Google Says “No, No” to Mr. or Ms. Pirate; What About Hate Speech?

Fred von Lohmann posted that Google has changed its algorithm. Now “it’ll start generally downranking sites that receive a high volume of copyright infringement notices from copyright holders.” The Verge reports that:

because its existing copyright infringement reporting system generates a massive amount of data about which sites are most frequently reported — the company received and processed over 4.3 million URL removal requests in the past 30 days alone, more than all of 2009 combined. Importantly, Google says the search tweaks will not remove sites from search results entirely, just rank them lower in listings. Removal of a listing will still require a formal request under the existing copyright infringement reporting system — and Google is quick to point out that those unfairly targeted can still file counter-notices to get their content reinstated into search listings.

The data-driven basis makes sense to me. So what other areas could be monitored and adjusted? I disagree with the idea that search engines should take on policing roles for certain speech that Danielle Citron and others have urged. But this shift may open the door to more arguments for Google to be a gatekeeper and policer of content. Assuming enough data is available, Google or any data-driven service, could make decisions to include or exclude entries (or shift ranking). Those moves already happen. But the difficult question will now be why or why not act on some issues but not others. James Grimmelman has a work in progress on search and speech that gets into this question. I believe the algorithm issues still control. Nonetheless, by nodding to the copyright industry, Google may be opening the door to further calls to be the Internet’s gatekeeper. Of course, if it does that, others will attack Google for doing just that from competition and other angles.

Really, Louis Vuitton? Really?

A few weeks ago, I posted here that if you attach a picture from movie posters on your product as a hang-tag, you will be found liable for trademark infringement every time. I later posted that it was a mistake for the props folks in the Hangover II movie to keep calling a knock-off a Louis Vuitton.

To show that I am not blindly pro-trademark owner, I thought I would flag an example of overenforcement – ridiculously so – of trademark rights, in the style of Saturday Night Live’s “Really?” segments.

Penn Law School is holding a symposium on fashion law, including the general counsel from Coach, Ralph Lauren, Stuart Weitzman, and Forever 21. The poster for the event includes a clever parody of a Louis Vuitton design. It fits the classic definition of parody: it is similar enough to the original that you know it is a statement about the original, but it is different enough to know that it was not created by the original mark holder.

Part of the poster design is reproduced below:


Louis Vuitton sent a demand letter to the dean of the law school, complaining that the use on the poster was trademark infringement and dilution of a famous mark.  Here’s a key quote: “This egregious action is not only a serious willful infringement and knowingly dilutes the LV Trademarks, but may also mislead others into thinking that this type of activity is somehow ‘legal’  or constitutes ‘fair use’ because the Penn Intellectual Property Group is sponsoring a seminar on fashion law and ‘must be experts.'” The letter goes on to imply that Penn’s IP professors must not know anything about IP law since they let this happen. Penn’s counsel wrote a response that was much more polite that I would have been (or am about to be).

Now is the part of the post where I ask “Really?”

Really, Louis Vuitton? You can’t tell a parody from infringement? Is fair use fictional? So fictional that you use air quotes when you refer to it? I know you have to police your mark, but it seems like picking your battles makes sense. Perhaps you think that if you send enough of these letters, fair use really will become fictional.

For that matter, did you not think that people would notice that you lost a parody case already? A case that they teach in law school, where apparently nobody understands fair use and parody? Really?

And do you really think that anyone will be fooled into thinking you are sponsoring a symposium at a law school featuring the general counsel of your competitors and clearly denoted law firm sponsors but no fashion sponsors? Even if LV were sponsoring this, any consumer would expect to see the real logo, not a parody of it.

Also, have you forgotten that trademark use must be in connection with goods and services? It was clever of you to rename the free “symposium” (an obviously noncommercial educational event) as a “seminar” to imply that it is a service offering.

There are so many things wrong with this cease and desist letter, and your insult to the faculty only makes it worse, because IP professors everywhere will take umbrage.

And while I’m ranting about overpolicing by fashion companies, I’ll add, “Really, Coach?” Really, did you think that you could own the word “Coach” including against every coaching service? [Insert your favorite coach name here] would be appalled.

By opposing the mark “Coach” as applied to standardized test books and software, you must have known that no consumer would confuse your high end goods with educational products. But by pressing the dilution doctrine, you must have been shocked when a court ruled that not only did the educational coach mark not dilute your own, but that your own mark isn’t famous enough to support dilution – at least not based on that weak evidence you submitted.

Ouch, that has to hurt, because now every coaching service that receives your overblown cease and desist letter will have an appellate decision case to cite against you. I guess that’s what happens sometimes when you overpolice and someone pushes back.  You might find out that your mark isn’t as strong as you thought it was and that you might actually prove your claims rather than scare people into submission. Really.

West Virginia University and Fastees: Not So Fast

[DISCLAIMER: It is not long after someone meets me that they learn I’m from West Virginia.  I am fiercely proud of my home state, and a loyal Mountaineer fan.  (In fact, way back when, I got married on West Virginia’s birthday. On purpose.)  So, I am delighted to write a post about two of my favorite things: West Virginia and trademarks.]

West Virginia University has requested a preliminary injunction to stop MivaMan, LLC/ from producing allegedly infringing t-shirts.  WVU strictly polices the production and licensing of apparel containing its registered and common law trademarks.  It is unclear, however, which trademarks are being used in these shirts.  And likelihood of confusion or actionable dilution seems a bigger question.

From the WVU press release, the list of WVU marks linked above, and local news accounts (here and here), it appears that WVU claims Fastees is infringing trademark rights in the words “West Virginia” in connection with the University, and in the slogan “Let’s go Mountaineers!”, as well as by using the official colors and typeface of the University.  Indeed, many shirts do contain the words “West Virginia” and a couple of them reference the common law mark “Let’s Go Mountaineers!” through the language “Let’s Go! Drink Some Beers!”*  The shirts also use blue and gold, which are the University colors.  Those colors are also the official colors of the state of West Virginia, as adopted by the State Legislature in 1963.

Without having seen the Complaint or being privy to the underlying facts, it is not clear to me that Fastees is using WVU’s marks.  And whether any of this is done in a way likely to be confusing to consumers, or actionably diluting by tarnishment, is further in doubt.  In the WVU Statement, Becky Lofstead, vice president of communications, is quoted as saying, “It is WVU’s responsibility to protect the reputation, integrity, image, and goodwill of the University through the proper use of our federally registered marks.”  While some of the t-shirts sold by Fastees are certainly less than classy, I’m not sure trademark law is the best way to protect the WVU image here.

*The middle exclamation mark is a reference to the stadium chant by fans at football games.  One half of the stadium yells, “Let’s Go!” and the other side follows with a resounding, “Mountaineers!”

I’m a Pepper, You’re a Pepper, Dublin’s not a Pepper Anymore

To follow Mike’s shift toward anti-competitiveness (and beverages):

Dublin Dr. Pepper and Dr. Pepper Snapple Group have settled their trademark licensing dispute and Dublin Dr. Pepper, the beverage darling of the Lonestar State, is no more.

Dublin Dr. Pepper is a Texas favorite.  This original Dr. Pepper was created in 1891, and its birthday is still celebrated every year in the town of Dublin, which changes its name to “Dr. Pepper, Texas” each year on that day.  What makes Dublin Dr. Pepper unique in today’s market is the fact that it has continuously (even during difficult times, including WWII sugar shortages) been manufactured with cane sugar—which gives it a distinct (many would just say “better”) taste.

For years, Dr. Pepper Snapple Group and Dublin Dr. Pepper operated under the terms of a licensing agreement.  The agreement provided, inter alia, that the sales territory for Dublin Dr. Pepper would be limited to six counties in Texas, and that Dr. Pepper Snapple Group would approve designs for the Dublin Dr. Pepper bottles.  Several months ago Dr. Pepper Snapple Group filed a complaint alleging that Dublin Dr. Pepper violated the terms of the agreement by selling Dublin Dr. Pepper outside of its agreed-upon six county territory (through internet sales, telephone sales, and otherwise) and creating a likelihood of confusion in the marketplace.

Dublin Dr. Pepper countersued, claiming that Dr. Pepper Snapple Group wanted to create its own “retro” version of Dr. Pepper, using trade dress similar to that of Dublin Dr. Pepper based on designs Dublin Dr. Pepper had submitted for approval in the past.  (Dublin Dr. Pepper is quick to point out that Dr. Pepper Snapple Group’s version was made with refined beet sugars, however, and not cane sugar.)

The settlement agreement provides, among other things, that Dr. Pepper Snapple Group will make a Dr. Pepper with “nostalgic packaging” sweetened with cane sugar that will be distributed to certain parts of Texas—but it won’t be called “Dublin Dr. Pepper.”  Austin station KXAN reports on the story here, and the Wall Street Journal story can be found here.  Dublin Dr. Pepper’s original response and counterclaim to the lawsuit can be found here.  What the newly named “Dublin Bottling Works will be doing next is discussed in the Dallas Observer blog here.

The underlying issues would be good fodder for a trademark class, including establishment of trademark rights, trade dress, geographic designations, geographic limitations on sales, concurrent use, infringement, and trademark policing.

Branding Agave?

More on how the law defines things, this time for anti-competitive rather than pro-competitive purposes …

“Tequila” is registered appellation of origin for spirits produced in five Mexican states. A storm is now brewing over proposals in Mexico sponsored by the tequila industry that would limit the use of the word “agave” — the genus of the blue agave plant from which Tequila is distilled — in connection with both tequila itself and other spirits (mezcal and banacora) distilled from various agave species.

Resistance is growing.  Even the botanical community is pointing out the absurdity of the limiting use of a genus when the tequila industry itself relies on a particular species. Given opposition by Cofemer, Mexico’s Commission on Regulatory Improvement (within the Ministry of the Economy), adoption of the standard is far from a sure thing.