What is a “trademark use”?  This question comes up in this way: You want to use a trademarked name or brand or logo (not yours).  You want to make commentary about the trademark, or simply reference the trademark in some way.

Trademark protections give their owners the right of exclusive use to the trademark, but only when used “as a trademark”.  If the use of the mark is for any purpose not a “trademark use”, that use does not fall within the exclusive rights of the trademark owner.

The Good and The Ugly – Trademark Use Examples

Some examples illustrate the point:

1. A magazine story features a photograph of a woman wearing a tee-shirt with picture of a Marvel Comics character.  The story is about the woman and her battle with a difficult disease, having nothing to do with the Marvel trademark.  The trademark is clearly incidental to the photo and to the story.

2. A cash-for-gold jewelry dealer in Toronto (featured in a New Yorker profile this past week) promotes his business through television commercials featuring the character “Cashman” dressed in a red cape and pair of blue tights and dollar signs on his chest.  “Cashman” bursts out of telephone booths to frighten desperate Torontonians into parting with their family heirlooms.  The owner of the Superman trademarks felt compelled to ask – nicely at first, not so nicely in the subsequent lawsuit – that “Cashman” stop trading on the Superman goodwill.

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One unintended consequence of the accelerating popularity of HTML5 for mobile app development is an ability to skate past Apple’s App Store restrictions on in-app sales.  So I put this question to Piotr Steininger of Tapangi Consulting:

There’s talk out there about being able to use HTML5 to get around Apple’s App Store ban on charging for in-app purchases.  In other words (I think), somehow HTML5 allows content producers to get around this problem by making apps (and other things) downloadable directly through web browsers.  So … how is it that HTML5 allows getting around this issue?

Some background: Apple announced a policy change earlier this year, specifically in Section 11.14 of its App Store guidelines, Continue reading

In March of this year, the U.S. District Court for the District of Maryland denied the preliminary injunction that the Pennsylvania “Field of Screams” had sought against the Maryland “Field of Screams.” Andrew Mirsky wrote about this case last fall, a trademark infringement action involving a haunted amusement house in Pennsylvania operating under the name “Field of Screams” and a Maryland operation of the same name.

The court’s opinion denying the preliminary injunction can be viewed here.  The preliminary injunction was denied on the grounds that the plaintiff was unable to show that its case was likely to succeed in court – the standard required to obtain a preliminary injunction.   Continue reading

In June of this year, Senator Al Franken (D. Minn.) introduced the “Location Privacy Protection Act of 2011” (S. 1223).  According to the bill summary available on Franken’s website, a 2010 investigation by the Wall Street Journal revealed that 47 of the top 101 mobile applications for Apple iPhones and Google Android phones disclose user location without consent of the user.

According to Franken’s bill summary, current law prevents disclosure of user location during telephone calls without user consent. Currently, no similar legislation protects user location when a user accesses information through a mobile web browser or mobile application. Franken claims that his bill will close loopholes in the Electronic Communications Privacy Act that allow for this distinction.

If S. 1223 passes, companies will be required to obtain permission not only to collect mobile user location information but also to share that information with third parties. Additionally, the bill seeks to put in place measures to prevent stalking through location information.

As of this writing, Franken’s bill has been assigned to the Senate Judiciary Committee and is being cosponsored by Sens. Blumenthal, Coons, Durbin, Menendez, and Sanders.

Original Post (published 9/8/2011)

When was the last time you read a license agreement after installing software or downloading an app on your smartphone? If you’re like most people, the answer is probably never.

According to some estimates, fewer than 8 percent of us actually read the entirety of those agreements, despite rising concerns about digital privacy and data collection. Continue reading

Kate Tummarello is a Research and Social Media Intern with Mirsky & Company and a reporter at Roll Call/Congressional Quarterly.  Follow Kate on Twitter @ktummarello.

Apple’s App Store is full of subscription-based content providers. Whether you’re watching a movie on the Netflix app, reading a book through the Kindle app or streaming a TV show using the Hulu Premium app, you’re probably used to paying for the app and then paying more for the content.

But that’s changing, thanks to Apple’s new policy, which will prohibit developers from requiring users to make a second purchase to access content once they have purchased the app itself.

Apple rumor website MacWorld reported earlier this summer that Apple was planning on this new policy. The article quoted Section 11.14 of Apple’s App Store guidelines:

Apps can read or play approved content (specifically magazines, newspapers, books, audio, music, and video) that is subscribed to or purchased outside of the app, as long as there is no button or external link in the app to purchase the approved content. Apple will not receive any portion of the revenues for approved content that is subscribed to or purchased outside of the app.

Previously, developers could charge one price for the app and then offer more content for a second price within the app. Unlike purchases made through the app store, where Apple receives 30 percent of the profit, profits made from purchases within the app itself would go entirely to the developer. In eliminating the possibility for in-app purchases, Apple is ensuring that it retains its 30 percent.

But developers are looking to find ways around this policy. According to MacWorld, Netflix has found a loophole in instructing users to “visit Netflix.com” without providing a button for users to do so.

Others are turning to the much anticipated HTML5. According to Piotr Steininger, co-founder of Tapangi Consulting [http://tapangi.com/] based in Washington, DC, HTML5 may open floodgates for apps that are accessed through a device’s web browser rather than through an app store.  Or in other words, “Rather than buying an app in the app store you just go to a URL and you’ve got an app to go,” Steininger says. “You load it once on the iPad and download a book locally, and you’re good to go.”

Amazon has already unveiled an HTML5-based Kindle app that works within a device’s browser, including on the iPad. The app synchronizes with a user’s Kindle library, and users can shop for Kindle content within the app. According to many reports, other content providers, including Wal-Mart, are similarly attempting to use HTML5-based apps to avoid the Apple App Store and its rules and fees.

Sector Labs, a California company that makes a smartphone-size video projector, filed a federal trademark registration in 2003 for the name “video pod”.

Apple, Inc. challenged the registration, filing an opposition to Sector Lab’s registration with the U.S. Patent and Trademark Office.  Apple claimed (among other things) that Sector Labs’ “video pod” “is extremely similar to Apple’s [“iPod” trademarks]”, “consists in part of a significant portion of [iPod] and the entirety of POD, which consumers use as an abbreviation to identify and refer to Apple’s iPod mark and products”, and that Video Pod “covers a device that is or will be used to transmit video for entertainment and other purposes” – much like Apple’s iPod.

Apple’s legal position is that Sector Labs registration would cause source confusion, namely a likelihood of confusion among consumers as to the source of the two companies’ products, and trademark dilution.  Or in other words, “video pod” would dilute the value of Apple’s iPod franchise by reducing the exclusive association in the marketplace of “pod” with Apple and its ubiquitous iPod. Continue reading

Kate Tummarello is a Research and Social Media Intern with Mirsky & Company and a reporter at Roll Call/Congressional Quarterly.  Follow Kate on Twitter @ktummarello.  Andrew Mirsky of Mirsky & Company contributed to this post.

Gone are the days of bashing your boss in the breakroom. Now, colleagues gather online to anonymously air their grievances.  A group of disgruntled Demand Media, Inc. employees did just that with their website DemandStudiosSucks.com.  Then Demand Media struck back.

Late last month, attorneys for Demand Media, a content production company whose properties include eHow, LIVESTRONG.com, Cracked.com, typeF.com, Trails.com and GolfLink, sent a letter to DemandStudiosSucks.com asking it to remove content that had been copyrighted by Demand Media.

The media company accused the people behind this censorious website of creating and maintaining “a forum in which users can, and do, post and misuse Demand Media’s trademark, copyrighted material, including confidential and proprietary copy editing tests.”  The letter also referenced “an internal presentation regarding the company’s business plans”, published without permission on DemandStudiosSucks.com.

Immediately, of course, the letter was posted on DemandStudiosSucks.com.

The next day, a user named “Partick O’Doare,” who has posted the majority of the content on the site, published an open letter addressing the claims made by Demand Media’s attorneys.  Although the website removed the content addressed in the letter, O’Doare explained that the site’s creators had not acknowledged any infringement in removing the content.

Instead, those behind the website claimed that their use of the Demand Media content fell under fair use guidelines, specifically protections for commentary and criticism.  “Let’s be honest,” the open letter says, “if ever there was a case of unequivocal fair use, this would be it.”  A statement which should raise flags to anyone who previously felt similarly.

Fair use is a defense to a claim of copyright infringement, but not other claims.  A fair use argument cannot simply succeed on its merits where other legal rights are violated.  Context matters.  So, for example, as seen in some Facebook “suck site” cases, fair use will not protect against a claim of defamation.  Employees who publish company trade secrets and other proprietary information cannot rely on fair use to defend against claims of violations of corporate and employment law.

O’Daire’s letter proudly boasts that the voices behind DemandStudiosSucks.com were fully prepared to defend themselves, citing the fair use cases Lenz v. Universal Music Corp. and Online Policy Group v. Diebold, Inc.

Much has been made lately of tension between Twitter and its outside developers.  The issues stoking the fire are less legal issues than business issues brought to front-burner by two particular factors:

(1) The maturity of Twitter as a development platform, or in the words of Ryan Sarver of Twitter, “In the early days, all the clients except Twitter.com were built out by ecosystem companies, mainly because Twitter was so focused on keeping the lights on.  But we learned that in order for us to really grow, we had to start taking over that core experience.” (quoted in the NY Times, 7/17/11).

(2) A reported Federal Trade Commission inquiry into the relationship by the , which has (in some views) caused Twitter to re-think its liberal open-door policy when it came to permitting outside development on its platform.

An excellent story and accompanying podcast on this subject appeared in the NY Times last week, written by Claire Cain Miller.

Bottom line: Twitter is seeking to control the applications that control access to Twitter, meaning desktop and mobile, and leaving the field open to enterprise applications, usability applications, analysis and similar applications.

Certainly the business reasons seem pretty clear, in that Twitter seeks to control core functionality – and the development of that core functionality – of the mother ship.  Although it is not terribly surprising that that strikes some critics as cynical, see for example here (“Twitter, just be honest: ‘The only way we can figure out how to make money is same ol’ display ads and we need to own the client for that.’”)

There are legal issues here, namely the ability of the platform to restrict access to its API.  As Claire Miller and others have noted, part of the problem for Twitter is that developer expectations may have been artificially inflated.  But there is more.  The FTC hint of antitrust scrutiny may be causing Twitter some heartburn about its historical open-ness.  Some analogy from two unrelated contexts: In trademark law, the concept “use in commerce” requires confirmation of continued public use of a registered trademark every 5 years or so.  In real property law, a property owner’s failure to restrict public access to property – and thus demonstrate its private claim – can, under some circumstances, support a court’s granting a permanent public right of way.

Quoting Rob Diana from Regular Geek, “Twitter also now owns the platform as a whole and must be as reliable as a utility company.  They must provide all of the capabilities that consumers need in the clients.” (emphasis added) A danger for a “public utility” of the information superhighway is creeping expectation of the duties and obligations of public purpose: Loss of commercial freedom, permanent regulatory scrutiny and public stakeholder claims.  It may very well be that Twitter is acting much like New York’s Rockefeller Center, which closes public access to traffic one day a year as a legal “fiction” in order to continue to assert private ownership rights.

Twitter rolled out its new API TOS (“Developer Rules of the Road”) in March of this year.  Rob Diana noted at that time that the announcement may have been – or perhaps should have been – anticlimactic, in that “A basic Twitter client is a terrible idea in today’s ecosystem.”  Wrote Diana:

Unless there is major functionality outside of the existing solutions, a new client is a losing idea. There is a high barrier to entry when we already have third-party clients like Tweetdeck, Seesmic, HootSuite and PeopleBrowser. This does not include some of the other applications that focus on team or brand management. So, by saying not to develop a new client, Twitter has saved us and investors a lot of time and money.

Earlier this month, Dropbox spawned a new kerfuffle in internet-land with changes to its Terms of Service (TOS).

The outrage was fast and furious.  A nice deal of blog and Tumblr and other commentary zeroed in on changes Dropbox announced to its TOS before the 4^th of July holiday, and in particular how this or that provision “won’t hold up in court”.  See for example J. Daniel Sawyer’s commentary here.

Sawyer was referring to language in the TOS for cloud-server services granting ownership rights to Dropbox or other cloud services.

At least I think that’s what he was referring to, because the Dropbox TOS did not actually grant those ownership rights to Dropbox.  Dropbox’ TOS – like similar TOS for SugarSync and Box.net – granted limited use rights to enable Dropbox to actually provide the service.  Here is the offending provision:

… you grant us (and those we work with to provide the Services) worldwide, non-exclusive, royalty-free, sublicenseable rights to use, copy, distribute, prepare derivative works (such as translations or format conversions) of, perform, or publicly display that stuff to the extent we think it necessary for the Service.

To be clear, if Dropbox actually claimed ownership rights to customer files – and actually provided for the same in its TOS – there’s no particular reason such a grant “won’t hold up in court”.   There are certainly cases of unenforceable contracts – contracts that are fraudulently induced or in contravention of public policy, for example – but a fully and clearly disclosed obligation in exchange for a mutual commitment of service is enforceable. Continue reading

A blogger publishing under the name “WTForever21.com” recently got threatened with litigation for trademark infringement by the LA-based clothing retailer Forever 21.

WTForever21.com, a parody site published by Rachel Kane, had prominently disclaimed any affiliation or endorsement by Forever 21.  And as indicated, Kane’s purpose was (some would claim clearly) parody.   Kane was the proud recipient of a cease and desist letter from Forever 21 on April 22 (a copy of which can be found here), which alleged trademark and copyright infringement, unfair competition and trademark dilution.

Without testing the merits of her legal position and, according to several initial reports, not willing to expend the resources to do so, Kane announced that she would pull down her site by June 10th.  Kane then reversed course, and issued a statement last month stating “If the company continues to makes threats that have no basis in law, my attorneys are prepared to vigorously defend me and seek all available legal redress against Forever 21.”  The site is currently live. Continue reading