After someone alerted Chrysler, the lawyers got involved, and the school is now in the process of changing its logo and removing it from everything (including the gym floor). My first though was wondering whether or not this was "use in commerce," which is required for trademark infringement. I think a lawyer could make an argument that a school's usage isn't use in commerce -- but perhaps that's undermined by the logo appearing on school clothing (though, it's not clear that the clothes are for sale, or just what the sports teams get). However, I do wonder if the Dodge logo trademark covers use on gymnasium floors and clothing...
But, honestly, the bigger issue is why the hell would Chrysler be upset about this? At worst it's getting a ton of free advertising from this school, with many students having a feeling of affinity for the logo, which could potentially increase their interest in buying a Dodge in the future. Car companies spend lots of money on sponsorship to get their logos seen by lots of people. And here's a school that's done that entirely for free... and Chrysler sends in the lawyers?
One of the downsides of the modern movement to include trademark law under the same "intellectual property" umbrella as copyright and patent law, is that you get people who think that trademark grants the same sort of overreaching monopoly rights that copyright and patent law do. But trademark law is really quite different -- it's designed as something of a consumer protection law, meant only to prevent confusing uses of the trademark in a way that would imply a product is made or endorsed by someone else. But since people still think of trademarks like copyrights and patents, they often conclude that they can try to stop people who aren't violating the trademark at all.
Reader Reverand Dak alerts us to the news that Lone Wolf Development, a video game developer (who, we're told, has no relationship with Lone Wolf Roleplaying Games nor with Lone Wolf & Club manga), received a trademark on the term Army Builder in connection with a game that they created under that name. No problems there. But apparently Lone Wolf has been sending out cease-and-desists to websites that have nothing to do with Lone Wolf's Army Builder, and demanding that the phrase be blocked in forums on totally different subjects. Yes, they're saying that no one can use the term in conversation:
There are two things that need to be done. First of all, improper references to the Army Builder trademark on the forums must be addressed. This can be achieved in either of two ways, or potentially a combination of both, at your discretion. The first option would be to remove such posts. Since this could appear harsh and potentially disrupt forum discussions, an acceptable alternative would be to revise such posts to utilize a generic term (e.g. "roster construction tool", "list createor", or "points calculator") in place of the "Army Builder" name.
The second thing that needs to be addressed is that your forum users must be educated about the term Army Builder being a trademark and only applicable to our brand of products. This is necessary to avoid an ongoing problem and mitigate the future need for removal of improper posts. I'm sure you would also prefer that the forums continue to run smoothly and without interruption, so your assistance in getting forum users to utilize appropriate terms will benefit us all.
Or, you know, instead of educating all forum users around the world that they can no longer use the term "Army Builder" in conversation, how about we just educate the folks at Lone Wolf Development on the limits of trademark law and why it almost certainly does not apply to random forum users using the term in a way totally unrelated to Lone Wolf Development's mark.
Update: As pointed out in the comments -- and in a friendly email from Lone Wolf's lawyers -- Lone Wolf has backed down a bit and sorta, but not really, apologized. The guy claims that he's not a lawyer (though, whoever emailed us said they were a lawyer representing the company), and didn't quite realize what he was doing (and it showed). They still claim they want to block "potentially confusing and infringing uses" but our commenters raised some serious questions about the descriptive nature of the mark, and whether or not it should have been allowed in the first place. Still, let this be a lesson to folks, yet again, that acting as a bully tends to backfire.
Boing Boing points us to the news that Heavy Ink, an online comic book shop, is pushing back against the lawyers for geeky TV personality Olivia Munn, after those lawyers demanded Heavy Ink destroy all copies of an Olivia Munn parody comic book called the Celebrity Showdown Olivia Munn One Shot #1. Of course, since Heavy Ink is just the retailer, it's not responsible for the content itself anyway, so the original letter was somewhat mistargeted, but even so, Heavy Ink makes the argument that the comic book itself is protected parody:
where she displays near topless pictures and links to a cover shot at
Maxim magazine.
Given these two websites, it is clear that she is a public figure. As
a public figure, the use of her likeness meets the tests for the
parody copyright exception set forth in both Campbell v. Acuff-Rose
Music, Inc. and the more recent Suntrust v. Houghton Mifflin.
As such, we have no intention of taking down our webpage, destroying
any inventory, or refusing to offer the comic for sale.
If you have any further comments you may reach me at this email
address,
A few weeks ago, when I attended Public Knowledge's World Fair Use Day, I had been excited to meet the guy behind ICanHasCheezburger, Ben Huh, who was supposed to be on my panel, talking about how the various sites he ran make use of fair use all the time. Unfortunately, at the last minute he had to bail. But given how much the network of sites relies on fair use, you would think that the company he represents, Pet Holdings, would be gentle about suing others on copyright claims. Not so much, apparently.
Jhn alerts us to the news that Pet Holdings appears to have sued the site Failbook.com, over cybersquatting, trademark infringement and copyright infringement. You can see the lawsuit here:
Basically, the issue is that Pet Holdings set up a site called Failbooking.com (making fun of poor social networking usage). That site was just launched recently. Someone else, who already owned the site Failbook.com then decided to just use that URL to frame Failbooking. If anything, it seems like this would have been helpful to Failbooking, as it would give them more traffic. While the Failbook.com guy has taken down this message, originally he explained on his site:
There never was a copy of the site under our possession, we've embedded the site, it's a common internet practice
There was no profit on embedding failbooking
The ads revenue from failbook remained 100% to failbooking
Failbooking encourages users to share the fails "Put this fail on your blog: (Copy & paste code)", failbook just did so in an automated manner
There was NO COPY of any copyrighted material
There was NO ALTERATION of any kind of material, nor removal of copyrights
Failbook.com was registered on 02/May/2006, the intention on the acquisition of the domain never was to take advantage of failbooking
The information throughout the lawsuit is misleading, taking advantage of misinterpretation on the use of technology.
On top of that, the Failbook guy points out that there wasn't even a cease & desist or any contact at all. Just a lawsuit. Perhaps there's more to this, but it seems like the Pet Holdings/ICanHasCheezburger guys may have gone on the offensive a little too quickly.
Update: Ben Huh chimes in, both in the comments and via email and makes Pet Holding's case thusly:
1) The owner of failbook.com attempted to maximize the sale price of the domain while trying to trick buyers and users into thinking they were at a legitimate Cheezburger Network site. The owner even tweeted about how easy it was to get traffic this way.
2) The Cheezburger Network was forced to take swift legal action in an attempt to prevent the fraudulent sale of the site (an auction appeared already under way). The filing of the lawsuit prevents the domain transfer and sale from occurring with the registrar in a way a Cease and Desist cannot.
3) We suffered significant expenses and damages because the owner of failbook.com tried to confuse our users and defraud domain buyers. The owner of failbook.com even marketed his domain in the hopes of capitalizing on the success of Failbooking.com.
We have dealt with many domain disputes amicably in the past. However, this is the most egregious case of fraud we have seen. I think it's very clever for him to try to publicly spin his story, but the facts are very revealing. You're absolutely right in that we're a company that relies on the goodwill of our users and fair use. We seriously considered letting the matter slide until we realized that the owner of failbook.com was trying to sell the domain and purposefully confuse our users. We've also contacted the owner of failbook.com several times in order to reach a reasonable settlement.
I'm still not convinced that this is a problem or that any "harm" came to the Cheezburger site. There may, ever so slightly, be a trademark issue if the owner of the Failbook site claimed he was selling a site that was directly a part of Cheezburger/Pet Holdings, but I haven't seen the evidence of that. I could see how a buyer for the site could claim harm against the owner of Failbook, but it's still not clear to me how Cheezburger/Pet Holdings itself was harmed by this or what sort of "fraud" there was. That Failbook tried to capitalize on the situation (and, remember, he owned the domain years before Cheezburger started its site) isn't fraud by itself. I guess I'm still not convinced of why the lawsuit makes sense here.
Update 2: Here's a pdf showing what Failbook.com looked like, which Pet Holdings claims shows the "fraud," though I still don't see the issue. It's just an iframe of the site. Yes, he's trying to sell the domain name, but all the traffic is still going to Pet Holdings, so I'm not sure what the issue is:
Separately, the guys behind both sites are discussing this in the comments, so jump in and see what they have to say. Maybe we can see them work out their differences in real time.
DEF points us to a recent appeals court (federal circuit) ruling that held that the University of South Carolina cannot use the letters USC on its sports uniforms because the University of Southern California already claims those letters. Seriously. It's hard to see how this makes much sense at all. USC is an accurate acronym for both schools, and it makes no sense to limit it. In an amazingly obnoxious gloating victory note, the lawyer for the USC from California "suggested that the letters were more deservedly linked to the Trojans' warrior image than to 'a goofy little chicken,'" by which he meant the logo of the South Carolina teams. The lawyer for the USC from the east coast noted that "Southern manners" kept him from responding to that point.
It seems like every year there's some sort of controversy over trademarks and the Superbowl. Of course, the NFL has been famous for aggressively defending trademarks. For example, it's been so aggressive in claiming that no one other than official sponsors can even mention the word Superbowl (even though it should be legal if used descriptively and accurately), that when many advertisers started switching to the euphemism "The Big Game," the NFL tried to trademark that too, even though it wasn't even the one who had come up with the phrase. This year, apparently, the big issue is over who owns the phrase "Who Dat" which is apparently a catch-phrase associated with the Superbowl-Big Game- Final Sporting Event Of The Football Season-bound New Orleans Saints. The NFL apparently claims that it holds the trademark on the phrase and is threatening some retailers who were offering "Who Dat" merchandise. Only problem? There's a company called WhoDat Inc., and it claims to own the trademark. a-dub points us to an interview with the brothers who own WhoDat Inc., who also recorded the Who Dat song back in the 1980s. It appears the issue, from the NFL, may be with the use of a fluer de lis with the phrase, since the NFL owns the trademark on the fleur de lis in association with the Saints. But the WhoDat folks say even there the NFL is overstepping its bounds:
"Sure, a fleur de lis can belong to the Saints, but in very specific usage, and everybody knows what that is," Monistere explained. "If you go back to 1967, to date, they have registered and used the fleur de lis in a very specific way. They put it on the Saints helmet and on the Saints 'shield.' Its colors are very specific -- they're 'old gold and black.' But for the NFL to expand that definition and say that no matter what color and what style of fleur de lis, if you put it on an item, it means Saints, it is, as many believe, is just not correct. The fleur de lis belongs to everyone including the people of New Orleans.
The Monistere brothers seem particularly annoyed by the NFL bullying small t-shirt makers, saying that they're more than happy to grant licenses to those folks to produce Who Dat merchandise, and merchants have said that the NFL communication has been tremendously threatening and aggressive, while the Monistere's have been quite friendly and accommodating. In fact, the Monistere's seem particularly annoyed that the NFL is bullying small shop owners like Fleurty Girl, who received a cease-and-desist:
"Here we are going to the Superbowl for the first time in 43 years and these NFL guys are here harassing the local small businesses," Monistere said. "Their merchandise sales are well over $320 BILLION a year! The NFL has become an intellectual property company. They make money selling their logos and image. With that kind of money coming in, they focus their attention on Fleurty Girl? I don't have a problem with them protecting their intellectual property, but when they do it to the extent of trying to intimidate people into believing that the Fleur de lis is theirs -- well, that's just a bullying technique."
As for the New Orleans Saints themselves? The organization there has apparently publicly said that WhoDat holds the rights on the trademark.
It really was just about three years ago when Apple announced the iPhone and was quickly told that Cisco actually owned the trademark on the word iPhone. A lawsuit followed, but it was quickly settled with some cash changing hands and all was good. So you would think that Apple would take care of such things in advance these days. Apparently not. mrharrysan alerts us to the news that there are a few other companies with various iPad trademarks and Fujitsu in particular is claiming it has no intention of giving its name up. Of course, it's a bit more complicated than that since Fujitsu only has a pending trademark (and earlier it had been considered abandoned before the company re-opened the file). Then there's another company called Mag-Tek that does have a trademark on iPad for PIN-entry keypads, though that might not be considered competitive at all. Still, Fujitsu is posturing about how it doesn't want to give up the name. Apple has an application in for its own trademark and is disputing Fujitsu's right to the trademark and chances are, once again, eventually some money will change hands and forever forward the iPad name will be Apple's to control when it comes to tablet-like devices.
The Olympics are notoriously protective of the Olympic name, even trying to block the trademark application for the Olympian, a newspaper in Olympia, Washington. Paul writes in to let us know that the US Olympic Committee has now decided it's worth suing what appears to be an almost defunct non-profit organization called The International Institute for Sport and Olympic History. Apparently the organization was set up to try to raise funds for a museum dedicated to sports, but from the article, it sounds like it has failed to get very far, and has been (perhaps) left to die already (at one point, it was reported that the Institute's bank account contained $52). But never one to let a dead organization die peacefully, the USOC has sued and is seeking "treble damages." What damages? This is basically a defunct organization that never did anything. The USOC says, at the very least, it deserves three times the profits the organization made off the Olympic name. Well, three times zero is zero... so seems like this one could be settled pretty quickly.
This one's a bit old, but somewhat amusing. Chris Mikaitis alerted us to the story of an air conditioning company suing another air conditioning company for trademark infringement over competing billboards. Apparently, the first air conditioning company came up with a billboard advertising campaign that read, in large letters:
"YOUR WIFE IS HOT -- BETTER GET YOUR A/C FIXED."
The competing company put up its own billboards, that read:
"YOUR WIFE IS NOT HOT! Because you called All Year Cooling to replace your A/C rather than the other guys."
This seems like a pretty amusing response. While the first company claims trademark infringement, suggesting confusion, it seems like perfectly reasonable competition. I'm reminded of a billboard that Informix put out a decade or so ago right in front of Oracle on the side of highway 101 in Silicon Valley reading "You just passed Oracle. So did we." It was amusing (if not particularly accurate), but as an advertising dig at a competitor, it seemed perfectly reasonable.
Be careful suggesting that you want to "save the earth." Automaker Honda just did that in an ad with a guy wearing a "save the earth" t-shirt, and for doing so, it got slapped with a trademark infringement lawsuit from the Save the Earth Foundation, which apparently has a trademark on that phrase (and has had it since 1972). The foundation claims that the ad was implying endorsement by the foundation. I wonder if morons in a hurry have any interest in saving the earth.
