Hubris and Trademark Law or Yet Another Case of What Were They Thinking?

Some day someone is going to explain how organizations can become so blinded by their particular view of the world that they undertake a foolish act. But worse, when everyone else can see how foolish the organization has been, when the act could be minimized by an apology, the organization, overflowing with pride and arrogance makes matters far worse by undertaking more foolish acts.

And so it is with the Jones Day/BlockShopper trademark case. Having tortured trademark law doctrine to force a Chicago web site developer to stop disclosing real estate information involving their associates, Jones Day found themselves drowning in bad publicity. Not only that but the defendant got some high profile legal help from the Electronic Frontier Foundation, a well known public interest organization.

So now have cooler heads prevailed? Of course not. Jones Day has filed a motion seeking to prevent the EFF from filing its amicus brief. Generating yet more bad publicity and making Jones Day seem ever more like a bully.

Once again I will go way out on a limb. Jones Day will lose. And it won't matter how elegant their papers. Or how much manpower they throw at this matter. Because Jones Day has lost the ability to see beyond their own view of the world.

Serena Williams Can Practice Trademark Law at Jones Day

" I think if you have the opportunity to bully your opponent then you had better take that chance"
Serena Williams- tennis player

Reminds me of the lawyers at Jones Day. As widely reported, Jones Day has filed a lawsuit against the owner of the website Blockshopper.com.
Why you ask? Because he had the temerity to report on the home purchases of two Jones Day lawyers. Did Jones Day object to the disclosure of private information? No. Did they claim a violation of copyright law? No.
Jones Day claims that by using the term jones day to identify the employer of each lawyer Blockshpper.com is creating confusion and diluting the value of the term Jones Day.

I have commented before on how willing some law firms are to distort trademark doctrine to bully others on behalf of their clients. So I guess I should not be surprised that some lawyers would react the same way when their own activities were disclosed.
Perhaps the lawyers at Jones Day could visit their own website. And read about their foundational values. That begin with integrity and personal accountability.

It's Not About the Brand: The Trouble With Republicans Part 2

Leadership is not merely a matter of image management. It's not simply a matter of choosing personality instead of policy. It's not only a matter of asking- not so subtly- when in doubt WE are more like you than they are. All strands of the McSame campaign.
The mistake that Republicans make, over and over again, is to attack the wrong problem. Then the entire country gets bogged down in the right way or wrong way to solve a second order problem. While the most serious and intractable problems fester, grow ever more serious and are ignored.

Terrorism? Big problem. But Iraq is not the place to fight terrorism.

Health care? Big problem. But the real problem is Medicaid not Social Security.


Energy?
Big problem. But we can drill everywhere in America and we will still be dependent on foreign oil.

Pork barrel spending? An 18 billion dollar problem. In a budget measured in trillions of dollars.

Why the systematic missing of the mark? Because deep in the hearts of many Americans- most of them die hard Republicans- is the notion the the American Way of Life=AWOL- is our birthright. A fact that the world must accept.
OK- we will drive a flexfuel Suburban. OK- we might send a few troops to Afghanistan. OK let's form a bipartisan commission to study all the real hard problems. But Russia, China, India, Vietnam, Japan, Venezuela and all you other second rate countries. We get first dibs on all the good stuff. And don't you forget it.

Perhaps we might want to rethink our misplaced feelgood mindset.

Our Brand is Tarnished: The Trouble With Republicans Part 1

Only in America would the buzzwords of marketing be unselfconsciously injected into political discourse. And so we hear, all too often, about how the Republican brand is tarnished. As if a bad batch of hair coloring had caused a scalp infection, forcing a product recall. And now management was faced with a PR campaign to rebuild the brand.
But the exercise of government is much more than the maintenance of brand quality. And the consequences that flow from the mismanagement of government are far more long lasting than the discomfort of a scalp infection.
By now the list is all too familiar: record surplus to record deficits, historically low unemployment to 6 per cent unemployment, millions of jobs created to 10's of millions now lost, no WMD, a tragically mismanaged war, Katrina, unprecedented world leadership to unprecedented world hatred. And underneath it all a mean spirited religious fundamentalism every bit as zealous as that of a Mullah.
And the Republican solution? Let's all rally around McSame. If we yell loud enough and long enough perhaps we can mesmerize independent Americans into thinking that a calculated political move represents reality. Or, to use marketing vernacular, let's reposition our brand. Since sales are declining because we have promoted experience, we must tout a different set of attributes- heah, how about change? OK we'll run it up the flagpole.
When people ask me " What kind of lawyer are you? " I have often replied" I preserve the world of designer jeans, handbags, perfume and shoes. " I guess now I should add Presidential candidates.

NO THANKS TO THE FREE FIVE DAY TRADEMARKING COURSE

I've been practicing trademark law for a long time. And, at times, it can be frustrating to convince someone that they should consider employing my services. More than once I have had to tactfully resist saying " I told you so" when a client went forth without advice and got into trademark trouble.

But I would never dream of making the claims set forth in an article currently being distributed widely on the net. WHAT IS A TRADEMARK ATTORNEY, dated September 3, 2008 makes some claims that leave me shaking my head. After a typical, slightly self serving description of why businesses need a lawyer and sketching the process for choosing and registering a trademark the author then makes some startling statements.

A business which has no registered trademarks risks losing their clients and their respect. Anyone could use their trademark, making everybody confused. If the business would have a registered trademark the owners could sue anyone trying to copy it or using it on their products.


Put simply: there is no legal need to federally register a trademark in the United States. And federally registering a trademark most certainly will NOT give one the absolute right to sue anyone trying to copy it or use it on their products.

When having an attorney you can be safe in any situation and legal issues will not be a problem.

Oh how I wish it were so. The best attorney in the world cannot guarantee your trademark safety. The best attorney in the world cannot tell you that legal issues will not be a problem. Ask eBay. Ask Google. Ask Microsoft. Ask Dell.

The article contains a link to a site promoting a FREE five day course in trademarking.

I firmly believe that the new rules of rendering professional services mean that lawyers must give away the basics. But I now realize that a much older rule of the marketplace still applies: caveat emptor baby!!

I Don\'t Want You As A Client...

I want us to be partners. As your partner I can help you solve certain kinds of problems. If you need a battle-hardened ally to help you understand the softer side of intellectual property or other business law issues then we should sit down (literally or metaphorically) and share our thoughts.

Need help protecting your brands? Are you about to launch a new software product? Want to know how much intangible assets are worth?

Worried about your corporate identity? Getting ripped off on the Web? Considering a tax deduction for your technology or your brands?

It has been my privilege to answer questions like these for the last twenty-five years.

I encourage you to read my manifesto. At a glance it says a lot about who I am and what you can expect when we work together.

 

Posted using ShareThis

THE TRADEMARK TROLL IS SMALL ENOUGH TO SAY: TIFFANY I TOLD YOU SO

In November of last year I predicted that Tiffany would lose its lawsuit against eBay. And more recently, when eBay lost a similar case in France, I again stated that American courts would not allow old commerce to stand in the way of new commerce.

Now a federal district judge in the Second Circuit has ruled in favor of eBay. In a nutshell the judge concluded that eBay was not to be held liable for its general knowledge of counterfeit Tiffany jewelry being sold on its auction website. Taking action against specific sellers for specific goods after being put on notice by a Tiffany was sufficient. The judge also rejected Tiffany's claim that any eBay seller of more than 5 Tiffany branded items was presumably selling counterfeit goods.

As has already been noted this case stands in contrast to the recent French court decision that obligated eBay to determine the validity of all goods sold on its site and prohibited eBay from even selling genuine goods if such goods were being resold against the wishes of the brand owner-and its established channels of distribution.

Undoubtedly Tiffany will appeal this US decision. And undoubtedly eBay will appeal the French court's decision. If so, let me make a further prediction: a European Union court will overturn much of the French court decision and side with eBay. And the Second Circuit Court of Appeals will also largely affirm the lower court decision.

IT'S GREAT TO KNOW THAT SOMEONE PAYS ATTENTION TO THE TRADEMARK TROLL

In response to my negative post about the recent French Court's decision to penalize eBay for the sale of counterfeit and genuine goods one reader took issue with my comments. He challenged my comment that eBay was making real efforts to stop the sale of counterfeit goods. He reminded me that eBay makes a profit on the sale of the counterfeit goods. And he suggested that I was referring to an earlier decision involving Yahoo! when I referred to already existing limits on the sale of Nazi goods.
Since the issue of eBay's business model is so important I am responding to this reader. But because other facts have come to my attention I will also use this occasion to criticize eBay.

How much does eBay really try to stop counterfeiters? They spend over $20 million dollars each year finding and removing bogus goods. Over 2,000 employees are involved in ferreting out and removing improper goods. On a personal note I was part of a trademark enforcement team that worked with eBay to stop the sale of bogus goods. I always found them to be incredibly cooperative. In fact there were times when I wondered if eBay was almost too willing to side with a brand owner against a vendor.
As is often the case when rights collide, the real question is who must bear the largest share of the risk? In the early days of any new economic engine- whether it be an industrial engine or a post industrial engine- those fueling the engine cannot bear the risk- otherwise the economic engine will sputter and die.
Some estimate that over 60 billion dollars of goods crossed the Ebay platforms last year. If every brand owner holds eBay to the standards set by the French court one can ask: how does their business model survive? Put differently: do we want to preserve a marketplace with limitless choice, lowest market prices, essentially driven by consumers but with a certain degree of risk? Or do we want a marketplace controlled by manufacturers, with limited choice, price controls, very high profit margins and lower risk?
Most of the world has already cast its vote. And the French have lost. Note that the European Union is considering regulations to promote e-commerce in response to restrictive national trade practices.
Yes eBay makes a profit on the sale of counterfeit goods. But I am certain that they would gladly turn over all such profits to brand owners who could demonstrate that such sales were improper.
It is important to remember that the problem of counterfeit goods did not begin with eBay-it is a problem that has plagued luxury goods makers- because their own business model is so vulnerable.
As for the reference to Yahoo! The reader is half right. I was thinking of the Yahoo! decision involving Nazi goods. But it turns out that eBay has apparently self censored itself in response to that decision.
Now then to my criticism of eBay. Ebay owns PayPal, an online payment platform that makes paying for goods won at auction easy and fast. For the consumer. But eBay charges vendors a fee to use PayPal. So vendors can choose to offer PayPal or use Visa, MasterCard etc. Except in Australia. Apparently eBay is attempting to force all vendors in Australia to ONLY use PayPal as the means to pay for goods. Sounds like eBay is trying to create the market in Australia that they are complaining about in France.