Obviously, the God Squad logo -- including the use on the same sort of car -- was used to build off of the brand reputation (which, um, isn't that good) of the Geek Squad. The priest could argue parody fair use, but it doesn't seem that the effort is commentary on the Geek Squad so much as it's just designed to get attention. It's worth noting, of course, that there are other "God Squads" out there as well, including a long running TV show, so at the very least, it does look like Best Buy has focused on this case due to the more direct similarities beyond the name.
Still, it does make you wonder if there's any actual likelihood of confusion. While this may get some attention, is anyone actually going to think that the priest is somehow associated with Best Buy? Does Best Buy's trademark even cover religious services (beyond the ever popular religious debates on operating systems?). In a legal battle between God and a moron in a hurry, who wins? And, most importantly, does it even make sense to antagonize someone obviously doing something like this for the fun of it? I recognize the traditional trademark lawyer response that a company "has to protect its trademarks," but that always ignores that there are other, much more friendly options.
In the meantime, if we're talking about God and intellectual property, it seems worth re-running the Mimi & Eunice cartoon on the topic:
The more you travel, the more you realize just how many different options there are in restrooms around the globe to enable people to dry their hands. However, if you see a particular brand of paper towel dispenser, do you expect that a related brand of paper towels will come out of them? And should it be trademark infringement if they do not? Apparently, the company Georgia Pacific makes the EnMotion brand of paper towel dispensers for restrooms -- and includes a contractual provision that those used will only use EnMotion brand paper towels. Another company came up with competing paper towels that worked in the EnMotion dispenser. GP sued the company making the replacement paper towels, claiming contributory trademark infringement -- saying it's akin to a Coca-Cola soda machine, where people expect Coca-Cola to come out of it. That may be true... but does anyone actually expect a specific brand of paper towel to come out of a random dispenser? GP, of course, found "experts" to conduct studies that said yes, but that seems difficult to believe. Perhaps I'm missing something, but does anyone out there actually expect a specific brand of paper towels out of a particular dispenser?
GP is claiming that the other company is guilty of contributory trademark infringement, which would mean that anyone using these replacement paper towels could be guilty of direct trademark infringement, which seems like a blatantly ridiculous reading of trademark law. The lower court agreed that this was ridiculous and found no evidence of any kind of confusion among the distributors involved in selling and stocking the EnMotion dispensers. However, the appeals court points out that it also needs to be considered whether or not the real end-users were confused -- and notes that there's significant evidence that people might be confused. I still don't buy it. I can't recall ever even caring what brand paper towels comes out of a dispenser. If asked I might just say the same brand as the dispenser company, but that's just because it's the easiest answer, not because it needs to be.
For now, the case has been sent back to the lower court to determine whether or not end-users are really confused. Perhaps the court can hold part of the session in the court's restrooms to determine whether or not there's a real "likelihood of confusion."
Not again. What is it with major international sporting events and governments' willingness to bend over backwards to give them extraordinary intellectual property protections? We all know about how the Olympics seems to always get intellectual property rights that go beyond any standard trademark laws. And we've seen similar things with the FIFA World Cup. Apparently, the same is happening for other "World Cups" as well. Lawrence D'Oliveiro points us to the news that the Rugby World Cup was able to get a special law passed in New Zealand that could make using those three words together in the wrong way subject to fines of up to $150,000. Basically, you can't say those words in any sort of fundraiser, promotion or event, unless you're an official sponsor. The Rugby World Cup people promise they'll "use common sense" before going after anyone using those words, but already some fundraisers and car rental shops have been told to change their signs for mentioning the World Cup.
Earlier this year, we noted that the French government organization put in charge of enforcing the new "three strikes" law in the country, Hadopi, had used an unauthorized font in creating its logo. The organization also got in some hot water over leaked plans for ways to monitor users. The latest, as pointed out by Glyn Moody, is that someone else beat the organization to apply for a trademark on "Hadopi." The article seems to suggest that this guy who applied first is likely to get it, but that doesn't make much sense to me. At least in the US, you need to actually use the trademark in commerce to be eligible for it, and it's not clear this guy is doing anything at all with Hadopi. On top of that, there's such a thing as common law trademarks for those who used the mark first -- but, again, I'm not quite sure how that works in France. Any European trademark lawyers want to weigh in?
Either way, if the guy does get it, he's planning on suing Hadopi. The guy did this in the first place because he's not a fan of the three strikes law, and thinks that there should be some more discussion on it. Oh yeah, he's also promoting his own online music service as well, so this is certainly a large publicity stunt. Still, for an organization that's supposed to be about "protecting intellectual property," it hasn't shown itself to be very on the ball so far.
With Skype announcing a planned IPO this week, there didn't seem to be that much to comment on. However, people digging through the filing found one previously unknown tidbit that's generating some buzz. Apparently, the Rupert Murdoch-owned satellite broadcasting company BskyB has been involved in a long legal battle with Skype over its name. Apparently, BSkyB thinks anything using the letters "sky" infringes on its trademark. Of course, it's difficult to see how anyone could possibly be confused, but BSkyB claims to have market research that says otherwise, and apparently an EU ruling has agreed -- though Skype is planning to appeal.
Ah, pre-crime. THREsq has a worrisome story of a couple of recent lawsuits by concert producers pre-suing potential bootleggers claiming trademark infringement. Yes, they're claiming trademark infringement for something that hasn't happened yet, and simply listing out hundreds of John Doe and Jane Does who can later be filled in. As a part of this, they're getting law enforcement involved by using the lawsuit to ask the court to order US Marshalls, local and state police and even off-duty officers to go ahead and seize and impound the bootlegged material.
It's really quite something to read the lawsuit which refers to possible events happening in the future:
The article notes that it seems unlikely that any defendants will show up in court to defend themselves or to protest the lawsuit, since they haven't done anything yet. So, basically, the lawsuit is allowed because there's no one to contest it, because who's going to contest such a lawsuit? THREsq reasonably points out how troubling this trend is:
The threat of bootleggers is real, of course, but it's based purely on speculation, without evidence of the kind of past specific misconduct that might trigger temporary remedies as seen in criminal proceedings. That seems odd, and perhaps a slippery slope. Why can't any company in America file John Doe trademark action and get police to seize goods they believe will be infringing? What stops this beyond the concert venue?
On Monday, we wrote about the ridiculous manner in which The Discovery Channel was treating a fan site that it had previously supported strongly. At the very top we clearly noted that the domain name of the site -- DeadliestCatchTV.com -- was indeed a problem, and I could totally understand the trademark claim. But there are all sorts of ways this could be dealt with, and The Discovery Channel appears to have chosen the absolute worst. First, it's important to point out that for over a year (at least), The Discovery Channel has actively supported this fan site. Not only did staff members happily email the site's owner, John White, with encouragement, preview videos and content, but it also linked directly to the site on the official webpage for the show Deadliest Catch -- even "framing" White's site with its own dashboard.
However, after actively supporting the show, suddenly Discovery switched 180 degrees and sent over a legal nastygram, demanding that the site be taken down and the domain handed over. Beyond the (again, probably legitimate) trademark issue, the lawyers added on the absolutely ridiculous claim that White's embedding of clips from the Discovery Channel's own YouTube channel (that had embedding enabled) was copyright infringement. This is copyfraud. Discovery specifically chose to allow the world to embed. To then accuse someone of copyright infringement for doing so is blatant legal bullying.
What struck me as interesting, however, was how quiet The Discovery Channel was in response. After our story, this situation started getting a lot more attention, and I started to see a long series of tweets of links to the post directed at the Discovery Channel's official Twitter channel. While the anonymous official tweetmeister of The Discovery Channel happily tweeted with others about various shows and personalities, there was not a single response to the dozens of people asking The Discovery Channel to explain why it turned on John White.
I found this interesting, so I noted the silence in a Twitter message myself. Within seconds, I had in my email in-box a "statement" from Discovery's VP of Communications:
There have been some recent questions about the use of Deadliest Catch content on non-Discovery websites. Discovery Channel's policy of allowing fan sites to use embeddable videos has not changed. We value and appreciate our online fans, and are always open to sharing clips with sites that feature Deadliest Catch and our other programming. Our policy does not, however, permit the use of confusingly similar domain names that infringe on our trademarks. This also extends to the use of photographs that are subject to license limitations designed to protect our talent and our brands. We are as committed as ever to our partnerships with our fan sites, and look forward to continuing to work with you and your content needs.
Except... that barely addresses one small aspect of the problem. It seems to admit that the lawyers went way beyond what was reasonable in threatening White over the embeds, but doesn't appear to offer any sort of admission of a mistake or apology. But, more importantly, the statement doesn't address the fact that The Discovery Channel had actively supported the site for at least a year, before suddenly switching tactics and sending legal nastygrams. Also, that final statement is clearly false. If The Discovery Channel was "as committed as ever to partnerships with fan sites," it wouldn't nastygram them.
So, since we aim to be constructive around here, here are a few suggestions on how The Discovery Channel could have dealt with this situation:
At whatever point The Discovery Channel realized that it was uncomfortable with the similar domain name, even though it had supported it in the past, it should have politely reached out to John White. They should have acknowledged how happy they were with the community he had built and how much he had supported the show, and then discussed alternatives for dealing with the potential trademark issue. This should have been done by someone who was not outside legal representation in a friendly letter. Obviously, any such letter should have been reviewed by legal staff, but it should not have been a threat letter.
In reviewing the options, The Discovery Channel could have offered up a variety of positive alternatives that showed it really was "committed as ever to partnerships with fan sites." For example, it could have offered to help transition the site to a new domain, including promoting the new domain, or it could have offered some sort of very inexpensive or possibly free "license" to use the name in a legitimate manner, without having to worry about genericizing the trademark (probably the lawyers' concern).
Once the story broke and it was revealed that the lawyers bullying John White did so with dubious claims, The Discovery Channel should have been quick and forthright in issuing an apology for making threats that went beyond the legal boundaries of its own rights.
Finally, rather than staying totally silent about this on the official Discovery Channel Twitter feed just as dozens of people were asking what was going on, The Discovery Channel should have engaged with people questioning its actions, explained its position clearly, apologized for the mistakes and overreaching, and promised that it would handle such situations more appropriately in the future.
Unfortunately, it looks like The Discovery Channel did none of that.
Oh yeah. One amusing post script? This whole thing comes just a couple weeks after a judge ordered TLC (owned by Discovery) to change the name of the show Cake Boss, for infringing on a software company's trademarks. So the company should know how it feels to be on the receiving end of a trademark threat. Too bad that rather than deal with it in a nice manner, it simply sent out its legal sharks.
I remember, when first learning about trademark law, thinking how bizarre it was that having your name be considered "generic" was a bad thing. After all, when your brand became synonymous with the product you were selling (think Kleenex, Xerox, Band-Aid etc.) it meant that you had really dominated the product category. Except... if you're a lawyer. Because the fear, of course, is that if your brand becomes generic, you lose the trademark, and then suddenly others can make use of that brand that you worked so hard to build up. I'm still not convinced that's really a problem if you're a savvy business person, but it's the way things are.
However, as something of "natural" proof of this, just look at how much of a gold rush there was in the early dot com era for "generic" dot com domain names. Everyone involved in those businesses just knew why this was important. They believed that by having those key generic terms, "books.com," "pets.com," and even "sex.com" that you would be one of the first places people would go, even if they didn't know who you, as a company, were. Of course, it actually didn't turn out that way for many players who ended up with those domains. A lot of the early companies who had "great" domains faded pretty quickly. Execution matters more than just a good name.
And, of course, this whole generic business really gets in the way of that backwards trademark view, where having your name be generic is "bad." For example, in a recent lawsuit, AOL learned that its advertising.com domain name isn't really valid as a trademark because of its generic nature. In fact, the court notes that if people are asked about a company, it's perfectly reasonable to describe it as "an advertising dot com." I also like how the court smacked down AOL's claim that without getting a trademark on advertising.com it would take business away from the company:
this is the peril of attempting to build a brand around a generic term.
Exactly. If you want the advantages of building around a generic term, you also have to realize there are some trade-offs, and one is that you don't get to trademark it. However, as we noted when a similar ruling came down last year against hotels.com, it's not clear how much this really matters. It only matters if you overvalue the trademark. The domain itself is still unique and the brand is still unique. So does the trademark really even matter?
John from the soon-to-be-gone-from-the-internet site DeadliestCatchTV.com, alerts us to the news that lawyers from The Discovery Channel are taking down the site. Now, let's get the basics out of the way: the lawyers probably do have a trademark claim here. Certainly from the domain name, you might think it's an official website for the show. The site does have "not affiliated..." text, but it's hidden all the way at the bottom. If you were trying to avoid a "likelihood of confusion" problem, I would imagine it would help to make it very, very clear at the top of the page that the site is a fan site and not the official site. That said, there are a lot of problems with the way Discovery is treating this situation.
First of all, in the past, The Discovery Channel actively supported John, and he's reposted an email he received not so long ago from someone at the Discovery Channel offering him free content and happily celebrating the site. Here's a couple excerpts from the email:
From: DiscoveryChannel
To: Admin
Hi Editors @ DeadliestCatchTV ,
My name is Soumik Pal, I work at Discovery Channel and I'm writing to offer you free preview content and assets from the new season of Deadliest Catch! We feel that the show is a great fit with your site (and especially your readers) and would love to get the word out about some exciting new Catch initiatives this season!
[...]
To get your readers ready for the new season, I've included the official press release, high-quality preview videos, exclusive photography, brief episode descriptions and much more...
[...]
I'm happy to act as your point of contact for any additional requests and we hope your readers might like some of the content we've provided! Please let me know if there's anything more we can provide you with to help get geared up for the new season of Catch.
Thank you!
Soumik Pal
Digital Media, Discovery Channel
Discovery Communications
That certainly makes it sound like Discovery and the folks involved with the TV show are quite happy with the fan site and community that John put together. In fact, that seems like a great way to encourage and nurture a fan site. Actually, the folks behind the show have gone much further. On the official site for The Deadliest Catch, the show actually lists & links to fan sites including DeadliestCatchTV.com. They even set it up so that if you click on the link, it loads the fan site, with the official Deadliest catch "dashboard" (see below). And, as of right now, you can even see a wrapped version of John's site on the official Discovery channel page. That certainly looks like a show that wants to support its fan sites:
So, again, this is clearly a show that has long supported this site with direct emails, sending them content, encouraging them to share it with other fans of the site, linking to the site from the official site and wrapping the page with its own "Deadliest Catch Network" Dashboard. You would think, at the very least, if the company decided to change its policies, that it would send over a friendly note -- rather than sending a legal nastygram. No such luck.
John asked the lawyers who contacted him about Soumik Pal's email:
When I questioned this with Discovery I was told only the employee no longer worked at Discovery and they "were looking in to this". The second lawyer I spoke to from Discovery stated that they had a change of heart and have now decided they wanted to police any sites using their material (Although previously they were providing it for promotion purposes).
Again, a change of heart is fine -- but sending the lawyers to deliver it with threats? That seems ridiculous. It's a way to turn a bunch of fans into people who will never want to have anything to do with The Discovery Channel again. It's a case study in exactly how not to deal with social media.
Oh, and it gets worse. Beyond the basic trademark threat of the domain name, Discovery's lawyers claimed that John was committing copyright infringement by embedding official videos from the show's YouTube account on his website. I'm not kidding. The Discovery Channel has an official YouTube channel, where it uploads videos and has embedding turned on. So, not surprisingly, John has embedded some of these official clips on his site. I'm about to do the same. This is the last video that John posted:
It's from the official Discovery Channel YouTube feed, and embedding is turned on. But... according to Discovery's lawyers, this is copyright infringement. John asked the lawyer about this, and the guy insisted that while this might be "confusing" -- that embedding the official videos was still copyright infringement. Someone might want to tell the marketing guys who enabled embedding.
The one issue that I really question is that part of the claim made by Discovery was that my "...display of and/or provision of access to unauthorized copies of our client's copyrighted material infringes Discovery's copyrights..." The material in question were actually videos that were posted BY DISCOVERY on YOUTUBE where the embed code was made available for all to use. I spoke to one of the lawyers briefly on the phone today and he understood how this could be confused but maintained that even though the code is there you are NOT ALLOWED TO USE THE EMBED CODE ON ANY WEBSITE.
Frankly, this whole thing screams of some seriously mistaken or confused lawyers associated with The Discovery Channel, who not only seem to be completely out of touch and clueless as to how the internet works, but aren't even talking to the marketing people involved. These lawyers are actively undermining the show's own marketing efforts, pissing off fans, and closing down a large and popular fan group of the site with highly questionable legal claims.
Unfortunately, it looks like John is giving in to the lawyers. He's said that the site will disappear as of August 11th, and the Discovery Channel will take over the domain. Again, I can understand the potential for some confusion with the domain name, but there were much better ways for Discovery to handle this. Perhaps The Discovery Channel is taking the concept of its famous Shark Week way too far, and turning its lawyers into sharks. They should watch out, as when you let the sharks loose on your biggest fans, they can come back to bite you.
There have been so many baseless lawsuits against Google for selling trademarked keywords as part of its AdWords program, that you would think lawyers would recommend against even bothering. Google always wins -- as it should. First of all, despite what some people believe, trademark does not give you complete control over the mark. The purpose of trademark law is to avoid consumer confusion. More recently the whole "dilution" theory has been tacked on to trademark law as well, but that is still somewhat limited. Beyond that, if there is consumer confusion in an AdWords ad, Google is still the wrong party to sue. Instead, the liability belongs on whoever created the confusing ad.
While a lot of the more recent such cases have been from smaller companies, a lot more attention was paid to the news that language software firm Rosetta Stone sued Google over this issue last year. Eric Goldman, who's been tracking all of these types of lawsuits against Google, has a detailed discussion on the judge's ruling throwing out Rosetta Stone's case and giving a pretty complete victory to Google. Goldman notes that there are a few problems with the ruling, but it gets the big questions right. Now, hopefully, lawyers and companies will finally start to realize there's nothing illegal about Google selling ads on your trademarked terms.
