Jones Day v. Block Shopper

I'm taken aback. When this case was first reported, I thought the matter was so straight forward that it was not be worth discussing. Lo-n-behold! Maybe I was quick to dismiss. No actually I take that back. I was not quick to dismiss; Judge John Darrah was!

In Jones Day v Block Shopper, BlockShopper, a website that reports on the latest occurring real estate transactions, used the word Jones Day in the headline and linked to the names of two Jones Day employees (on the Jones Day website) who bought real estate. Jones Day alleged service mark infringement, false designation of origin, service mark dilution and Illinois State Statute violations.

Jones Day alleged that the use of its marks in "connection with a real estate advertisement scheme is likely to deceive and cause confusion" as to source of origin. Really?!

A defense to trademark dilution is fair use. Trademark law takes its rules from First Amendment principles. Thus, trademark fair use permits use of another's mark for news reporting or commentary purposes. Trademark fair use does not hold water if the use of the mark is actually confusing to consumers. BlockShopper argued that Jones Day did not sufficiently plead dilution. However, the Court sided with Jones Day's argument that the deeply embedded linking is sufficient to create a connection between the two and create a false impression of affiliation/sponsorship. Jones Day, citing A.A. General v Chrysler, supported its dilution claim on the following elements:(1) Plaintiff's mark is famous, (2) defendants adopted use of the mark after the plaintiff's mark became famous, (3) defendant diluted plaintiff's mark & (4) defendant's use in commercial and in commerce. The Court felt that the defendants acts do not fall within the statutory exception and thus denied their claim to dismiss Jones Days' dilution claim.

I'm not quite convinced. On a basic level - hyperlinking does not always cause sponsorship and this might be a good example. Will consumers really be confused?Jones Day protested to the use of its name in the headline and the linkage citing sponsorship confusion issues. I'm troubled. Shall we start talking like kids do in Harry Potter books referring to Voldermort - The one who should not be named. How is one supposed to refer to another without using their name?

Links:

EFF

Public Citizen

Avatars hath arrived!

You would think that with an economy spiraling downwards, proactively protecting your trademarks in the real would be enough. Not really. Think more on the lines of seriously expanding the list. Enter Second Life.

USPTO approved the registration of Aimee Weber, an Avatar, in Int'l Class 042 as "Computer programming services, namely, content creation for virtual worlds and three dimensional platforms."

So what is interesting is that a trademark right created for use in the virtual world satisfies the "use in commerce" requirement under the Lanham Act and is now enforceable outside of the virtual world. A trademark owner in the physical world can also now hunt down the trademark infringers in Second Life. Companies such as Reuters, Reebok, Warner Music etc set up virtual stores in Second Life long ago. With a convertible currency, identifiable losses and often times blatant instances of dilution, proactively protecting trademarks in this virtual world is a real problem.

Links:

Centredaily.com

Virtually Blind - Interview

Virtually Blind - Instances of Trademark Infringement

IP Today

Lexicon on Appeal

Anthony Falzone has appealed the Courts decision to permanently enjoin production of the Lexicon. The Lexicon, a purported reference book, was denied publication rights because it was not a fair use of the Harry Potter novels. That decision was made in September and I wrote about it here. The matter is now on appeal.

Lego: Bent out of Shape on EU ruiling

Lego trademarked its ""studs and tubes" interlocking brick system" in 1999. In 2004 the EU Court cancelled the registration after opposition from Mega Brands, Inc., Lego's competitor in this field.

Lego argued that its "studs" on the blocks were highly distinctive. The EU Court, interpreting the Directive 89/104, stated that its shape in not trademarkable. The EU Directive and the CTMR give a clear ground for invailidating a trademark i.e.:

• if the shape results from the nature of the goods themselves, or
• the shape is necessary to obtain a technical result, or
• the shape gives substantial value to the goods

(See Article 31(e), Directive; Article 7(1)(e), CTMR)

Lego's building blocks have two rows of knobs or "studs" on the top level. The Agency held that these "studs" are "utilitarian" and "not identifiers of source." (See Bloomberg)

Mega Brands, Inc. has similarly stituated knobs on its blocks. Infact, a comparitive image is provided below.

Source: Wikipedia

Mega brands also has blocks the studs in which are rounded. See here.

A previous ruling in Royal Philips Electronics v Remington clarified that a shape which offers a technical solution is not trademarable. A "techinical solution or functional characteristic of a product" cannot protected as a trademark if it stands to undermine competition and public interest. A trademark that has been refused registration under Article 3(1)(e) cannot be registered having later "acquired distinctiveness". This exception is available only to trademarks refused registration on grounds available under Article 3(1)(a)-(d). A protection extended to a technical solution within a product would make it inherently safe from competitive products, and thus go against public interest. The availability of more shapes for that same technical solution is not sufficient ground to overcome invalidity of registration based on Article 3(1)(e). This is because there might only be a few other shapes, ergo - cumbersome process and a wholly unsuitable alternative.

Though Lego has appealed the decision, based on precedent and the Directive, the argument that the Lego's "studs" are "highly distinctive", might face a second rejection.