It is time for Congress to address directly the fusion of practicality and beauty that makes fashion such a compelling medium of expression and a profitable creative industry, one that merits its own limited industry-specific protections. Otherwise, colorful as they are, lawsuits like the red sole case are likely to compound the uncertainty that results from the absence of statutory delineation of fashion design protection — and invites more lawsuits.

Johanna Blakley, managing director of USC’s The Norman Lear Center, argues in her TED talk (via Marty Schwimmer) that it is the absence of copyright law that is responsible for the vibrancy and success of the fashion industry:

Because there’s no copyright protection in the fashion industry, fashion designers have actually been able to elevate utilitarian design, things to cover our naked bodies, into something we consider art. Because there’s no copyright protection in this industry, there’s a very open and creative ecology of creativity. Unlike their creative brothers and sisters who are sculptors or photographers, or filmmakers or musicians, fashion designers can sample from all their peers’ designs, they can take any element from any garment from the history of fashion and incorporate it into their own design.

Fashion design is difficult to do well, and it can be demoralizing to see your hard work and inspiration used by someone else without permission. On the other hand, it would be dispiriting and make design even harder if you had to constantly worry about infringement or have to consult your copyright attorney to get clearance for each season’s new designs.

Is there a significant difference between paying $5 for 10 songs and 99 cents for one? Perhaps not, except that at 99 cents you are below that threshold. Marnie Stern, an excellent guitarist and giver of opinions, thinks the danger is that “below the threshold of consideration” might also mean below the threshold of giving a crap. I asked her how much she’d like to charge for her album: “It all seems pretty moot because even if I lowered the price to five bucks, people are still going to download it for free anyway.” Since “free is better than any price you could list… that’s what the majority of people listening to music are gonna be looking for,” she told Riff City. But price isn’t entirely meaningless: “I do think that if people had to buy it, they would appreciate it more, spend some time with it, and value it a bit more.”

I remember the days of shelling out $16 for a compact disc based on having heard one or two songs. Often most of the album was filler. If the music wasn’t good, it didn’t matter that I had spent all that money. Who’s going to spend time listening to music they don’t like just because they spent more? Connecting with your fans and providing value to them, not price-setting, is probably a better way to go these days. (For the record, I’m not saying that illegal file-sharing is OK. Copyright plays a valuable and essential role in protecting artists. But the days of relying on recordings as a primary income stream are mainly over for most musicians.)

There are plenty of major writers who can’t abide fan fiction based on their work. They post statements about it on their websites. Orson Scott Card, author of the classic Ender’s Game books, has written, “I will sue, because if I do NOT act vigorously to protect my copyright, I will lose that copyright … So fan fiction, while flattering, is also an attack on my means of livelihood.” Anne Rice is every bit as vehement: “I do not allow fan fiction. The characters are copyrighted. It upsets me terribly to even think about fan fiction with my characters. I advise my readers to write your own original stories with your own characters.”

The legal argument against fan fiction isn’t actually very strong. The scenario Card describes, in which an author’s rights are diminished because he or she doesn’t actively defend them, is associated more with trademark than with copyright. But in practice, a fan-fiction writer who receives a cease-and-desist letter has almost no choice but to comply. No fan wants to go through the bother and expense of litigating against a celebrity or a major corporation. As a result, no definitive legal precedent exists.

But there’s more to argue about than legal niceties. A lot of authors feel emotionally and viscerally that nobody else has any business using their characters. George R.R. Martin, author of A Game of Thrones, writes on his website, “My characters are my children … I don’t want people making off with them, thank you. Even people who say they love my children.” Ursula K. Le Guin, another giant of the fantasy canon, writes, “To me, it’s not sharing but an invasion, literally — strangers coming in and taking over the country I live in, my heartland.”

Copyright law is an exception to our free speech rights, Constitutionally provided as an economic incentive for authors to create works. Since copyright is an exception to our fundamental value of not having the government interfere with our speech without a really good reason, authors and artists should think long and hard about whether this curb on free speech is properly balanced against the emotional connection they have with their work. And Grossman is right; Orson Scott Card’s statement on copyright law is incorrect. Failure to enforce a copyright does not mean you will lose it.

Prints available here. (Via Kottke)

For those unfamiliar with the likelihood of confusion test used to decide trademark infringement, the most important factors are the similarity of the marks and the relatedness of the goods or services. The crux of the confusingly similar analysis is that consumers are unlikely to be confused by similar marks if they are used for unrelated products or services. But in determining whether the goods or services are related, international classifications are not part of the analysis. Rather, the question is whether the goods or services of the two marks are so related that if a consumer encountered them in the marketplace, the circumstances of that encounter would create a mistaken impression that the goods came for the same source.

Under this test, it’s not uncommon that the Trademark Office or a court will find that goods or services are related despite having different classifications. One instance would be Class 45, which includes bodyguards, and Class 13, which includes firearms. It’s not hard to see that these goods and services might lead to consumer confusion–someone would likely think that a security service named Remington was associated with the gunmaker, for example (what about a private detective agency, I wonder?). Additionally, goods or services in the same classification may be unrelated. Take Class 44, which includes medical, beauty and agricultural services. Medical imaging and log-cutting services are unlikely to result in a consumer’s impression that the two services come from the same provider.

Facebook has an interest (Facebook doesn’t want “book” to become commonly used as a suffix for online networking sites, and thus risk becoming generic. For example, if Soldierbook, Baristabook, Doctorbook and a host of other niche online networking sites show up with “book” as a suffix, then Facebook can no longer enforce the now distinctive “book” element of its trademark because “book” would refer to a category of a service, online networking websites) in protecting its trademark regardless of whether the alleged infringer is big or tiny as a mosquito. If Facebook doesn’t enforce this infringement now, and Teachbook does become successful, Facebook could be prohibited from enforcing its trademark later against Teachbook because of a legal doctrine called laches (pronounced like ‘latches’). Laches is a trademark defense that forbids a plaintiff from sitting on the knowledge that another company is infringing its trademark and then unreasonably delays bringing suit against that company if that delay harmed the defendant. In other words, if say Teachbook does become bigger than a mosquito and therefore worthy of being bombed sued by Facebook, then it could raise a defense that Facebook knew of its trademark and did nothing while Teachbook spent considerable resources in building its brand around its trademark.

It has been suggested that Teachbook poses no competitive threat–that it merely seeks to be an online community limited to teachers. If we do our homework (or instead watch a movie), we’ll discover that Facebook began as a small online community for a single college’s students. I don’t think anyone could have foreseen that Facebook would become the behemoth company it is today, and it’s asking a little too much for a trademark owner to have the kind of prescience that can ascertain which companies pose a competitive threat and which ones don’t.

This is not to suggest that there aren’t trademark bullies out there. But in our adversarial legal system it isn’t simply a matter of pitting a much larger company against a smaller company. Companies or individuals do and should have the opportunity to have their legal claims heard in a court of law regardless of size. However, when a larger company leverages deep pockets against an adversary with shallow pockets and it does not have a legitimate claim, then you’re in bullying territory. But with Facebook, regardless of how you feel about the company’s less than ideal privacy policies or its founder, that isn’t the case here–there really is a legitimate trademark claim.

(Disclosure–I formerly worked for Cooley LLP, Facebook’s counsel in this dispute.)

Back in the day, a few friends making a small magazine on a photocopy machine, or a zine, was restricted to word of mouth solicitation for content and distribution to friends or family and a few retail outlets. The zine was unlikely to get noticed by companies that might have superior trademark rights, and even if the zine was noticed, no one probably cared. But leveraging social media by soliciting contributions on Twitter, and then publishing on MagCloud, which easily allows anyone to publish professionally looking printed magazines sold online nationally and internationally, will naturally attract attention.

The founders of 48 Hour Magazine proclaimed that they wanted “proof that it doesn’t take a bunch of money and lawyers to make something great.” They’re right–it doesn’t take money and lawyers to make something great. But you do need a trademark attorney if there’s a chance your something great is going to go out in the world and get noticed. The reality is that people own brands of which they are fiercely protective, and the risk is that you’ll have to hire a lawyer later on to respond to and resolve the conflict. What could have have been a matter of a few hundred dollars to run a trademark search upfront becomes a matter of thousands of dollars in attorney time to respond or negotiate a settlement (and don’t forget the potential of tens of thousands of dollars it takes to defend a lawsuit).

Luckily, 48 Hour Magazine found an attorney to represent them for free. But it’s not so lucky that they’ll lose some brand recognition and momentum if they have to change their identity.

Update–48 HR magazine is having a difficult time coming up with a resolution with CBS. CBS is demanding the following:

1. CBS wants to be able to vet the magazine’s new name.

2. CBS wants to own the magazine’s existing URL, 48hrmag.com.

3. It’s unclear how long the network would be willing to allow that URL to redirect to the magazine’s yet-to-be-created new website, which Honan [a 48 HR Magazine founder] said would be the only way to ensure continuity between the debut issue, created the weekend of May 7, and the second issue, which they’re planning for the end of August.

Update–48 HR announced that it would be publishing a similar type of magazine venture in late August and ceased all sales of its first issue as of June 27.

Another Update–48 HR has changed its name to Longshot.

The Gazette article notes that Avanta and Advanta are “neological” names.  While it’s true that coined or fanciful marks can be good choices for trademarks, both of these appear to be closely derivative of the word ‘advantage’.  Chances are if you’ve thought of a form of ‘advantage’, so has someone else, which increases the chances that your new brand may be infringing a prior trademark use. Originally published June 19, 2009.

Update: unfortunately, Advanta’s efforts to protect its brand couldn’t prevent it from going on the FDIC’s failed bank list.