California Man Gets Sued After Trying To Trademark Bully A Theme Park

from the oops dept

We've seen a great many examples of trademark lawsuits here at Techdirt. In most cases, those lawsuits are levied by individuals and companies that are the trademark bully, but that's not always the case. We also see plenty of suits that are raised in defense of such bullying, in which the entity suing asks the court to simply affirm that its use is not infringing. Trademark bullies, of course, don't like when that sort of thing happens.

Meet Scott D'Avanzo of California. Scott did a pretty cool thing and created a haunted house attraction in his garage, naming it the "Mystic Motel." Then he came across the plans of the Silver Dollar City theme park near Branson for its new "Mystic River Falls" water rafting ride. At that point, he did the very un-cool thing of contacting Mystic River over the trademark he had on his haunted house and demanding to speak about the name of the new ride.

Scott D'Avanzo said he sent Silver Dollar City a letter earlier this year asking the theme park to contact him about the name, which he claims is similar to the "Mystic Motel" name he used for a haunted house attraction he started out of his garage.

"You have to police your trademarks," D'Avanzo said. "That's all we were doing is protecting what was ours."

D'Avanzo said he has sent many letters to other businesses that are similar to the one he sent Silver Dollar City. He said his letters are usually followed by a phone call where the two parties can work out some parameters for use of the name.

Silver Dollar City, however, didn't bend the knee to D'Avanzo. Instead, the theme park filed a lawsuit, seeking to have the court declare that the name of its ride at a large-ish theme park doesn't somehow violate the trademark rights for a garage-based haunted house. The reported arguments Silver Dollar City makes are the ones you would expect; namely, that its use of the word "Mystic" isn't going to cause confusion among the public for a "family project and neighborhood attraction." That's all the theme park wants: the reasonable use of the name of its ride.

But Silver Dollar City doesn't stop there. The theme park also points out that D'Avanzo didn't oppose its trademark application, didn't say a word about it until it came time for a money-grab, and, oh, D'Avanzo destroyed his Mystic Motel setup entirely some time ago.

Upon information and belief, both the “Mystic Motel” “dark house” and the Christmas-themed “Journey to Polar Point” family projects were destroyed or deconstructed at some time. Upon information and belief, the “Mystic Motel” and “Journey to Polar Point” marks were not in continuous use with those projects during certain years. Upon information and belief, the “Mystic Motel” and “Journey to Polar Point” marks were not used at all or in interstate commerce with those projects during certain years. Upon information and belief, the “MYSTIC MOTEL” mark does not appear to be in use at this time. Upon information and belief, Mr. D’Avanzo and his family are not currently living in the Ladera Ranch house and they appear to have no ability to offer the “dark house” attraction under the “MYSTIC MOTEL” mark for Halloween this year.

In fact, the filing goes so far as to claim that D'Avanzo's trademark application itself may have been built on lies, where he claims to be using the "Mystic Motel" mark in interstate commerce, but never did. On top of that, D'Avanzo created a separate company, Adrenaline Attractions, to which he assigned the trademark. Adrenaline Attractions doesn't provide amusement attractions, but instead consults with parks to design rides, which isn't the market designation for which D'Avanzo has his trademark. Also, Adrenaline Attractions appears to have exactly one customer. Again, this is not a story about confusion in commerce, but about a money-grab.

This, somehow, rates with D'Avanzo as bullying.

"That's what they are is a big bully," D'Avanzo said of Silver Dollar City.  "I'm not a stranger to the court," D'Avanzo said. "And if I have to fight, I will."

Any reasonable assessment of the situation would result in Silver Dollar City's request for declaratory judgement to be granted. I'd only like to add that it takes chops to bully a company over a trademark, have that company ask the court to defend it from the bullying, and then call the company the trademark bully.

Maybe D'Avanzo can add an IP wing to his haunted house, except he doesn't appear to actually have one any longer.

Filed Under: amusement parks, haunted house, mystic, mystic motel, mystic river, scott d'avanzo, theme parks, trademark bully, trademarks
Companies: adrenaline attractions, silver dollar city

ISU Student Groups Changing Names En Masse To Protest School's Ridiculous New Trademark Policy

from the no-pride-allowed dept

You will recall that over the past few years, we have been discussing how Iowa State University essentially did everything wrong concerning an alumni group running a pro-marijuana organization that made use of school symbols and iconography. After initially approving the group's use of school trademarks, several members of the state's conservative legislature got involved, leading to the school rescinding that authorization. NORML, the name of the group, sued the school, claiming all of this was a violation of their free speech rights. The courts agreed, eventually to the tune of a $600k judgement, meaning that school wasted over half a million dollars of taxpayer money to fail at trademark bullying.

You might have expected that this would serve as a delightful education for the school as to the reasons why they don't want to be a trademark bully. You would be wrong, of course. Instead, the school's next step was to immediately rewrite its trademark use policy, making it laughably restrictive and essentially attempting to give the school broad oversight over all uses of its iconography by student groups. This, predictably, has led to a full on revolt both by many of the school's student organizations and its student government.

To start with the student organizations, they are largely dropping ISU connections from their name and branding like a hot stone.

A year ago, Iowa State University's student chess club was easily tied to the university through its name. Now, it’s the Ames Collegiate Chess Club. The student aviation group had been the Flying Cyclones. Now, they’re the Ames Flyers. And the student space club, which had had “Iowa State” in its name, is Ames Space Teaching and Recognition Association.

Why the changes? University administrators over the summer tightened Iowa State’s trademark policy by limiting most student organizations' access to trademarked references to the institution.

As noted elsewhere in the post, ISU has a habit of puffing its chest out over its large roster of student-led organizations and clubs. Yet, because of its heavy-handed new policy, those ties to the university are being severed, taking those bragging rights away. Where ISU once could be seen as having a rich tradition of clubs and organizations reveling in student participation, a separation line has now been drawn. All because the school wants to choose control over culture.

And the students are pissed.

The policy so riled student government members that they unanimously approved a resolution this week requesting the administration, at least temporarily, backpedal from the guidelines that were posted Aug. 1 on ISU’s Trademark Licensing Office website.

"The administration went about this poorly," Michael Tupper, an ISU student government member, said at this week’s meeting. "They implemented the change in the middle of the summer, when there were no students on campus."

In addition, Tupper said during the meeting, “We’ve been told multiple times that the change was not in direct result to the lawsuit. … That is not true.”

A school spokesperson states that the school will review the resolution and then meet with the student government, but it's painfully obvious that it would rather have avoided student interaction altogether through sheer timing. Making such a policy change where the primary effect will be felt by student groups when students weren't even on campus isn't particularly subtle. Meeting with the student government now is CYA, not some kind of olive branch. And that's likely why the student government is not screwing around here.

Some at this week’s student government meeting suggested that if university officials don’t follow through on any requests in the resolution, other actions could be taken, including votes of no confidence or censure.

It's a problem entirely of ISU's own making. And, given the culture that is supposed to be fostered on college campuses, this is about as wholly unnecessary as it gets. As entertaining as it is watching an institution like ISU learn absolutely all the wrong lessons from a well-publicized trademark dispute, it has to be just as frustrating for the students on campus.

Filed Under: student groups, students, trademark, trademark bully
Companies: iowa state university

Iceland vs Iceland Trademark Spat More Clear: Iceland Foods Opposed Iceland's Trademark Application

from the ice-ice-baby dept

We recently wrote about the strange situation going on between a British company, Iceland Foods, and the nation of Iceland. What was clear was that this spat was over the trademark on the word "Iceland" held by the grocer, which had been ridiculously granted to cover all of Europe by the EU. Iceland had initiated a petition to have that trademark revoked, prompting the company to send a delegation to Reykjavik in an attempt to work something out that would allow the company to retain its control of a trademark consisting of the name of a member of the European Economic Area. It seems that this meeting did not go as well as Iceland Foods had hoped.

"[The talks] got nowhere because it rapidly became clear that the Icelandic authorities have no interest in reaching a compromise," said founder and chief executive Malcolm Walker. "We have no real idea why this has suddenly become such a major problem for Iceland (the country)."

Which isn't exactly true, as almost in the same breath the company has acknowledged that it attempted to block an extremely benign trademark registration by the goverment of Iceland. The country had registered "Inspired by Iceland" as a trademark, only to have it blocked by Iceland Foods. The company claims it wasn't aware that Iceland's government had been behind the application it blocked, which is both difficult to believe and entirely besides the point.

That point being that the trademark the company holds is absurd in the first place, both because it is overly broad as well as consisting entirely of the name of a geographic location. And the negotiations between the company and the country, in which the company attempted to paint Iceland's government as unwilling to compromise, apparently saw Iceland Foods unwilling to budge.

On Friday, Iceland's foreign ministry said the company refused to relinquish exclusive control of the word Iceland and that it would therefore pursue legal action to invalidate the company's trademark.

"The registration of a country name that enjoys highly positive national branding to a private company defies logic and is untenable," the ministry said.

It's hard to imagine how the trademark survives Iceland's petition. Iceland Foods still says it hopes it can reach an agreement with the country, though why the country would want to negotiate at all is entirely beyond me.

Filed Under: iceland, trademark, trademark bully
Companies: iceland

Appeals Court Says Trademark Bully/HIV Denialist Must Pay Defendant's Legal Fees

from the beating-back-the-bullies dept

Almost three years ago, a team of pro bono attorneys (D. Gill Sperlein, Paul Alan Levy, Gary Krupkin and Neal Hoffman) took up the defense of Jeffrey DeShong, an HIV-positive blogger who had been served a bogus trademark infringement lawsuit by Clark Baker, a retired LAPD officer who spends his free time defending people who have hidden their HIV-positive status from sexual partners.

Baker had no legal basis for his claims, but was obviously hoping airy claims of Lanham Act violations based on URL similarities would be all that was needed to shut up a vocal critic. He was wrong. The lawsuit was tossed in the pleading stages by the district court and that decision was upheld by the Fifth Circuit Court.

What the appeals court did not address the first time around -- shifting legal fees to the vexatious litigant -- has now been addressed. The Fifth Circuit Court of Appeals, at the urging of DeShong's defense team, has taken a new approach to its standard for fee shifting in obviously bogus lawsuits. Paul Alan Levy explains:

The federal court in Dallas readily dismissed the trademark claims on the face of the complaint, then declined to retain jurisdiction over the state-law defamation claims; in that way, the trial judge avoiding having to address DeShong's anti-SLAPP motion. But even though our path to overruling the Fifth Circuit's rule got easier when the Supreme Court held, in Octane Fitness, that the term "exceptional cases" in the Patent Code is not limited to lawsuits brought in bad faith, the trial judge was unwilling to buck clear Fifth Circuit precedent: he denied our fee motion relying on the Fifth Circuit's bad faith standard. Today, however, the Fifth Circuit held that its previous bad faith standard (and its requirement of clear and convincing evidence) has been effectively superseded by the Supreme Court's ruling in Octane Fitness. Henceforth, "an exceptional case is one where (1) in considering both governing law and the facts of the case, the case stands out from others with respect to the substantive strength of a party's litigating position; or (2) the unsuccessful party has litigated the case in an 'unreasonable manner.'"

This new standard will make it easier for defendants facing SLAPP-type lawsuits to retain counsel, as there's a significantly better chance for fee awards once courts have examined the case. Levy, however, notes that this won't help much in this lawsuit, as the trademark bully filed for bankruptcy while the appeal was pending. This not only means it's highly unlikely the $50,000 in fees requested will ever make their way to DeShong's defense team, but the filing also allowed Baker to drag out the appeals process for an additional year.

This outcome doesn't help the defense team's bottom line but for free speech defenders like Paul Levy and his partners in this case, the precedent set here is the bigger win. This should act as a deterrent against future acts of censorship-via-litigation in the Fifth Circuit's jurisdiction and lays another brick on the path towards a unified judicial stance against censorship through litigation.

Filed Under: clark baker, hiv denial, jeffrey deshong, legal fees, trademark, trademark bully

Trademark Super-Bully Apple Blatantly Infringes On Headphone Company's Trademarks

from the live-by-trademark-die-by-trademark dept

It's not terribly often we spend the time to write about valid trademark complaints in these here Techdirt pages, but I do think there are times when it makes sense to do so. One of those times is when a company that does everything in its power to be as super-trademark-bullying as possible just flagrantly infringes someone else's trademark as though it were the most natural thing in the world to do.

So let's set this up. Now, I probably don't need to explain to the average Techdirt reader just how trademark-a-licious Apple has always been, but in case I'm wrong about that, it trademarked the interior design of its retail stores, it has long-insisted it is the only one that can use an apple in its logo, it argued that it owned the trademark rights for the generic term "app store," and it even went ahead and threatened a school because it used the forbidden fruit in its logo. In other words, Apple is as trademark-y as it gets.

Except when it comes to headphones it wants to market, in which case someone else's valid trademark can just fuck right off.

Direct Sound Headphones, LLC, of a Fenton, Missouri has sued Apple for Trademark Infringement over the term “Ear Pods”

Plaintiff, (“Direct Sound” or “Plaintiff”) sued Apple for “violations arising under the Trademark Act of 1946, 15 U.S.C. §1051, et seq., (the “Lanham Act”) and for common law trademark infringement and unfair competition under the laws of the State of Missouri, “based on Direct Sound’s ownership of the trademarks “E.A.R.PODS” and “e.a.r.Pods”; Direct Sound’s use of the trademarks “E.A.R.PODS” and “e.a.r.Pods” in manufacturing and selling audio headphones; Apple’s subsequent, improper, and infringing use of “EarPods” to sell goods including audio headphones; and Apple’s continued improper use of “EarPods” despite Apple’s knowledge of Direct Sound’s prior use and ownership”.

Seems pretty clear cut to me. EarPods was a barely-variant version of a trademark registered by another company, the use of which could have been found with a simple google search, nevermind any actual investigation into the prior use of the term. And, yes, having yet another product in the tech world out there with the use of "pods" in it is as stale as cheap beer that's been sitting in sunlight for the better part of a day, but that isn't really the point. "Ear Pods" works as a trademark and Apple disregarded it and marketed its own product with the term.

And this isn't even the first go around with Apple's product's name.

Back in September 2012, we wrote a story about Apple failing to secure the domain names EarPod.com and/or EarPods.com before announcing its Ear Pod product, writing in part:

“The domain name Earpod.com has been registered since 2008 and is being forwarded to a hearing clinic site at myhearpod.com.

The company that owns the domain name earpod.com owns a trademark on the term “hearpod” and maybe in a position to object to Apple’s trademark or sued Apple for infringing on its mark especially since the own Earpod.com.

Live by the trademark, die by the trademark, sirs. You can't on one side be the bully and then cry victim.

Filed Under: earpods, trademark, trademark bully
Companies: apple

Disappointing To See Canonical Act Like A Trademark Bully Over Ubuntu

from the get-over-it-guys dept

Well, this is disappointing. Canonical, the company behind Ubuntu, apparently has decided to act like a trademark bully. The maker of a fairly popular version of Linux sent a cease-and-desist letter to the website FixUbuntu.com, which is a website run by Micah Lee (who happens to work for EFF), that shows Ubuntu users how to disable a default feature in Ubuntu that Lee reasonably considers to be privacy invading. It's pretty straightforward, but Ubuntu's trademark lawyers are trying to kill it. While the letter is more on the friendly end of the spectrum, it's still problematic. It argues that Lee does not have the right to use the logo:

To keep the balance between the integrity of our trademarks and the ability to to use and promote Ubuntu, we’ve tried to define a reasonable Intellectual Property Policy. You can read the full policy at http://www.canonical.com/intellectual-property-policy. As you can see from our policy, to use the Ubuntu trademarks and and Ubuntu word in a domain name would require approval from Canonical.

Unfortunately, in this instance we cannot give you permission to use Ubuntu trademarks on your website and in your domain name as they may lead to confusion or the misunderstanding that your website is associated with Canonical or Ubuntu.

So, whilst we are very happy for you to write about Ubuntu, we request you to remove Ubuntu word from you domain name and Ubuntu logo from your website. We would highly appreciate if you could confirm you have done so by replying this email to us.

Of course, legally, this is hogwash. As we've been pointing out for years and years, the case law is pretty damn well established around so-called "sucks sites" (sites that criticize or discuss a brand, including using that brand in their own domain) are not, in fact, trademark infringement. In response, Lee and his colleagues at EFF came up with a wonderful disclaimer they've added to the site just to make it extra clear that there will be no confusion:

Disclaimer: In case you are either 1) a complete idiot; or 2) a lawyer; or 3) both, please be aware that this site is not affiliated with or approved by Canonical Limited. This site criticizes Canonical for certain privacy-invading features of Ubuntu and teaches users how to fix them. So, obviously, the site is not approved by Canonical. And our use of the trademarked term Ubuntu is plainly descriptive—it helps the public find this site and understand its message.

How often do you get to put the terms "complete idiot" in a disclaimer?

Of course, as Lee also points out, if Canonical really wants the site to go away, they can make that particular feature opt-in instead of default. But, even if they don't, their cease-and-desist demand is meaningless, because it's not infringement. It's too bad that a company that is an open source leader would also get into trademark bullying, even if it's done so with a smile.

Filed Under: disclaimers, micah lee, privacy, sucks sites, trademark, trademark bully
Companies: canonical

Trademark Bully Jenzabar Ordered To Pay $500,000 In Attorney Fees Over Its Unrelenting Attack On Documentary Filmmakers

from the now-will-it-end? dept

For years now, we've covered the bizarre legal fight between software company Jenzabar and some documentary filmmakers, Long Bow Productions. One of Jenzabar's founders, Chai Ling, was one of the student leaders of the Tiananmen Square uprising -- a fact that Jenzabar has played up many times in its promotional efforts. Long Bow made a documentary about the uprising, and in that film, it shows Ling making some comments (that apparently she'd prefer she never said out loud) about how she hoped for bloodshed. Now, most people would brush off those comments as youthful excess of an immature activist, but Ling, now living in the US and using her activist roots to promote the company, instead resorted to suing Long Bow Productions for defamation and trademark infringement. The defamation lawsuit went out the window pretty damn quick (tough to be defamation when you actually said the stuff they quoted you saying). She then focused on a wacky and totally ridiculous trademark claim, arguing that because the filmmakers mentioned Jenzabar on their website (and, specifically, in the title and meta tags) about the film, it was trademark infringement.

Jenazabar lost the lawsuit, but only after engaging in extensive and costly discovery and depositions, then appealed on a ridiculous and obsolete theory. They then lost the appeal. And, now a court has thankfully ordered Jenzabar to pay $511,943.12 in attorneys' fees and expenses for pursuing such frivolous legal strategies, clearly designed to silence free speech, rather than for any legitimate trademark purpose. The court is pretty clear on this in slamming the company for its efforts and awarding such a large amount:

The central element of abuse of process is the use of litigation for an ulterior purpose -- that is, a purpose other than to achieve relief for the wrong alleged. The overall record of this case leaves no doubt that that is exactly what Jenzabar did; it subjected Long Bow to protracted and costly litigation not to protect the good will of its trademark from misappropriation, but to suppress criticism of Jenzabar's principals and its corporate practices.

[....] Equally indicative of Jenzabar's ulterior purpose is its conduct of discovery, particularly its pursuit of lines of inquiry in depositions that had no conceivable relevance to its claims. The exercise of discretion by the judge who heard discovery motions not to award sanctions at that time does not preclude this Court's consideration of Jenzabar's conduct at depositions as part of the totality of the circumstances of the case.

Similarly instructive as to Jenzabar's ulterior purpose is its statement of facts in opposition to summary judgment, in which it set forth a series of assertions to the effect that statements by Long Bow on its Jenzabar page and elsewhere were harmful to Jenzabar's reputation and its "standing in the academic community." Clearly, Jenzabar's concern was not user confusion as to sponsorship or source, but harm to its reputation arising from the content of Long Bow's statements. Jenzabar's multiple and shifting legal and factual theories, asserted at the various stages of the case, support the same conclusion, as does its objection to pro hac vice admission of the lawyer who assumed Long Bow's defense after it had exhausted its resources. In this regard, the differences in economic power between the parties is one of many circumstances that tends to confirm the conclusion that Jenzabar engaged in extortionate conduct, making this case exceptional.

Jenzabar might still appeal this ruling, apparently, and given its willingness to drag this on for years and years and years, despite almost no chance of prevailing, it seems like there's a decent chance it will do so.

Filed Under: attorneys fees, chai ling, trademark, trademark bully
Companies: jenzabar, long bow productions

Drink Up: Power Hour Trademark Bully Loses; Musician Plans Victory Tour

from the and-drink-again dept

Nearly three years ago, we had a short post about yet another trademark bullying dispute, this time over the term "power hour" as used to refer to the old college drinking game of taking a shot of beer every minute for an hour. A guy named Steve Roose somehow (via a USPTO screwup, basically) received a trademark on the phrase, which he was using to market some DVDs. He had gone on a rampage threatening and/or getting takedowns on lots of other sites that used the term "power hour," including against musician Ali Spagnola, who had an album / concept project called "Power Hour" consisting of 60 one minute songs. The idea, of course, was that each time the music changed (either live or while listening on your own), you take a drink. She even went the full CwF + RtB route with the thing, offering the album as its own shot glass with a USB key embedded in the bottom (though, annoyingly, she patented this little doohickey).

It turns out that there were a lot of twists and turns both before and after that post -- and you can (and should!) read the full crazy story, as explained (quite amusingly) by Ali herself. Or, if you want to take the shortcut, you can just watch this amusing video of Ali explaining part of it. My shortish version: Years earlier, Steve had enthusiastically approached Ali -- telling her he thought the music and concept were great -- and offering to help promote and sell her product. They actually signed an agreement, though he never actually sent her any money for any product sold. Then, a week after a normal friendly email exchange, Steve apparently discovered a bastardized version of trademark law, which unfortunately made him think that a requirement for holding a trademark is to be a complete jerk to anyone else who used the term. He sent Ali a legal(ish) nastygram ordering her to "seize" from continuing (I think he meant "cease") and was able to get her album taken down off of Amazon. After some emails back and forth, Ali took matters into her own hands (and wallet) and eventually coughed up about $30,000 to do a full opposition to the trademark. Crazy, I know. Steve defended his trademark by himself, and apparently did a piss poor job of it, even contradicting himself on some key points (both claiming that the trademark was totally original and his idea and explaining how "power hour" has been around for ages).

In the end, after all of this, Ali did win. You can check out the dry legal version from the Trademark Trial and Appeal Board (also embedded below) which is not nearly as entertaining as either Ali's video or her writeup. But, it's got some more details as well. Anyway, the key part:

Ultimately, the evidence of record points unmistakably to the conclusion that the proposed mark is highly descriptive. The third-party use of the term in conjunction with a drinking game is widespread and voluminous. Well before applicant’s claimed first use date, the term appears to have been established as the name of a drinking game. Because POWER HOUR refers to the game that applicant’s goods are designed to facilitate or accompany, we conclude that the proposed mark is merely descriptive of a significant feature or function of applicant's goods.

Translation? Drink up! And that's exactly what Ali, and her company "Binge Responsibly LLC" are intending to do. She's set up a Power Hour Freedom Victory Tour crowdfunding effort on IndieGoGo, to try to turn trademark bully lemons into crowdfunded touring lemonade. There are some cool offers as part of the crowdfunding campaign, so go check it out if you'd like to raise a shot glass full of beer to trademark bullies (finally) losing.

Oh, and be sure to get all the way to the amusing post script to the whole story, concerning the email that Ali received from "Steve Roose" after she won... in which someone who appears to be the same Steve Roose claims to be a different Steve Roose. Perhaps he's done one too many power hours...

Filed Under: ali spagnola, power hour, steve roose, trademark bully