

trademark

A recent client inquiry caused me to read again this excerpt from a decision of the United States Court of Appeals for the First Circuit:

llbeandrake“Our reluctance to apply the anti-dilution statute (Maine trademark law) to the instant case also stems from a recognition of the vital importance of parody. Although, as we have noted, parody is often offensive, it is nevertheless “deserving of substantial freedom — both as entertainment and as a form of social and literary criticism.” Berlin v. E.C. Publications, Inc., 329 F.2d 541 (2d Cir.), cert. denied, 379 U.S. 822, 85 S.Ct. 46, 13 L.Ed.2d 33 (1964). Accord Fisher v. Dees, 794 F.2d 432, 437-38 (9th Cir.1986)(“`Destructive’ parodies play an important role in social and literary criticism and thus merit protection even though they may discourage or discredit an original author.”);Pring v. Penthouse International, Ltd., 695 F.2d 438 (10th Cir.1982), cert. denied, 462 U.S. 1132, 103 S.Ct. 3112, 77 L.Ed.2d 1367 (1983) (defendants’ bawdy “spoof” and “ridicule” of Miss America pageant entitled to full range of first amendment protection); Groucho Marx Productions v. Day and Night Co., 689 F.2d 317, 319 n. 2 (2d Cir.1982) (noting “the broad scope permitted parody in first First Amendment law.”); Elsmere Music v. National Broadcasting Co., 623 F.2d 252, 253 (2d Cir.1980)(“in today’s world of unrelieved solemnity, copyright law should be hospitable to the humor of parody….”). It would be anomalous to diminish the protection afforded parody solely because a parodist chooses a famous trade name, rather than a famous personality, author or creative work, as its object.[5]”

L.L. BEAN, INC. v. DRAKE PUBLISHERS, INC., 811 F.2d 26 (1987) (1st. Cir 1987)

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Full article on BusinessInsider HERE

“Understandably, Meetup.com, where Dyson is a director, tried to do the same. Here’s what Dyson told the Senate happened when they tried to buy Meetup.xxx:
Meetup has attempted to register Meetup.xxx, but has been told the name has been reserved on the “premium queue” to be auctioned off to the highest bidder. Even more perversely, Meetup cannot even bid at auction for its own trademarked name unless it somehow becomes registered as a member of the “adult community,” which is at odds with the very nature of its business and the very reason it sought to reserve the name. Meetup’s only remedy ultimately will be to file an expensive and time-consuming trademark lawsuit.”

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[thanks to quick study memo from Lock Lorde]

Fleischer Studios, Inc. v. A.V.E.L.A., Inc., No. 09-56317 (9th Cir. Feb. 23, 2011) (“Betty_Boop”)

boop1The excessive protectors of intellectual property often forget the functional purpose for which certain protection rights are granted. The Wiki definition of trademark is spot on: “A trademark or trade mark or trade-mark[1] is a distinctive sign or indicator used by an individual, business organization, or other legal entity to identify that the products or services to consumers with which the trademark appears originate from a unique source, and to distinguish its products or services from those of other entities.”

The Betty_Boop opinion is a gem. The court correctly concludes, among several compelling conclusions, that a ruling of trademark infringement would bar Betty forever from the public domain. Of course it hammers home the point that there is no confusion to the public as to the source of origin of the Boop products in question. Finally, it chides both sets of attorneys for failing to cite the United States Supreme Court case of DASTAR CORP. v. TWENTIETH CENTURY FOX FILM CORP. ET AL – 539 U.S. 23 (2003), which held that a trademark infringement claim cannot substitute for a copyright claim, especially when the copyright is expired and in the public domain.

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sunglassesA United States Appeals Court in Chicago has slowed down the march of extending personal jurisdiction over defendants thousands of miles of away on the sole basis of their alleged presence in plaintiff’s neighborhood via the Internet.

Defendant was a Houston anesthesiologist who practiced solely in the state of Texas. Plaintiff was a group of Chicago anesthesiologists who alleged a trademark infringement against defendant based on the defendant’s maintaining of a website in Houston that was accessible in Chicago.

The crucial language of the decision:

“Mobile/Chicago’s evidence that Mobile/Houston took express aim at Illinois is inadequate. Mobile/Chicago first contends that we should infer express aiming at Illinois from the fact that Mobile/Houston operates a website whose domain name is similar to Mobile/Chicago’s trademark. We disagree. A plaintiff cannot satisfy the Calder standard simply by showing that the defendant maintained a website accessible to residents of the forum state and alleging that the defendant caused harm through that website.”
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MOBILE ANESTHESIOLOGISTS CHICAGO, LLC, an Illinois limited liability company, Plaintiff-Appellant, v. ANESTHESIA ASSOCIATES OF HOUSTON METROPLEX, P.A., a Texas professional association, Defendant-Appellee. No. 09-2658.

United States Court of Appeals, Seventh Circuit.
Argued April 2, 2010. Decided October 1, 2010.

Before FLAUM, WOOD, and HAMILTON, Circuit Judges.

HAMILTON, Circuit Judge.

Full decision at Google Scholar

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sunglassesSuper 7 Media, Inc. v. Stan Lee, No C-10-3442, United States District Court, Northern District of California

Can an 87 year old comic book icon join six other super heroes in his new comic book creation and become the Super Seven?

Or will he cause such confusion with the Super 7 Toy Company?

We, the Super Heroes of Intellectual Property Law mediate the confusion caused by 6.7 billion people on the earth each day, some of whose names and ideas are remarkably similar.

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