Sloppy use of the term "copyright" is nothing new. Plenty of people use the word incorrectly, usually by treating it as interchangeable with "intellectual property" and lumping patents and trademarks in with copyrights. While this is often a minor mistake that doesn't affect the message being conveyed, it's still wrong, and in a world where intellectual property is becoming a hotter topic of discussion, it's the sort of thing publications should really be more careful about. So it's amusing but somewhat annoying to see the popular comedy site Cracked (which has tackled such topics before) publish a list of "Things You Won't Believe Are Copyrighted"... without a single example that actually involves copyright. Of the five examples listed, three are about trademarks and two are about patents, and while the article makes some effort to distinguish the difference, it misuses the word "copyright" multiple times throughout. It also erroneously claims that "copyright law" is in the U.S. constitution—another common mistake that we see all the time, and which copyright maximalists would love you to believe is true.
Of course, in typical Cracked fashion, the article still includes some fantastic and hilarious passages about topics that will be familiar to Techdirt readers, such as their introduction to the problem of patents over genes in living organisms:
We've all had that moment where we're looking at an infomercial on TV and we think, "A blender that's also a hat? I thought of that first! I should have gotten a patent." It takes a special kind of person to proclaim the same thing while visiting a zoo, though.
And, more specifically, patents that cover elements of human DNA:
How the hell is that possible? Well, it's argued that when a gene is removed from the body and isolated, it becomes a separate chemical entity that can be patented. You know, like when you take someone else's lamp from their house and isolate it, it automatically becomes yours. Then you rent that lamp for thousands of dollars to people trying to do cancer research.
Having carefully analyzed both sounds, we've reached the conclusion that they both sound like dickwads. Also, if Songz decides to agree to Hester's terms, what the hell is he supposed to tell him? "Yeppers"?
So while it's nice to see Cracked paying attention to these stories and bringing wider attention to the abuse of intellectual property law, while also offering some laughs, I hope that in future they'll try a little harder to be accurate—especially when, just last week, they had another article calling out other media for inaccurate/incomplete reporting. There was no need to keep referring to "copyright" throughout an article that has absolutely nothing to do with it, and conversely, there are plenty of actual examples of ridiculous copyright abuse to form one of the site's trademark lists (see what I did there?)
We've pointed out many times in the past that trademark law really doesn't belong under the same heading as patents and copyrights, even though they're frequently lumped together as "intellectual property." Patents and copyright are from the same clause in the Constitution and, we're told, are supposed to be about "promot[ing] the progress of science and the useful arts." The origin of trademark law, however, comes out of the commerce clause, and was initially designed to be a consumer protection vehicle, to protect consumers from confusion: you wouldn't want to buy Bob's Crappy Cola thinking that it's really Coca Cola. Over the years, however, some lawyers have worked hard to turn trademark from a purely consumer protection play, into something more akin to copyright and patents, granting trademark holders greater and greater rights to limit what others can do. These are more recent variations on trademark law, and unfortunately some of them have snuck their way into the law. That's why you see things like discussion about "dilution" or "tarnishment."
The theories behind such efforts have always seemed quite questionable and, as with these kinds of laws, the effort to put them into the law (and to expand them) are almost always anecdotal, rather than empirical. So you hear plenty of talk about how even if there isn't any consumer confusion, a brand could be "harmed" by dilution or tarnishment. For example, just recently, we had a discussion about Ben & Jerry's ice cream suing a porn company, for creating porn movies that used covers that looked similar to Ben & Jerry's packaging. We noted a complete lack of likelihood of customer confusion, but, as many of our commenters pointed out, the theory in the lawsuit was more focused on tarnishment.
However, for the life of me, I can't see how a brand is "tarnished" if there's no consumer confusion. The two seem intimately linked. If someone knows that it's just some porn company -- and not Ben & Jerry's itself -- making those movies, how would it ever actually harm Ben & Jerry's? No one seems to be able to explain that part.
And, now there's some empirical evidence to suggest that the theory of tarnishment isn't particularly well supported in the real world. The study is one that we already wrote about, Do Bad Things Happen When Works Enter the Public Domain?: Empirical Tests of Copyright Term Extension by Christopher Buccafusco and Paul Heald -- though we focused on the main argument in that paper, that the public domain does not harm works. However, in proving that point, Buccafusco and Heald actually dabble a bit into the question of tarnishment as it pertains to trademarks. That's because they explore whether or not tarnishment is an issue with works in the public domain, and come up with a situation that has close parallels to the trademark realm. And, as I expected, the tarnishment argument has little support. As you may recall, the study looked at audiobooks for works both in the public domain and out of it. But they also compared professional recordings to amateur ones (from Librivox) and looked at how people judged the quality -- but also how that impacted the perceived value of the underlying works. The results are quite informative:
outside of the realm of copyright law, our study might provide support for those who applaud the judiciary’s continuing reluctance to vigorously implement the Federal Trademark Anti-Dilution Act. The tarnishment prong of dilution doctrine asserts that a trademark loses some of its intrinsic value when consumers encounter the mark used in an inappropriate context, such as when the mark is placed on goods of inferior quality. Our data show that listeners to Librivox recordings find the readers to be inferior but do not translate that sentiment to a significantly lower valuation of the associated work. Finally, the doctrine of post-sale confusion in trademark law rests on the assumption that a trademark owner is harmed when a bystander merely observes a trademark on an inferior product (imagine someone who sees a poor quality Chicago Bears sweat shirt without knowing that it’s a knock off). Our data may suggest that the assumption of such a harm is unrealistic.
This seems rather important, and raises significant questions about why we still allow dilution and tarnishment claims under trademark law, when the data continues to suggest little support for the anecdotal reasons behind them. Perhaps it's time to revisit these theories and bring trademark law back in line with its intended purpose: as a consumer protection statute, and not as a tool for brands to shut down things they don't like.
Just when you thought trademark law couldn't get any stranger, we have a new story that takes it to a whole new level. Most often, trademark law is applied to logos and names of goods and services, yet there is still some untested ground. This is where Sony comes in. Several years ago, in an effort to rebrand its floundering Playstation 3 brand, Sony created a fictional Vice President of the Playstation brand named Kevin Butler. This character and the ads he starred in became a gaming sensation and brought the Playstation 3 back into the limelight. Here is a sample of these advertisements.
Such success never lasts, and earlier this year, the contract Sony had with Kevin Butler actor, Jerry Lambert, expired and he has moved on to other contracts. One of these new advertisement contracts is with Bridgestone Tires. Unfortunately, Lambert has starred in one ad that now has Sony up in arms. This ad features Jerry Lambert starring as an unnamed Bridgestone engineer along side two other actors portrayed playing a Nintendo Wii. This ad has resulted in Sony going over the edge, so to speak. The entertainment and electronic giant is now suing Bridgestone and Wildcat Creek, the corporation set up to manage Lambert's advertising career, for a variety of reasons, one of which is trademark infringement. You can view the original Bridgestone commercial at GoNintendo.
Sony Computer Entertainment America filed a law suit against Bridgestone and Wildcat Creek, Inc. on September 11. The claims are based on violations of the Lanham Act, misappropriation, breach of contract and tortious interference with a contractual relationship. We invested significant resources in bringing the Kevin Butler character to life and he's become an iconic personality directly associated with PlayStation products over the years. Use of the Kevin Butler character to sell products other than those from PlayStation misappropriates Sony's intellectual property, creates confusion in the market and causes damage to Sony.
This statement is a tad confusing on first blush. It reads as if Sony is claiming trademark on the Kevin Butler likeness rather than the character itself. As such, it would seem that Sony is making the claim that Lambert starring in any commercial could cause likely confusion among consumers, resulting in them thinking that Kevin Butler is endorsing another product. This is rather absurd though. Primarily because the character Labert portrays has no name and actors portray many different characters throughout their careers.
According to a complaint filed in California federal court, the contract between Sony and Wild Creek was entered into on August 7, 2009 and contained an "exclusivity clause" that prevented Lambert from providing his services or his likeness to competing gaming system manufacturers like Nintendo.
This part at least makes some sense. A lot of contracts will contain language that prevents an employee or other contracted company or individual from working for a direct competitor for a specified time. However, to claim that the commercial with Bridgestone, a tire company, meets this definition is a stretch, even if the commercial features a Nintendo Wii. Sony then claims that Lambert's work with Bridgestone is a breach of contract, unfair competition and tortuous interference. These are quite harsh accusations and Sony will have its work cut out for it.
Next is the claim of trademark infringement.
According to the lawsuit, "With the intent of unfairly capitalizing on the consumer goodwill generated by 'Kevin Butler,' Bridgestone has used and is using the same or confusingly similar character, played by the same actor, to advertise its products or services in the commercial."
Having seen both a Kevin Butler commercial and the Bridgestone ad featuring Lambert, I find it hard to see the similarities beyond the superficial. The Kevin Butler character plays as an overly-serious and often hyperbolic character to its comedic levels. The Bridgestone ad features an excitable and fast talking character. Aside from that, Kevin Butler was built to be a VP while the Bridgestone guy is merely an engineer in an R&D department.
These differences are not going unnoticed by Bridgestone either. It has made the claim that not only are the characters different, but Sony has no actual claim on the Kevin Butler character at all.
"Mr. Lambert is one of the actors who appeared in the commercial as a Bridgestone engineer," say the defendant. "Bridgestone denies that 'Kevin Butler' appears in the Bridgestone commercial discussed herein and thus denies that he speaks or does anything whatsoever in the commercial."
Bridgestone indicates that it intends to fight the lawsuit by showing that Sony has failed to register any mark on "Kevin Butler," that the character has not acquired secondary meaning and that there is no likelihood of confusion among consumers.
This is certainly not the first time something like this has happened. Many years ago, Wendy's had a very successful advertising campaign starring Clara Peller as a little old lady asking a generic fast food chain the famous question, "Where's the beef?" She lost her job with Wendy's after she starred in a Prego commercial uttering the phrase: "I found it. I really found it."
What these accounts show is that the ownership mentality of many corporations goes beyond logos and phrases, to specific actions, characters and the actors behind them. This is certainly a dangerous line of thought for anyone to take up. While Sony most likely has a vested interest in the Kevin Butler character, claiming that its interest in the character extends as far as the actor himself is certainly going to make Lambert's career more difficult potentially to the point of halting it. If he cannot star in any commercial for fear of looking and acting too much like himself, then what point is there in continuing in an acting career?
In the past, we've covered the rather despicable actions of Entrepreneur Magazine, acting as a trademark bully and going after real entrepreneurs for using the word "entrepreneur" in various ways. It seems counter to the magazine's mission of celebrating entrepreneurs to sue others making use of the word. Unfortunately, Entrepreneur Magazine has actually been somewhat successful in many of these lawsuits. Scott Smith, who has been in a decade-and-a-half-long tussle with Entrepreneur Magazine, has recently added a new legal effort to the long history between them: he's suing Entrepreneur Magazine for supposed "fraud" on the trademark office. Among the claims Smith is making:
April 1999: EMI filed sworn documents with the PTO claiming that it was currently using the Entrepreneur Expo name, even though EMI ceased doing so several years earlier.
February 2006: EMI submitted a staged photo to deceive the PTO into believing that EMI was still using the name Entrepreneur Expo. The photo was staged by tricking EMI's then editor to pose in front of a low-budget sign that read, "Welcome to Entrepreneur Expo."
December 2003 and August 2006: EMI tried to cover up its fraudulent activities by filing new Entrepreneur Expo trademark applications, but eventually abandoned those efforts.
November 2006: EMI submitted the same marketing piece it had previously submitted in May 1999, to deceive the PTO into believing that EMI was still using its "small business expo" trademark. But Scott discovered that EMI goofed-up by leaving its old address – for an office EMI had moved out of by at least February 2000 – exposed.
November 2010: EMI submitted sworn documents claiming that it was currently using the Entrepreneur Expo name. EMI deceived the PTO by slapping an Entrepreneur EXPO logo onto its Facebook page for its 2011 Growth Conference.
May 2011: EMI deliberately failed to renew its "small business expo" trademark to escape Scott's fraud claims and avoid judgment.
A few points on this: Smith is filing his lawsuit pro se (i.e., by himself, without a lawyer), which is quite frequently a big warning sign for a lawsuit that may be pretty weak (though that's not always the case). Also, in the 14 years or so that Smith and Entrepreneur Magazine have been going through legal disputes, Smith's track record is not good. Entrepreneur Magazine basically keeps winning, over and over again.
That said, beyond the ongoing oddness of Entrepreneur Magazine suing an entrepreneur, it's difficult to see how "entrepreneur expo" isn't a generic term. Doing a quick Google search turns up a ton of examples of the phrase "entrepreneur expo," with most of them not appearing to be associated with Entrepreneur Magazine at all. Smith also claims that the magazine itself has not been using the mark.
Given the history here, it seems like Smith has a pretty big hill to climb to convince a court of this one, but even if that's the case, the whole thing just looks bad for Entrepreneur Magazine. There certainly is a lot of focus on trademarks these days, but that doesn't mean it's a good idea to go after actual entrepreneurs.
Apple is notoriously aggressive when it comes to going after others for supposedly violating its trademarks -- often taking it to extreme levels. So it seems noteworthy, as many of you sent in, that the Swiss Railway Service (SBB) is claiming that Apple's clock app in iOS 6 happens to infringe on a clock design they hold the rights to.
On the left is Apple's app. On the right, is SBB's iconic version. While the article above quoted someone from SBB saying that he's "happy" that Apple used the design, that doesn't mean that they're okay with it. They're not:
SBB is the sole owner of the trademark and copyright of the railway clock. The railway company will now get in touch with Apple. The aim is a legal, as well as a financial solution. It is not right that one [Apple] simply copies the design.
Apple has a bit of a history of playing fast and loose with the artwork it uses. Remember the story of the iPad background image? And there are plenty of reasons to suggest that Apple should be able to do this. But, considering how aggressive it is in enforcing its own trademarks, you'd think that it would be a lot more careful before doing things like this. Of course, you have to also wonder... if Apple weren't so aggressive with its own trademarks, would SBB be so insistent on a "legal" and "financial" solution?
Fortunately, infringement claims like these rarely succeed in doing anything more than driving more eyeballs to the offending content. Another attempt to "swing for the fences" with the trademark bat has resulted in the plaintiff hitting itself squarely in the face, this time over in the Netherlands. This particular self-beating revolves around a relic from days past know as "The Phone Book."
Much like in the US, everyone in the Netherlands receives a phone book whether they want one or not. (Fortunately, it looks like the Dutch only receive one, unlike many metro areas, where two or three phone books [minimum] are crammed into mailboxes or dumped unceremoniously on doorsteps every year. And it's not just a "big city" problem. I live in a town of 1,300 and I get three [3][!] phone books every year.) You can opt out, but the phone book publisher would very much rather you didn't. 24oranges has more details on one man's fight against the wishes of the dying [via Overlawyered]:
To help stop this form of harassment, a guy called Alexander Klöpping has registered a URL called sterftelefoongidssterf.nl(diephonebookdie) which redirects to the phone book cancellation form. In other words, if you want the phone book to be eliminated (‘die’) from your life, follow that link.
Or don't follow it. 24oranges points out that De Telefoongids has been known to ignore cancellation requests. Also this: the URL is no longer live. (Thanks to Google Cache, you can still enjoy the heady rush of a URL redirect. WHEE!!!)
And that's all Klöpping's URL did: redirect users to the cancellation form on De Telefoongids' website. Apparently, using "telefoongid" in the URL was somehow a "trademark violation" and Klöpping was ordered to cease and desist. Klöpping wasn't having it:
Klöpping replied that he will take the URL offline as soon as the dead tree merchant stops shoving the equivalent of “months of advertising leaflets”, and “half a percent of all paper used in the Netherlands” through everybody’s mailboxes, including those of people that have indicated they want to receive no advertisements through the legally binding “ja-nee” and “nee-nee” stickers (yes-no and no-no).
When the continued success of your business relies on ignoring "legally binding stickers," perhaps it's time to reconsider your distribution plan. Selling advertising space in redundant stack of paper is tough, but ignoring both stickers and your own webform is only going to get you dragged into court, rather than the other way around.
It didn't take long for De Telefoongid's bullying tactics to turn into self-inflicted wounds. Within 24 hours of the public dustup, the Dutch parliament called for making the phone book opt-in, something that should be implemented worldwide. Of course, some people still use the phone book and by all means, they should still receive one. Until opt-in becomes the norm, the rest of us can continue to use them as paperweights, booster seats, kindling and conversation starters to aid in engaging our sullen teens and tweens.
"A friend of mine just posted a photo of the Lone Cypress in Pebble Beach and included a note saying, "Evidently, I can't sell this image. pebble beach owns the rights." From what I know about photography copyrights in the U.S., that's completely incorrect.
He also pointed us to this other image (not the one his friend took) of the same tree, with an explanation claiming that there are signs nearby saying that you can't take photographs of the tree and then sell them:
Along the fence, there are signs claiming that the tree is actually copyrighted by the Pebble Beach Association and that no photos, paintings, drawings or other depictions of the tree can be offered for sale without the express written permission of the Pebble Beach Association. If you ask me this is ludicrous and asinine. The tree is part of nature, changes with each season and I doubt there is a court in the land that would agree that any natural work of nature can be copyrighted in this manner so I doubt it is enforceable and the only way they can enforce the copyright is to threaten very expensive lawsuits which few artists would be able to fight.
This is partly true and partly misleading/wrong. However, it appears that this story pops up every so often, so let's dig in a bit and explain what's happening. But first, a photograph of the tree:
Look ma, here's a CC-BY-SA-2.5 licensed image of the tree
It seems that this issue comes up every few years, and some of the concern about "copyrighting" a tree has more to do with general confusion about intellectual property law (and contract law). During slow news periods, it sometimes even hits the mainstream news, as evidenced by this NY Times article from 1990.
However, Pebble Beach is not, it appears, claiming copyright on the tree. It is, however, claiming a trademark -- which was actually on a drawing of the tree as the symbol of Pebble Beach -- and which the resort registered in 1919. So the issue is (mostly) a trademark one -- but that shouldn't bar people from taking photos (or even selling the photos). While selling photos does meet the "use in commerce" bar of trademark, Pebble Beach would have to make the (somewhat extraordinary) claim that anyone selling such a photo was creating consumer confusion. That's an uphill battle, to say the least. At best, they might have a claim in a case where the image was used specifically as a brand logo or to advertise something else. But just selling a photograph of the tree seems unlikely to cause any confusion whatsoever.
There is a separate issue, though, which is contract law. Pebble Beach is private, and you actually have to pay to drive the famed 17-mile drive where the tree is located. So they're more than welcome to put forth a contractual agreement saying that you agree not to sell photographs, or something along those lines -- though, actually enforcing that contract might be a bit more difficult, and would seem kind of pointless in the long run, considering just how many photos of this tree are available.
As for the question of "copyrighting" the tree, well, I'll just quote an article from the Legal Recorder way back in 1990 that put forth a much more entertaining look at this story and whether or not trademarks, copyright or any IP could bar photographs. Here's the bit on copyright, though I encourage reading the whole thing:
Well then, can they copyright the tree?
Not likely. Copyright protection requires original and independent creative expression. Had the company designed and created the tree, coastline, ocean and lunar tidal pull, it might claim copyright protection. It might also be content simply to turn infringers into pillars of salt. In reality, however, the Pebble Beach Co. may face a steep climb in proving that the tree or its setting represents the company's original creative expression.
Moreover, even if the company has registered copyrights for an exhaustive array of Lone Cypress photos, these would not bar further photography. Subsequent photographs of the setting would not be likely to infringe earlier ones, as virtually all similar elements would owe to the setting itself.
We've talked a few times recently about the insanity created by over-aggressive intellectual property enforcement when it comes to universities, and the University of Alabama really is a prime example. After all, this is the school that sued a local artist for painting (very popular) commemorative paintings of UA football moments. Thankfully, it recently lost that case, but I guess the lawyers at Alabama didn't quite get the message that perhaps they shouldn't be so quick to dash off legal nastygrams. It appears that the lawyers in charge of enforcing UA's trademarks were quick to send off a legal nastygram to a local baker because she was making hand-decorated cakes and cookies with "UA-related" imagery:
[Mary] Cesar is owner of Mary's Cakes & Pastries in downtown Northport. The bakery is known for its customized cakes, but it also sells fresh-baked pastries and iced and decorated form-cut cookies. During the last three to four years, its cookies, especially during the football season, have included hats with a houndstooth-like icing pattern, footballs and elephants with the letter “A.” Some customers also ordered cakes decorated with a Crimson Tide theme.
Yeah, just one problem: she was doing that for the university itself.
Mary Cesar created a cake that resembled the BCS National Championship trophy for the Crimson Tide's athletic department for National Signing Day in February. And when the University of Alabama Law School held a reception for its recent graduates, it ordered 10 dozen cookies decorated with a capital “A” for Alabama from her bakery.
Cesar announced that she couldn't afford to fight the legal nastygram, and was going to stop producing the popular baked goods. After the story got out, the University quickly went into damage-control mode and issued an apology, claiming that it was "not consistent with the protocol we normally follow for local vendors on trademark issues." Given the lawsuit mentioned above, it's not clear that's really accurate. Of course, part of the culprit here may be that UA outsourced its trademark enforcement to a third party. Collegiate Licensing Co., based in Atlanta, is who the letter actually came from. It would seem that if you're seeking to build up goodwill with local merchants who supply your own staff with university-themed baked goods, perhaps the first thing you should do is not let lawyers from some other state start nastygramming them.
Apple is very protective of its Apple name and logo trademarks. We have noted in the past that it seems to think that no company can use a logo that even remotely resembles an apple. So it really should be no surprise to learn that Apple is going on the offensive, double time, in order to stop a Polish online grocery store from receiving a trademark for A.pl.
"Apple brand is widely recognised and the company says that A.pl, by using the name that sounds similar, is using Apple's reputation," patent office spokesman Adam Taukert said.
Last time I checked, Apple had no business endeavors in online grocery sales, so it would seem to be a stretch to think that consumers would be confused and think that A.pl was an offering by the electronics company. Additionally, A.pl and Fresh24.pl seem to be regional and limited to Poland at this time. So there would be limited harm if any to Apple's global brand. In the end, this just ends up looking like a bunch of trademark lawyers on Apple's payroll looking to keep busy and gain billable hours.
Maybe you're like me and you thought that trademark stories didn't get much crazier than apparent confusion between products like ice cream and hardcore pornography. Or maybe you thought that dead half-chef, half-spy zombies crying foul over facts would win the nutso championship. Well, my sweet little innocent lambs, I give you the following story about a comic book author suing threatening to sue book review websites for reviewing a book by another author that had the same title.
Jazan Wild, comic book creator, is suing both Harper Collins for publishing Carnival Of Souls by Melissa Marr as well as a bunch of websites that reviewed her book. Not for copyright, mind you, but trademark, because Wild released a comic book called Carnival of Souls in 2006. Wild is claiming that the publisher is intentionally trying to cause confusion between a new fantasy novel and a comic book released six years ago. If you think this sounds crazy, The Digital Reader agrees.
Any sane person would have put a few minutes thought into the matter and realized that such an obvious phrase as Carnival of Souls would likely have been used as a title many times before. In fact, Bookfinder turned up at least a couple dozen different books, movies, TV episodes, and more – some of which dates back to 1962. And if you look inside books, Google says that it found the phrase no less than 5600 times (with some duplication, obviously).
Now, if that were the end of the story and Wild was only bringing suit against Harper Collins, we could all sit back, take a sip of our coffee and have a nice guffaw at the silly guy waving his arms around needlessly. Unfortunately, Wild is on a mission here to break the record for most wrong thoughts over a single issue. That's the only explanation I have for why he would then send cease and desist letters to websites that reviewed Marr's novel, claiming they were infringing on his trademark as well. Just to be clear, these sites are only posting reviews, no mention of Wild's works (why would they?), no exerpts from the novel or the comic book. Just a review of a novel with an apparently common title.
To whom it may concern,
This is a cease and desist. “Carnival Of Souls” is a trademark owned by Jazan Wild and Wild alone has the exclusive right on the United States of America to use the mark in classes 16 and 41 of which a novel is included. Posting a chapter from a novel using this mark is a willful and malicious infringement of Wild’s mark. Please remove.
Hypothetical time. Let's say I broke into your house, tied you up to a chair, put a gun to your head, and told you that you had to come up with the perfect way to derail an argument about customer confusion of the title of a fictional work in the next thirty seconds or I was going to kill you. Could you come up with a better way than including in your C&D letter the URL of the supposed trademark infringement when that URL mentioned that the damned book was by a different author? I don't think you could.
More to the point, pissing off sites that review creative works when that's the business you're in is treachorous ground. But, at least it's entertaining. So here's to you Jazan Wild. May your crazy never cease to entertain us all.
