Concurring Opinions » trademark

On the Colloquy: The Credit Crisis, Refusal-to-Deal, Procreation & the Constitution, and Open Records vs. Death-Related Privacy Rights

Northwestern University Law Review — Sun, 05 Sep 2010 17:15:08 +0000

This summer started off with a three part series from Professor Olufunmilayo B. Arewa looking at the credit crisis and possible changes that would focus on averting future market failures, rather than continuing to create regulations that only address past ones. Part I of Prof. Arewa’s looks at the failure of risk management within the financial industry. Part II analyzes the regulatory failures that contributed to the credit crisis as well as potential reforms. Part III concludes by addressing recent legislation and whether it will actually help solve these very real problems.

Next, Professors Alan Devlin and Michael Jacobs take on an issue at the “heart of a highly divisive, international debate over the proper application of antitrust laws” – what should be done when a dominant firm refuses to share its intellectual property, even at monopoly prices.

Professor Carter Dillard then discussed the circumstances in which it may be morally permissible, and possibly even legally permissible, for a state to intervene and prohibit procreation.

Rounding out the summer was Professor Clay Calvert’s article looking at journalists’ use of open record laws and death-related privacy rights. Calvert questions whether journalists have a responsibility beyond simply reporting dying words and graphic images. He concludes that, at the very least, journalists should listen to the impact their reporting has on surviving family members.

Another Way to Understand Twilight and Authors

Deven Desai — Thu, 22 Oct 2009 13:46:12 +0000

Apparently Stephenie Meyer, the author of the Twilight series, started writing a version of the series from a different character’s (Edward’s) point of view and the early, incomplete draft was leaked onto the Internet. Jacqui Lipton’s post about Stephenie Meyer’s “reaction to the unauthorized release” of her partial draft reveals another way to think about what is going on here. I followed the link to Ms. Meyer’s post about the problem. I was quite surprised to see that Ms. Meyer has posted the draft on her web site while also expressing her view about reading the draft:

I’d rather my fans not read this version of Midnight Sun. It was only an incomplete draft; the writing is messy and flawed and full of mistakes. But how do I comment on this violation without driving more people to look for the illegal posting? It has taken me a while to decide how and if I could respond. But to end the confusion, I’ve decided to make the draft available here (at the end of this post). This way, my readers don’t have to feel they have to make a sacrifice to stay honest. I hope this fragment gives you further insight into Edward’s head and adds a new dimension to the Twilight story. That’s what inspired me to write it in the first place.

Why post the draft? One could simply ask readers not to read the draft floating around the Internet. Note that Ms. Meyer explicitly does not want to drive people to the unauthorized work. To me this move seems like a way to re-capture the attention that might have gone the sites with the download. In that sense, she may be using her reputation and attention power to undercut the benefits that may flow from unauthorized distribution. Of course there may be sales problems here as some may have been willing to pay even for the rough draft. But that idea probably does not cut off the usual claim that leaking will harm the final market. I would be surprised if those who read the early manuscript will not be more than happy to buy the final draft. In other words, the law often claims that the harm in such leaking or copying is that the unauthorized version is a substitute for the full work which I don’t think is the case.

To be clear, I think Ms. Meyer doesn’t want people to read the draft. But faced with the draft being out there, her response is simply a wise strategy. She tells her fans 1) Don’t read it 2) If you have to read it, read it from my site, 3) Reading from my site is a way to stay “honest” and not “sacrifice” (I am not sure what is being sacrificed but I think it is integrity or loyalty to the author) which means not fueling those who are taking value away from her.

There is an extra point here. When Ms. Meyer says she can’t continue with the book, she is giving honest information to her fans: certain acts (i.e., unauthorized copying and distribution of her work) upset her. In fact, they upset her enough that she will not finish the work in question. I don’t think this point is a threat. And, regardless of motivation, the move tells fans how she wants to interact with them. Insofar as there is relationship with her fans, Ms. Meyer has communicated what she expects. A Rebecca Tushnet pointed out in the comments to Jacqui’s post, there are already “over 100,000 Twilight stories–some of them from Edward’s perspective–available at fanfiction.net. How Ms. Meyer feels about those stories may differ from how she feels about her draft being distributed without permission. So as Jacqui points out this one is personal, but I think it may also be professionally wise.

P.S. Those interested in more on how reputation and attention will be a key asset in an online world may want to read my essay Individual Branding: How the Rise of Individual Creation and Distribution of Cultural Products Confuses the Intellectual Property System.

Tiny (Or Rather Shiny?) Bubbles: Apple Trademarks Dialogue Bubbles?

Deven Desai — Thu, 03 Sep 2009 15:53:12 +0000

As Don Ho (and others) have sung:

Tiny bubbles
In the wine
Make me feel happy
Ah, they make me feel fine

Those tiny bubbles
Make me warm all over
With a feeling that I’m gonna
Love you till the end of time

The little charming talk bubbles all over the Internet communications have a similar warm effect. They remind me of comic strips and comic books and of adults droning “wa wawa waaa” in Peanuts cartoons on T.V. Ah no more. According to TechCrunch, when a developer wondered why his App had not been approved he was told “the bubbles in its chat rooms are too shiny, and Apple has trademarked that bubbly design.” Wow. Do comic strip and book folks know that Apple is that clever? The wondrous shiny dialogue bubble means Apple! Do the green bubbles qualify too? Yet again I am left wondering what’s a cubit and contemplating a drink with tiny, shiny bubbles.

So I leave you with Don Ho and Tiny Bubbles.

Tiny Bubbles – Don HO

Image Protection at Universities

Deven Desai — Mon, 03 Aug 2009 19:00:28 +0000

The Chronicle of Higher Education (subscription required so no link) notes that Hollywood tends to ask universities and colleges for permission before they set their films or television shows at a particular campus. So Felicity attends University of New York instead of NYU, and Legally Blonde is set at Harvard instead of, wait for it … University of Chicago? Odd but apparently true (my guess is that this turn of events helped the film. No offense to Chicago but as a matter of pop culture Harvard probably takes the prize). One possible culprit according to the article is our friend US News and World Report and the ranking game. Since the report started ranking undergraduate institutions films reference real schools, rather than random State U, 29 percent of the time as opposed to 19 percent before the US News games began. The claim is that references might seem to be endorsements. So Stanford only allows “aspirational” portrayals; read here goody-goody overachievers. The article claims that Stealing Harvard was originally Stealing Stanford, but the farm rejected that idea “Since Stanford is need blind” and the story of needing to steal to go to the school would be unreal (as many fictional stories are). In contrast, Harvard seems to realize that a fictional story is just that and seems more generous about the names and so on. Note that most schools are more restrictive about shooting on campus but may embrace the idea for the fees they can charge.

All well and good, but whether there really is a trademark claim as the article suggests and the schools seem to think (note that Dawson’s Creek also wished to avoid conflict and invented Worthington University as a generic Ivy although ironically shot at Duke) is troubling. The expansive notion of association seems to fuel this perspective. But as Sandy Rierson and I argue in the Confronting the Genericisim Conundrum uses such as these are expressive and in that sense irrelevant to the market transaction trademark is supposed to be about. On a similar wavelength Mark Lemley and Mark McKenna seem to be arguing that other uses of trademarks are not relevant to trademark analysis (To be clear, I have yet to read the paper, and it may be that this sort of use would be actionable according to Mark and Mark (or dare I say it? Dare. Dare. Mark y Mark?).

In short, if one considers the feedback loop in play here, the more expressive uses that are made, the less likely people will think that Standford endorsed a portrayal. In addition, what about more critical commentary that could be set a university? Setting up a system of permissions is dangerous. Last, maybe Harvard has it correct: people are not that stupid. They can tell the difference between a fictional story and a claim to reality. Can’t they?

Image Source: Wikicommons
By: Yukihiro Matsuda from Kyoto (and Osaka), Japan

Creative Commons Attribution 2.0 License

Size Matters or What’s an IMAX?: Thoughts on Branding and Meaning

Deven Desai — Sat, 23 May 2009 21:28:46 +0000

The recent flap over whether an IMAX screen is really an IMAX screen shows how fragile a brand can be. As some of you may have heard, actor Aziz Ansari went to see Star Trek at an IMAX theater in Burbank and paid a five dollar premium to do so. But when Mr. Ansari went into the theater, he was not in a wonderful, cavernous theater. Instead he was watching the film on a screen not much larger than an ordinary screen. Ansari blogged about his displeasure and the news spread. At first IMAX played the corporate head-in-the-sand/obfuscate game with statements on Wired asserting that IMAX does not mean 72 foot screen and that the new theaters may be smaller but they still deliver the IMAX experience. And there’s the problem. IMAX thinks it knows what the experience is and means to its consumers (or it certainly wants to try and tell consumers what it means). So it appeared that IMAX fell into the control-the-meaning of the mark trap, which Sandra Rierson and I have argued is futile and causes serious problems for trademark law. Yet there seems to be a useful lesson and happy ending to this trademark story.

IMAX is expanding rapidly and becoming a big player in Hollywood’s attempt to keep the theater experience alive. So IMAX is partnering with theaters to install IMAX branded theaters at mulitplexes. The strategy has worked to expand the company’s reach. Now that it is summertime, however, the strategy is being tested, for summertime means tent pole movies, and many more people wanting that summer movie thrill. Indeed, ever since television, Hollywood has tried to offer viewers an experience that they cannot have at home: bigger screens, better sound, special effects that make your head explode. Technology and trademarks have traveled along with that quest. Panavision, Cinemascope, Dolby, THX, and DTS, signified a way of filming and/or presenting a film in a theater. They became trademarks as well. Recently, with the growth of home theaters Hollywood has been looking for new ways to make the public theater experience worthwhile. IMAX seems to be the latest way to indicate a special experience that is often lacking in cinema houses today.

I certainly miss the movie palaces of L.A. For me, 70mm screens and sound that may break up kidney stones are worth the eleven or twelve dollars a ticket can cost in a major city. Sadly, movie palaces gave way to multiplexes, and so one rarely can find that all encompassing, immersion a single, massive screen offers. IMAX has started to fill this gap. Yet, in my opinion, the company is diluting its brand by offering what many would call non-IMAX experiences under the name IMAX.

For me, and I think many others too, IMAX began as a way to see amazing nature films on a massive screen with excellent sound. Part of that experience included education about filming on IMAX equipment and screening films in theaters that could handle films shot with that equipment. So when studios started showing studio films at IMAX theaters, I was elated. Now the large screen, excellent picture, amazing sound experience was back. And I am willing to pay three to five dollars more to see a film created with that technology in such a venue. So IMAX came to mean just that: a film shot with certain equipment and shown in a certain way.

Nonetheless, in pursuing its goal of rapid expansion, IMAX was willing to buy its view or rationalization that the experience and image it built of a 72 foot screen and sound experience was essentially the same as a smaller screen because of “‘perceived screen size,’ which involves the relationship of the viewer to the screen.” Enter the Net. Ansari’s rant, Wired’s coverage, and the Los Angeles Times’ blog on the subject, are just a few examples of how much IMAX missed the point of the very image it built. One group even put a quick Google Map called IMAX or LIEMAX to show “known ‘real/fake’ IMAX screens, based on screen size and aspect ratio.”

To IMAX’s credit, the approach seems to be changing. Although the CEO appears to be sticking to the claim that one must appreciate that the ratio of screen to distance matters, he has also said “I want to be clear, … We’re going to do something about disclosing information. Period. The market research survey is really just to help figure out what to do, not if we should do something. We are going to give people more information — it’s just a matter of how and where.”

If IMAX follows through and makes sure customers know what they are getting before they buy the ticket, I, for one, will be a loyal customer. Regardless, the companies should realize that forcing views on customers may be possible when one starts a brand but once that meaning is out there, the consumer can become quite upset at deviations from expected results. Luckily, today’s world of rapid feedback presents the opportunity for a company to correct its course rather quickly. Hopefully, they will do so.

IMAGE: London IMAX
License: Public Domain

The Watchmakers’ Court and Related Curiosities

Michael Madison — Fri, 22 May 2009 13:15:35 +0000

This recent New Yorker piece about “Baselworld,” the annual watchmakers’ confab in Switzerland (Patricia Marx, “Face Value,” May 25, 2009) included a throwaway line that I found fascinating. Baselworld is so large that it has its own police force and “a judiciary to settle trademark disputes.” Whoa. Huh?

True enough, Baselworld includes a limited-time, limited-purpose private arbitration forum, translated in English as “the Panel.” Here’s the Baselworld page about “the Panel”: “The Panel is an arbitration board within the show that deals with complaints about violations of intellectual property rights during the BASELWORLD Watch and Jewellery Show. The complaints procedure is provisional in nature. It grants the successful applicant temporary legal protection within 24 hours and ensures that intellectual property rights are respected and that peace is maintained at the show.”

Exhibitors are required to consent to the “jurisdiction” of the Panel. Its powers cover the full range of IP claims and related rights (trademark, copyright, patent, unfair competition), but procedures are relatively informal, and sanctions are limited to removal of the offending item(s), and perhaps closure of the offending exhibition pavilion, during Baselworld itself. The online summary notes, “If the legal dispute is continued before an ordinary court, the decisions of the Panel may be used as expert opinions if need be.” I don’t know what that means.

Justifications for special purpose tribunals like this one often rely on blends of private interest (my paraphrase: “the participants consented to the panel’s authority”) and public rule (again: “the panel is empowered to adjudicate claims regarding patent rights”). I wonder whether we have a persuasive general account of these hybrids. (Some of the “New Governance” work in the US, and its European cousin, focuses in part on this question, but only in part.) They’re increasingly common, and in some areas, quite important. For domain names, there is the Uniform Domain Name Dispute Resolution Policy (UDRP). For screenwriters, there is the arbitration system administered by the Writers Guild of America. Major League Baseball players submit to “baseball arbitration.” (Since “baseball arbitration” has become an ADR term of art, linguists will note the redundancy. What kind of arbitration would baseball players submit to – other than baseball arbitration?) Not suprisingly, with fantasy baseball comes fantasy baseball arbitration. The sporting world also brought us a special purpose tribunal at the edge of fantasy, the “Eagles Court” that operated at the old Veterans Stadium in Philly to deal with fans who had an uneasy relationship with reality.

Of course the “Eagles Court” was a real court, with a real judge. It just happened to be located in a stadium, not in a courthouse. Baselworld, the UDRP, the WGA procedures, and “baseball arbitration” are forms of private arbitration. So to some folks, the interesting questions don’t have to do with the public/private blends that generate the authority of special purpose tribunals (those questions might be answered easily). Instead, the interesting questions have to do with institutional design. How “closed” does the relevant community need to be (if it needs to be “closed” at all)? Relatedly but distinctly, what kind of assent to the authority needs to be present? How transparent and fair do relevant procedures need to be, and whose standards of transparency and fairness apply? What is the “right” relationship between the rulings of the special-purpose tribunal and traditional public authority?

Curiously, the one question that the Panel might answer authoritatively at a watchmakers’ convention appears *not* to be part of its mandate.

There is no Baselworld procedure for settling disputes over what time it is.

Where Trademarked “Eagles” Dare

Michael Madison — Thu, 21 May 2009 12:49:12 +0000

The world is again safe for trademark law, now that the National Rifle Association has put an end to efforts at the University of Wisconsin-La Crosse to name the university’s eagle mascot “Eddie.”

For 20 years, the eagle has been the mascot of athletic teams at UW-L. Only earlier this month, however, did students at the campus get around to voting on a name for the bird, and the name they chose was “Eddie.” Unfortunately, “Eddie” is also the trademarked name of the mascot of the NRA’s “Eddie Eagle GunSafe Program,” which is aimed at students in pre-K through the third grade. Apparently claiming that marketplace confusion would likely result from use of “Eddie the Eagle” in a post-secondary educational setting, when benchmarked against the elementary educational programming offered by the NRA, the NRA forced the university to stand down.

Undeterred by possible claims of intellectual property rights in alternative names, the students re-voted and named their eagle “Colbert.” Apparently, neither the actor nor the character objects to the use of a name that is likely protected by trademark law and right of privacy and/or publicity law, or both — despite the obvious and ubiquitous association of “Colbert” with eagles. This seems to put Stephen Colbert squarely at odds with the National Rifle Association, at least when it comes to symbolic representations of birds of prey.

There is no word on the matter of the validity of the NRA’s mark from the original Eddie the Eagle – Eddie Edwards, former ski jumping champion of Great Britain and world-famous competitor in the Calgary Olympics, who taught all of us important life lessons.