Now compare

The book is described here (OUP site) and here (Amazon). The Introduction and Table of Contents are available here.

Short abstract:

“Infrastructure resources are at the center of many contentious public policy debates, ranging from what to do about our crumbling roads and bridges, to whether and how to protect of our natural environment, to patent law reform, to electromagnetic spectrum allocation, to providing universal health care, to energy policy, to network neutrality regulation and the future of the Internet. Each involves a battle to control infrastructure resources, set the terms and conditions under which the public gets access, and determine how the infrastructure and various infrastructure-dependent systems evolve over time. This book advances strong economic arguments for managing and sustaining infrastructure resources as commons. The book identifies resource valuation and attendant management problems that recur across many different fields and many different resource types, and it develops a functional economic approach to understanding and analyzing these problems and potential solutions.”

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 has requested a preliminary injunction to stop MivaMan, LLC/Fastees.com 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!”

“All terms mentioned in this book that are known to be or are suspected of being trademarks or service marks have been appropriately capitalized.  [Book publisher] cannot attest to the accuracy of this information.  Use of a term in this book should not be regarded as affecting the validity of any trademark of service mark.”

My initial questions are:

1/ What is this clause trying to achieve?

2/ Is it an attempt to avoid liability for TM infringement or dilution?  If so, I’m not sure how it would achieve that, particularly as it’s framed in terms of the validity of the mark in the markholder’s hands.

3/ How does the reference to ‘appropriately capitalized’ terms have any bearing on the question as to the potential liability of the publisher for TM infringement or dilution, if indeed that’s what the reference is for?

4/ How does it make sense to frame the clause in terms of ‘not affecting the validity of the TMs’?  Wouldn’t the potential problem for the publisher be a concern by a TM holder that its marks had been infringed or diluted in some way, not that they may be invalid?

Has anyone else come across these types of clauses in print or online publications?

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.

Case Western Reserve’s Journal of Law, Technology & the Internet is searching for a final article to publish in its spring edition. Any scholarly work related to cyber law, intellectual property law or the intersection of technology and the law will be considered. This is a great opportunity to see your research in print and online by the end of the spring semester. The Journal of Law, Technology & the Internet is a recognized student journal at Case Western Reserve University School of Law located in Cleveland, Ohio. Please forward all submissions, along with a CV or cover letter, to the attention of:

dtc22@case.edu | (734) 812-7373

An emerging by-product of Pittsburgh’s claim to be a new entertainment capital (see blog post here – the claim is not entirely without merit, as a lawyer might say) is that the incumbent local copyright / trademark academic gets a particular blend of interesting questions from the local media.

Last week, I explained the in’s and out’s of infringment of music copyright to the music critic of the Pittsburgh Post-Gazette (you read that right:  a small urban daily still has a music critic!) in connection with an allegation that Pittsburgh’s own hip hop megastar, Wiz Khalifa, appropriated “Black and Yellow” from a local unknown, who recorded “Pink and Yellow.” The problems that Wiz’s accuser faces are two-fold.  One, it appears to be unlikely that Wiz ever heard or otherwise had access to the plaintiff’s song.  Two, on my quick listen, the original elements of the songs don’t sound much like each other.  The core of the claim seems to be the similarity in the titles — “and Yellow” — which is a thin foundation for a successful copyright suit.

Today, the local angle is Andy Warhol, son of Pittsburgh.   The Velvet Underground has sued the Andy Warhol Foundation, which administers rights to the late artist’s works, for trademark infringement.  I haven’t seen the complaint, but I am told that VU is unhappy that the Foundation licensed the banana image that Warhol designed for the band’s 1967 debut, Velvet Underground and Nico, for use on i-related (that is, Apple iPad-related) products.

The IP issues there are a little bit tortuous.

The complaint apparently alleges that Warhol’s banana image was never “officially copyrighted.”  Presumably the reference is to the possibility that the work was distributed (as cover art) without an appropriate copyright notice.  I don’t have a copy of the album lying around, but if you do, you can check that.  If there was no notice on the cover, then there’s a good chance that the image itself went into the public domain — the copyright public domain, that is, right away.  Just about anything is possible in IP, but that (the absence of notice) strikes me as unlikely.  The other argument that VU has raised is that the image was in the public domain in the first place, apparently because Warhol based his design on a picture of an actual banana.  That argument is unlikely to fly, unless Warhol’s banana is actually identical to the source banana image.  If Warhol made any “creative” changes to the source image, then there’s little doubt that a valid copyright was possible.  Nevertheless, it’s possible that copyright is out of the picture.  If the image is protected by a valid copyright, then the Foundation has an argument under Dastar that arguable trademark claims should not interfere with the Foundation’s right to license the image.   That preemption argument would keep anyone from even getting to the points in the next paragraph.

As for the trademark claim, the suit apparently alleges that the banana image has become the very symbol of the VU.  That may be true, but that doesn’t quite establish the band’s trademark rights; the legal question is whether the band has used the mark commercially so that consumers have come to associate the mark as designating the source of products (or services) that the mark is attached to.  Let’s assume that the band can make *that* case.  Then the question is whether the Foundation infringed the mark — used it in commerce in a way that caused likely consumer confusion.  Usually, one would think that any arguable confusion would arise at the point that the mark is used on the i-products (an iPad cover, say), but it appears that the actual sellers of the products are not targeted.  I’m guessing that the producers don’t have assets worth pursuing.  The Foundation clearly does.  But the tie between signing the license and causing consumer confusion seems … pretty weak.  VU may be Waiting for the Man to provide trademark redress, but at the end of the day, I predict a case of There She Goes Again.

Updated Jan. 13 2012:  Here is a link to the Pittsburgh Post-Gazette story about the case. The story doesn’t get the issue right; the question is not whether the public associates the banana image with VU or with Warhol.  The question is whether the defendant’s use of the mark (assuming that it is a mark), in connection with goods or services, causes a likelihood of confusion in the minds of consumers.  I’ve now had a chance to read the Complaint.  The key allegation reads this way: “The use of the Mark on goods purportedly licensed by defendant will likely cause, and continue to cause, confusion, mistake or deception as to the source or affiliation of such third party goods.”  If that’s the crux of the case, then I don’t think that the Complaint alleges facts sufficient to meet the statutory definition.  The Warhol Foundation has a decent chance of getting the trademark claims dismissed.

The iPad / iPhone cases themselves are produced by Incase, as part of a Warhol collection.

Except, of course, that it wasn’t a Louis Vuitton bag – it was a knockoff. And that can create problems. After all, the use is no longer nominative, and no longer a fair description. Now there is a chance of consumer confusion – people might think the knockoff is a Louis Vuitton and be fooled into thinking that the sub-par stitching (so clearly visible on the screen – yeah right) is Louis Vuitton’s and of poor quality. Trademark people call this “post-sale confusion,” like the kind that comes when you wear a $10 Rolexxx. You weren’t fooled, but others might be fooled.

There’s one problem with the argument – under the Lanham Act, Section 43(a), the unlawful behavior must use the mark in connection with goods and services. That is, a trademark use. Thus, we hold the seller of the Rolexxx liable, but not the wearer, because the wearer is not making a trademark use – they are not using it in connection with goods and services.

That, I suspect, won’t stop Louis Vuitton (or sadly, the courts) here. I suspect that the finding will be that the movie is a “good or service” and that use of the name “Louis Vuitton” will be “in connection” with the movie, and confusing, and thus create liability. I can’t imagine this is what the authors of the Lanham Act had in mind. Nevertheless, courts have accepted survey evidence that credits consumers who think that the movie must have gotten a sponsorship deal with Louis Vuitton, even if they did not. In other words, courts are willing to find a trademark use just because consumers think there was one, even if there wasn’t.

So, this is another one of those “don’t do it” cases. I’m all for pushing the envelope of non-trademark use by having studios refuse to pay just for the right to utter the name of a famous mark. But it is a bad idea indeed to then use a knockoff in the movie. 

Nearly two years ago, I received an email from the Director of Fordham’s Center for Law and Information Policy, stating that the name of our center infringed the rights of Fordham.  I responded that our center, like many others at law schools across the nation*, uses “center” and “law” in its descriptive title, and then refers to the subject matter of the center—in our case, “intellectual property” (in their case, “information policy”).  I assured him that we always use our school’s name in any materials referencing the center.  The trademark professor in me wanted to write a long missive about both trademark law and policy.  The human being in me wanted to make a goofy yet heartfelt reference and say, “Can’t we all just get along?”  Instead, I closed by saying, essentially, that I think what they are doing is great, and I think what we are doing is great, and what law schools across the country are doing by creating enhanced learning opportunities for students in centers of research and dialogue and policy is great.  I also extended an invitation for him to come visit sometime and see the kinds of things we do at Texas Wesleyan.

(I also told him that we do have a logo, which uses the acronym of the center with the words “Center for Law and Intellectual Property” and our Texas Wesleyan house mark, and I assured him that we always use the name of the school in every piece of material we send about the center, as we have a strong interest in identifying ourselves as a Texas Wesleyan initiative.)

I did not hear from him again.  However, after our email exchange, Fordham revamped the webpage for its center and applied for federal registration of their acronym CLIP for a long list of goods and services (and using the phrase “intellectual property” four times).  That registration issued at the end of October, and the President of Texas Wesleyan has now received a cease and desist letter stating that not only any use of the acronym CLIP but the very name of our center infringes the registered and common law rights of Fordham.

The trademark professor in me wants to write a treatise about trademark law and policy.  The human in me wants to make a goofy yet heartfelt reference and say, “Really?!?”

In this current climate, when budgets are tight and the structure and content of legal education is something we are all debating passionately, when we are all working as hard as we can to provide innovative and dynamic educational opportunities for our students, I can’t help but wonder whether our collective time and resources could be better spent on other things.  On the other hand, in a lemonade-from-lemons sense, my trademark practice students are getting to see the real-world dynamics of practice.  The fact is:  As a university, we are not about to spend our students’ tuition money in this climate defending ourselves in an out-of-state trademark lawsuit, even if we think we are right, even if we think we would win, even if I suspect the best answer on the exam would be “no likelihood of confusion.”

In the end, if we can’t call our center by its descriptive function, perhaps we will go the trademark route.  I always tell my students that FLURM would be an excellent mark, because it is a coined and unattractive word.  Perhaps we’ll change our name from the Center for Law and Intellectual Property to FLURM.  Come to Texas Wesleyan School of Law, and be a part of THE CENTER OF FLURM!  At least then, no one will be confused.

* center such as, eg, the Center for Intellectual Property Law (John Marshall Law School), the Intellectual Property Law Center (Drake Law School), the Center for Intellectual Property Law and Markets (University of San Diego), the Center for Intellectual Property (University of Maryland), the Intellectual Property Center (University of Akron), or the Center for Law and Intellectual Property (Thomas Jefferson School of Law), the Center for Intellectual Property Research (Indiana University Maurer School of Law), to name a few.