Category Archives: General

Hard Knocks Over Hard Rock

What can happen when an international corporation goes after a local disc jockey at a college radio station in Amarillo, Texas for trademark infringement?  If the DJ is internet savvy and makes enough noise about it, the corporation may back down.

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In the summer of 2010, Brian Basher, music director atKACV FM 90, Amarillo College’s radio station, began hosting a 2-hour weekly syndicated radio program calledHard Rock Nights that airs on over 20 affiliates and in three countries.  In order to promote this show, Basher registered the domain name www.HardRockNights.com.  In November of 2010, the Business Affairs Department of Hard Rock Café International (HRCI), owner of the cafés, hotels and casinos that bear the Hard Rock name, sent Basher a cease and desist notice by email. The notice, cryptically signed by “/ipenforcement/”, demanded that Basher transfer the domain name, take down all content, and cease and desist from registering any similar domain names or using any terms that are confusingly similar to HRI’s famous trademark.


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Undeterred, Basher began using Facebook, Twitter, blogs and online press releases to publicize his predicament.  Fans and friends followed suit by drumming up support for the beleaguered DJ.  About a day after receiving the cease and desist notice, Basher received a second letter, this time from the Senior Director of Business Affairs at HRCI, stating that his intended use of www.HardRockNights.com “would amount to non-infringing use of the term hard rock.”  The second notice also revealed that HCRI “automatically issued, via its monitoring service provider, its cease and desist notice.”  Although the second notice thanked Basher for the “additional information” he provided as to how he intended to usewww.HardRockNights.com, Basher insists that he provided no such information to HRCI.  It would appear that HRCI withdrew its notice in response to the negative publicity received in social media.

Automated software may be a cost effective way to initially identify potential infringers, but in this case, spitting out a cease and desist notice without first reviewing the evidence resulted in unwanted publicity and an avoidable retraction.


Geek Squad v. God Squad

One of the more important requirements for maintaining a trademark is policing, the zealous pursuit of anyone who uses the mark without the owner’s permission. Unauthorized use, even parody in some cases, can tarnish the owner’s brand and cut into sales (See Trademarks & Parodies: The North Face versus The South Butt).  But what about when that use

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is in a totally unrelated field and the profits derived are spiritual rather than monetary in nature?

For the past several years, Father Luke Strand, an associate pastor at the Holy Family Parish in Fond du Lac, Wisconsin, has been driving around in his Volkswagen Beetle® with decals attached to the doors that read: God Squad.  Anyone who’s needed technical support for electronic equipment in recent years is probably familiar with the Geek Squad® vehicles that transport “techies” from local Best Buy® stores on their house calls. Because the Geeks likewise drive VW’s with a similar logo, Best Buy decided to write a cease-and-desist letter, demanding that Father Strand remove the infringing logo from his car. Father Strand has since complied with Best Buy’s demands.  Not totally unsympathetic to the priest’s mission, Best Buy offered to help him design a substitute logo that wasn’t as confusingly similar to their own.

What legal rights does Best Buy have in this case? According to records of the U.S. Patent and Trademark Office, BBY Solutions, Inc. (a subsidiary of Best Buy) is the owner of four federal registrations and a pending application for the Geek Squad logo.  The goods protected by these registrations include a variety of computer peripherals and accessories, and even t-shirts; the services protected include the installation and repair of a wide range of consumer electronics. But none of the registrations claim Christian ministry services.

Does this mean that Best Buy has no grounds to go after Father Strand?  Not necessarily.  U.S. trademark law provides certain rights against dilution of so-called “famous marks” when those marks are “tarnished” or “blurred” by unauthorized use, even if that use isn’t in the same area of goods or services as the famous mark. Tarnishing involves the use of a mark in a disparaging or unsavory way, like using the Coca-Cola logo on bubble gum made to resemble cocaine. Blurring refers to the lessening of a famous mark’s selling power through use with unrelated goods or services. Although there’s no apparent evidence that Father Strand tarnished the Geek Squad logo, a case might be made that over time, consumers could associate the Geek Squad less with fixing computers and more with saving souls.

Another possible ground for infringement involves trade dress. Had Father Strand affixed the God Squad logo on the doors of a Chrysler PT Cruiser® or a Nissan Cube®, Best Buy probably wouldn’t have a case.  But because the Volkswagen Beetle® is so closely associated with the Geek Squad, like the distinctive shape of the Coca-Cola® bottle, the “feel” of the vehicle could be considered trade dress. Maybe if the doors and roof of Father Strand’s care were white, an even stronger case could be made.

Any business has the right to defend its intellectual property from infringement. But when a Goliath like Best Buy goes after a David like Father Strand, the negative publicity can sometimes outweigh whatever benefit might be derived. Sometimes a fight with David is more fight than Goliath wants. And it doesn’t take a clergyman to know who ultimately won the first match between David and Goliath.


Copyright Infringement in the Digital Age: Is Righthaven Using the Right Solution?

Before there was an Internet, wholesale infringing on someone’s copyright could be a time consuming and capital intensive endeavor. Through most of the last century, would-be infringers needed a printing press, and even with the advent of the mimeograph and copy machines, paper and distribution channels were required.  But today, a copyrighted work that is posted online can be easily copied and distributed throughout the world with a few clicks of a mouse.  In the case of pirated software and other high-ticket items, it may make sense to go after the infringers. But what about infringers that cut and paste articles from online newspapers and 

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magazines on their own websites or blogs?  Is it cost effective to take them to court?

In March 2010, Stephens Media, publisher of the Las Vegas Review-Journal, began selling copyrights to that paper’s content to Righthaven, LLC, a company whose CEO, Steve Gibson, is an attorney practicing law in Nevada. Since then , Righthaven has been scouring the Internet for Review-Journal articles that have been posted without permission from the copyright holder. By the end of July 2010, Righthaven had filed at least 80 copyright infringement lawsuits in Nevada federal district court against a variety of website owners and bloggers.

Gibson’s strategy for going after copyright infringers is a bit unorthodox. The standard procedure before filing a copyright infringement suit is to send a cease and desist letter, giving infringers an opportunity to stop their activities before taking them to court. In addition, under the Digital Millennium Copyright Act (“DMCA”), there are provisions for sending a “takedown notice” to an infringing website before taking further legal action. Righthaven has apparently done neither, choosing instead to serve its infringers with federal lawsuits without prior warning. Faced with the prospect of going to trial on Righthaven’s turf, many of the defendants have chosen to settle early in the case.

Since few of these infringers make any money from their websites or blogs, and even fewer, if any, operate online publications that directly compete with the Review-Journal, some argue that such cutting and pasting could be defended under the “fair use doctrine” of the U.S. Copyright Act. Under this doctrine, some copying without permission is considered “fair use” (and therefore not infringement) depending on the purpose and character of the use, the nature of the copyrighted work, the amount of the copyrighted work being copied, and the effect of that copying has on the potential value of the copyrighted work.  Since many of the website owners and bloggers seek only to inform and educate their readers and not to turn a profit, fair use might be a viable defense in some cases.  But from Righthaven’s point of view, the unauthorized posting of its copyrighted content greatly reduces the potential value of that content by driving traffic away from the Review-Journal’s website and decreasing its advertising revenues.

It remains to be seen whether Gibson’s strategy will prove profitable for Righthaven over the long haul. In a similar move against music file sharing, the Recording Industry Association of America (RIAA) sued approximately 20,000 infringers over five years, spending $64 million in legal costs but only recovering $1.3 million in damages and settlements. However, if suing for infringement of Review-Journal content turns out to be a money making operation, Stephens Media controls over 70 other newspapers in nine states which could join the fray, with the possibility of other media groups to follow. In the meantime, website owners and bloggers can avoid possible liability to linking to articles of interest rather than copying the entire content directly onto their sites.  Getting permission to use content is the safest course.


The JSPIPE: Coordinating Efforts to Secure IP Rights

Intellectual property (IP) is a valuable asset, not only for the producers and creator of this intangible property, but also for the overall economy that benefits from the innovation and creativity this property represents.  However, the value of intellectual property is greatly reduced when
unauthorized users are allowed to exploit this property through counterfeiting, piracy and other illegal activities. Enforcing IP rights in a global economy requires a coordinated effort among a variety of governmental agencies.  The federal government recently announced a plan to improve those efforts.

The 2010 Joint Strategic Plan on Intellectual Property Enforcement (JSPIPE), a 65-page document, was issued in June 2010 by Office of the Intellectual Property Enforcement Coordinator (IPEC).  The JSPIPE coordinates the efforts of eight government agencies: the Departments of Agriculture, Commerce, Homeland Security, Justice and State; as well as the Food and Drug Administration, United States Trade Representative and the Copyright Office.  A total of 33 Enforcement Strategy Action items are organized into six categories: (1) Leading By Example; (2) Increasing Transparency; (3) Ensuring Efficiency and Coordination; (4) Enforcing Our Rights internationally; (5) Security Our Supply Chain; and (6) Building a Data-Driven Government.

Click here to read the entire document.

Of Unicorns and Pigs: The Limits of Trademark Infringement

Trademarks create an association in the minds of consumers between specific goods and the source of those goods.  Because of this, it’s important for trademark owners to police their marks for misuse by competitors who would profit from the goodwill created by the owner.  A common way of enforcing one’s

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trademark rights is through the cease and desist letter.  But some uses, such as parody, may be a defense to infringement and actually decrease the likelihood of confusion.  When the trademark owner ignores this difference and proceeds with a cease and desist letter, the result can be both humorous and embarrassing.

Such was the case with a recent dispute between the National Pork Board and Geeknet, Inc., an online store specializing in novelty items. On April 1, 2010, Geeknet began offering “Radiant Farms Unicorn Meat” for sales on its website www.thinkgeek.com, using the slogan, “Unicorn – the new white meat.”  A little over a month later, ThinkGeek received a 12-page cease and desist letter on behalf of the National Pork Board, owner of the internationally registered trademark “The Other White Meat”. In a tongue-in-cheek response in keeping with the April Fool’s Day spoof, Scott Kauffman, President and CEO of Geeknet, issued a public apology to the National Pork Board, stating, “It was never our intention to cause a national crisis and misguide American citizens regarding the differences between the pig and the unicorn.  In fact, ThinkGeek’s canned unicorn meat is sparkly, a bit red, and not approved by any government entity.”

According to U.S. Trademark Manual of Examining Procedure (TMEP), parody per se is not a defense to a claim of likelihood of confusion, but there are confusing and non-confusing parodies.  A true parody actually decreases the likelihood of confusion by creating a distinction in the consumer’s mind between the actual product and the joke.  Unlike a parody mark used on the same goods sold in the same channels of trade (see our earlier blog post, Trademarks & Parodies: The North Face versus The South Butt) the fact that unicorns are mythical creatures makes it less likely that anyone would confuse ThinkGeek’s non-edible novelty item with the edible meat promoted by the National Pork Board.

Parody marks can often be used as an effective way to capitalize on the goodwill in someone else’s trademark. But like the famous quote about cigars attributed to Sigmund Freud, sometimes a parody is just a parody.


The Thomas Muffin Affair: More Than Just “Nooks and Crannies”

The Third Circuit Court of Appeals recently heard arguments regarding a district court decision in a trade secrets case between Bimbo Bakeries USA, Inc. (maker of Thomas’ English Muffins) and its former executive, Chris Botticella.  Many in the popular media dubbed this the “nooks and crannies” case, a reference to the

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unique texture of the muffin, to which Botticella had access.  In reality, the case involves a much broader spectrum of trade secrets, as well as the enforcement of a confidentiality agreement and the use of computer forensics to detect possible violations of that agreement. 

Until January of 2010, Chris Botticella was Bimbo’s Vice President of Operations for California.  In this capacity, he was one of less than 12 people at Bimbo with access to a variety of confidential and proprietary information, such as product formulas and process parameters, which were stored on a secure website.  Among these trade secrets were the three components (formula, manufacturing, engineering design, and process parameters) that give Thomas’ English Muffins their celebrated texture.  With annual sales of about $500 million, the muffins have been a vitally important item in Bimbo’s product line.  In order to keep these trade secrets from its competitors, Bimbo compartmentalized this information so that only seven people (among them Botticella) had access to all three components.

But Botticella was also knowledgeable about other sensitive aspects of Bimbo’s business operations.  As a company vice president, he was one of only five people with access to Bimbo’s highly confidential cost-reduction strategy for the Western region.  This strategy included information about lines and plants to be closed, new processes to be implemented, new products to be launched, and formulas to be optimized.

In March of 2009, Botticella entered into a confidential agreement with Bimbo as a condition of employment.  Less than seven months later, in September of that year, he received a job offer from Interstate Brands Corporation, the predecessor to Hostess Brands, Inc., one of Bimbo’s three major competitors.  In October 2009, Botticella accepted the position with Hostess, and in December he signed an “Acknowledgement and Representation Form,” stating that Hostess was not interested in Bimbo’s trade secrets, nor would Botticella disclose such secrets to his new employer.

Botticella was to resign from Bimbo on January 15, 2010, but it was not until January 4, 2010 that he informed Bimbo of this intention, and not until about 10:00 a.m. on January 13 that he let Bimbo know that he was going to work at Hostess.  He was then told to stop all work and leave that same day.  But according to the testimony of a computer forensics expert, at 10:12 a.m. on January 15, Botticella accessed 12 company documents on his laptop computer (including highly confidential Bimbo documents), all in the course of 13 seconds.  Computer forensics also revealed that three external storage devices had been attached to the laptop, only two of which have been accounted for.  When questioned about this in deposition, Botticella testified that he attached the USB flash drives to the computer as “practice” in order to improve his computer skills for his job at Hostess.

On February 9, 2010, the court entered a preliminary injunction barring Botticella from starting his employment at Hostess and from divulging any of Bimbo’s trade secrets to anyone.  He was also ordered to return all of Bimbo’s confidential information in his possession back to his former employer.  This injunction was to remain in effect until after the trial, which was scheduled for April 12.  But by filing an appeal, Botticcella actually prolonged his unemployment until at least after the court of appeals enters its decision.

It remains to be seen how this case will be decided, but one thing is certain: it’s not just about English muffins


Privacy Settings on Facebook and My Space

Your privacy settings on Facebook or My Space may determine when a third-party can subpoena electronic communications from your Facebook or My Space page.  In the copyright infringement case, Crispin v. Christian Audigier, Inc. et. al., the defendants served subpoenas on a number of

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third-party entitites, to include the social networking providers Facebook and MySpace, Inc., seeking basic subscriber information and communicaitons relating to the case.

Read the opinion here.

We often wonder how private, “private” really is.  Here “private” apparently does matter.  The privacy settings in the case will determine the extent to which Facebook and My Space comments are accessible to the other party in litigation and can be obtained by subpoena.


Update on J.D. Salinger and The Catcher in the Rye

In an earlier post entitled “J.D. Salinger, The Catcher in the Rye & Intellectual Property Rights”, we discussed a pending case (Salinger v. Colting) in which a U.S. district court granted the estate of J.D. Salinger a preliminary injunction against Swedish author Fredrik Colting, his publishers and distributors concerning the 

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book 60 Years Later: Coming Through the Rye. In a recent decision concerning this case, the Second Circuit Court of Appeals ruled that the district court used the wrong standard for granting the preliminary injunction, vacating the order and remanding the case back to the district court.

The court of appeals said that the correct standard for a preliminary injunction in a copyright infringement case is the four-factor test outlined in the Supreme Court decision eBay, Inc. v. MercExchange, L.L.C. The four factors are: (1) the plaintiff suffered an irreparable injury; (2) remedies available at law, such as monetary damages, are inadequate to compensate for that injury; (3) considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and (4) the public interest would not be disserved by a permanent injunction.

This ruling is significant, because it may mark the first time in a reported case that the so-called eBay factors are being applied to a preliminary injunction in a copyright infringement dispute.  The eBay case involved a permanent injunction in a patent dispute.  However, the decision did nothing to immediately change the situation for the defendants. The preliminary injunction (which barred Colting, his publishers and distributors from advertising, publishing or distributing Colting’s book) will stay in place for ten days following the issuance of the mandate. This will give the estate of J.D. Salinger the opportunity to apply for a temporary restraining order pending the rehearing of the motion for a preliminary injunction.


Lacey Brown

We were disappointed to see Amarillo’s own Lacey Brown leave American Idol but a Top
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12 finish is still an incredible accomplishment!  We know this is just the beginning for Lacey.  Her talent is going to take her very far!

There is a nice article about Lacey in the April 2010 issue of Accent West.