Philippines IP Office: Anti-Counterfeiting Meeting Isn't About Kowtowing To Corporate Interests… Except That It Is

from the that's-a-denial? dept

Earlier this year, the US government admitted that it was funding special programs in conjunction with WIPO (the World Intellectual Property Organization) to help push anti-counterfeiting enforcement efforts around the globe, despite tons of evidence that counterfeiting isn’t a big problem, and actually is massively smaller than the industry makes it out to be. That US funding led directly to a secretive meeting in the Philippines, that was entirely one-sided, focusing solely on companies and their desire for greater enforcement against counterfeits.

Over the weekend, however, Cory Doctorow called WIPO out on this meeting, noting that it wasn’t even on WIPO’s website, and appeared to go against WIPO’s own agenda concerning recognizing the “broader societal interests.” This resulted in WIPO giving a weak defense of the event — while also distancing itself from the event (saying it was only part of the first two days — and the rest were from the Philippines government).

That, in turn, resulted in this somewhat hilarious attempt at a defense of the event from the Philippines IP Office. The IP Office first denies that this is a one-sided event designed to help big sponsoring companies… and then goes on to admit that’s exactly what it was about in the very next sentence:

?Strictly speaking, the workshops sponsored by these corporations will, of course, teach our law enforcement officers how to act in the interest of those business entities,? observed Ricardo R. Blancaflor, Director General of Intellectual Property Office of the Philippines (IPOPHL). ?However, it is also true that these brands are the most pirated in the country. They have lost a lot of profits due to piracy.?

That’s very convincing.

Filed Under: counterfeiting, one-sided, philippines, wipo

The Revolution Will Not Be Infringed Upon: Long Island Couple Files To Trademark 'Occupy Wall St.'

from the sticking-it-to-the-man-via-the-proper-channels dept

Wall Street blog extraordinaire, Dealbreaker, alerts us to the perhaps unsurprising news that a Long Island couple has filed for a trademark on the phrase “Occupy Wall Street.” (More in-depth information, including the filing, over at The Smoking Gun.):

In a U.S. Patent and Trademark Office (USPTO) application, Robert and Diane Maresca are seeking to trademark the phrase “Occupy Wall St.” so that they can place it on a wide variety of goods, including bumper stickers, shirts, beach bags, footwear, umbrellas, and hobo bags.

While there’s something to be said for striking while the iron is hot, some very ugly backlash from actual Wall Street occupiers is pretty much guaranteed. If there’s one thing protesters of a financial system hate (and it’s by no means the only thing), it’s having their dissent sold back to them. This possibility did cross the Marescas’ minds, but it has all been safely rationalized away:

Asked if his move to stake a legal claim to “Occupy Wall Street” might be seen as a crass attempt to cash in on a movement that has a harsh view of corporations and capitalism, Maresca answered, “No.” Noting that he has a “practical business side,” Maresca added that, “If I didn’t buy it and use it someone else will.”

Of course: the I’m-not-the-only-one-with-a-horribly-crass-idea defense. Maresca has a point, though. Someone else would. In fact, a Brooklyn man has already filed a trademark request for “We Are the 99%.” Of course, this Brooklynite can always add “44/100” to his T-shirts and sell them to Procter & Gamble, should this occupation suddenly end. Maresca’s phrase has no “out,” if you will, but he won’t let that keep his growth industry down. After all, he’s got two things going for him;

authenticity:

Maresca said that he has visited the Wall Street protest site on several occasions and believes that corporations have too much influence on elected officials.

and school supplies:

While he has yet to mass produce any “Occupy Wall Street” product, Maresca said that he has inked some t-shirts with magic markers.

That, my friends, is how you carpe the hell out of the diem. Now there’s nothing left to do but sit back and wait for the backlash/C&Ds to start flying.

Filed Under: occupy wall street, trademark

ICE Seized 20 Domain Names For The NFL Over The Weekend

from the not-slowing-down dept

Despite challenges concerning the legality of ICE seizing domain names prior to any sort of adversarial hearing, it appears that ICE has no intention to slow down. The group quietly seized 20 more domain names over the weekend, and it looks like most involved sites selling unauthorized NFL jerseys. ICE has been a bit slower about going after copyright related domain names, focusing more on trademark domain names recently, but it’s still questionable as to whether or not the group really has the right to censor domain names without an adversarial hearing. Of course, ICE is relying on the fact that no one behind these sites is likely to speak up, which is why it gets away with its out-and-out censorship. In the meantime, you would think that ICE would have more important things to do than be the personal private police force of various entertainment industry entities.

Filed Under: censorship, domain seizures
Companies: ice, nfl

Apple Continues To Insist Only It Can Use An Apple In A Logo; Threatens Small German Cafe

from the can-i-have-an-apple? dept

Not this again. We were just noting some recent attempts by Apple to pretend its trademark blocked anyone else from using an Apple in their own logo, no matter how obviously different and unrelated to the computer company. Take for example, these two disputes:

The latest, is that Apple has apparently sent a cease and desist to a small cafe in Germany, Apfelkind, whose logo looks absolutely nothing like Apple’s: At this point, you kind of wonder if Apple has some trademark lawyers who have way way way too much free time on their hands.

Filed Under: apple, trademark
Companies: apfelkind, apple

Court Rules Gamers Are Not Idiots And Not Likely To Be Confused Over 'Scrolls'

from the won-the-battle-on-to-the-war dept

Mojang has won the first of several battles in its legal troubles involving the trademark “Scrolls”. Via a tweet, Markus ‘notch’ Persson announced:

We won the interim injunction! We can keep using the name “Scrolls”. ZeniMax/Bethesda can still appeal the ruling, but I’m very happy. 😀

According to a Gamasutra summary of the ruling, the court found that although the games in question have a high degree of similarities, the target consumers have a higher than normal awareness and are thus less likely to be confused over the trademarks.

Nevertheless, the Court finds that there are similarities as well – both games/series taking place in a fantasy setting, and that consumers appear to be somewhat overlapping, and that as a consequence, there is a relatively high degree of similarity of goods.

The Court then goes on to discuss the consumers of these kinds of games. ZeniMax’s opinion is that it is the general public, which holds no particular awareness of differences between various titles and games.

Mojang on the contrary, has argued that computer and video gamers constitute a well defined (albeit large) group which is very much aware of differences between various games and titles. The Court finds mostly with Mojang, agreeing that the relevant consumers are not the general public, and that their awareness is higher than normal.

While this is not a decisive victory for Mojang, it does mean that it can continue to use ‘Scrolls’ in its regular course of business. Bethesda/Zenimax still has a chance to block Mojang in the future but for now nothing will change. We have yet to hear if Bethesda plans to appeal this ruling or wait for the full proceedings to commence. This ruling, however, does not effect the trademark status in nations outside Sweden. Which means that the USPTO’s rejection still stands in the US.

In the mean time, perhaps Bethesda’s legal team should reconsider that Quake match. Notch is still up for it.

Filed Under: scrolls, trademark
Companies: bethesda, mojang

Mojang's Trademark Application Rejected: Too Many 'Scrolls' For The USPTO

from the uspto-uses-papyrus dept

We have been covering the trademark dispute over ‘Scrolls’ and the pending lawsuit against Mojang’s use of the mark. We have now learned that the United States Patent and Trademark Office (USPTO) has rejected Mojang’s ‘Scrolls’ application for trademark status in the US.

The letter of rejection states that Mojang’s application for ‘Scrolls’ infringes on two registered marks in the US. The first is for Bethesda’s ‘The Elder Scrolls’. The Second is for ‘Scrolls’, a registered trademark by a t-shirt company in California.

The t-shirt mark I can understand. Mojang’s application listed t-shirts and clothing as areas where it is looking to use the mark. It seems pretty easy to understand why the USPTO would reject the application based on that criteria.

However, the logic behind the rejection based on Bethesda’s trademark still makes little sense. According to the USPTO:

Regarding the THE ELDER SCROLLS marks, the applicant has merely deleted the term ELDER from the registered mark. The mere deletion of wording from a registered mark may not be sufficient to overcome a likelihood of confusion. The applicant’s mark does not create a distinct commercial impression because it contains the same common wording as the registrant’s mark, and there is no other wording to distinguish it from registrant’s mark.

What really confuses me here is that the USPTO considers Mojang’s mark to be Bethesda’s mark with a few words cut out. This leads me to believe that the USPTO is willing to accept the idea that a trademark is not just limited to the full trademarked phrase but also to the individual parts. So not only does Bethesda own the trademark for ‘The Elder Scrolls’ when used in a game, but also to the words ‘Elder’ and ‘Scrolls’. I hope that doesn’t apply to the word ‘The’. I really hope that this is not the USPTO’s intention. If this ruling is left to stand, applying for a trademark could become an even more complicated process than it currently is. Not only do applicants need to look for exact matches to proposed trademarks, now they will have to make sure that individual words are not part of other trademarks. I don’t think that is how trademark law is meant to function.

However, this rejection seems to leave room for Mojang to alter the title of its game by adding a subtitle or another word to the title as long as it creates a ‘distinct commercial impression’, however that is determined. Mojang has six months from the issue date of the letter to amend its application or appeal the ruling. It will be interesting to see what move Mojang will make in response to this letter.

Filed Under: elder scrolls, scrolls, trademark
Companies: bethesda, mojang

Is Getty Guilty Of Trademark Infringement For Every Photo It Has That Shows A Trademark?

from the 80-million-and-counting dept

And here we have yet another case of trademark law gone wrong. We’ve mentioned in the past that the company CAR-FRESHNER is so insanely over aggressive with its trademarks concerning its annoying pine tree-shaped car air fresheners that it takes out magazine ads warning photographers not to photograph the iconic air fresheners without permission. This struck us as trademark abuse. Contrary to the claims of the company, a trademark does not grant you all uses of a mark. It was initially designed as a consumer protection law, to help avoid consumer confusion. Unfortunately, aggressive trademark lawyers and the courts seem to keep expanding how trademark is interpreted, and CAR-FRESHNER may be leading the way towards a massive expansion of how trademarks can be asserted.

It appears that the company sued Getty Images for infringing on its trademarks on those tree shaped air fresheners because a few of the stock images available via Getty Images includes the tree. Getty Images responded that this isn’t a violation of trademark law and is clearly fair use, so the claims should be dismissed. Unfortunately, at this stage, the court has refused to do that, and argues that CAR-FRESHNER actually has made a reasonable enough argument that there may be consumer confusion.

Really?!? I’m curious what moron-in-a-hurry is going to look at these images and think, “gee, the idiotically misspelled company CAR-FRESHNER must have sponsored this photograph that some person took in their car.” I just don’t see it. Furthermore, trademark (unlike copyright) has a clear requirement that the mark be “used in commerce.” While Getty is certainly selling these images, it’s ridiculous to think that it’s using the trademark in commerce. It’s just selling photos — millions of them — that photographers have taken. In this case, the “commerce” associated with AIR-FRESHNER happened when someone bought the little tree. Photographing it doesn’t represent a new use in commerce. Except in this court, unfortunately.

And if you think this is just a minor issue, you’re not paying attention. As trademark lawyer, Marty Schwimmer, points out in the link above, this could make Getty liable for every image in its collection that incidentally shows any trademarked item:

Given that Getty has 80 million images, it may have some agita that its fair use defense did not defeat a 12(b)(6) motion, given that perhaps some others of its 80 million photos that may depict recognizable trademarks as well.

While there may be some poetic justice, given reports that Getty is, itself, a rather insanely aggressive protector of copyrights, known to send out letters demanding huge payments for finding incidental parts of its images on websites, we should never celebrate the expanding of bad laws like this.

Filed Under: photos, stock photos, trademark
Companies: car-freshner, getty

EA Sues EA Over The EA Trademark

from the who's-on-first dept

Kingster writes in to let us know about an interesting trademark infringement case. In this case, the makers of Madden football games, EA (Electronic Arts), is suing the makers of sports wristbands, EA (Energy Armor), for trademark infringement. The main rub here is that Energy Armor markets its wristbands using a logo that is strikingly similar to Electronic Arts logo. Electronic Arts also claims that because Energy Armor markets its wristbands as sports equipment, the trademarks overlap and can cause confusion in the market place.

I can certainly see the concern here. While we have seen a number of dubious trademark lawsuits, most recently with Edge and Scrolls, this is an example of trademark law working as intended. On one hand, we have a business which has spent roughly 30 years building a brand that people recognize and trust and on the other, a business stepping in with a knock off logo used in a way meant to confuse buyers.

Electronic Arts has a very strong case for brand confusion and I really don’t see any way out of this mess for Energy Armor other than to change its name or lose in court.

Filed Under: ea, trademark
Companies: ea

For All The Complaining About Chinese Counterfeits… China Is A Massive Growth Market For Luxury Goods

from the aspirational dept

A few years ago, we noted a study that suggested “counterfeit” goods weren’t nearly as big a “problem” as many made it out to be. That’s because in a very large percentage of cases, the buyers knew they were buying a counterfeit and did so on purpose because they knew they couldn’t afford the real thing. In other words, in those cases, there was no “loss” per se, because the buyer couldn’t buy the original at that time. But the really interesting part of the study was the finding that a very large percentage of people who buy counterfeit goods end up buying the real product later. In other words, the counterfeit is a form of marketing.

It appears that may be happening on a large scale in Asia (and China in particular). Despite all the claims that China and other Asian companies are homes to mass counterfeiting, apparently various luxury goods brands are seeing massive uptake and demand in China and across wider Asia. Various luxury goods companies like Prada are announcing record revenue thanks to these countries that are often supposed to be pits of counterfeiting. Perhaps that original study got it right, and lots of folks who used to buy counterfeits are now itching for the real thing.

Filed Under: china, luxury goods, trademark

Lady Gaga Tries To Seize Fan Domain… But Fails

from the you-don't-get-everything dept

While we’ve noted that Lady Gaga seems to be really on top of things when it comes to copyright issues on her music, in other areas of her operations, she’s pretty aggressive in pushing intellectual property claims. We’ve noted, for example, her attempts to aggressively use trademark claims to stop “Baby Gaga” ice cream and copyright claims to control her image by photographers. As we noted, to Lady Gaga, intellectual property seems to have nothing to do with her music, but everything to do with her image.

It’s too bad she recognizes the benefits of being open in one aspect of her business, but not in other areas. Of course, the constant overreaches aren’t always successful. Take, for example, her recent attempt to gain control over a fan site at LadyGaga.org. Rather than embrace the fan site and be happy for the support, Gaga and/or her management, went to the National Arbitration Forum and argued that this fan had registered the domain in bad faith:

The owner of the site then responded that it was merely a non-commercial, unofficial fan site for Gaga that “does not have any sponsored links or links to third-party websites which market and sell merchandise bearing Complainant?s trademark.?

The owner added that her fan site supported Gaga’s fame and was giving the singer free publicity. In other words, the site owner (identified as “Miranda”) loves Lady Gaga so much that she’s willing to erect a digital shrine to her, and lawyers shouldn’t interfere.

Of course, it’s quite a fan who’s willing to still erect a digital shrine to an artist who goes legal to try to seize their domain. However, the NAF wasted little time in siding with the woman who owned the domain and against Lady Gaga. The ruling made clear that such a fan site is a perfectly legitimate purpose for the domain name.

Filed Under: domain name, fan site, fans, lady gaga, music, trademark