MediaTech Law

By MIRSKY & COMPANY, PLLC

Actual Halloween Story: Trademark “Field of Screams”?

Yes, possibly the most important lawsuit since the sad case of the hamburger joint sued by the Washington white shoe law firm, playing now at a theater on Connecticut Avenue.

Well, maybe the most important lawsuit in trademark’s hoary world.

“Field of Screams” – Maryland version – is the annual Halloween fundraiser put on by the Olney (Md.) Boys and Girls Community Sports Association.  “Field of Screams” – Pennsylvania version – aka Field of Screams LLC, filed suit for trademark infringement in Maryland federal court, claiming exclusive trademark rights to the name, if not in the entire United States at least in the mid-Atlantic region.  Our intrepid blogger recently came upon the seminal legal development while perusing the Metro section in the Washington Post.  Legal filings in the case can be found through the Federal court system’s PACER service, here.

Pennsylvania’s trademark claim rests on its pre-dating the Maryland spookfest, and claims of consumer confusion as to source – the “likelihood of confusion” test for trademark infringement.  Indeed, Pennsylvania horror proprietor Jim Schopf told the Post of numerous instances of tickets purchased through his operation’s website by Halloween revelers thinking they had locked in dates at the Maryland “Field”.

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Trademarks in Ads: Google’s AdWords [Does] [Does Not] Infringe?

[Thomas Yarnell contributed to research and drafting on this post.]

Google’s popular and dominant advertising service, AdWords, allows companies to place auction-style bids on search keywords.  If a company bids the highest amount on a keyword, that company’s ad comes up first when someone searches the keyword.  The company then pays Google on a pay-per-click basis.  In many countries, including the United States, Google lets companies advertise next to search results from use of their competitors’ trademarks.

Let’s say you want to buy a Louis Vuitton bag.  You know it’s expensive, so you might not want to buy it directly from the company’s website.  Instead, you might search “Louis Vuitton bags” on Google and assess other options.  As you can see in a search of “Louis Vuitton bags”, you may find some “Sponsored links” to the right of your search.  Sponsored links such as the “Louis V. Bags Handbags” come from the AdWords service.

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Fair Use and Trademarks: Domain Names

An automobile brokerage operating online under the web domains “buy-a-lexus.com” and “buyorleaselexus.com” got sued by Toyota Motor Sales for trademark infringement, first losing in trial court on a trademark “fair use” argument, then winning on appeal.  The case opinion can be found here.

The domain name question in trademark is whether and how one can use established trademarks in domain names, in other words using the “LEXUS” trademark in your website URL when the use is anything but incidental but rather intentionally drawing on the value of the valuable brand.

Toyota, owner of the Lexus car brand, had sued to stop the auto brokerage from using the “LEXUS” trademark in the brokerage’s websites listed under “buy-a-lexus.com” and “buyorleaselexus.com”.  The brokerage defended its actions by arguing that the use of “LEXUS” was permitted (that is, non-infringing) as a fair use of the trademark.  Or as Judge Alex Kozinski explained in his appeals court opinion, the trademark was used to “refer to the trademarked good itself”.

This is the “nominative fair use” doctrine of trademark law.  In (hopefully) plain English, the defendant makes no argument to counter a trademark owner’s typical claims of trademark infringement such as likelihood of confusion or dilution of trademark and so forth.  Instead, the use of the trademark is permitted as a fair use since the use simply (and only) identifies the trademark.  Toyota did not dispute the legality of the brokerage’s business nor its authority to broker and sell Lexus vehicles.  The Lexus auto brokerage could therefore successfully argue that use of the “Lexus” was necessary to identify the product being sold.

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A Sherlock Holmes Copyright Mystery?

Sherlock Holmes is still under copyright, even though his author Sir Arthur Conan Doyle died almost 80 years ago.  Actually, some of Conan Doyle’s stories are or appear to be under copyright protection in the United States (not in the UK and not elsewhere), by virtue of an oddity in US copyright laws.  Ordinarily, US copyright protection for works published prior to no later than 1930 (the year of Conan Doyle’s death would have expired well before today).

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Trademarks and Twitter – It’s a Gas Gas Gas!

Oneok, a natural gas distributor based in Oklahoma, sued Twitter last week for trademark infringement.  Then dropped the case one day later.

Oneok claimed that an unidentified third party had operated an account under Oneok’s name and logo (both registered trademarks, evidently) and, more particularly, issued tweets which “had the appearance of being official statements” of the company.  And therefore, gave the impression that these were authorized statements made by authorized users of Oneok’s trademarks.  See Oneok’s complaint here.

The last part would have been particularly critical to Oneok’s claims of infringement because it would have argued against a defense of parody or commentary or other protected “fair use” of the trademarks.

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Can you trademark a domain name?

Can you trademark a domain name?  Amazon.com is a registered US trademark of the company by the same name, including not just the word “Amazon”; but also the dot com.  There are numerous examples of this, although they have in common the brand value of the name inclusive of the dot com appendage.

How many businesses can say this, really?  More commonly, a web domain reflects the name of the business or the brand or the celebrity (or whatever), and the “.com” is simply a location finder on the internet.  So, for example, “ExxonMobil.com” is not registered as a trademark.  Nor is Apple.com, even though the brands without the .com are.

The issue is a question of what name you’re trying to protect.  Cybersquatting laws (and some famous cases) prevent certain well-wishers from staking claim to web domains of trademarked terms such as “McDonalds.com” and “Walmart.com”.

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