The Ultimate Fighting Championship people are certainly no strangers to readers here at Techdirt. The league that puts on both mixed martial arts events and, incredibly, events where participants take turns slapping the shit out of each other has been one of the most aggressive pushers of greater and greater IP enforcement programs in professional sports. From the desire for instant takedown enforcement foisted on ISPs to pushing for reforming the DMCA to “notice and stay down” practices, the UFC makes no apologies for wanting as much control and enforcement of its IP as possible.
So it probably shouldn’t be a huge surprise that the company also is quite draconian on matters of trademark enforcement as well. Still, the UFC’s opposition to another event league’s trademark application strikes me as a bit silly, given that the application was for the Pillow Fight Championship organization.
Soon after their professional pillow fights went viral, the world’s biggest MMA promotion sent out their lawyers to complain about Pillow FC’s logo and trademark application.
As the on-going case with the Patent and Trademark Office shows, the Ultimate Fighting Championship has formally objected to Pillow FC’s trademark application, citing that it could cause “confusion” to have that kind of branding.
The NY Post was first to report on the news, with Pillow Fight Championship CEO Steve Williams telling the outlet that the UFC was being “ridiculous” with their claims.
Okay, so let’s stipulate a couple of things here. First, the opposition from the UFC almost certainly comes from the fact that the branding for PFC, specifically the acronym, is styled and color schemed in a way that looks like the UFC’s branding. It’s also the case that the acronym is literally one letter off from UFC’s. If that’s as far as you dug into this, the opposition doesn’t seem all that crazy.
But here’s the branding side by side.
It’s suddenly a lot less cut and dry. The fonts are similar, but different. There’s no angle on the lettering in the PFC’s logo. Finally, the PFC branding typically has the full name of the league in big, bold letters. Unless UFC wants to argue that the public might be confused into thinking the company got into pillow fighting, there’s enough distinction that confusion over the logos themselves is probably not a reasonable fear.
But rather than fight this, PFC changed its logo… slightly.
Will that be enough to satsify the UFC? I somehow doubt it, but I certainly think it should. That logo in sum total certainly doesn’t call to mind the UFC to me. Whether the notoriously aggressive UFC agrees remains to be seen.
One of the common tests for whether something is trademark infringement is whether or not the public will be confused as to association between the infringer and another trademark owner. This typically comes down to several factors, such as the similarity within the uses and, importantly, whether the two entities compete in the same marketplace.
It’s hard to imagine two marketplaces being further apart from one another than pornography and German sandwiches. Weird sentence, right? Well, MindGeek, the company that owns Pornhub among other sites, has sent cease and desist notices to a kebab shop in New York City over its branding.
As reported by Chelsea News, a kebab shop named Doner Haus recently found itself squarely in the sights of the Pornhub owner, not because of its name, but because of the font, style, and design of choice it used on display. Frequent visitors of the porn site – relax, there’s no judgement here. We know many of you continue to patronise the site – will know that the site’s trademark branding and its black, white, and yellow contrast that greets viewers on the landing page. In paying the full homage, the shop also has sexually suggestive statements plastered all over its windows, such as “Big Doner Energy” and “Bite Me, Lick Me, Eat Me Good”.
So, does the branding and signage actually call to mind the branding for Pornhub? Yes, absolutely.
MindGeek’s C&D indicates that the company will pursue legal action unless Doner Haus changes its branding, specifically suggesting that the public will be confused into thinking that Pornhub was somehow associated with the sandwich shop if it doesn’t.
And that’s the crux of the issue here: will they? Because of the branding, and some off-color suggestive signs on the storefront, could someone somehow think that Pornhub had expanded its business beyond adult videos into… German style foodstuffs? That seems like quite a leap and I frankly don’t believe it. Neither does Doner Haus’ attorneys.
Doner Haus and its attorney have more or less rubbished the Pornhub owner’s claims of alleged association, saying that there is no evidence that would suggest people would believe it was sponsored by the internet company. “Our client respects the trademark rights of others, and expects others to respect their rights to rightfully use trademarks, including trade dress, that do not infringe the rights of others,” the shop’s attorney wrote inresponse. “That being said, Döner Haus not only disagrees with your assessment of the alleged trade dress infringement of your client’s Pornhub trade dress, but considers the same to be so incredible as to be beyond the pale.”
And so now we wait to see if MindGeek is bluffing or really is going to pursue legal action against the restaurant. MindGeek certainly has the war chest to finance such a legal battle, of course.
But it would be hard for me to see them actually winning this battle in court. Sandwiches can be sexy, sure, but they aren’t sex.
Grocery chain Trader Joe’s is not a complete stranger to Techdirt’s pages, and not for good reasons. The company, in the past, has shown itself to be perfectly willing to abuse trademark law to stop anything it doesn’t like, such as a man reselling its goods across borders where the company has no stores (perfectly legal) or someone setting up a site selling parody goods that tangentially reference its branding (also legal). But now Trader Joe’s has joined a small club of companies that has tried to use trademark law to bully its own employee’s union.
There is no lawsuit yet, but there is the threat of one, as Trader Joe’s has warned the new union its employees organized, all because the union’s store sells merchandise for the union.
The California-based grocer recently sent a letter to the union’s president, store worker Jamie Edwards, arguing that Trader Joe’s United’s T-shirts, mugs and tote bags are “likely to cause consumer confusion” and “dilute” the company’s brand. The letter, dated June 27 and obtained by HuffPost, referred specifically to items that say “Trader Joe’s United” and show the union’s logo, a fist clenching a box cutter.
Trader Joe’s claims that the items infringe on its trademarks, design and “trade dress” — a legal term that basically refers to a product’s general look and feel. The company said that if the union didn’t stop selling the merch, it might seek an injunction and monetary damages, including “all profits” the union has made from the items’ sale.
Best of luck to the company. I don’t think there’s a good chance that these claims would be winners in an actual trademark infringement trial, given the First Amendment implications, never mind the simple merits of any claims for brand dilution or public confusion. The store sits on the union’s website and all of the merch content is clearly in reference to the union, rather than the store itself. Furthermore, the union’s legal team seems entirely unimpressed by the threat.
The union’s lawyers fired back a letter of their own, accusing the company of bullying workers and trying to muzzle them through the threat of litigation. They said it was “disappointing, but not surprising” that the company would “seek to weaponize” trademark law against employees.
“This latest threat to the Union is just another in your continuing attack against labor,” the union’s attorneys wrote.
I imagine the threat was the point, just to see if the company could bully the union into taking down the merch. After all, the context of this is that the merch that gets sold directly funds the union’s coffers. And Trader Joe’s certainly doesn’t want its workers to have a greater war chest and, therefore, more power. Notably, this has been part of a standing campaign by the company to engage in suspected union-busting efforts.
Trader Joe’s United has accused the company of violating labor law on several occasions during the organizing drive – claims Trader Joe’s has denied. The union recently filed an unfair labor practice charge over the firing of Stephen Andrade, a Massachusetts worker the union claims was targeted because of his union support.
In a different case, prosecutors at the National Labor Relations Board are pursuing a complaint against the company alleging that it illegally removed union literature from the break room at a store in Minneapolis.
This is all very stupid on the part of Trader Joe’s. Yes, on the merits of its trademark threat, but also because on the list of companies who’s clientele might be hostile to a big company engaging in anti-union fuckery, Trader Joe’s would certainly be high up on my list.
If you go back and read nearly all of the posts we’ve done on luxury fashion company Louis Vuitton, you’ll see a history of a company that is about as big a pain in the ass when it comes to intellectual property bullying as you’ll find. The company often times takes it’s “protecting” of it’s IP rights, particularly trademark rights, to ridiculous extremes.
The Norfolk-based company, L V Bespoke, was started by couple Lawrence and Victoria Osborne after their construction business was shut down during the COVID-19 pandemic. They sell plants, steel plant supports and a variety of handmade home and garden items. The fashion powerhouse, which owns its iconic interlocking “L” and “V” trademark, is opposing L V Bespoke’s application to register their name as a UK trademark at a hearing on Monday, The Eastern Daily Press reported.
“Louis Vuitton say they have superior rights to use the initials ‘L V’,” Victoria Osborne told the paper. “They have also raised concerns over our handcrafted metalwork products because they use metal for their ‘L V’ symbols on their handbags.”
If you’re not laughing at this point, you should be. The manner in which L V Bespoke is using those two letters, which come from the founders’ initials as it happens, is not infringing on Louis Vuitton’s trademarks for any number of reasons.
For starters, they operate in entirely different markets, no matter Louis Vuitton’s ham-fisted attempt to conflate its use of metal on handbags with — double-checks notes — plant poles for the garden. Add to that the fact that the trademark applied for is not just “L V”, but “L V Bespoke.” When taken in total, that term doesn’t bring to mind the fashion brand.
The Osbornes, who have already spent “tens of thousands of pounds” during the dispute, argued that Louis Vuitton can not claim exclusive rights to the letters “L” and “V.”
“Some of the things raised at the hearing were laughable and eyebrow-raising,” Victoria Osborne said.
That they’ve put up this much of a fight so far is impressive. However, the Osborne’s have also indicated that the business doesn’t have the money to fight beyond this. So either the UKIPO will be sensible, or L V Bespoke will need to operate without its trademark.
A few weeks back, we wrote about the Supreme Court’s decision in the case between the Andy Warhol Foundation and Lynn Goldsmith, regarding the copyright on certain images that Warhol painted based on a Goldsmith photograph, and exploring under what conditions it was protected by fair use. We felt that the Court completely ignored the 1st Amendment interests at play, but there were many people (including close friends) who have argued that the ruling was “narrow” and not so problematic. We shall see.
Last week, the Supreme Court also ruled in another case that we’ve written about a few times, regarding whiskey maker Jack Daniels and dog chew toy maker VIP products, which made a chew toy called “Bad Spaniels” made to parody the well known Jack Daniels’ bottle.
There were lots of issues regarding trademark law at play in the case, and it has bounced around the courts for years, but the key question before the Supreme Court here regarded what test should be used in cases of parody. Normally (though not always), as regular Techdirt readers will know, trademark law goes by the “likelihood of confusion” question for determining whether or not a use is infringing. Since the crux of trademark law is about recognizing the origin of the product, the question of whether or not there’s any confusion is often the most important.
That said, a case from a few decades ago, Rogers v. Grimaldi, established a test for trademark when there were 1st Amendment free expression issues at play, designed to make sure it’s protecting speech. In this case, the 9th Circuit used the Rogers test to dump the case, saying that there was no trademark infringement. Jack Daniels challenged the use of the Rogers test, leading many to fear a ruling that would cut back on free speech protections, especially given how often bogus trademark claims are used to stifle speech. This is why there were so many amicus briefs in the case from free speech groups.
In many ways, this ruling had some similarities to the Warhol case, in that it feels narrowly focused, and many people we agree with breathed a sigh of relief, saying that the ruling isn’t that bad, as it leaves the Rogers test mostly intact. And, as with the Warhol case, I agree that the ruling absolutely could have been a lot worse.
But, there were still some elements that I find worrisome, in the same way that there were elements of the Warhol case that were worrisome. And, those elements were… actually kind of similar. In both cases, the Supreme Court justices more or less suggest that the 1st Amendment sometimes needs to stand aside in “intellectual property” cases.
Specifically, in this case, the Supreme Court said that the Bad Spaniels case could be decided based on traditional trademark terms regarding likelihood of confusion, rather than even getting to the Rogers test and questions related to free expression and the 1st Amendment:
The Ninth Circuit was mistaken to believe that the First Amendment demanded such a result. The court thought that trademark law would otherwise “fail[] to account for the full weight of the public’s interest in free expression.” 953 F. 3d, at 1174. But as the Mattel (i.e., Barbie) court noted, when a challenged trademark use functions as “source-identifying,” trademark rights “play well with the First Amendment”: “Whatever first amendment rights you may have in calling the brew you make in your bathtub ‘Pepsi’” are “outweighed by the buyer’s interest in not being fooled into buying it.” 296 F. 3d, at 900. Or in less colorful terms: “[T]o the extent a trademark is confusing” as to a product’s source “the law can protect consumers and trademark owners.” Tam, 582 U. S., at 252 (Kennedy, J., concurring in part and concurring in judgment); see Friedman v. Rogers, 440 U. S. 1, 15 (1979) (rejecting a First Amendment challenge to a law restricting trade names because of the “substantial” interest in “protecting the public from [their] deceptive and misleading use”). Or yet again, in an especially clear rendering: “[T]he trademark law generally prevails over the First Amendment” when “another’s trademark (or a confusingly similar mark) is used without permission” as a means of “source identification.” Yankee Publishing Inc. v. News Am. Publishing Inc., 809 F. Supp. 267, 276 (SDNY 1992) (Leval, J.) (emphasis deleted). So for those uses, the First Amendment does not demand a threshold inquiry like the Rogers test. When a mark is used as a mark (except, potentially, in rare situations), the likelihood-of-confusion inquiry does enough work to account for the interest in free expression.
In this case, the Supreme Court basically sent the case back to the 9th Circuit to review for “likelihood of confusion,” which VIP Products is likely to win anyway.
But, still, as in the Warhol case, the court here seems to be suggesting that if something is a core “intellectual property” issue we set aside the 1st Amendment concerns. And, as we noted in Warhol, that’s going to lead to some problematic results.
As EFF (who noted that the decision was mostly good) notes in its writeup of the ruling, we should be concerned as to where this leads:
Finally, it’s troubling that the Court went directly from concluding that source-identifying trademark uses fall within trademark law’s “heartland” to concluding that no further First Amendment scrutiny was needed. That approach is in line with a frustrating trend in trademark and copyright cases to dispense with the traditional—and more protective—forms of First Amendment analysis applied to restrictions on speech in other areas of law. Congress’s own efforts to accommodate free speech concerns notwithstanding, statutory rights never trump Constitutional rights, and we’re disappointed that the Court did not evaluate the issues here accordingly.
To me that’s the key, in both this case and in the Warhol case. The Justices in both seem to suggest that copyright law or trademark law should simply step in front of the 1st Amendment. But that can’t be. Laws cannot override the Constitution, and in both cases, it seems that a 1st Amendment analysis is necessary at some point.
Otherwise, we are repeatedly going to run into future cases where copyright and trademark law is used to silence speech, in which courts won’t even consider the expressive concerns, because they’ll argue the Supreme Court has said that copyright and trademark law override the 1st Amendment.
Ah, Monster Energy. For regular readers of Techdirt, the name of the company alone is enough to get your eyes rolling harder than a teenager at a rave. Posts on the company’s trademark bullying ways are so legion that I dare not even begin listing them; if you’re unfamiliar with them, click the link and be sure you have a pillow on your desk or you’re going to suffer a concussion.
Well, Monster is back at it again, this time opposing the trademark application for Monster Squad Del Mar, a fitness training company out of California.
A Del Mar personal trainer has been forced to go up against an energy drink giant. When filing for a registered trademark, Monster Squad Del Mar was stopped by Monster Energy.
Frankly, it’s pretty hard to argue with him on the question of the logos.
That simply does not call to mind the Monster Energy logo. No claw marks. Boxing has nothing to do with Monster Energy. The only thing that might even give me a moment’s pause is the use of the green coloration, but that just isn’t enough to constitute trademark infringement.
Which leaves us with the name of the training company itself: Monster Squad Del Mar. Except, of course, that trademark infringement requires there to be public confusion as well as for the two entities to operate within the same marketplace. Unless Monster Energy recently got into the personal fitness business, this ain’t it. But, as is our mantra, trademark bullying occurs because it works, particularly when we’re talking about a big entity bullying a much smaller one.
“This is a big, big company look how much money they got. They got money to get you caught up in court and you won’t be able to pay your fees and you’ll lose any and everything that you have,” Jones said.
Fortunately for Jones, he has found a lawyer that is willing to take the case on pro bono. Not everyone is so lucky. I expect Monster to lose in its opposition, but that won’t change the larger problem: Monster Energy waltzing into disparate marketplaces and lobbing out trademark bombs indiscriminately.
There are lots of reasons why trademark disputes get really stupid, really fast. The mother of all those reasons is, of course, the USPTO’s inability to cast a critical eye towards the applications its receives. Far too many trademarks are granted for words and terms that are not unique source-identifiers of goods and services. But one other, and I think related, common cause of stupid trademark disputes is when foreign languages get involved. What is an obviously generic or descriptive term in English suddenly confuses the examiners as the Trademark Office the moment those words are in another language.
Such as coffee, for instance. There is no realm in which the USPTO would allow one coffee bar or cafe to somehow monopolize having the word “coffee” in its name. Unless, perhaps, if that “coffee” along with the word “with” were in Spanish. Then all bets are off.
The Tampa Bay Latin Chamber hosts community events across the Tampa Bay area. They called it Cafe Con Conexiones, meaning coffee with connections. That was until the nonprofit said they were forced to change their name.
“My organization was provided a cease and desist letter from one of the big Tampa law firms and basically the cease and desist letter said, ‘Please stop using the name Café Con Conexiones because it is substantially similar to Cafe Con Tampa,'” Danielle Hernandez, President of the Latin Chamber, explained.
Yes, Cafe Con Tampa somehow got the USPTO to grant it a trademark on “cafe con.” There is no world in which I can believe that the same phrase in English would have been granted any kind of trademark. And, no, the hand-wringing from attorneys commenting on the matter doesn’t change the fact that the trademark in question is non-distinctive. This comes after Cafe Con Tampa’s founder, Del Acosta, mentioned that there had in fact been members of the public that expressed confusion over whether the two cafes were related.
Acosta said they’ve had people confused about the two organizations. That’s where it can get tricky, registered patent attorney, Anton Hopen, said.
“Actual confusion is extremely valuable evidence. We speculate that there’s a likelihood of confusion but when you have evidence of actual confusion, that should be very important to a deliberative body like a judge or a jury,” Hopen explained.
Right, but evidence of what, exactly? That trademark infringement is happening? Or that the USPTO fucked up by granting a trademark on a generic phrase combined with two organizations that have both chosen very non-distinctive names? Because I would argue it’s the latter.
Which probably doesn’t matter, because Hernandez has indicated that she is in the process of changing the name of her organization. That said, she’s changing it to Cafecito Con Conexiones, so I guess we’ll see if that staves off Cafe Con Tampa’s legal dogs.
Iron Maiden, the band, is not a band I have thought about much in the last, oh, let’s call it 20 years. They have made it onto our pages before, specifically for behaving like trademark bullies, which is apropos. I say that as the band most recently is opposing the trademark application for a lingerie company that goes by the name “Maiden Wear,” asserting that the public is going to think that the company is associated with the band because the band also sells clothing merch.
It’s an LA resident called Min Yu Chen who is trying to trademark the Maiden Wear brand. But, in opposing her application, Iron Maiden’s lawyers point out that their clients own the ‘Iron Maiden’ trademark in various categories, including “clothing, namely, t-shirts, tank tops, long sleeve shirts, shorts, jerseys, sweatshirts, sweatpants, pants, jackets, hats, leather wrist bands, scarves and shoes”.
And while the Iron Maiden merch store online isn’t currently selling any abdominal corsets, shapewear, bras, lingerie or panties featuring the band’s name, logo or artwork, you can buy yourself some lovely boxer shorts. So, you know, the band is currently using its trademark in the all important underwear market.
The opposition rests on the idea that “Maiden” is a dominant word in the names of both entities. This, of course, does not mean there is any actual real public confusion here, only a metal band wringing its hands over the potential for confusion.
“Thus, applicant’s Maiden Wear mark, when used in connection with the goods described in the Maiden Wear application, is likely to deceive or cause consumer confusion or mistake among members of the public and potential purchasers as to the source, sponsorship or composition of applicant’s goods in relation to opposer’s goods. Such confusion will damage opposer and injure its reputation in the trade and with the public”.
If only this was an experiment that had already been run, so we could see if this sort of confusion would actually occur if a clothing company of any kind had the work “Maiden” dominant in its name. Like Maiden Lifestyle, for instance, a clothing brand that sells t-shirts and the like. Or Maiden Voyage, another company that sells t-shirts and common clothing. Or, perhaps most appropriate, Maidenform, a brand that sells women’s undergarments.
All of those companies exist today, apparently without any issue for Iron Maiden which, and I cannot stress this enough, is a metal band most popular decades ago. If the band is this worried about underwear companies using the term “maiden”, which is absurd on its face, then it’s done a terrible job of policing that worry generally.
Over the last few years, we’ve written a number of stories about a (somewhat silly) trademark dispute between Jack Daniels, makers of whiskey, and VIP Products, makers of doggy chew toys, including one for “Bad Spaniels” that is a pretty clear parody of Jack Daniels.
When we had last mentioned the case it was in 2021, after the Supreme Court refused to grant cert, specifically regarding the question of whether or not the doggy toy was an expressive work, which would subject it to a different level of protection. The case continued, and after another round of back and forth in the courts, the Supreme Court was asked to weigh in again, specifically on the question of whether or not a “humorous use of another’s trademark” is subject to the standard “likelihood of confusion” test, or whether the higher standards of the 1st Amendment apply instead (and, separately, whether or not the humorous use, even for sale, made it noncommercial, which would bar reviewing it for “tarnishment” — an already questionable interpretation of trademark law).
Back in November, the Supreme Court agreed to hear the case, and amicus briefs have been pouring into the docket, mostly from big brand companies and trademark lawyers. So, you have folks like Campbell’s Soup (yes, the same Campbell’s Soup that Andy Warhol parodied) whining about the threats of allowing people to make parodies of brands.
These are all good and useful filings. But… there’s another one as well.
The artist collective/commercial drop pranksters known as MSCHF, who have had their own trademark battles along the way, decided to weigh in as well with… well… something different. You may recall that last fall, The Onion filed a hilarious amicus brief regarding the importance of free speech protections for parody, which, unfortunately, did not convince the Supreme Court to hear that case.
But the MSCHF filing takes this all to a different level. Actually, MSCHF filed its brief the same day as all the other briefs in support of VIP products, but it was initially rejected by the court (for unclear reasons). A corrected version was filed this past Thursday (unfortunately, I no longer have the original version which I had read when it came out. I think the revised version puts more of the legal stuff up front and the, um, nonsense, later).
The corrected full filing starts off with a well argued amicus brief regarding the importance of freedom of expression, and how trademark can interfere with speech. It, like many of the other briefs, highlights how just using the “likelihood of confusion” test can “contradict” the 1st Amendment. But, still, much of the filing is not what you’d expect, starting with the “interest of the amicus” part:
“Crackpots” might be how the Tinker Court would describe us. Far worse, one of the other amicus called us shoe manufacturers. Meanwhile, members of the art world named us “the future.” We call ourselves MSCHF (pronounced “mischief”). We are a collective who critiques and comments on American culture. The renowned Perrotin Art Gallery described our work as “elaborate interventions [that] expose and leverage the absurdity of our cultural, political, and monetary systems.” We start conversations about culture by participating in culture; so we agree with this Court that the freedom of expression is not limited to areas that a benevolent government provides as a safe haven for people like us.
The “crackpot” line, and the closing phrase, are references to the famed Tinker v. Des Moines Supreme Court ruling regarding the 1st Amendment in schools, which included the memorable line “freedom of expression does not exist if it ‘could be exercised only in an area that a benevolent government has provided as a safe haven for crackpots…’.”
The brief highlights just a few of MSCHF’s many commentary projects, and then suggests that the Justices (and their clerks) should begin by “turning to the Appendix.” (Again, I believe that the part that is now the Appendix was initially at the front of their original filing.) The filing also highlights many, many cases of big packaged goods companies appropriating iconography for expressive purposes within their ads, from Starbucks’ use of a medieval mermaid to Coca Cola’s use of Santa Claus.
There’s a lot more, and, again, it’s a really good amicus brief in highlighting tons of real world examples to prove its point. And they really try to prove their point, including showing the results of a (small sample size) survey they ran regarding, um, the taste of Jack Daniel’s Whiskey:
Followed by this bit of commentary:
Our colleagues who expressed an opinion that Jack Daniel’s tastes like anything but the nectar of the gods are, of course, wrong, but this is America and they may express their opinion. Under the likelihood of confusion test, however, it is unclear how far they can go to share that opinion. Could they print their opinion on a pamphlet? What if the opinion is printed on clothing? Could they use Jack Daniel’s filigree to surround their opinion stated on a t-shirt? What if they print that expression on a t-shirt using Jack Daniel’s stylized font? Could they print the expression on a black t-shirt using Jack Daniel’s stylized font and a replica of a Jack Daniel’s bottle? Does it depend on where you live?
There’s so much in the filing, including a fun usage of my favorite XKCD, which I’ll leave you to find.
But then we get to the Appendix, which is what drew so much attention to this filing in the first place. It is a contest, in which they ask each Justice and each of the Justice’s clerks to complete a simple connect-the-dots drawing and send it back to MSCHF to be used in an exhibition.
The show will be composed of 45 works on paper, each taking the form of a Connect-the-Dots drawing, a classic childhood puzzle-drawing format.
Enclosed in this brief are 45 pages, each specifically addressed to one of the people reading this brief. Each page has on its front fact a connect-the-dots drawing waiting for an artist’s hand to make them into completed artworks. On the reverse is a pre-addressed, pre-paid mailing label allowing the completed drawing to be returned to MSCHF for exhibition at no cost to the artist.
In describing the nature of the end result, the filing notes that the Justices and clerks will be part of what “determines what these artworks are” and highlights that each person reading the brief is “the executor of an artwork that makes use of cultural iconography.” But also, to make the point:
Each of these drawings will be displayed as part of a gallery show. Will they be rendered illegal prior to that exhibition?
As you’ve probably guessed by now, the connect-the-dots drawings make use of… some well known trademarks. Here’s the first one, for Chief Justice John Roberts, parodying the Arm & Hammer logo by adding a sickle to it as well:
Robert Flatow, a clerk for Justice Alito, is given a mashup between Mickey Mouse and Shrek:
I do wonder how Clarence Thomas’ clerk, Daniel Shapiro feels about the connect-the-dots he was given:
Spencer Smith, clerk to Justice Sotomayor, was given one that makes reference to Section 230, and appears to be creating a tombstone guillotine with the monopoly man’s decapitated head in front of it (I’m not going to comment on that any more…)
Justice Amy Coney Barrett gets a mix of McDonalds and the cross, creating “McMass.”
There are 45 in total, and many of them are fairly amusing, but all basically make the point about the intersection of trademark and artistic expression. I am assuming that none of the recipients, and almost certainly none of the Justices, will actually participate, though MSCHF also filed a separate motion asking for leave to send a pack of colored pencils (importantly, a pack of Crayola® Colored pencils) for the Justices and clerks to use.
The Justices are not exactly well known for their senses of humor, especially around something that may feel like it is mocking the court, but I think the brief does a good job making its point. And I look forward to the MSCHF exhibit.
This will be a quick one, but we now have a name and confirmation of a detail from a previous post. A couple of weeks back, we discussed how an unreleased game from developer Fntastic, The Day Before, was both having its release date pushed back and dealing with takedowns of a bunch of footage from streaming sites due to a trademark dispute. Fntastic, which I should mention hasn’t always been seen as a trustworthy source of information in the past, nevertheless indicated that a company with a calendar app and a trademark by the same name as the game was the source of the trademark dispute.
Well, that can now be confirmed and with a name to boot. Lee Sun-jae is the Korean CEO of the company behind the “The Day Before” calendar app and representatives of the developer confirmed it was trying to enforce its trademark rights.
“We first distributed the app under the name ‘The Day Before’ in 2010 to provide anniversary count app services used in many countries around the world,” the app developer stated. “We hold trademark rights to the app’s name ‘The Day Before’ and have so far recorded over 40m downloads. Since the trademark registration in Korea in 2015, we have held the right (registered in the name of ‘The Day Before’ CEO Lee Sun-jae). Knowing that the game of the same name was produced, we are taking measures to protect trademark rights.
We currently hold trademark rights in Korea, the United States, China, Russia, Japan, Vietnam, and the European Union.”
All of which may be absolutely true, but this still doesn’t make any sort of sense whatsoever. In the United States at least, having a trademark in general doesn’t mean that anyone doing anything by the same name or term constitutes trademark infringement. The categories for the mark have to be the same, as does the marketplace in which the two entities are competing. There has to either be real customer confusion, or potential for confusion.
In this case, one of these products is a video game and the other is a mobile app for a calendar. Those two things aren’t remotely similar and it is wildly unlikely that anyone in the public is going to be confused due to both existing. And, based on some of the commentary from the app-maker, there might be some confusion as to what trademark law does and does not do.
“We want to solve the trademark problem as soon as possible and continue to protect the app so that users can use it without worrying,” it concluded.
Yeah, your app and users are just fine. Nobody is going after your app and those using it aren’t going to go hunting for a calendar app and accidentally buy a video game set in a zombie apocalypse.
Assuming Fntastic’s game is actually real and worth fighting back on this, the game studio shouldn’t have much trouble getting a declaratory judgement if it seeks one.
