Are you kidding me? The law, government, and politics.

Hail to the Redskins!

The U.S. Court of Appeals for the District of Columbia Circuit has given the Washington Redskins something they couldn’t seem to get on their own lately: a meaningful victory. In Pro Football, Inc. v. Harjo, et al., No. 03-7162 (decided May 15, 2009), the appellate court affirmed a decision of the U.S. District Court for the District of Columbia that, on remand, reassessed its analysis under the doctrine of laches. The district court found that, because the plaintiffs brought the suit 8 years later than they could have, the loss of evidence due to the death of the former Redskins president, Edward Bennett, and the economic prejudice that would be suffered due to the delay was too much to overcome. The appellate court, reviewing under the standard of abuse of discretion, refused to overrule the judgment of the district court.

EDIT September 27, 2009: In response to some comments I received, here is some additional information. You can find the last district court decision here. (The district court is where the trial occurs, and almost all the fact finding is done.) Most criticisms of the opinion were made by people refusing to read the 10-page appellate court case, so I doubt those same critics will be willing to read the 84-page district court opinion. The best I can do, though, is point out that the district court found "substantial evidence" that the term "Redskin(s)" had lost its insulting meaning no less than 60 years ago, even among American Indians. It is clear that this archaic meaning (which, by the way, was most likely created by an American Indian), was resurrected in order for the plaintiffs to get their 15 minutes of fame. Moreover, though not discussed in the case at length, the owner at the time of the mark's registration went out of his way to visit with American Indian leaders before registering the mark, and those leaders were appreciative of how the team had improved the image of American Indians through the use of the term "Redskin(s)" and their various logos.

Not only do the plaintiffs in this case have terribly unclean hands, but they have done a tremendous disservice to the cause they claim to represent. I guess that's not bad for them considering they get to be on television and radio.

BTW, the Supreme Court has granted the Plaintiff's appeal.

Full disclosure: I'm a lifelong Washington Redskins fan, but I have zealously defended the use of Orangemen (hate Syracuse), Redmen (hate St. John's), and Fighting Irish (I'm 1/4 Irish, and find it interesting that they usually receive no attention in this discussion).

Posted by rbodine at 02:05 PM | Permalink | Comments (0) | TrackBacks (0)

The United States Court of Appeals for the Fourth Circuit affirmed the grant of summary judgment by the US District Court for the Eastern District of Virginia, holding that there was no likelihood of confusion as a matter of law between the Defendant's trademark, LEFT CENTER RIGHT, and the Plaintiff's trademark, LCR, both with respect to dice games sharing identical rules.

In George & Co., LLC v. Imagination Entm't Ltd., No. 08-1921 (July 27, 2009), Plaintiff George sued Defendant Imagination for infringement of George's trademarks, LEFT CENTER RIGHT and LCR. The district court granted summary judgment to the Defendant, finding that -- even if the Plaintiff's complaint was assumed to be completely accurate in its account of the facts -- the Plaintiff would still lose, so no trial was necessary.

The Court of Appeals affirmed (that is, upheld or validated the district court decision), going through each of the nine factors used to determine whether there is a likelihood of confusion between the Plaintiff's and Defendant's marks. Those factors are: 1.) The strength or distinctiveness of the plaintiff's mark as actually used in the marketplace; 2.) the similarity of the two marks to consumers; 3.) the similarity of the goods and services that the marks identify; 4.) the similarity of the facilities used by the market holders; 5.) the similarity of advertising used by the market holders; 6.) the Defendant's intent; 7.) actual confusion; 8.) the quality of the Defendant's product; and 9.) the sophistication of the consuming public.

Although the Court of Appeals recognized that there were some factors in Plaintiff's favor, it held that the most significant factor, actual confusion (#7), weighed heavily against the Plaintiff, because the Plaintiff sells about 500,000 gamers per year yet provided only two instances of actual customer confusion. Combined with a mark the Court of Appeals considered weak (#1) and disimilar to the Defendant's mark (#2), and without any evidence of bad intent by the Defendant (#6), the Court of Appeals held there was no likelihood of confusion, and so there was no trademark infringement.

Finally, the Court of Appeals held that George had abandoned his trademark for LEFT CENTER RIGHT in 1992, having used only LCR in connection with his dice game, so any claim for infringement of LEFT CENTER RIGHT must fail.

What was most interesting about this case is that the US Patent and Trademark Office granted the trademark, apparently on the grounds that the mark was "suggestive," which is stronger than a mark that is merely "descriptive."*** The district court also found that the mark was suggestive, and the Defendant conceded that the mark was suggestive. The Court of Appeals considered these positions questionable. The game required a player to move chips to the left, center, or right, depending on the roll of the dice, so the Court of Appeals "harbor[ed] doubt" that the mark was more than merely descriptive. Although the Court of Appeals was required to accept the finding of the district court that the mark was suggestive, it still found a way to hold the mark to be weak, and it chose to focus on other factors as being more significant.

The lesson: If the Court doesn't like what happened before, and it can't use direct means to reach its desired conclusion, it will always find a way. Sounds like an argument for legal realism to me.

*** Whereas a "descriptive" mark directly provides information to the purchaser of a product or service of what the mark represents, a suggestive mark requires that that the purchaser have to use some imagination to connect the mark with the goods, so a suggestive mark is considered "stronger" (factor #1). For example, 5 minute glue is descriptive of a glue that sets in 5 minutes, but Orange Crush is suggestive, not directly indicating that it applies to a carbonated beverage, but indirectly relevant because it claims to have a strong, orange flavor.

Posted by rbodine at 06:25 PM | Permalink | Comments (0) | TrackBacks (0)

The United States Court of Appeals for the Eleventh Circuit recently held that when you are found liable for infringement (essentially, theft) of a trademark or service mark and you hijack someone's identical domain name (cyberpiracy), there are two separate wrongs you've committed, and you'll pay for both.

In St. Luke's Cataract & Laser Inst., P.A. v. Sanderson, No. 08-11848 (July 9, 2009), Defendant Sanderson, an eye surgeon formerly employed by Plaintiff St. Luke's, had the registration information for two domain names changed to himself after leaving. Sanderson was found liable for both taking the domain names and for infringing the service mark, and St. Luke's was awarded damages (i.e., payment for harm) for both. Sanderson claimed that the two awards for damages were duplicate and, therefore, inappropriate.

The Court of Appeals disagreed.

First, the text of the Anti-Cybersquatting Protection Act ("ACPA"), 15 U.S.C. Sec. 1125(d)(3), states that any damages awarded under the ACPA shall be in addition to any other appropriate damages awarded in the case, and a claim of service mark infringement under the Lanham Act, 15 U.S.C. Sec. 1125(a), was appropriate in this case. So, even if the two damages awards are duplicative, the ACPA allows for both to be awarded. Second, however, these aren't duplicate awards. The key difference is that a case for cyberpiracy requires a showing of a "bad faith intent to profit" from a protected domain name, and so the award for damages served to punish Dr. Sanderson for his conduct in order to deter future violations of the ACPA by him. On the other hand, the award for damages under the Lanham Act was intended to compensate St. Luke's directly for its injuries and losses (for example, loss of business and profit) due to the service mark infringement.

The Court of Appeals added that this distinction between deterrence and direct compensation is consistent with how the Copyright Act (17 U.S.C. Sec. 504(c)(1)-(2)), a similarly worded statute, is interpreted, and as a result, other Federal Courts of Appeal have reached the same conclusion.

The lesson: If you steal the logo for "laserspecialist" and the domain laserspecialist.com, you'll pay for both.

Posted by rbodine at 05:11 PM | Permalink | Comments (0) | TrackBacks (0)

Trademarks are catch phrases, logos, and even color schemes that you may associate with your goods or services that you use in your business. Here's a recent case on trademarks.

The US Court of Appeals for the Federal Circuit In re Shinnecock Smoke Shop, 2009-1100 (July 1, 2009), upheld decisions of the Trademark Trial and Appeal Board ("TTAB") and the US Patent and Trademark Office that denied registration of the trademarks, Shinnecock Brand Full Flavor and Shinnecock Brand Lights, for cigarettes. The Federal Circuit held that the marks violated Section 2(a) of the Trademark Act, 15 U.S.C. Sec. 1052(a). That section prohibits registering marks that falsely suggest a connection with a non-sponsoring entity, and Shinnecock refers to a Native American Indian tribe that has no connection to the products. Among other things, the Applicant claimed that failure to allow registration demonstrated a pattern of discrimination against Native American Indians attempting to register marks. The Federal Circuit held the claim meritless, as the Applicant provided no support for his claims of discrimination. Even if true, however, the claims of discrimination could not be justification for allowing the Applicant's improper registration, but rather an argument for disallowing the other registrations.

The point? You can't select a trademark that inappropriately associates itself with another group. Consumers might think the group endorses your products and services when in fact they don't.

Posted by rbodine at 05:40 PM | Permalink | Comments (0) | TrackBacks (0)