Scouts BSA Seek To End Girl Scouts' Trademark Lawsuit By Brazenly Claiming No Confusion Does Or Will Exist

from the scout's-honor dept

We've been covering the lawsuit brought by The Girl Scouts of America against Scouts BSA, formerly The Boy Scouts of America, for some time. In the two posts that covered the suit, the GSA has alleged all kinds of very real confusion in the marketplace for female scoutting as a result of the branding change by Scouts BSA, which include:

-“As a result of Boy Scouts’ infringement, parents have mistakenly enrolled their daughters in Boy Scouts thinking it was Girl Scouts,” the lawyers said, adding that this never occurred before 2018.

-The lawyers said Boy Scouts councils in Illinois acknowledging improperly using the Girl Scouts’ slogan in Cub Scout recruiting materials and pictures of Girl Scouts to promote a Boy Scouts “Scouts Sign-Up Night!”

-They said a western Massachusetts Boy Scouts council posted a recruiting flyer on Facebook including a photograph of a girl depicted in her Girl Scouts Brownie uniform.

-Meanwhile, Ohio Boy Scouts used the Girl Scouts trademark to try to get a local newspaper to write an article, suggesting a storyline entitled “Boy and Girl Scouts Looking for Members” even though the recruitment involved only the Boy Scouts, the lawyers said.

-Minnesota families looking to sign up their girls were erroneously told the Girl Scouts and the Boy Scouts have merged. Meanwhile, in Indiana and South Dakota, some parents mistakenly signed up their daughters to girls’ programs in the Boy Scouts.

Those appear to be verifiable, real-world claims of confusion as a result of the BSA rebranding to a more generic name, all in the context of a world where the BSA and GSA have long been separated along gender lines. Why it should be any surprise that confusion exists here is beyond me. It seems like roughly the most predictable thing in the world to have happened, particularly when you account for the actions of local Scouts BSA organizations that seemed to actively attempt to instill such confusion.

In fact, perhaps the most surprising thing now is that Scouts BSA is asking a judge for a summary judgement that no confusion has or will exist.

U.S. District Judge Alvin Hellerstein in Manhattan will hear oral arguments on the Boy Scouts' motion for summary judgment, in which it argued that rebranding as "Scouts BSA" and advertising to girls won't cause confusion with the Girl Scouts.

The Boy Scouts said in a statement that it has been clear that the groups are separate organizations, and trusts that "families choose organizations for their children with great care." Rachel Kassabian of Quinn Emanuel Urquhart & Sullivan represents the Boy Scouts.

This is belied, again, by the examples of confusion that have not been specifically refuted as well as some of the confusion-inducing actions taken by Scouts BSA local chapters. It's also a simple matter to remind the public that the BSA has itself been extremely protective of all manner of its IP in the past, making this not solely a story about spurious claims of non-confusion, but also one of hypocrisy.

We'll await the ruling by the judge on this motion, but it would be very strange if Scouts BSA prevailed.

Filed Under: likelihood of confusion, scouts, trademark
Companies: boy scouts of america, girl scouts of america, scouts bsa

Unilever Sends Letter To Firm In Israel Over Use Of 'Ben & Jerry's' Trademark

from the we-all-scream dept

A couple of weeks back, we discussed 2021's thus-far dumbest controversy: Ben & Jerry's ceasing to sell ice cream in "occupied Palestinian territory". The ice cream maker is owned by Unilver and found itself in intellectual property news after a law firm in Israel seized upon Ben & Jerry's announcement to not sell its wares in a few sections of Israel to suggest that meant it was relinquishing its trademark. To that end, the firm sought to register a company it named "Ben & Jerry's Ice Cream of Judea and Samaria." This action was part of a possibly coordinated attack response on the company, which included action in the States such as Florida Man Governor Ron DeSantis suggesting this meant B&J's was "boycotting Israel" and should be scrutinized for that, and Jewish leaders indicating that B&J's ice cream may lose its kosher rating.

As I said, all very stupid. But the trademark claim might be the dumbest of them all. Trademark laws are designed to keep the public from being confused as to a source of a good and the Israeli firm's actions appear to achieve the exact opposite end. It's also the case that, in general, trademark law doesn't simply repeal a valid trademark simply because a company temporarily ceases to sell a good in one small section of a geographic area for which it's registered.

And, so, it's should come as no surprise that Unilever has sent a letter to the firm, Shurat HaDin, warning that it intends to protect its valid marks.

“Unilever unequivocally rejects all your assertions set forth therein including that Univeler has abandoned its trademark rights for Ben & Jerry's in what you refer to as the Judea and Samaria region of Israel." A letter dated August 12 reads, signed by Natalia Cavaliere, in response to a letter sent by Shurat HaDin's President Nitsana Darshan-Leitner that reads.

"Please note that we deem any use of the trademark or tradename Ben & Jerry's to be a violation of our intellectual property rights." The letter continues.

As well it should. B&J's nor Unilever have not abandoned their trademarks in Israel in the slightest. Ceasing sales in these regions doesn't change that. And it should be obvious to anyone looking at this story and its genesis that this is part of a practice among some in Israel to create diplomatic pressure on private entities that say or do anything they don't like when it comes to Israeli politics.

Those politics, while certainly important on the global stage, have nothing to do with Unilever's trademark rights. Which everyone, including Shurat HaDin, absolutely knows. Hopefully the Israeli government can correctly dispense justice.

Filed Under: ben & jerry's, israel, palestine, trademark, use in commerce
Companies: ben & jerry's, unilever

Manchester United Becomes Manchester UFC In 'Football Manager 22' Over Dumb Trademark Spat

from the mansplaining dept

It won't be a massive surprise that Manchester United, the famed Premier League football club, has made it onto our pages before. As the "Yankees of European soccer", it would be shocking if the club hadn't at some point taken aggressive action in the technology and IP space. Still, there isn't a great deal of posts in there, so you would be forgiven if you thought of Man-U as generally not bad on this sort of thing.

But, no, the club is perfectly capable of being protectionist, and even occasionally taking outrageous positions. For instance, we can start with the fact that Sega's Football Manager 22 will no longer include the name of the club in the game, but will shift it to something barely different after a lawsuit was filed because of... reasons.

Manchester United will be renamed Manchester UFC from Football Manager 22 onwards after the resolution of a trademark dispute. The Premier League club sued Football Manager publisher Sega in May last year, 16 years after the release of Sports Interactive's first Football Manager game, and 28 years after the launch of the first Championship Manager game.

In the actual lawsuit, Sega pushed back and stated that including the club in the context of a football/soccer game was a legitimate use, indicating it as basically simply describing reality. Sega also noted that Man-U had appeared under its name in the Football Manager series for literally 30 years without any complaint from the club whatsoever. Why this suddenly became an issue comes down to the club's desire to sell exclusive licenses for use to Sega's competitors, of course, but soccer games have existed forever. Where has Man-U been this entire time?

Further pushback came from Sega, indicating that the game designers went out of their way not to use Man-U's logos or crests, as that really would be a trademark violation. Somewhat amazingly, Man-U responded saying that was trademark infringement, too.

United also claimed Football Manager infringed its trademark of the Manchester United logo by not using the official Manchester United crest in the game. This "deprives the registered proprietor of its right to have the club crest licensed", Manchester United's lawyers said.

"Consumers expect to see the club crest next to the name Manchester United... and this failure to do so amounts to wrongful use," United argued, although the club's lawyer accepted this argument was "somewhat novel, and certainly in the context of video games, but it is certainly arguable".

Yes, it's novel, because I've never heard a trademark claimant suggest that not using trademarked iconography was infringement solely because it didn't result in a licensing deal to use the actual trademarked iconography. That's... not how this works. It would also be interesting to see how this claim would run up against any free speech rights Sega could point to in the UK. While obviously different from the laws in America, I'll just note that the 1st Amendment here would make this argument a complete non-starter. A 2nd party can't claim the right to force the 1st party to put something specifically in their game.

But, alas, Sega changed the name to something barely different to get out of this whole mess, noting the entire time that it admitted no guilt.

This means that, from this year's game onwards, Manchester United will be named 'Manchester UFC' or 'Man UFC'.

"These name changes have been made purely to settle the dispute on a no admissions basis," Sports Interactive added. "SEGA and Sports Interactive maintain that they do not need a licence to use the Manchester United name but have made the change as a gesture of goodwill so that both parties can move on."

And so everyone playing the game will know precisely what the game is referring to with its "Manchester UFC" name, but the club won't actually get the exposure benefit of having its normal branding in there.

Talk about an own-goal.

Filed Under: football manager 22, machester ufc, trademark
Companies: machester united, premier league, sega

Oatly Loses Trademark Suit Against Glebe Farm Foods' PureOaty Product

from the oat-brand dept

A couple of months back, we discussed something of a silly lawsuit overseas between Oatly, a large oat-milk manufacturer, and Glebe Farm Foods over its own PureOaty drink. At issue were Oatly's own trademarks and its claims that PureOaty infringed on those marks. As we noted at the time, because the word "oat" is descriptive of the products in both cases, and with PureOaty using the "pure" as a differentiator among other things, this was a trademark claim that essentially came down to the letter "y". And, yes, that is dumb. Especially when you consider that there are significant differences when it comes to PureOaty's trade dress.

There is simply little reason to be concerned about public confusion between those two products when you take everything in sum total. The colors in the branding are different, and the trade dress and placement generally doesn't lend itself towards public confusion.

And it turns out that the courts in the UK agree.

Judge Nicholas Caddick at London’s High Court dismissed claims by the Malmo-based group that Cambridgeshire-based Glebe Farm Foods, which specialises in gluten-free oats, of infringing trademarks including the Oatly brand name and pack design, and of “passing off” the beverage as Oatly.

In his ruling, the judge said the visual similarity of the names were “very modest” and that there was no evidence of actual confusion among consumers regarding the two products.

Both parties were reached for comment after the ruling. Glebe Farm Foods was understandably pleased with the result, noting that it isn't always the case that smaller entities like its company can beat large enterprises like Oatly in court, even on the merits. Oatly, for its part, claims it will not appeal the ruling and accepts it, adding that it never actually wanted to harm Glebe Farm Foods in the first place.

Oatly added that it never brought the case to damage Glebe Farm and wanted them “to thrive and help bring products into the world that are good for the planet”. “We wish Glebe Farm total success in their plant-based journey moving forward,” it said.

Kind words, but somewhat tone-deaf given that even Oatly acknowledged that this entire lawsuit was initiated essentially over the letter "y". That this single character resulted in a lawsuit of all things doesn't lend a lot of credence to Oatly's "I'm okay, you're okay" posture.

Filed Under: confusion, oat milk, pureoaty, trademark, uk
Companies: glebe farm foods, oatly, pureoaty

Israel, Ice Cream, Trademarks: This Year's Dumbest Controversy Results In Trademark Skullduggery

from the you-scream dept

Welcome to this year's dumbest controversy thus far. A couple of weeks ago, famed ice cream maker Ben & Jerry's announced that it would no longer be selling its products in "occupied Palestinian territory." Indicating that doing so would not align with the company's values, the idea here was that settlements that infringed on territory that was deemed to belong to the Palestinians by international law would be off the company's radar. Not all of Israel, mind you. Just the occupied territories. And that is when everyone lost their god damned minds. Ron DeSantis is seeking to have Florida put B&J and its parent company, Unilever, on a list of companies that should be scrutinized for "boycotting Israel". Jewish leaders indicated that the kosher rating of the ice cream could be altered for the same reason. Except that isn't what B&J are doing. It isn't boycotting Israel at all. It's simply refusing to sell its product in small sections of land that Israel currently occupies.

And where this gets into Techdirt territory is that one law firm in Israel is going to so far as to try to screw with Ben & Jerry's trademark rights, arguing now that it can use the B&J trademarks in those territories because the company isn't selling products there any longer.

Ben & Jerry’s is on its way to losing ownership of its brand in the settlements. The law association Shurat HaDin has submitted a request to the Registrar of Companies to register a company called “Ben & Jerry’s Ice Cream of Judea and Samaria.” This would be in keeping with US law under which a company loses the right to trademark protection in areas in which it has stopped selling its product.

The law firm informed food giant Unilever that since it had given up selling Ben & Jerry’s ice creams in the “West Bank,” under US law, it had lost the right to protect the Ben & Jerry’s trademark in those areas. Shurat HaDin has already submitted an application to the Israeli Registrar of Companies to register the new brand “Ben and Jerry’s Ice Cream of Judea and Samaria,” which will receive legal protection to sell the exact same ice cream, with the same trade name, and actually compete with the original company.

It should be obvious that this is absolutely not what trademark law is for. What is happening here is some combination of extortion and punishment simply because a private company has taken a very small stance on an international issue. This is typical of the maximal response that tends to be trotted out when Israel encounters these types of scenarios. I've heard this described by foreign policy experts as a form of "diplomatic deterrence", where a minor issue generates a response that's dialed to eleven simply to deter any like-minded companies or actors from taking the same actions.

But that, again, is not what trademark law is designed to do. It's designed to keep the public from being confused as to what they're buying. And it's hard to imagine a more perfect scenario for creating public confusion than a fraction of territory being sold B&J branded ice cream that isn't legit while the rest of the country gets the legit stuff. And the idea that US law is being used to do all of this makes this all the more infuriating.

Shurat HaDin examined and found that under US law, in order to preserve the protection of a trademarked brand against use by other parties, there must be full intention to conduct business in a particular area. That is, in cases where a commercial brand is intended only to prevent another party from using the same label, without having any intention of operating in the same area, its request will not be approved. Therefore, once that person announces that he does not intend to operate in the same area, it means that he has no intention of using his trademark and his right to trademark will no longer stand.

It's not that simple, obviously. And hopefully the Trademark Office and any courts that might get involved will see this for the skullduggery that it absolutely is. Whatever stances you might want to take on political issues related to this, this simply isn't what trademark laws are for.

Filed Under: ben & jerry's, ice cream, israel, palestine, trademark
Companies: ben and jerry's, unilever

Last Month In An LA Court I Witnessed The Future Of A World Without Section 230; It Was A Mess

from the couldn't-you-have-done-more dept

Disclosure: I was an expert witness for RedBubble in this case (and another case) and submitted some reports regarding this case much earlier in the process, though I did not testify at this trial. I had nothing to do with this trial other than attending it as an interested observer, concerned about litigation involving content moderation. As you can see, however, my opinions on this remain identical to my opinions on content moderation going back basically forever...

There's been a lot of talk lately about "repealing" or "reforming" Section 230. We've explained at great lengthy why this would be a mistake and would lead to a ton of frivolous litigation. Section 230 co-author Senator Ron Wyden has referred to this as creating a situation where website operators would face "death by ten thousand duck-bites." Professor Eric Goldman has explained the procedural benefits of Section 230 in that it helps get rid of these cases more quickly. And while some (including myself) have pointed out that the 1st Amendment would still protect most claims, without the procedural benefits of Section 230, we'd still see a ridiculous number of nuisance lawsuits in which companies would have to defend each and every content moderation decision. This would be made significantly worse if the law changes in a manner proposed by folks like law professor Danielle Citron, to require websites to show that their content moderation practices are "reasonable," which would require expensive litigation to determine.

The thing is: we have an area where we can actually see this in practice. There is something of a loophole within Section 230: trademark law. From the beginning, Section 230(e)(2) has excluded intellectual property law. For copyright, that gap was filled (not particularly well) by the notice-and-takedown provisions of the DMCA Section 512. But trademark has no official intermediary protections in US law. Experts like Mark Lemley have long advocated for harmonizing the various intermediary laws so that they're all consistent. Many people had thought that perhaps the courts had settled the issue with regards to trademark in the infamous Tiffany case against eBay, in which the courts said that eBay shouldn't be expected to be perfect, and as long as it has some sort of program to deal with counterfeits, then it is no longer liable for counterfeits on its site.

However, last summer, a federal judge in LA effectively re-opened the issue in a case brought by the holding company that controls the "Brandy Melville" clothing brand against print-on-demand website RedBubble. Brandy Melville argued that RedBubble was violating its trademarks (and copyrights) in printing some of its designs, and while the judge did toss out much of the case, he allowed a few parts to move forward to a jury trial. The judge said that the Tiffany v. eBay rule didn't necessarily apply -- since that was a case of users selling physical products, whereas with RedBubble, the company would take designs uploaded by users, and pass them on to various print shops for the actual printing. So the open question, in theory, was whether or not that deeper involvement opened itself up to contributory liability (the judge correctly dismissed the claims about direct infringement). There were a few other oddities about the judge's ruling as Eric Goldman noted at the time:

However, the Ohio State ruling didn’t address contributory trademark infringement, and this court sends that issue to the jury. Unlike Tiffany v. eBay, which involved legitimate used resales of Tiffany items, the court says “Redbubble is not burdened by the need to parse valid uses of Brandy Melville’s trademarks from invalid ones, as Brandy Melville has made clear to Redbubble that there are no legitimate sales of Brandy Melville products through its site. As such, all uses of Brandy Melville’s marks that appear on Redbubble’s website are presumptively infringing.” I doubt the court means this statement so baldly, as it disregards parodies, nominative uses, and other legitimate activities. Similarly, the plaintiff complained that RedBubble hasn’t disabled internal consumer keyword searches for its trademarks, but that doesn’t seem like a right exclusive to the trademark owner in light of MTM v. Amazon.

In practice, however, pretty much the entire trial revolved around whether or not RedBubble "did enough" in its content moderation. Over and over again, the lawyers for Brandy Melville kept trying to insist that any failures by RedBubble's content moderation was proof that it did not do enough. Indeed, in the closing arguments, even after it had been pointed out that RedBubble spent millions of dollars per year on its content moderation efforts, and had removed every example that Brandy Melville's lawyers had sent them within a day or two, the lawyer straight up asked the jury "don't you think RedBubble could have done more?"

There were a number of other oddities that came out during the trial. The trial was explicitly about just three specific trademark designs that Brandy Melville held -- two of which never actually appear on the front of t-shirts or other products (the company said it only used them on clothing hang tags and on store signs), and one that the company registered just weeks before suing. Incredibly, Brandy Melville put on the stand a manager of some of their stores who admitted two incredible things: (1) that she was unable to tell which products on RedBubble were legitimate and which were infringing (so how the hell could they expect RedBubble to just know?!?) and (2) that in many years of working and managing Brandy Melville stores, she could not recall a single time that anyone ever brought in a RedBubble product to "return" it. That latter point really stuck with me because it highlighted the near total lack of confusion, which is a key point in trademark infringement. There needs to be confusion.

Another oddity: Brandy Melville kept focusing on the fact that RedBubble refused to block all tags that included "Brandy Melville" or any search results on "Brandy Melville." But as Goldman noted above (and the judge seemed to miss), that's not a right that trademark law gives a trademark holder. RedBubble pointed out that it actually used the tagging system as part of its content moderation efforts -- and that letting users tag stuff "Brandy Melville" made it easier for its content moderation team to find and review those items to see if they infringed. Also, while it only came up exceptionally briefly, one of the products that was on RedBubble's site was a t-shirt that read: "Fuck Brandy Melville," which is clearly commentary/parody -- and not something anyone would assume came from Brandy Melville itself. Brandy Melville cannot abuse trademark law to say any and all use of the term must be blocked. That's not how trademark law works.

For its part, RedBubble spent plenty of time describing the extreme lengths it goes to try to prevent infringing works on its site, including making use of various technologies, having a large team of human reviewers, and working closely with lots of brands to better understand what is and what is not infringing. But, again, the plaintiff's focused on "is it enough."

And, because they kept focusing on a very few examples where Brandy Melville logos or other designs were found on RedBubble, that was proof that, no, the company did not do enough. And... the jury bought it. At the end of the three day trial, the jury said that RedBubble was liable as a contributory infringer, including not just for trademark infringing, but for counterfeiting. This was particularly bizarre because for there to be counterfeiting, there needs to be an actual copying of a product sold by the trademark holder. And, as already noted, two out of the three designs were never actually used on the front of products by Brandy Melville, and as for the third design (the "LA Lightning" mark -- which, seems like it may have its own trademark issues, considering it was yanked from an independent professional basketball team), they never seemed to show exact copies of it on any RedBubble products either. Instead, somewhat bizarrely, Brandy Melville focused on very distinct and different variations on the logo that appeared on RedBubble products -- including a clear parody one for University of Florida students. And the counterfeiting issue was key to Brandy Melville's case, because it would allow them to ask for statutory damages, running up into multiple millions of dollars.

And this is a clear issue with litigation around content moderation: the jury was primed over and over again to believe that any mistake makes the company liable. Brandy Melville's lawyers just kept showing designs that mention Brandy Melville or looked similar to Brandy Melville (frequently for products that Brandy Melville had no trademark over) and then just kept harping on the fact that Brandy Melville didn't approve any of this, and clearly RedBubble was a "counterfeiting" site. In the end, the jury awarded $520,000 to Brandy Melville ($300k "counterfeiting" for the "Brandy Melville" mark, $200k for "counterfeiting" the LA Lightning mark, and then $20k for trademark infringement.)

At the close of the case, RedBubble immediately sought a judgment as a matter of law to effectively try to take the case out of the jury's hands (arguing that Brandy Melville failed to present enough evidence and the judge could rule on the matter directly without needing the factual deliberation of the jury). This week the judge did in fact rule that the $300k for contributory counterfeiting on the Brandy Melville mark was improper, bouncing the award down to $220,000.

As the judge noted, the fact that RedBubble's products were not the same as anything Brandy Melville made regarding those logos, meant that there couldn't be a legitimate counterfeiting claim for that mark:

Here, Plaintiff failed to present evidence of products that bore a spurious Brandy Melville Heart Mark and were offered for sale on Redbubble.com that were remotely similar to products that Plaintiff offered for sale, let alone "stich-for-stitch copies" of Plaintiff's products. The Court therefore concludes that the evidence presented at trial permits only one reasonable conclusion--Plaintiff failed to establish that Redbubble is liable for contributory counterfeiting of the Brandy Melville Heart Mark.

The end result is way below the many millions of dollars Brandy Melville was seeking, though even the small amount it got seems ridiculous based on an understanding of what actually happened.

But, there's a larger point here: this case was an unfortunate alternate reality universe view of what will happen without Section 230 or if we moved to a Citron-style "reasonable" standard. You'd get a ton of litigation in which everyone was just going back and forth arguing over what the "right" level of content moderation is, and arguing that any mistakes were evidence that "not enough" was being done by the companies. That's a disaster scenario, one in which any simple mistake (even where there's perhaps strong evidence that no mistake was actually made) is subject to the whims of a jury (or a judge) and an expensive, time-consuming trial. I recognize that law professors might not care that much about all of this wasteful litigation, but in the real world it matters a ton. This kind of thing can, and will, kill off smaller companies, even if they can succeed in court. And that doesn't help anyone, except possibly some trial lawyers who can threaten and shake down tons of websites.

Filed Under: content moderation, counterfeiting, intermediary liability, jury trials, print on demand, section 230, trademark
Companies: brandy melville, redbubble

Splunk Can't Sue Deutsche Telekom In USA Over Magenta Trademark Bullying Occurring In Germany

from the ruling-by-reputation dept

If you were to simply input the word "magenta" into the search bar at the top of Techdirt, you will note that two company names seem to keep coming up in the articles: T-Mobile and its parent company Deutsche Telekom. This is because those two companies have been incredibly annoying at with their nonstop bullying of other companies, often in entirely unrelated industries, for daring to use the color magenta in their branding. While some will want to argue that very specific colors can definitely be trademarked, this misunderstands how T-Mobile and DT operate, which is to threaten plenty of companies that use a similar purple color and those that use magenta but in different marketplaces. Notably for the purposes of this post, much of this trademark bullying has occurred in Europe, though not all of it. The point is that DT is a trademark bully when it comes to the color magenta and everyone knows it.

Which is what makes it disappointing to see a company like Splunk lose its ability to sue DT in America to have its use of magenta declared non-infringing solely because it has thus far only been bullied in Germany.

Tech company Splunk Inc can't sustain its lawsuit against Deutsche Telekom over its trademark rights in a "color gradient" that includes DT's signature color magenta, a San Francisco federal court ruled Monday.

U.S. District Judge James Donato said Splunk didn't have a "reasonable apprehension" of litigation in the U.S. based on a cease-and-desist letter it received from DT about its conduct in Europe and DT's trademark action against it in Germany.

On the one hand, this is a jurisdictional technicality and comes after Deutsche Telekom representatives insisted to the court that there were "no plans" to sue Splunk for trademark infringement in the United States. From the court's perspective, this led it to the conclusion that there was no actual conflict within its jurisdiction.

But on the other hand, DT does have a reputation to consider and it appears that there is enough interpretation being done in this ruling that it certainly could have taken that reputation into better account. From the ruling:

“[T]rademark disputes are justiciable under the Declaratory Judgment Act when ‘the plaintiff has a real and reasonable apprehension that he will be subject to liability.’” FN Cellars, LLC v. Union Wine Co., No. 15-cv-02301-JD, 2015 WL 5138173, at *2 (N.D. Cal. Sept. 1, 2015) (quoting Chesebrough-Pond’s, Inc. v. Faberge, Inc., 666 F.2d 393, 396 (9th Cir. 1982)). For this inquiry, the Court focuses “upon the position and perceptions of the plaintiff” and the “acts of the defendant,” which are “examined in view of their likely impact on competition and the risks imposed upon the plaintiff.” Chesebrough-Pond's, 666 F.2d at 396 (cleaned up). The showing of apprehension “need not be substantial” when an allegedly infringing mark is in use. Societe de Conditionnement en Aluminium v. Hunter Eng’g Co., 655 F.2d 938, 944 (9th Cir. 1981).

There is no bright-line application of these factors to decide justiciability. “The question in each case is whether the facts alleged, under all the circumstances, show that there is a substantial controversy, between parties having adverse legal interests, of sufficient immediacy and reality to warrant the issuance of a declaratory judgment.”

Here the court acknowledges that there is no bright line and that the "apprehension need not be substantial." Splunk has a reasonable apprehension that it will be the target of a trademark action by DT, given that it is a target of one in Germany for the exact circumstances it's seeking relief. Despite DT's reputation as a trademark bully and the action initiated overseas, however, the court takes a very narrow view of that action, as well as taking DT's word that it doesn't plan to sue Splunk.

On the record before the Court, Splunk has not demonstrated a reasonable apprehension of being sued in the United States by DT. The salient facts, which are not in dispute, are that DT: (1) sent a demand letter to Splunk under German and EU law for Splunk’s conduct in Europe; (2) filed a trademark action against Splunk in Germany over the EU conduct; (3) reserved its trademark rights under U.S. law; and (4) has not sued Splunk in the United States, and did not oppose Splunk’s trademark proceedings before the TTAB. These facts are a country mile from the circumstances typically deemed sufficient to establish DJA jurisdiction.

Again, it's not that the court is wrong. Still, it seems like there is a reasonable chance DT will prove the court wrong with a lawsuit sometime in the future, given its past and present actions. If that were to occur, it would render this court's decision somewhat silly.

As silly, frankly, as the fact that these kinds of disputes over the color magenta need occur in any jurisdiction.

Filed Under: germany, magenta, trademark, us
Companies: deutsche telekom, splunk, t-mobile

WIPO Says Johnson & Johnson Can't Seize Parody Website Suggesting Band Aids With Corporate Sponsors

from the brand-aid dept

Danielle Baskin is something of a brilliant creative force who constantly comes up with hilarious art projects/commentary/satire -- some of which end up turning into actual businesses. This included, somewhat recently, her Maskalike business that would print yours (or someone else's?) face on a mask. That operation just closed up shop, but was quite popular in the midst of the pandemic. She's also created satirical services such as one that puts blue checks on your home (a la being "verified" on Twitter or Facebook) or stained glass film over airplane windows, or a "Decruiter" service to help you figure out when to quit your job, or a hoodie that will let you replace corporate logos with velcro. There's also the website that runs obituaries for expired domain names.

There are many more of these kinds of projects listed on her website. One of her attention-getting projects from a few years ago was Branded Fruit, where she would... well... do what it says, and put a corporate brand on a piece of fruit.

Perhaps somewhat inspired by the success of the Branded Fruit project while thinking about the pandemic, the vaccines, and the rush to turn just about anything these days into a branding opportunity, a few months back Basken set up Brand-Aid™ at the website BrandedBandAid.com. It's a clever bit of commentary on the nature of the commercialization of health care these days.

Of course, as the little ™ in the title of her site obliquely comments on, Johnson & Johnson still holds the trademark on the brand "Band-Aid" and tries to police the mark fairly aggressively -- especially since many, many people assume that "band aid" is a generic term for medical adhesive bandages, and J&J is terrified of losing the actual trademark.

Soon after the Brand-Aid (sorry Brand-Aid™) domain was registered, J&J sent a nastygram. Baskin responded quickly that the site was clearly a parody about the capitalization of public healthcare. J&J then did what J&J does and went to WIPO to demand that the domain itself be handed over to the company. What then followed is fascinating and laid out in WIPO's decision that denies J&J's demand, allowing Baskin to keep the website.

The key issue is whether or not the domain was registered in bad faith. The WIPO panel isn't completely convinced by Baskin's arguments -- noting that even if the website is a parody, it's not clear that the domain itself is:

Here, the Panel considers that the phrase chosen by Respondent in the Domain Name – “brandedbandaids” – does not itself convey parody of Complainant, its trademarks, and related products. Moreover, and while the Panel tends not to find Respondent’s arguments on this point terribly persuasive, it is also at least debatable whether the website linked to the Domain Name targets Complainant and its BAND-AID marks, or rather is intended as a more general parody of “the capitalization of public health,” as initially claimed by Respondent. See e.g., A&F Trademark, Inc. and Abercrombie & Fitch Stores, Inc. supra (“In order to constitute parody, the web site must poke fun at the goods or services associated with Complainants’ marks: use of another’s trademark to poke fun at something unrelated to Complainant’s mark is not parody.”) Of course, the Panel also recognizes that Respondent has free speech interests protected as a constitutional right in the United States; however, under the law individuals do not enjoy absolute freedom of expression especially with respect to terms protected as trademarks.

But the key issue for WIPO is really whether or not the domain was registered in bad faith, and there's no evidence to support that.

Here, there is no doubt that Respondent, when registering the Domain Name, was aware of Complainant and its BAND-AID brand. The question is whether, despite that awareness, and in view of Respondent’s asserted artistic parody intention for registering the Domain Name, the registration and use amounts to bad faith.

Complainant has contended that Respondent’s registration of the Domain Name without authorization reflects opportunistic bad faith and was intended to exploit the goodwill and fame of Complainant’s marks in bad faith to improperly deceive Internet users and benefit Respondent financially. Complainant has pointed out that when Respondent initially launched her website, the disclaimer was not prominently placed and Respondent used an allegedly infringing version of the BAND-AID mark in the font and color typically used by Complainant. Further, Complainant argued that the ultimate effect of use of the Domain Name will be to cause confusion with Complainant, and thus the registration and use of the Domain Name must be considered to be in bad faith. Complainant has sought to emphasize that Respondent’s use should not be considered “purely noncommercial” because an Internet user, by using the link to Respondent’s Twitter account and then clicking through to her personal website, could be introduced to commercial ventures offered by Respondent.

In the face of these contentions, Respondent has argued that while a given use may or may not meet the standards for the parody defense, it may still be a sufficiently plausible, good-faith motive to overcome Complainant’s proposed inference of bad faith within the meaning of the Policy. Given the facts and circumstances of this case, the Panel agrees with Respondent on this point. See The California Milk Processor Board supra (“This may or may not meet the standards for the parody defense under United States trademark law, but it is a sufficiently plausible, good-faith motive to outweigh the Complainant’s inference of bad faith within the meaning of the Policy.”). Respondent has provided evidence to demonstrate that she is, in fact, an artist who engages in parody of the Internet, capitalism, online businesses and the technology industry more generally, while using websites, domain names and social media. Respondent has not demonstrated any interest in selling or transferring the Domain Name, nor is there evidence that she has previously made a practice of acquiring domain names resembling trademarks for sale. Respondent has claimed that the website linked to the Domain Name has no revenue or plan to seek revenue, and has submitted a sworn affidavit to this effect:

“I registered and used the website solely for the purpose of artistic parody. At no time have I ever sought commercial benefit from either the website or from the registration of the domain name.”

The evidence in this case supports Respondent’s assertion concerning noncommercial use. As for the link on the Domain Name’s website to Respondent’s Twitter account, which in turn might be used to link to Respondent’s personal website that reflects one or more commercial ventures, the Panel finds that this path is too attenuated such that it would by itself disqualify the Domain Name from noncommercial use. Further, since being contacted by Complainant’s counsel, Respondent has taken steps – through a disclaimer on the website and changing the font and color of text on the site – to respond to Complainant’s demands concerning the content of the website. This point is important because UDRP panels tend to assess relevant facts concerning use of a domain name with a view to the circumstances prevailing at the time of the filing of the complaint, and Respondent made the relevant changes before the Complaint was filed. See WIPO Overview 3.0, section 2.11. Ultimately, and acknowledging that the Policy criteria are non-exclusive, looking at paragraph 4(b)(iv) in particular, the Panel finds that owing to the credibility of the sworn assertion as to the noncommercial nature of the Domain Name and attendant website, the Domain Name was not registered and used in bad faith.

Finally, the Panel emphasizes that the decision in this case is limited to the criteria under the Policy, and the Panel makes no findings concerning the parties’ rights under applicable national law – which may in any event be better suited for determination by a court.

Complainant has failed its burden to demonstrate that the Domain Name was registered in bad faith.

As the panel makes clear, that doesn't mean Baskin is totally free and clear. J&J could still go after her in court for trademark infringement, in which case the fair use, non-commercial use and other defenses would be used and could prevail (though it would still be quite a mess). Hopefully, J&J realizes not only what a wasteful headache that would be, but also how it would make the company look like a ridiculous, censorial bully who can't take a joke.

Anyway, to celebrate, I'm going to go put Techdirt logos on some generic Band-Aids.

Filed Under: advertising, brand aids, commentary, danielle baskin, domains, parody, satire, trademark, vaccines, wipo
Companies: johnson & johnson

Social Tech Loses Appeal To Apple Over 'Memoji' Trademark Because Suing Apple Isn't Using The Mark In Commerce

from the trademark-tautology dept

For what it's worth, lawsuits against Apple over emojis are not entirely unheard of. You may recall that Apple was sued by a woman who claimed it was copyright infringement for Apple to have emojis that represent more diverse communities, for instance. But for a truly fun story about Apple being sued, and winning its defense, over emojis, well, you have to go to a case between Apple and a company called Social Tech.

Social Tech sued Apple in 2018, alleging Apple's Memoji personalized emoji feature infringed its trademark covering its app with the same name. U.S. District Judge Vince Chhabria ruled for Apple in 2019.

Indeed. And Social Tech appealed that ruling. So why did the court find for Apple in 2019? Well, because Social Tech couldn't demonstrate that it was actually using the mark in commerce. This is where we'll need to dig into some details.

In 2016 Social Tech filed an intent-to-use trademark application for "Memoji" for use in apps and software. The Trademark Office granted a Notice of Allowance, which essentially gives the go ahead to the applicant to put the mark in actual commerce, after which the UPSTO would approve the mark. Social Tech basically did nothing for 2 years after that, other than to ask for an extension on the Notice of Allowance. Meanwhile, another company called Lucky Bunny LLC filed its own trademark application for "Memoji" for the same class of goods. That application was suspended due to the Social Tech application status. In the summer of 2018, Apple acquired Lucky Bunny and its assets, including the suspended trademark application. In June, Apple announced the acquisition and released a public test version of its new mobile OS that included Lucky Bunny's Memoji software.

And this is where it gets weird. When I said above that Social Tech did nothing for two years before Apple's announcement, that's not entirely true. Social Tech did write a business plan, fund itself internally for $100k, and write up some promotional material. What it didn't do was write a single line of code... until Apple announced the acquisition. Then, and only then, did Social Tech's interest in actually using the Memoji mark in commerce go into overdrive.

The appeal was decided by the court in Apple's favor as a result of all of this, but the details laid out in the judgement are striking.

During the three weeks after Apple’s announcement, Social Tech’s co-founder and president, Samuel Bonet, exchanged a series of emails with a software developer to accelerate the timing of the application’s development. In the first of these emails on June 7, Bonet described the circumstances to be “life changing” and concluded the email with: “Time to get paid, gentlemen.” In a series of subsequent emails, Bonet regularly followed up with the developer on the application’s progress. On June 12, Bonet wrote: “the app needs to erase the background AND the body . . . Of course this may take a little work to get perfect, but as long as we can get close initially, we can start to test and put in commerce.” On the evening of June 13, Bonet wrote to the developer: “[i]n other news . . . the initial letter has been sent to Apple. The process has begun. Peace and wealth!”

Bonet continued to follow up on the application’s progress over the next several days, noting that “the editing feature [was] vital” to “satisfy the ‘editing’ requirement of the trademark.” On June 18, Bonet wrote that Social Tech would release the application for Android in the Google Play Store first, proclaiming: “We are lining up all of our information, in preparation for a nice lawsuit against Apple, Inc! We are looking REALLY good. Get your Lamborghini picked out!”

It goes on from there, but the general gist is that Social Tech was very specifically attempting to finally get its mark pushed through simply in order to file these trademark suits and "get paid." And that, sadly for Social Tech, does not satisfy the requirement for using the mark in commerce. And, since the entire enterprise of putting a broken app in commerce was done simply to get the trademark for "Memoji" and file the lawsuit, those don't actually count either.

As a result, the court found for Apple.

The panel held that mere adoption of a mark without bona fide use in commerce, in an attempt to reserve rights for the future, is insufficient to establish rights in the mark under the Lanham Act. Use in commerce requires use of a genuine character, in a way sufficiently public to identify or distinguish the marked goods in an appropriate segment of the public mind. Considering the totality of the circumstances, including relevant non-sales activities, the panel agreed with the district court that the evidence in the record showed that Social Tech’s use of the MEMOJI mark was not bona fide in commerce. Accordingly, Apple was entitled to cancellation of Social Tech’s trademark registration.

When it comes to intellectual property, it's nice to see grifting not work out for the grifters once in a while.

Filed Under: emoji, lawsuits, memoji, shakedown, trademark
Companies: apple, lucky bunny, social tech

After All That, Nintendo Can't Even Get $50 A Month Out Of RomUniverse

from the time-and-money-well-spent dept

The saga of how RomUniverse, a site dedicated to offering ROMs for classic Nintendo games, came to its end is both frustrating and very dumb. Back in 2019, Nintendo launched a massive war on ROM sites, coinciding with the release of a mini version of Nintendo's NES console. Eventually, the company's sights turned to RomUniverse. Run solely by Matthew Storman, the site first tried and failed to crowdfund its legal expenses, made the lame argument that somehow the first sale doctrine meant that Storman could legally offer up digital versions of bought Nintendo games, only to see Storman represent himself in court and eventually lose. While Nintendo always had the law on its side, it was also true that sites like RomUniverse existed for a long, long time and Nintendo wasn't injured enough by any of this for it to be on the radar prior to the ROM War of 2019. In fact, I would argue that ROM sites for a long, long time kept up the interest in these classic games that created a market for Nintendo's classic console releases.

I would also argue that the whole thing was a giant waste of time and money, an assertion backed up by the fact that the victorious Nintendo reportedly can't even get $50 a month out of Storman, despite court orders.

You can’t get blood from a stone, and you can’t squeeze a relatively measly $50 payment out of a guy whose primary source of income was the video game rom site you sued into oblivion. Earlier this year Nintendo’s 2019 lawsuit against website RomUniverse concluded with the site being shut down and Nintendo awarded $2.1 million dollars in damages. That’s $35,000 for each of the 49 Nintendo games found on the site plus $400,000 in trademark damages. The chances of Matthew Storman, who defended himself in court and whose only source of income was the now-defunct rom site, being able to pay those damages are incredibly slim. In a recent court filing obtained by Torrentfreak, Nintendo complains that Storman hasn’t made his court mandated monthly payment of $50.

As a result, Nintendo is seeking a permanent injunction against Storman to keep him from ever re-launching RomUniverse. That, frankly, may be what the company was after this entire time.

But that doesn't make the futility of this whole legal enterprise any more sensical. Nintendo managed to legally pummel a single man who was, admittedly, infringing their copyrights. But one is free to wonder aloud if this legal route was really the only method Nintendo had for getting the site shut down. If Storman truly cannot manage a $50/month sanctions payment to Nintendo, there is no hope of them recovering the $2.1 million awarded in court, an amount that Storman also appears by all accounts to be unable to pay.

And so Nintendo has a legal victory without any monetary award, Storman's own actions have resulted in his fiscal life likely being in shambles, and we all go on our merry way. Again, this is really how this had to happen?

Filed Under: classic video games, copyright, matthew storman, nes, old video games, roms, trademark, video games
Companies: nintendo, romuniverse