A Trap For Santa: The First Santa Claus IP Fight

PosterAt this time of year, you may be wondering about the first intellectual property case involving Santa Claus. And even if you are not, we are going to tell you.

The Biograph Company was founded in 1895 by William Kennedy Dickson, a former employee of Thomas Edison. Biograph became known for its two-minute long documentaries made using a 68mm film format (in order to avoid the litigious Edison’s patents on 35mm technology), but over time it began making short narrative films instead. These films became more popular after Biograph… More

Trademark & Copyright Law Blog Makes the ABA Journal’s BLAWG 100

image003We are happy to announce that the Trademark and Copyright Law blog has earned a spot on the ABA Journal’s “Blawg 100” for 2014.The Blawg 100 is a curated list of the top legal blogs, which is then narrowed down to a smaller list by popular vote.

If you have enjoyed any of our articles over the past year, we hope you’ll consider giving us a vote. You can do that here. It takes just a couple of minutes.

You can find more information here about the… More

A Trademark Year in Wine and Beer: Our 2014 Holiday Buyer’s Guide to Disputed Beverages

DrinkersIf you are hosting or attending a party this holiday season, you probably need to pick up something to drink. This year, why not pick up a conversation starter as well? See if your local liquor store (in our neck of the woods, a “packie”) carries one of the many beverages that were the subject of a trademark or similar dispute in 2014. In deciding an 1891 trademark case, Lord MacNaghten famously quipped: “Thirsty folk want beer, not explanations.” Well, with our guide, you can provide both beer and explanations. … More

Court Rejects Glenn Beck’s “Limited Purpose” and “Involuntary” Public Figure Theories in Marathon Bombing Defamation Case

CaptureThis week, Judge Patti B. Saris of the District of Massachusetts denied a motion to dismiss a defamation action that had been brought by Abdulrahman Alharbi against radio and television personality Glenn Beck. In denying the motion, the Court rejected Beck’s theory that Alharbi, by virtue of his attending the Boston Marathon and second-hand reports of “suspicious” behavior, had become a “limited purpose” or “involuntary” public figure with respect to the Boston Marathon bombing.

Alharbi and the Boston Marathon Bombing

Alharbi, a citizen of Saudi Arabia studying in the United… More

Turkey Purveyors Try to Gobble Up Trademark Rights

Image 1Last year, in the spirit of Thanksgiving, we told you about Horace W. Longacre’s unsuccessful attempt to register BAKED TAM as a trademark for its “turkey ham” product in the early 1980s. This year we bring you a related tale, involving another trademark loss for Longacre’s turkey ham product, just a few years earlier. The deadpan introduction to Judge Alfred Luongo’s 1976 opinion for the Eastern District of Pennsylvania sets the stage admirably:

“Gobble-gobble.”

Those words identify the sound made by a male turkey. That fact and the desire… More

Federal Government Wins Trademark Battle to Shut Down “Voice of America” Website with “Undeniable Governmental Aesthetic”

CaptureSince its first broadcast on February 1, 1942, the Voice of America radio service (VOA) has aired countless hours of programming in dozens of languages to what is currently an estimated global audience of over 100 million people. Although the history of the VOA name is storied and long, VOA’s efforts to protect that name are of a more recent vintage. VOA didn’t apply to register its name as a federal trademark until 2005, and didn’t get around to registering an internet domain name until after sites such as voiceofamerica.com… More

Use of Porn Star Images in “Romance Fraud” Dating Profiles Fails to Support Trademark and False Advertising Claims

CaptureThe plaintiff in Avalos v. IAC/Interactive Corp. called it “one of the biggest conspiracies ever executed on the internet” — the unauthorized use of images of adult film stars in fake online dating profiles. But in an opinion issued October 30, 2014, Judge Jesse Furman of the Southern District of New York held that trademark law was not the right way to go about solving this problem. The complaint was dismissed in its entirety.

The Romance Fraud Scam

According to the complaint, con artists such as the Nigerian “Yahoo… More

Political Ad’s Use of Trademark until Election Day Not Infringement

CaptureOn October 28, 2014, Judge Paul Grewal of the Northern District of California ruled that a political advocacy website’s confusing use of the mark CHOOSE ENERGY could stay up . . . but perhaps only until election day.

The plaintiff, Choose Energy, Inc., operates an online energy marketplace at chooseenergy.com, through which individuals and businesses in several states can shop for an energy supplier. Shortly before October 10, 2014, Choose Energy discovered that the website chooseenergy.org had been acquired by the American Petroleum Institute (“API”). API began using the… More

Ninth Circuit Knocks Down Unfair Competition Case against Yelp!

YelpFor those few of you who don’t know already, Yelp! (“Yelp”) is a wildly popular website where people can share their reviews, opinions, experiences, and ratings of businesses across the country.  This service is invaluable when investigating new restaurants, dog walkers, dry cleaners, etc.  However, it is important to take the reviews with a grain of salt because, no matter how great a store is, there will always be a few disgruntled customers, and, reportedly, it is becoming more and more common for competitors to post fake negative… More

The Haunted History of the Hallowine Trademark

1 2Brewers, distillers, and vintners are no strangers to themed seasonal offerings, so it’s not surprising that Halloween brings out some decidedly decrepit monikers.  From PUMPKINHEAD (think reaping) to NOSFERATU, WITCH’S WIT to BRUJERIA, purveyors of alcohol capitalize on the creepy and market the macabre.  Every once in a while, of course, great minds think alike, and so it is we were blessed with not one, but two HALLOWINE brand wines.

The Terrifying Trademark Opposition

Door Peninsula… More

Defamation From Beyond the Grave: Using Your Last Will To Get In The Last Word

CaptureHalloween is a good time to think about how you want to die. Do you want to leave the world peacefully? Or do you want to go down trash talking, making sure that your enemies know exactly what you think about them, and that everyone else knows what terrible people these enemies were?

Take, for example, this 1908 bequest of Garvey White, as recounted by Judge John Marshall Gest of the Philadelphia Orphans Court. White directed:

“That before anything else is done fifty cents be paid to my son-in-law to… More

Georgia State Academic Fair Use Decision Vacated by 11th Circuit: A (Relatively) Quick Read for the Busy Practitioner

CaptureLast Friday, the 11th Circuit Court of Appeals vacated and remanded the Northern District of Georgia’s 350-page fair use analysis of the electronic reserves practices at Georgia State University (“GSU”). Although this reversal is technically a win for the plaintiff publishers, the 11th Circuit left the most important parts of the lower court’s analysis intact, and essentially affirmed the bulk of its reasoning with respect to the first and fourth fair use factors. We have previously written at length about GSU’s electronic reserves, the District Court’s opinion, and… More

The PTO vs. The Phantom Marks: A Ghost Story

RRRRDon’t read this one before bed.

As autumn sets in and Halloween approaches, my mind turns to jack-o-lanterns, skeletons, and phantoms. Phantom marks, that is. Equally incorporeal though perhaps somewhat less frightening than their ghostly namesakes, phantom marks are registered trademarks that contain a “phantom,” or changeable, element.  A well-known phantom registration was _ _ _ _ _ _ FOR DUMMIES for various self-help books, where the dotted line represented different descriptive terms that vary according to the subject matter of the book.  A hypothetical example of a phantom mark is… More

Superman Dodges a Bullet: Supreme Court Denies Certiorari in Heirs’ Bid to Reclaim Character Copyright

Man of SteelClose on the heels of the settlement between Marvel Comics and Jack Kirby’s heirs, which ended their dispute over copyright in a number of iconic comic book characters, the heirs to one of Superman’s co-creators, artist Joseph Shuster, lost out on the chance of a Supreme Court hearing in their effort to wrest copyright in the Man of Steel away from DC Comics.  Like Kirby’s heirs, Shuster’s heirs had attempted to invoke 17 U.S.C. § 304(c) by sending notices to DC Comics in 2003, purporting to terminate the… More

Appearances Aside, “Something More” Still Needed for Trademark Infringement Liability in Keyword Advertising Cases

gg

Search engine optimization is a vital issue for brand owners.  When a potential customer searches online for Company A, a well-known brand, Company A naturally wants its own website to be as high in the search results as possible and, ideally, at the top of the list.

But Company A is not alone.  Its competitor, Company B, wants to show up in the search results as well.   In fact, many a Company B, by purchasing Company A’s name as a “keyword” from a search engine (an “AdWord” as offered by… More