Another day, another ridiculous lawsuit in a society that teaches people you can "own" anything. This time it's a woman, Tanit Buday, who claims that the NY Yankees owe her money because of the team's famous tophat logo, which she says was designed by her uncle in 1936, for which he was never paid:
Um. Yeah. So, I would imagine that the Yankees will pretty quickly point the court to the principle of laches, which is regularly used to dump trademark infringement lawsuits where there was an "unreasonable delay pursuing a claim." 75 years seems like an unreasonable delay in my book.
As for why it took so long, the woman is not particularly clear. She says that part of it was due to "trust in [the] Yankees owners." Um. Okay. While she claims that her uncle didn't realize the team had used his design until 11 years after he designed it... she also notes that he helped the team revise the logo in 1952... so it doesn't sound like he was all that upset about not getting paid the first time around.
We've written a couple times about the absolutely ridiculous lawsuit that publishing giant Reed Elsevier filed against the punk band The Vandals. At issue was the fact that, years ago, the band put out an album, in which its logo was designed to parody the logo of Daily Variety, the Hollywood trade rag published by Reed Elsevier.
Way back when the album was first coming out, Variety had sent a cease and desist letter, and rather than fighting it (with a very strong fair use/parody claim) The Vandals caved and agreed not to use the image. However, the image can still be found online -- but not on sites controlled by the band. So Reed Elsevier and Variety are suing the band for somehow not magically stopping these other sites from using the image.
I had thought that once the ridiculousness of this became public, Reed Elsevier would quickly back down, but instead it dug in. Even more ridiculous is that it sued in Delaware, knowing that this would make life more difficult for the band, which is based in LA. Making things even more interesting is that the band's bassist, Joe Escalante, is also a former entertainment industry lawyer, though not a litigator. But, not one to back down from a fight, he decided to represent the band, went about learning the basics of litigation, and even got himself admitted to practice in Delaware.
Escalante emailed us to let us know that all of this has paid off so far, as the band has won the first round of the legal fight, and got the suit tossed out in Delaware and sent to California where it should have been filed in the first place. The short and sweet court order makes it clear that the judge finds it distasteful that Reed appears to have purposely filed the lawsuit across the country from the band to make life difficult for the band. You can see the full order below, but the key point is in the footnote, where the court notes that it certainly could have jurisdiction on the case, but given the circumstances, it feels that it is not appropriate, clearly suggesting that it recognizes the use of the court in Delaware was mainly to inconvenience the band:
The court recognizes that it could, if it were so inclined, choose to exercise jurisdiction over this matter and permit this case to proceed here in Delaware, given that a settlement agreement between the parties contains a clause that names Delaware as the forum for litigating disputes arising from the agreement. That settlement does not bind this court, however, and given the facts and circumstances surrounding this case, the court has decided in its discretion to decline to exercise jurisdiction. First, all relevant conduct and activities appear to have taken place in California, where the defendants reside and operate. Similarly, it appears that the Central District of California would be a far more convenient forum for trial, since the court's reading of the complaint and other documents in the record is that the vast majority of documents and witnesses pertaining to this case are in California. Furthermore, the consent judgment that underlies the plaintiffs' complaint was entered by the United States District Court for the Central District of California, and states that that court retains jurisdiction for the purposes of enforcing the consent judgment and related permanent injunction. It would be far better for that court to determine whether the conduct in question falls within the scope of the consent judgment and permanent injunction. Finally, given the defendants' apparently limited financial resources and the significant costs associated with litigating in Delaware, the court finds that the defendants would be unfairly prejudiced if they were forced to litigate in this district.
In response to this ruling the band has been mocking Variety and its lawyers relentlessly. The link above goes to a pretty incendiary blog post which, frankly, might also open the band up to defamation charges, but that would really only be digging Reed Elsevier deeper into a truly pointless legal battle. Separately, the band has used our favorite movie creation tool, Xtranormal to create this rather hilarious (and probably NSFW) video of a "fictitious meeting" between Variety's outside lawyer on this case and Variety's editor. It made me laugh:
Wikipedia's General Counsel, Mike Godwin (yes, of Godwin's law fame) responded to the FBI with a delightfully snarky reply (pdf) noting that the FBI's reading of the law concerning displaying an FBI badge is clearly written to prevent people from falsely presenting themselves as being with the FBI or directly profiting from the use of the seal:
Godwin notes that the version of the law that the FBI conveniently sent him just happened to omit some parts of the law, which basically show that the law is entirely focused on such attempts to use the logo to deceive. Among the key passages:
Entertainingly, in support for your argument, you included a version of 701 in which
you removed the very phrases that subject the statute to ejusdem generis analysis. While we
appreciate your desire to revise the statute to reflect your expansive vision of it, the fact is that
we must work with the actual language of the statute, not the aspirational version of Section
701 that you forwarded to us.
In your letter, you assert that an image of an FBI seal included in a Wikipedia article is
"problematic" because "it facilitates both deliberate and unwitting violations" of 18 U.S.C.
701. I hope you will agree that the adjective "problematic," even if it were truly applicable
here, is not semantically identical to "unlawful." Even if it could be proved that someone,
somewhere, found a way to use a Wikipedia article illustration to facilitate a fraudulent
representation, that would not render the illustration itself unlawful under the statute. As the
leading case interpreting Section 701 points out, "The enactment of § 701 was intended to
protect the public against the use of a recognizable assertion of authority with intent to
deceive." ... Our inclusion of an image of the FBI
Seal is in no way evidence of any "intent to deceive," nor is it an "assertion of authority,"
recognizable or otherwise.
Godwin also points out that the Encyclopaedia Britannica appears to have an image of the logo as well. As for our own usage here, I'll first note that the NY Times is also displaying the logo with its story, and it would seem that all three of us are similarly not running afoul of this law, in that none of us are using the logo with any attempt to deceive at all, but to display factual information for the sake of informing.
That is the logo for the 2012 Olympics in London. My first reaction to it was that it's just hideous from a design standpoint, but others quickly noticed something worse. You can look at that logo and... um... see what appears to be Lisa Simpson... doing something she shouldn't be doing. Yeah. Once you see it, it never goes away. So, as CHT notes, given that ruling of child porn for having an image of a Simpsons cartoon child performing sex acts... is looking at the 2012 Olympic logo going to be classified as viewing child porn now?
After someone alerted Chrysler, the lawyers got involved, and the school is now in the process of changing its logo and removing it from everything (including the gym floor). My first though was wondering whether or not this was "use in commerce," which is required for trademark infringement. I think a lawyer could make an argument that a school's usage isn't use in commerce -- but perhaps that's undermined by the logo appearing on school clothing (though, it's not clear that the clothes are for sale, or just what the sports teams get). However, I do wonder if the Dodge logo trademark covers use on gymnasium floors and clothing...
But, honestly, the bigger issue is why the hell would Chrysler be upset about this? At worst it's getting a ton of free advertising from this school, with many students having a feeling of affinity for the logo, which could potentially increase their interest in buying a Dodge in the future. Car companies spend lots of money on sponsorship to get their logos seen by lots of people. And here's a school that's done that entirely for free... and Chrysler sends in the lawyers?
Bouchat, a security guard in Baltimore, believed that the Baltimore Ravens had infringed a design he claims to have created for the team's logo. He sued the team and the NFL's licensing arm. In my opinion, there was no evidence of access and the thus the case should have been summarily dismissed. In my opinion, the case was a shakedown. But, applying the fatally flawed theory of striking similarity, the case went to a jury. The jury found liability, and the Fourth Circuit affirmed in an awful decision that drew an excellent dissent by Judge King, 228 F.3d 489 (4th Cir. 2000), amended by and pet. for reh'g en banc denied. 241 F.3d 350. Judge King's dissent is the best thing yet written on why striking similarity is inherently inconsistent with basic copyright principles, and as to the facts in Bouchat, devastating to the plaintiff's claim and the majority opinion.
While Bouchat "won," he wasn't given any money, because he had failed to register his design before it was put into use. But he's since sued various other companies, and this latest lawsuit is an attempt to say that no one can show those old films because they use "his" logo, despite the lack of evidence of actual copying (which, if copyright were actually about copyright would be necessary). The lower court turned him down, noting that the use of the logo was incidental and fair use, but Bouchat is (of course) appealing. This is, again, in line with Patry's analysis that this is nothing more than a shakedown. He's not really interested in stopping the sale of these videos. He wants the team to pay him a big chunk of money so that it can keep selling the videos. This is not what copyright is intended to do, but it's what happens when copyright law gets out of control.
Quite a few people have pointed to the story about a Swedish company that has trademarked The Pirate Bay logo, and plans to sell USB keys with the logo included. The company claims that this is fine because The Pirate Bay had not registered the trademark itself. In the meantime, some folks associated with The Pirate Bay are saying they're going to try to overturn the ruling.
I don't know how Swedish trademark law works, but at least in the US there is a concept of a "common law trademark," which is supposed to prevent others from registering a mark on a brand that someone else is using -- even if they haven't registered it. It would seem like quite a silly trademark law if the Swedish trademark law doesn't include anything like that.
As for those who think it's ironic or even hypocritical that The Pirate Bay guys are somewhat bothered by this, you need to understand a few things. First, they clearly state that they have no problem with anyone doing anything else with The Pirate Bay logo. So, if this company just wanted to sell those USB keys by itself, it could do so. The issue they have is with this company "locking up" the trademark so others can't use it. That seems entirely in support with what they stand for.
Separately, it's worth pointing out (yet again, because some people still get confused by this) that trademarks are wholly different beasts than copyrights or patents. Trademarks are not about protectionism, but about preventing consumer confusion over who actually made or offers a specific product. It's a very different concept.
I'm trying to understand where the legal issue is here, but a "freelance artist" and alumnus of NYU is apparently suing the school because it used the bobcat mascot she designed. But here's the thing: she designed it while she was employed by the school's athletic director. In this case, she was just an equipment room clerk, but the associate director (a superior) asked her to create the mascot. And then the school used it. How is that possibly a copyright violation? She was employed by the school. Her boss asked her to do some work for the school. She did it. I'm having trouble understanding where there's a copyright violation.
But here's the thing: even the judge admits that trademark law shouldn't apply here because it's a totally different business and there's little chance of customer confusion: "While both parties cater to the general public, there is no indication that their customers are predominantly the same. Even if their customer bases overlap to some extent ... the risk of consumers confusing a furniture outlet with a candy store, or vice versa, appears remote." Those are all things a judge says right before denying the trademark claim, but in this case, it went the other way. If a moron in a hurry isn't likely to be confused, then there's no trademark infringement. The furniture store wasn't even using the image yet -- but just had it in a contest for truck designs. At least the company hadn't spent too much money painting up all the trucks.
It was just a few years ago when Apple used the moron in a hurry test to defend itself against a trademark suit, but their own legal department seems to have forgotten about it already. Apple has sent a cease and desist letter to the Victoria School of Business and Technology for the use of a blue and green apple element in their logo. The Canadian school has created a comparison page on their website in an attempt to highlight the differences between the logos, hoping to dissuade Apple from launching a lawsuit by building public support. The page also contains the legal correspondence to date, including a letter in which the school's president asks if Apple is "suggesting that anyone using any variation of an apple for technology education related use is infringing on Apple's trademark."
The legal question is really about consumer confusion, as the Canadian Supreme Court has understood in the past. Trademark law doesn't grant the holder an exclusive right over every use of a mark, just the right to prevent confusing or misleading use of it. The school is a technology school, but they're also a school -- an apple is a pretty common symbol for education. It seems like "even a moron in a hurry" would recognize the difference between the two logos, especially since the acronym "VSBT" is part of the school's. The real problem here seems to be the requirement of trademark law that the holder of a mark actively polices its use. This requirement encourages these sorts of cease and desist letters, even if it seems like a comparison between apples and oranges.