Legal Geek No. 124: The Town Crier Approach to C&D Demands

Welcome back to Legal Geek. This week, we review what has become a trend in sending demand or cease and desist letters, a softer edge that is just as much marketing as it is legal.

https://archive.org/details/LegalGeekEp124 

A couple months back, the main show and this segment covered a story about Netflix attorneys sending a cease and desist letter to a pop up Stranger Things themed bar with a lot of humor and in jokes from the show mixed in, instead of the usual threats and legalese.  This resulted in positive press for Netflix and their attorneys, as evidenced by our own coverage of the event, while also resulting in the other party complying with the demand from Netflix.  This softer approach is becoming more prevalent, as evidenced by a Town Crier sent by Budweiser to another brewing company last month:

INSERT TOWN CRIER FROM: https://www.youtube.com/watch?time_continue=2&v=hCvPtSxxVkU

Turns out, even Dilly Dilly can be made into something funny and enjoyable in this context.  As with the Stranger Things letter, this Town Crier demand went viral online and in news coverage, with positive press happening for Budweiser rather than the negative feedback the public often gives when brands are pushy about enforcing their rights.  Plus, the Minnesota brewing company agreed to comply with the demand and stop selling the Dilly Dilly Mosaic Double IPA after the initial run was sold.

Other examples recently of this trend include TGI Fridays sending a box of buttons and other flair to a Chicago bar with a letter asking that the bar's plans to hold an event mimicking the Friday's restaurant be limited to a one-time thing.  That certainly makes it easier for the bar's employees to look like Friday's servers for the event, and it struck a good balance between enforcing a trademark, which is required to keep those rights, and being reasonable about fan service or parody in this case. 

In another case, Dole responded to an Instagram meme from a New York branding agency using their company logo for a Halloween joke about receiving bags of fruit instead of candy, but not with a takedown notice.  Instead, Dole added to the meme by making some more small bags of fruit and asked that the other company refrain from future unauthorized use of the trademarks so that they didn't have to come take all their candy away.

This trend for demand letters is certainly a response to the negative feedback other companies have gotten on social media and in the news for facing down fans with formal legal threats.  This is a smart way to jam some positive marketing into legal responsibilities.  Considering that nobody really wants to add more costly litigation to their dockets, the softer approach has proven to be effective enough to protect most brands while avoiding legal escalation and bad press.  In other words, a win-win.

The Bottom Line is, the old adage of "you catch more flies with honey than with vinegar" appears to be working in this context.  In my own practice, I often recommend a softer edge from content creators and brand owners at the beginning, as it can't hurt to try being somewhat nice before escalating to full conflict.  You just might end up with more friends and business partners that way, too.  In a society divided by politics and a lot of other stresses, it should come as no surprise that this approach is more effective.  I look forward to covering more fun legal demand letters as the trend continues.

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Legal Geek No. 123: TWiT sues Twitter for Trademark Infringement

Welcome back to Legal Geek. This week, we review the newest lawsuit hot off the presses this week as podcast network TWiT, also known as This Week in Tech, sues Twitter for trademark infringement and other alleged misdeeds.

https://archive.org/details/LegalGeekEp123 

This Week in Tech is a network of shows in video and audio format that began around 2005 when Leo Laporte founded the network.  Indeed, many of you know this well because Current Geek's own Tom Merritt was a host of multiple highly popular shows on that network from 2010 through 2013, including Tech News Today. 

TWiT grew rapidly after the network's formation, and Laporte protected this name with a trademark registration at the U.S. Trademark Office in 2007.  Around the same time, Laporte had Twitter founder Evan Williams on one of his shows, and that led to a frank discussion regarding the potential overlap and confusion between the names TWiT and Twitter.  However, verbal communications and written follow-up communications in 2007 and 2009 reveal that Laporte and Williams agreed that these companies could co-exist because the creation of audio and video entertainment content was distinct enough from the text-based microblogging of the Twitter platform.

This 2009 communication is a key to the lawsuit this week, as Williams indicated that news reports of Twitter moving into the production of original video content were inaccurate.  Thus, the two companies continued to peacefully co-exist until 2017, when Twitter did expand into original video production on the platform.  Laporte again tried to get Williams and Twitter to stop, but as the parties have not reached an agreement, TWiT sued the giant Twitter this week in California federal court.

Many of the claims against Twitter in the lawsuit pertain to alleged breach of contract or false statements.  Laporte argues that the verbal and written communications from a decade ago were an actual or implied contract between the parties to not expand into each other's tech space.  As to these claims, Laporte makes a good initial case in the Complaint, but it's unclear that he has shown any evidence, particularly in writing, of actual clear intent of Williams to refrain from all future expansion into the fields of TWiT.  Without that type of evidence, it may be difficult to prevail on these types of legal theories.

As to trademark infringement, Laporte argues that the two companies now overlap in goods and services, and the marks are sufficiently similar to cause consumer confusion.  Williams' admission statements regarding potential and actual confusion based on the marks when appearing on a show with Laporte in 2007 would seem to support this argument as well.  But as we've discussed before, trademark infringement and the likelihood of confusion test for it involves a high number of factors that courts must weigh before coming to a conclusion, and that could lead to varying final results.

Nevertheless, in my view, this is the stronger part of the case for TWiT, and it may be what brings the parties to the table to negotiate some sort of new co-existence.  In other words, Twitter will likely pay a bunch of money to make this issue go away, as it seems unlikely that Twitter will want to back down from the extensive plans to produce the original video content for their platform.

If that doesn't happen, we will see just how far Leo Laporte will go in challenging a bigger entity to try and guard his IP and his market territory.  We will certainly keep our eyes on it and provide further updates as the case progresses between these two companies and services many of us enjoy and use.

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Legal Geek No. 122: Mr. Smith takes on Washington for a Back Rub

Welcome back to Legal Geek. This week, we start the new year with a fun one, as we summarize what immediately became my favorite Complaint filed in federal court in 2017, a case entitled Lathan Smith vs. the United States, the Secret Service, and the President Trump.

https://archive.org/details/LegalGeekEp122

Lathan Smith is an individual living in the San Francisco bay area, and he filed a Complaint in December that has made the rounds in IP legal circles for its quirkiness. Mr. Smith is certainly not the first person to file a kooky Complaint against the government, but this one has some nuggets that are too rich not to share.

The supposed facts stated in the Complaint are as follows. Mr. Smith claims to have created a new automotive motor, crank, generator, and engine, as well as fire resistant sheet rock used in buildings and toilet paper that is allegedly used by the federal government and city offices. He also claims that the government is messing with his ability to get a job, his ability to use his phone to call relatives in North Carolina, and has arrested and tried to murder him on numerous occasions.

After stating those facts, Mr. Smith sets for the legal claims he is making, and they include attempted murder and patent infringement. Yes, he has mixed those two in the same Complaint. For the attempted murder, he argues that the government has stabbed a knife into his neck, has hit him in the face with a passing truck, and has taken his child away. For the patent infringement, he claims that the secret service had the patent pushed through and then realized the product would work through computer realization.

At this point, you may just want to write this Complaint off as a sad story from a troubled man, but then we close with the demand for relief. Mr. Smith asks for the following, and I quote:

"I want all my patent from the first one to the last. I want all the money made from them. I also want to be exempt from taxes on my employment and whatever I build through the patents for the rest of time. I also want the United States to stop using my patented ideas. For all the stress I want them to provide a full body massage the rest of my life daily."

So while Mr. Smith wants an injunction against patent infringement like most plaintiffs, he also wants to never pay taxes again, a la the Armageddon movie script, and a full body massage every day from the government. One would think someone who has escaped numerous murder attempts wouldn't let the government near his body anymore, but here we are.

So here's to you, Mr. Smith of San Francisco. Your prayer for relief is one we patent attorneys have never thought to ask for, but a daily massage sounds pretty good to pay us off for patent infringement.

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Legal Geek No. 121: Comic Con Stands Alone

Welcome back to Legal Geek. This week, we review the decision in California this week regarding San Diego Comic Con and the ability of the organizers to protect against competition using the trademarked name Comic-Con.

https://archive.org/details/LegalGeekEp121

San Diego Comic Convention is the organizer of the huge annual gathering of the nerds and stars known as Comic-Con, and they have acquired registered U.S. trademarks covering this name. When a Salt Lake City comic convention refused to stop using Comic-Con as part of its name, or pay a license fee for the privilege, San Diego Comic Con sued for trademark infringement. This week, a jury found that the trademark registration is valid, and that the Utah convention organizers infringed the Comic-Con trademark.

What this means is that an injunction will likely be obtained against the Utah convention, which will then have to change its name moving forward. Other conventions in Baltimore and elsewhere using the name may also be challenged and forced to abandon the name Comic-Con. Many are asking how can this be fair, when the term Comic-Con is so descriptive of the event covered by the trademark?

Trademarks are generally classified into four categories of distinctiveness depending on how related the mark is to the goods or services covered. These categories include generic, descriptive, suggestive, and arbitrary. Terms that are generic such as paper are not protectable by U.S. trademark registrations, and the same is true of marks that are merely descriptive. However, if a descriptive mark acquires secondary meaning indicating the source of the goods as a result of long time use and promotion in the marketplace, those types of marks can be registered.

According to the jury in California, that must be where Comic-Con fits. The jury rejected Salt Lake's defense that the term Comic-Con is generic. Despite this, a shortening of the phrase comic convention is precisely descriptive of what happens at these events, so the jury and the U.S. trademark office have both come to the conclusion that the San Diego organizers have done enough in their 50 years in the marketplace to make this name acquire so-called secondary meaning. While some may come to opposite conclusions, this is a fact-based analysis based on things like survey evidence of what consumers believe, and therefore is unlikely to be overturned on appeal.

This is just the reality of how U.S. law has drawn the lines between what is protectable and what is not, and it makes sense based on the desire to allow competitors to be able to fairly describe their products but not trade on the goodwill earned through long efforts and marketing of other entities.

The San Diego organizers do run the risk of losing the trademark rights if they do not adequately police the use by other conventions, so expect this enforcement effort to expand and continue. Should you boycott San Diego Comic-Con over this? I'd argue no because this doesn't stop other conventions from happening, it just means they have to use a different name like Comic Expo, or the like. I would posit that even the longer form Comic Convention is likely acceptable and not covered by the trademark here. The protection is narrowly tailored and can be easily worked around, and therefore should have no real long-term effect on nerds who attend all these conventions.

The Bottom Line is, you may not personally like that a term like Comic-Con is protected by trademark and monopolized by the San Diego convention, but nerd culture has survived similar circumstances before, like when the term superheroes was trademarked. Conventions with as much success as the Salt Lake one, as I hear anecdotally, can honestly build up their own alternative brand name and then enjoy the consumer goodwill from that name. So it's not the end of the world, but don't expect to be going to anything literally called a Comic-Con outside of San Diego anytime soon.

Thanks to CareyT and MajorSpoilers on Twitter for suggesting this hot topic.

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Legal Geek No. 120: Conflicts and Bias at the Supreme Court

Welcome back to Legal Geek. This week, we update you on an augmented reality game lawsuit we covered earlier, and then turn to rising issues of conflicts of interest at the Supreme Court and the need for better controls to avoid personal bias at the highest court of the land.

https://archive.org/details/LegalGeekEp120

A few months ago, Legal Geek covered the latest in a lawsuit pitting Milwaukee County in Wisconsin against augmented game makers like those who make Pokémon Go.  As you'll recall, Milwaukee County enacted an ordinance in February requiring augmented reality game developers to go through a rigorous approval process with several very expensive requirement to operate in Milwaukee's parks.  Candy Labs challenged this ordinance in federal court and won an injunction this summer against enforcement of the ordinance as potentially not being constitutional.

This case was slated to go to trial in a couple months, but a settlement agreement was reached this week.  Under the settlement, Milwaukee will not enforce the ordinance and will pay attorney's fees to Candy Labs for this lawsuit.  So rejoice Pokémon Go and other augmented reality game fans, as this legal victory should deter other localities from unfairly limiting use of public spaces to gamers like this.

Now to our main topic this week, conflicts of interest at the Supreme Court. 

To describe conflicts of interest simply, judges are to be conflicted out of a case when they have personal involvement, such as by owning company stock, or prior involvement as an advocate on one side of a case they would be adjudicating.  We don't want unfair bias in the court system, so when conflicts come up the judge is supposed to recuse themselves, AKA withdraw from the decision making.  All lawyers also do conflict checks regularly to avoid representing two companies or persons that would be opponents to one another in court, so it's not unique to judges, nor is it a new concept to these seasoned attorneys who become Supreme Court justices.

Earlier this month, Justice Kagan recused herself from an immigration case that's been in hearings and re-hearings at the court for over 18 months.  Despite participating in a first decision when the court had 8 justices and was deadlocked, and then participating in the oral arguments of the re-hearing this October, at no point in this process did Kagan or her staff identify the disqualifying conflict of interest she had from her prior job as a solicitor general.  If Kagan had recused herself in a timely fashion, this case would be long wrapped up, and there would be no risk of bias based on her significant involvement in the oral argument and part of the decision-making process.  But that did not happen here.

More troubling, this is the third straight year where this has happened on a Supreme Court case, with a late recusal by a Justice after significant participation in the case.  The other two cases involved stock ownership in a company with stakes on the line in a Supreme Court case.  How does this problem keep occurring, and why?

There are some formal standards and a Code of Conduct federal courts are supposed to follow, including automated software screening checks, but these were made by a conference of judges at all levels of the judiciary.  The Supreme Court believes that by constitutional mandate, they are one court and not subject to policies or rules being forced upon them by lower courts.  As a result, each justice handles these potential conflicts in their own independent way.  As we can see, that's not working perfectly.

It is vital for the fairness and transparency of the judiciary that the highest court in the land be free from unfair biases.  To accomplish that, the Supreme Court should institute at least some standard procedures to more quickly and accurately identify these issues for consideration before an oral argument is conducted.

The Bottom Line is, the public has faith in the courts because they are designed to be fair and impartial, but the Supreme Court has a long way to go to catch up to the rest of federal courts in avoiding conflicts and late recusals from cases.  In a country so divided in partisanship in the other branches of government, we have to hope the courts lead by example and fix problems like this.

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Legal Geek No. 119: Freedom of Tweets

Welcome back to Legal Geek. This week, we discuss this week's news regarding Twitter pulling verified badges from some users and re-evaluating how those badges are granted to users of this social network.

https://archive.org/details/LegalGeekEp119

Twitter has continued to evolve with recent changes, including the notable shift to allow 280 character tweets for all users instead of the long standing 140.  This week, the changes continued as Twitter shut down submissions for verification, which is the open process to request that your account get a verified badge indicating you are the true source material.  In other words, the fake Donald Trump and Miley Cyrus accounts don't get the verified check, but those run by the actual celebrities or their PR agents do.

The reasons for this shut down were explained as follows.  Twitter wants to introduce and apply new guidelines for verification, and also clear the decks of verified accounts that do not follow Twitter's rules and Terms of Service.  For example, Twitter has begun removing the badge from users for allegedly promoting hate or violence, and for engaging in or inciting harassment.  Twitter has claimed that the badge was being interpreted by some users as an endorsement or indicator of importance, but that was never the intent of the badge.

What made this story hit the news waves was the types of users who were in the first group to lose the verification badge.  Many of these users were far right commentators or public figures such as Jason Kessler, who organized a Charlottesville march, and Richard Spencer, a white supremacist.  Essentially, Twitter is deeming some radicals to be promoting hate, while other radicals have not faced the same type of repercussion.

So legally, is there any challenge that can be made by these users who have a status taken away?  The short answer is, probably not.  As a preliminary matter, tweets are not inherently protected free speech under the First Amendment.  If this removal of a status badge is seen as a censorship of the speech, it is not done by a government or a company acting on behalf of a government.  Yes, even though the President tweets all the darn time, this platform is not a government agency.  There's no Freedom of Tweets in the Constitution, last I checked.

Twitter and other private social networks have the right to regulate their channels as they wish, as generally set forth in the Terms of Service for these programs.  In the case of Twitter, the rules applied explicitly prohibit sharing a large number of things like misuse of other's intellectual property, excessive graphic violence, threats, hate or harassment materials, and private information.  Twitter has full latitude to suspend or terminate accounts that do not follow these rules, above and beyond the removal of a verification badge.

If you use Twitter, you agree to abide by those rules, and for these users, that has allegedly not been happening.  As such, the users likely have no reasonable recourse to overcome content control applied in this way by Twitter, and it would be similar with all the major social networks.

The Bottom Line is, as much as social networks like Twitter feel like the public open forum, they are still privately-owned channels of communication with rules and Terms of Service that provide wide latitude for controlling content and actions of users.  The world is likely a better place without fringe or radial dialogue, but one hopes that Twitter's new rules and the application of the verification system can treat all sides fairly in this process.

Finally, if you want to find a further discussion of this story, and lots of other fun geek topics, please check out my appearance on the Ritual Misery podcast from this week.

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Legal Geek No. 118: Dominion and Call of Duty in the Legal Crosshairs

Welcome back to Legal Geek. This week, we update you on a couple of interesting legal cases dealing with popular games, the Dominion tabletop game and the Call of Duty series of video games.

https://archive.org/details/LegalGeekEp118

We start with Rio Grande Games, makers of Dominion, which all but created the deck building genre so popular in tabletop games the past 10 years.  Rio Grande has recently sued a handful of Amazon sellers for allegedly selling counterfeit copies of this game Dominion.

Rio Grande did a bit of their own discovery work, anonymously ordering Dominion from these sources and then investigating whether the copies of the game received were genuine.  They were not.  For example, the knockoffs use significantly lower quality card stock, and a plastic insert much flimsier than the one included with original boxes of Dominion.

With all of the artwork and game name and logos copied, this lawsuit has plenty of claims including trade dress infringement and copyright infringement.  An injunction seems likely in this circumstance, but it raises the question of will other fraudulent Amazon sellers pop up then, to take their place.  It's a constant struggle for some manufacturers and fields, but perhaps not as prevalent in the board game industry.  Thus, Rio Grande may be developing the cutting edge of what to do in these types of knockoff situations.

Unlike Rio Grande, who is suing others to protect their marketplace, Activision Blizzard, the makers of Call of Duty, is the target of a lawsuit filed this week for what they allegedly do with this series of games.  AM General, the makers of military Humvee vehicles, is suing Activision for improper use of trademarks associated with this vehicles.  AM General argues that humvees being prominently displayed in the video games and ancillary products like toys is Activision taking advantage of someone else's intellectual property.

This appears to be a bit of a cash grab by AM General, as the demands here are more for damages than for an injunction.  The legal theory here for significant damages relies on a claim that the wild popularity and sales success of Call of Duty comes only at the expense of AM General and the consumers who are duped into believing these companies are aligned or licensing the trademarks to one another.  That seems like it will be very difficult to prove, but perhaps a small amount of damages is warranted for unlicensed use of vehicle designs in these games.

The Bottom Line is, when gaming companies are successful and lead their marketplaces by making lots of sales and money, knockoffs or those with potential legal claims will always come out of the woodwork to try and claim a piece of the pie.  In those circumstances, courts serve an important purpose in making sure everyone plays fair in the free market.  It will be interesting to see what other game companies get entrenched in conflicts in the coming months, and if they are similar to these two.

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