Posts Tagged ‘trademark bully’

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By: Mark R. Malek

I came across a story on the Businessweek Magazine Website that rang my trademark bully alarm.  It seems as though Entrepreneur Magazine, which publishes a magazine geared towards the interests of, wait for it, wait for it – entrepreneurs, is suing  entrepreneurs for trademark infringement.  As I was initially reading the story, I was thinking – ok, this author might not have it right.  Entrepreneur Magazine is probably only really going after folks who are putting out competing magazines and using the “Entrepreneur” trademark for their magazines.  Unfortunately, Paul Barrett did understand and was right on.

Entrepreneur Magazine’s latest victim is Daniel Castro, who operates the website EntrepreneurOlogy.com.  Daniel is described as being a serial entrepreneur, having started several different businesses. EntrepreneurOlogy.com is website that, essentially, promotes Mr. Castro as an aid to entrepreneurs and provides tools to “corporate executives to get back to the basics of entrepreneurship.”  Entrepreneur Magazine does have a trademark for “Entrepreneur,” among many others, as used in relation to “advertising and business services, namely, arranging for the promotion of the goods and services of others by means of a global computer network and other computer online services providers; providing business information for the use of customers in the field of starting and operating small businesses and permitting customers to obtain information via a global computer network and other computer online service providers and; web advertising services, namely, providing active links to the websites of other.”

Point of order – isn’t this exactly what entrepreneurship is?  At least a part of it?  For example, “providing business information for the use of customers in the field of starting and operating small businesses.”  Is that not the same as saying “providing business information to entrepreneurs?” Seems to me that, if I were Entrepreneur Magazine, I would be somewhat careful about trying to flex some trademark muscle against folks…especially against my own customer base.  Has this trademark registration been put to the test yet?  Seems to me as though suing your target audience is not a very bright idea.  How are entrepreneurs supposed to trust anything in a magazine for entrepreneurs that involves the advice of “sue your target audience?”

Time to play devil’s advocate.  Let’s say that I am the trademark attorney for Entrepreneur Magazine, and let’s say that my client comes to me with a list of potential infringers.  On that list are three magazine publishers that include the mark “Entrepreneur” in their title, and three websites that are titled “Entrepreneur” and that each provide business information for the use of customers in the field of starting and operating businesses.  I probably advise my client to ask the magazines to stop immediately.  I probably then tell my client that it is time to do a very in-depth analysis of the websites.  My question to my client is the following: “how else do you think this website should describe their target audience, i.e., how else would you refer to someone that is starting a new business?”  If the answer is anything remotely close to “it wouldn’t make sense to call them anything but entrepreneurs,” then I ask my clients to probably reconsider going after the website, especially if the website merely incorporates the word “entrepreneur” into their title.

If your trademark is the only way to say a particular thing, i.e., your trademark becomes the generic term, then it is not protectable.  For example, the following used to be trademarks: aspirin, trampoline and escalator.  Here are a few that I just can’t believe are still around: Band Aid, Popsicle and Jacuzzi.  Seems to me as though Entrepreneur needs to watch its step here.  I’m not saying that entrepreneur is becoming generic as to magazines for business start ups, I’m just saying that a trademark registration does not give them the ability to remove the word from the lexicon.

 

 

 

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By: Mark R. Malek

Although I do not have much information about it yet, a recent article indicated that Facebook has filed a trademark infringement lawsuit against Friend Finder and Adult Friend Finder.  Apparently, the function on Facebook that allows people to find “friends” is referenced as a “friend finder.”  A quick search of the USPTO records, however, indicate that “FriendFinder” and “AdultFriendFinder” are registered trademarks of Friendfinder, Inc.  The “AdultFriendFinder” trademark was used in commerce at least as early as 1996, as was the “FriendFinder” trademark.  I do not recall Facebook being around that early, so I am not sure where Facebook is coming from with this one.

As our readers know, I have been somewhat critical of Facebook’s trademark enforcement tactics.  See my previous articles about Facebook here, here, and here.  Although, to be perfectly open and honest – I would love to be one of the attorneys selected by Facebook to zealously (and I mean zealously) enforce the Facebook trademark portfolio.  I am pretty sure that such a client could keep me and maybe a couple other attorneys in our firm somewhat busy!

The complaint was not yet available for download and review, but as soon as I get a copy of the compliant, I’ll try to post an update so that we can figure out what Mr. Zuckerburg is up to now.  I really wonder if any of these decisions are run by him.  Who makes the decision to file these lawsuits?  Is Zuckerberg briefed by a team of attorneys as to who they think is infringing the Facebook trademark portfolio and he makes the decision on who to sue and who not to sue?  For some reason, I highly doubt he is involved in the process at all.

I will post a little bit more about this as I get more information.  In the meantime, please feel free to become a fan of TacticalIP at http://www.facebook.com/TacticalIP.

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By: Mark R. Malek

As you may have already heard, Facebook has been in the process of vigorously enforcing its intellectual property.  Some commentators, such as, for example, ME, have likened their tactics to bullying, thereby providing them with the title of IP Bully.  Check out some of my previous gripes about Facebook here and here.

The way I suspect this goes is that a group of attorneys representing Facebook sit in a room with a list generated by some searchers of every single instance of use of the word “face” and/or “book” on the same web page.  Sure, these have to be filtered, but who cares about the labor costs involved with that?  The real costs of this crusade begin to add up when Facebook’s team of attorneys sit around that table to look at the results.  Let’s say that there is about $2500/hour sitting around that table.  It seems as though it was not too long ago, the words “face” and “book” were commonly used words that were found in any dictionary.  On any given day, I will use those words in communicating with my two year old.  For example, a typical sentence close to bedtime might just be “Let’s go wash your face so that we can read a book and go to sleep.”  I have no idea how to communicate something like that now.  The way that Facebook is going after everyone under the sun for using the words “face” or “book,” I think I may have to consider another option.  For example, maybe I will say, “Let’s go wash the portion of your body extending from your forehead down to your chin so that we can engage in entertainment by me reading words from a bound document that results in a story and go to sleep.”  Whew, I feel like I just wrote a claim for a patent application.

Am I exaggerating the situation?  Of course!  It makes for better reading.

With that in mind, however, there was at least one recipient of the dreaded Facebook cease and desist letters that wasn’t going to stand for the threats – Lamebook.  If you haven’t been to the Lamebook site (http://www.lamebook.com), take a second to check it out.  It is truly quite entertaining.  As you can see, Lamebook takes the funniest stuff that can possibly be found on Facebook and posts it.

After receiving the Facebook cease and desist letter, Lamebook decided to take matters into their own hands – in a matter of speaking.  Upon being threatened with a lawsuit, Lamebook actually filed a suit of their own asking the court to declare that their use of the “Lamebook” mark did not infringe on any of the Facebook trademarks.  You can read the complaint here.  The complaint is actually short, sweet and to the point – very unlike most complaints I have read lately.  As eloquently pointed out in the complaint:

“The Lamebook website is a parody website that highlights the funny, absurd and often ‘lame’ content that gets posted on the Facebook website.  Each weekday, the Lamebook website is updated with new ‘lame’ Facebook content for its users to view and comment on.  Unlike the Facebook website, the Lamebook website does not offer social networking services or functionality to its users and, therefore, does not compete with Facebook.”

Seems like a reasonable enough explanation, right?  Unfortunately, wrong.  The problem pretty much lies in the very same paragraph of the complaint.  “The parody has proven to be effective for Lamebook….the Lamebook website has become a popular destination for people to poke fun at and comment on the kind of pictures, comments, and messages that get posted on the world’s most popular social networking site.”  This sure does sound like a type of social networking to me.  If people can leave comments regarding a particular post, I have to assume that you can read the comments of others.  Of course, with enough popularity, the commentators will start commenting on one another’s posts.  This reeks of social networking.  Therefore, in my humble opinion, the argument that Lamebook does not offer social networking services is out.

It is my suspicion that this argument is directed to an allegation that the use of the mark “Lamebook” infringes on the “Facebook” trademarks.  The Lamebook Attorneys are likely trying to show that since Lamebook provides a different service, they are likely not to be confused with Facebook and, therefore, do not infringe on the “Facebook” marks.  The big issue that needs to be resolved, however, is the similarity of the trademarks.  As you can see, Lamebook did not exactly go out of its way to create a completely different mark.  Again, however, it is not as though someone took a look at the “Lamebook” trademark and got confused as to the source of the services, i.e., it is not as though someone was looking for “Facebook,” came across “Lamebook” and figured it was the same thing.

I'm so famous I can jump up on Oprah's sofa!

Let’s turn our focus to trademark dilution.  Trademark dilution is a cause of action that is generally reserved for “famous” trademarks.  Many people confuse trademark infringement with trademark dilution.  Trademark infringement can broadly be described as an unauthorized use of one’s trademark that causes a likelihood of confusion.  That is not the case with liability under trademark dilution.  No likelihood of confusion needs to be shown.  Instead, trademark dilution requires a showing that unauthorized use of a trademark dilutes the distinctive quality of the trademark.  The biggest issue that I often see with trademark dilution is that it is a cause of action that is brought for trademarks that do not possess a great deal of distinctive quality.  That is why I noted that trademark dilution is generally reserved for “famous” trademarks.

Turning our attention back to the case at hand, I think we can all agree that the Facebook mark is famous.  When someone tells me that they are not on Facebook, I look at them as if I am staring at someone that still uses a rotary telephone.  I find it hard to believe.  An issue here, therefore, is whether use of the “Lamebook” mark dilutes the distinctiveness of the “Facebook” trademark.  This one’s a toss-up for me.

Next, we need to address the parody issue.  A parody is a work of art that pokes fun at something/someone.  Any student of professor Gene Quinn, founder of IPWatchdog remember his final exams in Copyright Law where he would wheel in a television, pop a tape into the VCR (yes, we used VCR’s then) and played the Michael Jackson “Beat It” video, followed by the Weird Al Yankovic “Eat It” video.  The test question is something like “you are Weird Al’s attorney and he has asked you if it is ok to release this video.”  Then we would spend the next three hours feverishly writing our answer into blue books (yes we had to write our answers out using a pen and paper).  The answer that you needed to get to in order to pass Gene’s class was – this is a parody because it is taking a shot at Michael Jackson and, therefore, it is a fair use.


So how does this apply to the Lamebook case?  I believe that if Lamebook is going to rely on the doctrine of “parody” to note that they do not infringe on Facebook’s intellectual property rights, they will have to prove that the content on the Lamebook site is a way of poking fun at Facebook.  This is arguable, but, in my opinion, not a slam dunk.  When I took a look at the Lamebook site, it appears as though they are posting the “lamest” stuff on Facebook.  To me, it seems as though they are making fun of the people that post this stuff, and believe me, it is some pretty ridiculous stuff.  I suppose that Lamebook may argue that without Facebook, this lame stuff would not be posted.  Again, this is arguable at best.

Lamebook also argues that the content on their site is protected by the First Amendment of the Constitution, i.e., protected free speech.  I was under the impression that all Lamebook is doing is re-posting the “lame” things they find on Facebook.  Doesn’t that make the speech to be protected that of the “lame” people that post the stuff on Facebook in the first place?

I will be posting more about this article, but in the meantime, I need to turn my attention to the fact that a trademark was just issued to Facebook for “Face.”  Please stay tuned for my next article in this series of “Facebook Intellectual Property Enforcement Tactics” that will dissect the prosecution history of the “Face” trademark.

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Gravatar Iconby Mark Malek

As our readers know, we here at TacticalIP like to point out the times in which intellectual property has been used in an inappropriate matter, i.e., when intellectual property owners get a little too overzealous in enforcing their rights.  We have previously posted a series of articles on IP Bullies (see our articles here, here, here and here).  Of course, there is the infamous case of The North Face v. The South Butt.  This could be one of my all time favorite IP Bully cases gone wrong.  The case has settled now, but what a disaster it turned out to be, in my opinion, for The North Face, and what a success it turned out to be for The South Butt.  Some more information on this case is available here.

Commerce Secretary Gary Locke

According to an article that I recently read, part of the Trademark Technical and Conforming Amendment Act of 2010, passed earlier this year, directs the Secretary of Commerce to study and report “the extent to which small businesses may be harmed by litigation tactics attempting to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to the trademark owner.”  So it turns out that a bunch of Congressman have received some complaints from their constituents that big bad businesses are bullying them into not using their trademarks, and now Congress wants to conduct a study of the effect of such tactics.  Please join me in asking the following – are you kidding me???

I personally do not think that in these economic times, Congress should be directing funds to such a study.  I know that those who disagree with me argue that this is precisely the time to spend money on such a study.  They are arguing that if bullying litigation tactics are being used to shut down small businesses, it is damaging an already weak economy.  Good argument, and one that I do not necessarily disagree with.

It is my opinion, however, that the study should be refocused.  I believe that a study should be conducted as to the rise in infringing activity – especially with respect to trademarks.  Is the infringing activity linked to anything?  I suspect (and this is from my own personal experience in my practice and observing the cases that are coming through the door now) that such a study will indicate that there are several people out there that are trying to make a quick buck on the back of someone else’s intellectual property.  Here at Zies Widerman & Malek we have seen a significant rise over the past year in intellectual property owners having their intellectual property improperly used by others in ways that can only be described as blatant infringement.  Sometimes I struggle to believe that these cases do not immediately end after a cease and desist letter is sent out.  I believe that the desire to fight, however, may come from some attorneys out there that may also be struggling and looking to also make a quick buck.  Inevitably, most of these cases have settled, but not after the potential infringer paid an attorney several thousands of dollars.

Back to the study that Congress has requested.  There may be some validity to it, but I believe that the request of the Secretary of Commerce is overly broad, and if the study is conducted in the manner that Congress has set out, those carrying out the study will likely be spinning their wheels.  The study will likely show that, in cases where there truly is some IP Bullying going on, the situation is devastating to the small business.  I’m sure that I am not setting forth a theory that is ground breaking.  For the study to be meaningful, however, I believe it needs to include an entire section dedicated to a study of the economic times and the rise in intellectual property litigation.

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WEDNESDAY, JULY 30, 2014

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