And Just Like That, The Dumbest Trademark Suit Over Saying 'Thank You' Disappears

from the you're-welcome dept

It is with mostly pleasure, but a little bit of sadness, that I am here to inform you, dear reader, that the idiotic trademark lawsuit brought by Citigroup against AT&T because it dared to say "thank you" to its customers is dead. Yes, what started only a couple of months ago as an unintentional test to see just how far a large corporation could twist trademark law out of its useful intentions has been dropped by both parties with prejudice, meaning that no further legal action can be taken on the matter.

At issue was AT&T including the phrase "thank you" in some of its messaging and branding. Citigroup, as it turns out, somehow got the USPTO to approve a trademark for the phrase "thankyou" and declared that, largely because the two companies had done some co-branding work in the past, customers might be confused by an AT&T ad thanking them for their business into thinking that it has something to do with Citigroup. I read the argument Citigroup made in its filing as to why this confusion was likely, but my brain came to a screeching halt every few sentences, distracted by questions like, "How much can a bank's lawyers drink during the day?" and "Precisely how many peyote buttons would I have to swallow before 'thank you' equalled 'Citigroup' in my addled mind?"

Yet the end of this lawsuit was easily predicted after the court refused Citigroup's initial request for an injunction against AT&T. That court opinion went further in explaining to Citigroup the flimsy nature of its position than it had to, almost as a warning not to pursue this any further. And, this week, the banking company relented.

Citigroup Inc (C.N) and AT&T Inc (T.N) have ended a court battle over whether the "AT&T thanks" customer loyalty program infringed Citigroup's trademark in the phrase "thankyou." The resolution may help preserve a relationship between Citigroup and AT&T dating to 1998 that includes 1.7 million U.S. customers with co-branded credit cards.

"We have decided not to pursue this matter any further and look forward to continuing to work with AT&T," Citigroup spokeswoman Jennifer Bombardier said in a statement.

I'm sure AT&T appreciates Citigroup dropping the suit, but it's probably searching for an allowable phrase to express that kind of gratitude. What this may have more to do with is AT&T's defense that basically consisted of pointing out the ridiculousness of a single company being able to trademark a common phrase like "thank you," or iterations of it, for any category of anything ever. The end of the suit likely means the end of AT&T's challenge to the trademark, which is unfortunate.

We'll have to see if Citigroup has learned its lesson, or if it will choose to bring legal action against any other thankful companies in the future.

Filed Under: thank you, trademark
Companies: at&t, citigroup

Citigroup Gets First Loss In Trademark Suit Against AT&T For Saying 'Thanks'

from the you're-welcome dept

A couple of months back, I brought to you a trademark suit initiated by Citigroup against AT&T that amost perfectly distilled both how ridiculously litigious trademark law has become and exactly how facepalm-inducingly lax the standards for trademark approval are with our friends over at the USPTO. The summary of the lawsuit can be described thusly: Citigroup has sued AT&T because the latter has branded messaging that says "thanks" and "thank you," and Citigroup has a trademark on the term "thankyou." And if your forehead hasn't smacked your desk yet, you have a stronger constitution than this author.

Included within Citigroup's hilarious filing was a request for an injunction by the court barring AT&T from continuing any of this gratitude towards its customers over the immense harm it was doing to the bank. Well, the court has ruled on that request by refusing to issue the injunction, all while patiently laying out within the court document all of the reasons why the court will almost certainly eventually dismiss this suit entirely.

U.S. District Judge Katherine Forrest was perhaps politer to Citigroup than expected. Instead of just saying, “No, you cannot lay claim to the word ‘thanks,’ it is part of civil conversation, and you can’t own it. Next case,” Forrest actually took time to explain why Citigroup can’t own the word “thanks” and “thank you.” In a 30-page decision, she explained to Citigroup that “the law does not allow one company to own the word ‘thanks.'”

Within the filing itself (pdf), Forrest goes on in a point-by-point and entirely too patient exposé on how little evidence there is for any customer confusion, why a company simply saying thank you to its customers doesn't warrant an injunction, and even details by color, font and size the differences between the messaging between the two companies. And, while the court takes pains within the document to note that the ruling on the injunction is not the place to rule on wider questions of the validity of the trademark as a whole or to make full determinations as to the likelihood of customer confusion, passages such as the following should give Citigroup a hint of what it's up against.

AT&T has advanced evidence indicating that, both before Citigroup first began using its THANKYOU mark and since that time, there are and have been dozens upon dozens of goods, services, and entities that made use of variations on the words “thanks” and “thank you,” including by registering their marks with state and federal registers. (ECF No. 38 ¶¶ 35-43.) A number of these are explicitly registered as loyalty or reward programs. (See id.) Such evidence undermines the argument for distinctiveness. Estee Lauder, 108 F.3d at 1511. Indeed, Citigroup acknowledged that other corporations made use of the “common term” THANK YOU in its trademark prosecution, but argued at the time that consumers “can readily distinguish between such marks without confusion.” (ECF No. 39 Exh. 2 at 4.)

The present evidentiary record does not permit the Court to draw firm conclusions regarding acquired distinctiveness. Citigroup’s loyalty programs are well-established, but seems to exist in a marketplace in which names similar to the THANKYOU marks are used by other producers, thus undercutting their distinctiveness.

The court goes on to explain the difference between the telecom and banking industries to Citigroup, too, as well as to remind it that just because the bank did some co-branding with AT&T in the past, the fact that AT&T plastered its name and logo all over the "thanks" branding in question doesn't suddenly not differentiate the originator of the message for the consuming public.

And if that feels like entirely too much effort to have gone into a single ruling within a broader scope of a trademark suit that is essentially over the ownership of the term "thank you" for business purposes, well, you're not alone. But it seems like we'll have to wait a bit longer for the full ruling and, hopefully, the eventual disbanding of Citigroup's insane "thankyou" trademark entirely.

Filed Under: injunction, thank you, thanks, trademark
Companies: at&t, citigroup

Citigroup Sues AT&T For Saying 'Thanks' To Customers

from the you're-welcome dept

Whenver we discuss a particularly egregious case of trademark abuse, usually centered around the trademarking of some insanely common word or phrase, there's always at least one instance of "that joke" in the comments. You know the joke I'm talking about: well, I'll just trademark X and sue everyone, where X=super-common word or phrase. For example: "I'll just trademark "trademark" and sue anyone who uses a trademark!", or, "I'll just trademark "the" and sue everyone who uses it!" These jokes play on the common problem of generic terms being granted trademarks, but of course they are examples so ridiculous that it couldn't happen for those specific words and terms. Still, to our lovely commenters, we say, "Thank you."

Or not, because it appears Citigroup has a trademark on "THANKYOU" and is currently using it to sue AT&T for using "Thanks".

Who knew? Banking giant Citigroup has trademarked "THANKYOU" and is now suing technology giant AT&T for how it says thanks to its own loyal customers. This is "unlawful conduct" amounting to wanton trademark infringement, Citigroup claims in its federal lawsuit.

You can close your calendar app on your phone down, it isnt April 1st, and this ain't no joke. The filing by Citigroup is very real and hilarious in its content and claims. First, the filing establishes just how connected "THANKYOU" is to Citigroup.

For many years, Citigroup has used trademarks consisting of and/or containing the term THANKYOU, including THANKYOU, CITI THANKYOU, CITIBUSINESS THANKYOU. THANKYOU FROM CITI, and THANKYOU YOUR WAY, in connection with a variety of customer loyalty, reward, incentive, and redemption programs (collectively, the “THANKYOU Marks”). As a result of Citigroup’s longstanding, extensive, and widespread use, marketing, and promotion of its THANKYOU Marks and services, Citigroup’s THANKYOU Marks are widely recognized by the general consuming public as a designation of source for Citigroup’s high quality financial services and customer loyalty, reward, incentive, and redemption programs.

In other words, everyone knows that when a business says "thank you" it's talking about Citigroup loyalty rewards. Duh. As per usual, the first folks to blame over this idiocy are at the USPTO, which granted a trademark on the term "THANKYOU". Why would you do that, USPTO? Have you lost complete control over your mental faculties? There was literally zero chance that this exact kind of dispute wouldn't be raised.

Which doesn't mean we can't point out that Citigroup is being an asshat here. You're probably thinking that there's no way Citigroup is actually suing AT&T for being gracious in its branding, but you'd be exactly wrong. Again, from the filing:

Despite actual knowledge of Citigroup’s substantial use of and exclusive rights in the THANKYOU Marks, Citigroup’s use of the marks in connection with AT&T co-branded credit cards, and Citigroup’s concerns regarding AT&T’s proposed trademarks, AT&T launched a customer loyalty program under the trademarks “thanks” and “AT&T thanks” on or about June 2, 2016. 4. AT&T’s use of the “thanks” and “AT&T thanks” trademarks is likely to cause consumer confusion and constitutes trademark infringement, false designation of origin, and unfair competition in violation of Citigroup’s rights. 5. Citigroup therefore seeks to enjoin AT&T’s infringing conduct and to recover damages based on the injury AT&T’s conduct has caused to Citigroup as well as AT&T’s unjust enrichment.

What. The. Hell. The notion that the use of the term "AT&T Thanks" will cause confusion for the customer is so blatantly insane that it's hard to know where to begin. I mean, it's got "AT&T" right there in the words, Citigroup. As for trademarking "THANKYOU" and suing over the use of the word "Thanks"? Hell no. There's no way that should have ever been allowed and I'd be shocked if AT&T doesn't immediately petition to have the trademarked expunged. And I'd be shocked if that petition wasn't approved with haste.

But then again, it got approved in the first place. Than-, er, great job, USPTO.

Filed Under: thank you, thanks, thankyou, trademark
Companies: at&t, citigroup

SEC To Second Circuit: 'Please Don't Make Us Do Our Jobs!'

from the hens-guarding-the-foxhouse dept

You don't want to live in a town where the police and the mob work together.

In a completely unrelated note, the Second Circuit recently heard arguments from the SEC — the federal agency statutorily charged to enforce the nation’s securities laws — and Citigroup — a company targeted for securities laws violations that it refuses to admit or deny committing — on the SAME SIDE.

This should be a red flag.

They wanted the Second Circuit to spank Judge Jed Rakoff for having the audacity to ask the SEC to kindly do its job. The nerve of some people.

Well, securities law may not be as sexy as drone strikes, but I watched the SEC try to pull off just as naked an executive power grab.

So it was my first return in my new capacity as a journalist to the federal courthouse that I’ve visited time and time before as a lawyer. It’s a different experience walking in without a suit and without drilling yourself to make sure you remembered everything you needed for the hearing. Almost relaxing in a way.

The courtroom was an absolute zoo, built far too small for a hearing that had the attention of the media and every financial institution worried about the future of their relationship with their regulator. Add in the army of clerks dropping in to watch, and the courthouse had to set up an overflow room with folding chairs and a TV simulcasting the event (and even that room was eventually standing room only).

When I first got there, the TV only showed the floating face and torso of Judge Rosemary Pooler, joining the proceedings from the Northern District of New York, in a courtroom that looked eerily like the backdrop to a hostage video with sparse, utilitarian walls, a light switch and a flag. I felt bad watching her sit like an interviewee in a green room with a hundred lawyers and journos watching her every move. It felt like Legal Big Brother.

The background of the case is simple enough. In 2011, the SEC and Citigroup brought a consent decree to Judge Rakoff. The judge felt obliged to ask for some factual backup before rubberstamping a decree that basically let Citigroup off the hook for activity that, at the time, public opinion thought pretty severe. When the SEC and Citigroup failed to meet this basic standard to Judge Rakoff’s liking, he declined to approve their consent decree. Basically, if the SEC really has gathered enough evidence to reach a reasonable settlement with someone, they should be able to provide the judge with some evidence to back up its reasonableness. In math class you have to show your work.

This isn’t the first time Judge Rakoff has issued a controversial ruling challenging accepted government policies. Remember, this is the guy who made the death penalty unconstitutional for a hot minute. Now he’s questioning the SEC’s chummy totally professional and arms-length relationship with Wall Street.

Interestingly, because the subsequent acquittal in the Stoker case brought to light facts that the SEC and Citigroup originally failed to provide Judge Rakoff, he no longer believes that he must deny the consent decree and would almost assuredly approve the agreement on remand. No harm, no foul, right?

But Michael Conley for the SEC and Brad Karp for Citigroup weren’t thrilled with this possible result, asking the Second Circuit instead to reverse the lower court decision.

Why? Well, the money exchange came when Judge Raymond Lohier (the final judge on the panel was Judge Susan Carney) asked about deference and why an Article III judge would question the judgment of an executive agency that presumably reached its decision based on a sound review of the evidence.

The lawyer for Judge Rakoff, Rusty Wing [disclosure: I used to work with Rusty at LSW, though I had no involvement whatsoever with this matter], pointed out that the SEC is entitled to deference — but that doesn’t mean they aren’t wrong, eliciting laughter from the audience and a snarky “No! Really?” from Judge Lohier himself.

It sounded a lot like the SEC was going to the mat on this one because they didn’t want “deference” as much as they wanted “tyranny” — a ruling affirming that any decision they reach is subject to zero judicial review based on their status as part of the executive branch because we should all just trust the executive branch without any transparency. Sounds a lot like drone strikes to me.

Depending on the outcome of the hearing, when Mary Jo White gets there and starts kicking tail, as Elie suggests, she will have a couple drones at her disposal.

Judge Rakoff Rejects SEC’s “Contrivances” In Citigroup Settlement [Forbes]

More stories from Above The Law:

• California Law School Claims Free Speech Right To Offer Piss-Poor Education And Be Accredited For It
• Mom Hires Lawyer to Force Son to Go To The U. Amateurs!
• A Law School Scarier Than The Job Market?

Filed Under: oversight, sec
Companies: citibank, citigroup

And Then There Were Three: Bye, Bye EMI

from the another-one-bites-the-dust dept

The major labels have been dropping one by one. Of course, they never "die out" completely... they just get weak enough until someone buys someone else. The Big Six became the Big Five when Universal took over Polygram. The Big Five became the Big Four when Sony (formerly CBS Records) and BMG effectively merged. And, now we're down to the Big Three as Universal and Sony pick off the remains of EMI. This was pretty much a foregone conclusion that there would be some sort of merger, when Citibank took over EMI after EMI defaulted on its debt obligations. Universal is picking up the music division for $1.9 billion while Sony gets the publishing side for $2.2 billion. Universal was already the world's largest record label, so adding the likes of the Beatles, Coldplay and Katy Perry to its roster must be appealing. Of course, there's some concern among regulators that this raises antitrust questions, but I really don't see the issue here. Universal Music has been self-imploding by failing to adapt. I don't see how merging it with EMI will do much other than to allow it to continue to be a nuisance and continue to not understand how to embrace the internet. Besides, spending $1.9 billion for more back catalog, rather than investing that kind of money into actually adapting? If anything, this simply accelerates the decline of these labels.

Filed Under: major labels, mergers, record labels
Companies: citigroup, emi, sony, universal music group

On NYT Paywall, Citigroup says 'Good Buy'; Techdirt says 'Hello!?!'

from the say-what-now? dept

We've been having some fun mocking the NY Times paywall, which makes no sense to us at all. While we're sure some people will subscribe, the overall math is hard to make work, especially considering anyone who wants to can easily get around the paywall. In fact, the way the NY Times set up the paywall, it actually takes away significant value from the NY Times itself. Instead, it drives that traffic to other sites that link in to NYT stories, because readers don't use up "free clicks" if they come in via other sites.

In the meantime, we've got plenty of stories of other paywalls out there that suggest that people aren't particularly eager to sign up for paywalls. Some will. Perhaps a fair number will. The NY Times has the kind of brand that will certainly lead a bunch of people to just subscribe, perhaps without realizing they really don't need to do so.

However, consider ourselves confused and scratching our heads to hear that an analyst at Citigroup, Leo Kulp, is making the rather shocking prediction that "Revenue generated by an annual digital subscription will likely dwarf the advertising revenues generated by even heavy users." Say what? The only way I can see this happening is if the NY Times has the world's worst online ad sales force, which I doubt. And, of course, we already have some data on a NY Times subscription plan, back from the last time they tried a paywall. It generated some money -- about $10 million per year. Not chump change, but hardly a huge number for a publication like the NY Times, which was why they did away with it. They knew that expanding ad revenue was a much better plan.

So can anyone explain the math by which the NY Times' digital subscription revenue will "dwarf" ad revenue? I've been plugging numbers into spreadsheets, and unless the online ad market totally collapses, I just can't see the math making any sense.

Filed Under: business models, economics, paywalls
Companies: citigroup, ny times

Jury Finds Terra Firma Just Made A Bad Deal In Buying EMI

from the well,-that-went-without-saying,,, dept

Way back when private equity firm Terra Firma bought record label EMI, we actually had some hope that by putting in place some folks with a different viewpoint, they might actually help EMI make the transition to the new world that the other record labels were unwilling to do, since they were too tied to the past. And there were a few encouraging early signs. EMI's new boss, from Terra Firma, Guy Hands, told everyone at EMI that Radiohead's business model experiments should serve as a wake-up call to respond to new challenges with "creativity and energy," rather than lawsuits. Along those lines, he also threatened to withdraw from the RIAA and the IFPI. Finally, he hired two big name techies: including Google's former CIO and Second Life's co-founder.

However, there were also indications that the company was still very much unable to adjust, and didn't really welcome those outside views. Part of it, apparently, was that EMI's attempt to negotiate new deals with its biggest artists was done in a somewhat tone deaf manner, which pissed off those artists, who got the impression that EMI was trying to take advantage of them rather than trying to help them. On top of that, the company backed down on its threats to leave the IFPI and the RIAA... and instead became one of the more aggressive record labels in suing innovative start-ups and directly suing their execs in attempts to bankrupt them. It wasn't much of a surprise that the two tech superstars EMI hired both left pretty quickly, as it became apparent they were marginalized within the company.

With this approach, not surprisingly, EMI has suffered massively in the market, and last year, Terra Firma tried to pin the blame elsewhere by claiming that Citigroup had mislead the firm into buying EMI, convincing the private equity firm to overbid. As we noted at the time, this seemed hard to believe. It was no secret that the record label business was in bad shape at the time and really needed a different approach if it was to survive. The problem was that, for all of the early talk, Terra Firma and Guy Hands never really figured out a way to change the company at all.

Now a jury has ruled against Terra Firma saying that Citigroup did not mislead Terra Firma and, basically, Terra Firma just made a bad deal. Considering how they've run EMI, perhaps this is not too surprising. Of course, this also means that Terra Firma is not going to get out of the massive debt obligations it owes Citigroup, which likely means that Citigroup will get to takeover EMI, meaning it will sell off the pieces (most likely to Warner Music) knocking the major record labels down to just three: Universal, Warner and Sony. It seems that, as long as they keep merging, they can pretend that it's okay that they refuse to adapt.

Filed Under: record labels
Companies: citigroup, emi, terra firma

DMCA As Censorship: Citibank Doesn't Want You To Remember What It Said About Obama's Bank Reform Policy

from the streisand-enters-stage-right dept

We've been discussing quite a bit lately how copyright law is often used not as a tool to provide incentive to create, but as a tool for censorship. Here's the latest example. John Bennett points us to the news that Citigroup filed a DMCA takedown request with Wordpress.com over the site LBO-news' 18-month old post that presented a copy of Citigroup's analysis of Obama's (then new) bank reform plan, which noted that it was actually quite bank-friendly. The key quote in the report: "the US government is following a relatively bank-friendly, investor-friendly approach."

Of course, these days, Wall Street is looking for more favors, and has been complaining about the regulations that the administration put on them as being too onerous. So, firms like Citigroup aren't too happy about anyone remembering the fact that it knew the regulations weren't at all onerous, but were extremely friendly to banks and Wall Street. So it issued the DMCA takedown on the report. Of course, as economist Brad DeLong has noted, this is clearly not about copyright issues. It's not a case where the infringement is harming the "market" for that report. The only reason to file a DMCA is to try to hide the report:

Today--nineteen months after this document was written--it is of historical interest only: none of Citigroup's paying clients would pay a cent for the information contained in it, for nobody could in any way profitably trade today on Citigroup's February 2009 analysis of the policies of the Geithner Treasury....

Whatever you think about the DMCA, it should not be used to prune the historical record of primary sources about how various economic policies were perceived at the time.

DeLong is now hosting the document himself (pdf), so if anyone wants to see what Citigroup would prefer you don't see, check it out (oh, whoops... or is that contributory infringement?).

Filed Under: censorship, dmca
Companies: citigroup

Private Equity Firm That Bought EMI Sues Citigroup For Misleading It Into Deal

from the oh-come-on dept

You had to be pretty clueless in 2007 not to recognize that the major record labels were seriously struggling. Still, we thought that the decision by private equity firm Terra Firma to buy EMI in 2007 might actually be an opportunity for a major record label to change, since the new bosses did not come from the recording industry, and weren't saddled with silly preconceived notions about how a major record label had to do business. And, early on, things actually looked positive. New boss Guy Hands was quick to embrace Radiohead's experiment and let everyone at EMI know that they needed to learn from it, rather than deny it or freak out about it. He also threatened to leave both the IFPI and the RIAA if they didn't stop suing fans (eventually he stuck with both, but cut their allowance). On top of that, he hired some smart outsiders to help.

Since then, however, everything has pretty much collapsed. While they weren't saddled with preconceived notions, they were saddled with dreadful contracts, and every attempt to change them resulted in charges from EMI's biggest artists that the company was trying to screw them over. On top of that, the company started giving really mixed messages. At times it seemed to be embracing the new, and at other times, it would try to personally bankrupt the CEOs of innovative startups. It didn't take long for the tech experts EMI brought in to quit. Then, there were stories of infighting at Terra Firma, with arguments over what to do with EMI altogether, which could explain some of the contradictory strategy decisions.

Either way, Terra Firma has now decided to sue Citigroup for misleading it into the deal. Again, given the state of the recording industry, it's hard to see how they thought it was going to be a good deal in the first place, but Terra Firma claims that Citigroup lied to Terra Firma about other bidders to get the firm to pay more and pay now -- noting that Citi had a major conflict of interest in acting both as an advisor and a financier of the deal. Of course, that's how investment banks make their money anyway. They want deal flow, so they have a neat little script that always encourages more deal flow. At times, they talk about synergies, and why companies need to buy each other, and then once they get big, they talk about spinning off parts to "unlock shareholder value." You can't trust those guys for an honest assessment of such a deal, and if Terra Firma did so, it seems like it should be the firm's own fault.

Filed Under: lawsuits, music industry
Companies: citigroup, emi, terra firma