Headnote of the Day: “Godzilla” is not descriptive

West has a fun, free feature where they pick a headnote and send it out to subscribers.  It’s not always amusing, but today’s was of high quality:

Even if trademark “Godzilla” was hybrid of Japanese words for gorilla and whale, trademark was not merely descriptive; large amount of imagination was required to associate trademark with giant, prehistoric monster, and, thus, mark was strong for purposes of determining whether likelihood of confusion resulted from alleged infringement.

Toho Co., Ltd. v. William Morrow and Co., Inc., 33 F.Supp.2d 1206 (1998)

Gorilla and whale?  I guess that explains why he’s always so angry about having to get out of the ocean.

Sweet, sweet hypocrisy

Honestly, I thought it would take longer for a story like this to surface.  But it didn’t!

Shepard Fairey is the creator of the iconic Obama “Hope” poster. He’s been admired by critics and guerilla artists, and just weeks ago he was the subject of a profile on CBS Sunday Morning. But Pittsburgh graphic designer Larkin Werner has a different perspective. To him, Fairey is the guy who is “picking on a baby.”

The baby in question is Steelerbaby, a blue-eyed kewpie doll clad in a knit black-and-gold uniform. Steelerbaby became an online hit — he boasts more than 2,000 friends on Facebook — after Werner created a Web site for the doll during the NFL playoffs in 2005. The following year, he started designing and selling Steelerbaby merchandise at the online store cafepress.com to satisfy demand for the doll Werner describes as “slightly creepy.”

But early last month, Werner learned that Fairey’s company, Obey Giant Art Inc., sent cafepress.com a cease-and-desist letter, informing the online store that Steelerbaby’s merchandise marked with the word “Obey” was infringing on the artist’s trademark.

(emphasis added; h/t gawker via likelihoodofconfusion)

I know that I claimed in the About Page that I would probably come down as pretty pro-IP in most cases.  The hypocrisy here, though, is just too ridiculous to side with Fairey.  How can anyone take this guy seriously?

To take something useful out of this, though… maybe there’s a way for people like Fairey to create art with no regard for the IP rights of others on one hand, and then to zealously protect their own commercial successes on the other hand without looking like a hypocrite.  Maybe Fairey could have come to an arrangement with a rights-management firm so that they would manage the brand while he stayed at arms-length.  Then Fairey can go out in the marketplace and look like this Lessig-esque “information should be free” activist, while the rights management firm roughed people up in the background.  It’s not perfect, but at least one might have to do some digging to link the two.  At least, more digging then when the business entity is named after your most famous work, and when the trademarks issue in your own name.

(Stay tuned… later, maybe we’ll look at what Fairey has actually registered to see what needs such vigilant protection)

Little Miss Infringer

IP360 reported today about an interesting trademark dispute between the Walt Disney Corporation and company named Thoip.  Thoip holds the right to the popular “Little Miss” series of childrens books.

In 2007, Disney began purchasing officially licensed Little Miss T-shirts featuring characters from the books to be sold in the gift shops at Disneyland, making them one of the few non-Disney items to be sold at the park, according to Thoip’s suit.

Shortly afterwards, Disney merchandising subsidiaries introduced their own line of shirts that feature Disney characters and very similar slogans.

So what rights are being infringed?  According to Counterfeit Chic, as of the filing of the lawsuit, only MR MEN LITTLE MISS was a registered mark in the US.  However, it appears that Thoip is alleging that Disney is infringing the family of marks, along with various state common law infringement claims.  Disney recently answered, claiming that the words “Little Miss” are generic.

An interesting case.  Maybe it depends on how old you are, but I think Thoip probably has a pretty good argument that the “Little Miss” phrase is associated with their products: I know that I, for one, knew exactly what the article was about just by seeing the phrase “Little Miss” in the headline.  I don’t know whether that actually supports their claims, but it nonetheless makes me want to root for them.

Law firm trademarks – extra important to protect?

Recently, Jones Day filed a complaint against real estate web site Blockshopper.com, alleging (among other things) that the use of deep links to attorney bio pages on the Jones Day web site constituted trademark infringement.  Blockshopper.com chose to accept a settlement in which they simply were required to change the way that they link to Jones Day’s web site.

Blockshopper was probably in a bad position here; not only were they using the Jones Day marks for deep linking (which might have been OK), but they were also allegedly republishing content from the Jones Day site (including attorney bio pictures, which is most likely not OK).

I don’t have a lot to say about whether Blockshopper’s actions would have infringed any rights to the Jones Day marks, but it did lead me to wonder why we don’t hear about law firms defending their trademarks more often?  Here’s a quick thought experiment / question for the masses.

Law firms (in WA, anyway) generally have an ethical duty to not conduct business along with nonlawyers, to prevent the unlicensed practice of law by nonlawyers and to prevent client confusion.

In trademark infringement actions, the rights-holder may allege that the unauthorized use of the mark leads to a confusion of source.  That is, a consumer may think that the product produced by the infringer is actually produced by the rights holder.

If such confusion was taking place, doesn’t that implicate the law firm’s ethical duties?  That is, if a consumer believes that an infringer is actually a law firm (or authorized by the law firm to conduct business under its marks), then don’t the same ethical considerations relating to not sharing office space and store fronts with nonlawyers apply?  Doesn’t the infringement make it possible that consumers could be confused into accepting legal advice from unlicensed individuals?

Admittedly, this is a somewhat farfetched idea.  However, if true, it seems like law firms that hold trademarks have an extra incentive to aggressively police infringement of those marks.