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.

Douglas v Keno Trademark Complaint

John Tauranac, a New York historian who was the manager of passenger information at the transportation authority from 1982 to 1987, is also concerned that the memorial’s stylized twin-tower logo may lead to golden arches on subway signs one day.

The 9/11 Memorial has built brand awareness widely, through signs like this at a McDonald’s. “Informational clutter is worse than plain old visual clutter,” Mr. Tauranac said in an e-mail, “in part because it can come down to a matter of life and death in an emergency. If the 9/11 Memorial is included, shouldn’t Battery Park City in general be represented, and if Battery Park City, why not the World Financial Center, or one of its components, or even the new W Hotel? Where will it stop?”

I think it can stop at the 9/11 Memorial trademark. One exception doesn’t necessarily mandate many exceptions and it’s a long way from the 9/11 Memorial trademark to the Golden Arches. Some of the registrations for the 9/11 Memorial can be found here, here and here.

See complaint here. Lands’ End’s skate shoe falls within adidas’s 2 to 4 stripe zone of trademark protectability (adidas won a $300 million verdict against Payless for a similar shoe), but I’m not convinced that the “stripes” on the Lands’ End Trekker shoes are actual source identifying stripes confusingly similar to adidas’s stripes. Rather, they look like they may be part of the shoe’s construction connecting the lower part of the shoes to the lacing.

Seattle trademark lawyer Michael Atkins doesn’t take vacations, but rather goes on infringement safari hunts. A recent big game infringement kill from China:

I haven’t traveled as far recently and my discoveries are far less glorious. Here’s a perplexing (to a trademark lawyer) business name in Palm Springs:

Some thoughts: 1) the piping that adidas considers a stripe looks like it’s part of the strap construction. Straps appear to be a feature common to most Radii shoes. If integral to the shoe’s strap construction, the piping is not necessarily being used as a source indicator. Perhaps a descriptive fair use defense is available here; 2) if this guy in the video is a typical consumer that buys Radii shoes, the degree of sophistication is high (think Entourage‘s Turtle) and distinct from the lower level consumer sophistication that would be typical at a discount shoe store like Payless; 3) three straps is confusingly similar to three stripes? Really?; and 4) “420” and “Piped” possibly have a meaning that could be considered unsavory to some. Adidas gives a cursory mention of tarnishment in its Federal dilution claim, but there’s no mention of the meaning of “420.” Maybe adidas or its lawyers are not hip to the lingo kids are using these days. Or maybe many adidas buyers wouldn’t consider “420″ a harmful association.

And speaking of leaf, Adidas also sued Herbalife, a nutritional supplement company, for the alleged infringement of its three leaf logo, known as the “Trefoil” design. Adidas alleges that in exchange for not opposing the trademark registration of Herbalife’s own three leaf logo, known as the “Trileaf” logo, Herbalife agreed to not use the logo for shoes, athletic apparel and gear, and would always use the three leaf logo in close proximity to the word “Herbalife.” According to adidas, Herbalife has been using the logo to sponsor teams and athletic events where the logo is used onuniforms and sports equipment, specifically a Major League Soccer team, the Los Angeles Galaxy. Both adidas and Herbalife have trademarks on the jerseys (it seems, however, that most consumers would understand that Herbalife is a sponsor and advertiser for the soccer team, not the maker of the jersey). Apparently, adidas is the manufacturer of all Major League Soccer jerseys and in its role as the designer and producer of jerseys refused to produce a Galaxy jersey design with the Herbalife Trileaf trademark. Herbalife claimed adidas’ refusal to include the Trileaf logo was an improper self-help remedy and interfered with Herbalife’s sponsorship agreement with the LA Galaxy ownership. I don’t know if the self-help tactic worked or if Herbalife voluntarily decided to go without the Trileaf, but currently it’s not featured on Galaxy jerseys.

Adidas Herbalife Complaint

Adidas Radii Complaint

The Oregonian has more about the Radii lawsuit. The CEO of Radii has this to say:

Radii CEO Arisohn contended that Adidas officials initially approved a shoe design. But after it was under production, “we got an email from their attorney saying, oops, we made a mistake those won’t work.”

The basic nature of shoe design puts Radii in conflict with Adidas, Arisohn said in the email.

“Shoes are made up of lines,” he wrote. “It’s really hard to design shoes without lines and sometimes lines, that were never meant to be anything close to Adidas’ trademark lay in a way that just allows Adidas to sue.”

A number of studies over the last 100 years or so have shown that front vowels in many languages tend to be used in words that refer to small, thin, light things, and back vowels in words that refer to big, fat, heavy things. It’s not always true, but it’s a tendency that you can see in any of the stressed vowels in words like little, teeny or itsy-bitsy (all front vowels) versus humongous or gargantuan (back vowels). Or the i vowel in Spanish chico (front vowel meaning small) versus gordo (back vowel meaning fat). Or French petit (front vowel) versus grand (back vowel).

Jurafsky applied the findings from these studies to the flavor and brand names of ice cream and crackers:

Here are some examples of stressed back vowels in ice cream names:

Rocky Road, Jamoca Almond Fudge, Chocolate, Caramel, Cookie Dough, Coconut

And here are samples of the many cracker names with front vowels; note the extraordinary number of ? vowels:

Cheese Nips, Cheez It, Wheat Thins, Pretzel thins, Ritz, Krispy, Triscuit, Thin Crisps, Cheese Crisps, Chicken in a Biskit, Snack sticks, Toasted chips, Ritz bits

Of course there are exceptions: vanilla, the orange blossom of our day, has an I. But most of the front vowels in ice cream flavors tend to be the names of small thin ingredients in the ice cream: (thin mint, chip, peanut brittle).

He has much more, including a brief linguistic history of frozen desserts.

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.)

This use of Google’s trademarks, both the red-lined envelope and “Gmail,” are classic examples of what’s known as nominative fair use. Nominative fair use is the ability of someone or a business to use a trademark of another to describe or identify the goods or service used in connection with that trademark. In the Ninth Circuit (the federal courts of Alaska, California, Washington, Oregon, Nevada, Hawaii, Idaho and Montana), the test is whether the goods or services at issue can be easily identified without using the trademark; the non-trademark owner only uses as much of the trademark as necessary; and the non-trademark owner didn’t do anything that would suggest the trademark owner sponsored or endorsed the use of its trademark. So for this example, Microsoft needed to use the Gmail service marks to identify the Gmail service; it only used the mark to make the point that Gmail is intrusive; and because it also makes fun of Gmail, no one would think that Gmail sponsored the video.

Of course, just because fair use may save you from trademark infringement, it doesn’t necessarily save you from a false advertising or defamation claim.

First of all, according to the Dervaes, the letters were not a “legal notice” as it was sent by Jules Dervaes, not an attorney. According to the Dervaes it was a informational letter telling others about the newly acquired trademarks. It was others who have attributed motives and the scope of the letter and misinterpreted its contents.

If the letters she is referring to (there are may also be other letters sent by the Dervaes Family’s attorney that are more strongly worded) are anything like the letter posted on the Dervaes Family’s Path to Freedom website, the “information” provided is not all that friendly, or suggestive:

In addition, Dervaes Institute owns numerous trademarks which should be properly acknowledged if used. These protected names and images include the following registered trademarks:

URBAN HOMESTEAD®
URBAN HOMESTEADING®
PATH TO FREEDOM®
GROW THE FUTURE®
HOMEGROWN REVOLUTION®
FREEDOM GARDENS®
LITTLE HOMESTEAD IN THE CITY®

Also, THE TEN ELEMENTS OF URBAN HOMSTEADING copyright has been filed with the Library of Congress.

If your use of one of these phrases is not to specifically identify products or services from the Dervaes Institute, then it would be proper to use generic terms to replace the registered trademark you are using. For example, when discussing general homesteading or other people’s projects, they should be referred to using terms such as ‘modern homesteading,’ ‘urban sustainability projects,’ or similar descriptions.

Even though the words “cease” or “desist” are not present in this letter, the intent is clear: the Dervaes Family is asserting exclusive legal rights to “urban homestead” and “urban homesteading” and directing others to substitute other terms for its registered trademarks.

Elsewhere in the comments, two attorneys chime in. Paul Keating, a trademark lawyer residing in Barcelona, places the controversy in the context of free speech rights:

This entire comment string clearly shows many of the problems with today’s trademark registration system and the problems it causes. All too often obvious terms are registered. The USPTO should, IMO more aggressively enforce the registration process and the presumptions (which currently favor registration) should be reversed. The declaration at the bottom of each application should be more strictly viewed by the courts. The applicant should be required to actually sign it (not his/her attorney). How could the applicant in this case, for example, assert that they have any exclusive rights in the term?

The biggest issue here, however, is in the enforcement side. Take-down notices are easy to write and the recipients default to complying to avoid liability. This places the burden upon the third party who in the meanwhile had their site, blog, etc, terminated.

Trademarks are an exception to free speech. The original intent was to prevent consumer confusion. They are not, and should not be considered to be, a property right. I am personally becoming concerned at the degree to which the pendulum seems to have swung in favor of IP rights holders in general. It does not bode well for society and all of the overly aggressive tactics being used will hopefully soon come home to roost.

(I’m not sure, however, that the prevention of consumer confusion is trademark law’s sole reason for being. Trademark law may have always been intended to prevent unfair diversion of business and goodwill.)

TiM Atty raises the point that the examination process is fallible and that cancellation petitions function as a backstop against that fallibility:

Marie, I don’t know whether you practice in TM law or not but, if not, I’m impressed by your researching of the subject. However, I felt I had to comment on your statement in 30 that “The USPTO NEVER legally registers a generic word. That’s a legal impossibility.” That statement is either completely incorrect, or I’m misunderstanding your use of the word “legally”. The USPTO registers generic terms regularly, and it’s completely legal. The TM Examiner’s can make mistakes either by not researching a term thoroughly or not having access to the industry information in order to provide the evidence for the genericness refusal. It’s an evidence-based process and there is nothing illegal about registering a generic mark, it’s just a mistake. But that’s part of the reason for cancellation proceedings. So people in the industry can cancel a generic term if they have standing.

What is a cancellation proceeding? An owner of a trademark may file a petition of cancellation with the Trademark Trial and Appeal Board, which is an administrative court that makes decisions about federal trademark registrations, to cancel another party’s registered trademark if that registration harms, or will harm, its own mark. Depending on how long the mark has been registered, the cancellation petitioner can challenge the registered trademark for different reasons. If the mark is not yet incontestable (the registration is less than 5 years old), the challenger may seek cancellation of a registration because it is similarly confusing to the challenger’s mark or the mark is descriptive and has not acquired distinctiveness.

A registration may be cancelled at any time, even if it has become incontestable (has been registered for 5 years or more), for the following reasons: it’s functional or generic; it’s been abandoned; the registration was obtained fraudulently; it’s immoral, deceptive, scandalous or disparaging; falsely designates the origin of alcoholic drinks; incorporates or uses any governmental insignia; or uses the name, likeness or signature of a living person; or if it misrepresents the origin of goods or services. Collective and certification marks may also be cancelled for reasons specific to those types of marks.

Kelly Coyne and Erik Knutsen, authors of “The Urban Homestead,” petitioned to cancel the “Urban Homestead” and “Urban Homesteading” registrations on the grounds they were descriptive, generic, didn’t have acquired distinctiveness and were obtained fraudulently. Their petition:

Petition to Cancel “Urban Homestead”

Cancellation proceedings before the TTAB are similar to court proceedings and the owner of the challenged registration has an opportunity to respond. The Dervaes Family’s answer:
Dervaes Answer to Cancellation Petition