MediaTech Law

By MIRSKY & COMPANY, PLLC

Can Social Media Use Save a Trademark?

Maintaining a social media profile has become standard practice for most businesses advertising their services. Savvy trademark owners may also know that they must “use” their mark in order to establish trademark rights – meaning that the mark must be actually used in connection with providing a good or service. But what type of use is sufficient? Is simply using a mark on a Facebook or Twitter profile enough to show “use” of the mark for trademark purposes? A Trademark Trial and Appeal Board (TTAB) decision says no, but offers useful guidance to trademark owners on using “analogous” trademark use to establish trademark rights. The decision is The PNC Financial Services Group, Inc. v. Keith Alexander Ashe dba Spendology and Spendology LLC.

Spendology attempted to register the mark SPENDOLOGY for web-based personal finance tools. PNC Financial Services Group (PNC), which used the same mark for an “online money management tool,” opposed Spendology’s application, claiming that PNC had used the mark first. Both parties filed motions for summary judgment for likelihood of confusion and priority.

Read More

Copyright of “Public Facts”: Craigslist v. PadMapper (updated)

Craigslist was meant for the common good, or as founder Craig Newmark puts it, “doing well by doing good”.  At least, that has been its announced mission since it began as an email distribution among friends. Craigslist kept its mantra through its rise to Silicon Valley stardom, snubbing multi-million dollar buyout offers and fighting attempts to monetize the site along the way.

The physical layout of Craigslist hasn’t changed much over the years. Point your browser in its direction and, like an old friend, you’ll be greeted with the same underlined blue links you’ve known for years. Fans are legion, but so too are critics: Critics see stagnation in this comfort, some of whom have taken matters into their own hands through attempts at innovation. However, as some have already discovered, developing tools to work around (critics would say “enhance”) Craigslist’s simple functionality can invite legal response. Is an early darling of Silicon Valley showing a decidedly uglier side, or is Craigslist still simply looking out for the common good?

This past July, Craigslist filed a lawsuit in the US District Court, Northern District of California, alleging that apartment-hunting site PadMapper and its data exchange partner, 3Taps, unlawfully repurpose Craigslist postings and therefore undermine “the integrity of local Craigslist communities, ultimately harming both Craigslist and its users.”  While the complaint parallels Craigslist’s “common good” business model, 3Taps CEO Greg Kidd sees it differently. “We believe Craigslist is acting like a copyright troll,” Kidd recently told AllThingsD.  Kidd’s company provides PadMapper an API for data about Craigslist postings that 3Taps gathers via means it claims are not subject to Craigslist’s Terms of Use and that likewise do not violate Craigslist’s copyrights.

This isn’t the first time Craigslist has claimed such violations, including several now-shuttered earlier services built on top of Craigslist’s platform. In July 2010, Newmark took to Q&A site Quora to defend his company’s actions in a case similar to Padmapper’s, saying he did not take issue with sites that do not affect Craigslist’s servers. “Actually, we take issue with only services which consume a lot of bandwidth, it’s that simple,” Newmark wrote.

June 22: Craigslist sends Padmapper a cease and desist letter and blocks PadMapper from pulling CL ads (at least from doing so directly).  According to CL’s complaint (filed July 20th), traffic to Padmapper immediately plummeted.  

PadMapper claims not to siphon off Craigslist’s servers. Through its partnership with 3Taps, PadMapper accesses a database of Craigslist listings found and organized from search engines including Google and Bing.

 July 9: Padmapper re-launches using 3Taps data.

July 20: Craigslist sues 3Taps and Padmapper.  CL claims:

  • Copyright infringement (for the CL site and for CL listings)
  • Contributory copyright infringement (against 3Taps)
  • Breach of contract (TOS)
  • Trademark infringement
  • Trademark dilution
  • Unfair trade practices

Perhaps that’s why Craigslist is now requiring users to “expressly grant and assign to Craigslist all rights” to enforce the copyright. Other sites like Yelp! and Facebook only require a non-exclusive license to their users’ content. But even if courts interpret this as a legally binding transfer of copyright to Craigslist, facts, like those in classified listings, often cannot be copyrighted. Therefore, it is possible that details such as an apartment’s price, address and number of bedrooms will not be protected.

This is of course Greg Kidd’s argument. “No Terms of Use can ride roughshod over the fact that there is no copyright in facts,” Kidd says. “Padmapper’s use of exchange posting is not infringing use. It is fair use or free use … of public facts.” According to Kidd, PadMapper could just be the beginning to what could be, “a whole class of use case conflicts if this stands.” Via this interpretation, as Kidd sees it, “a [Craigslist] posting retweeted via Twitter is going to be just as problematic as one through PadMapper.”

This argument inelegantly ignores 2 obstacles under contract and copyright.

Contract

First contract law, by virtue of the binding nature of Craiglist’s TOU as a contract.  So, as Craigslist notes in its complaint:

[3Taps and Padmapper] regularly accessed the CL website and affirmatively accepted and agreed to the [TOU] to, among other things, test, design, and/or use the software that allows Defendants to provide their services.  Likewise … Defendants regularly accessed the CL website with knowledge of the [TOU] and its prohibitions against copying, aggregating, displaying, distributing, performing and derivative use of the CL website and any content posted on the CL website … and regularly access the CL website and copied, aggregated, displayed, distributed, and made derivative use of the CL website and the content posted therein.

3Taps disagrees: 3Taps cannot be bound by Craigslist’s TOU, since 3Taps never touches Craigslist’s servers to obtain the data it provides via its API.  Says Kidd:

The [CL] data in question is indexed by public search engines and is made available in the public domain.  One does not have to belong to or even go to Craigslist to find this information on the description, price, and time of availability of a posting. The information is freely available in the public domain and is a fundamental component of transparency of supply and demand and price discovery that are the foundation of free markets.

Craigslist then says that 3Taps’ argument about not directly accessing data from Craigslist is absurd:

3Taps copies all of craigslist’s content – including time stamps and unique craigslist user ID numbers – and makes it available to third parties for use in competing websites or, for whatever other purpose they wish. On information and belief, 3Taps is obtaining this content by improperly accessing craigslist’s website and “scraping” content.

Copyright – Facts and Facts

Kidd’s “public domain” argument – challenging Craigslist’s private ownership of public “facts” – has its own problems.  That’s because there are public facts and … there are public facts. For starters, what makes an apartment listing a public fact? Arguably, an apartment listing is a private piece of information uniquely created and formatted by a landlord and Craigslist: How listed, what information is listed, what pricing, etc.  Perhaps not the most highly creative of copyright subject matters protected by “original works of authorship fixed in any tangible medium of expression” US Copyright Act (Title 17 US Code), but nonetheless protected by copyright.

No, Craigslist may not be able to protect names and addresses, but it may be able to protect Craigslist’s particular presentation of those names and addresses.  And Craigslist makes this very point in its complaint, claiming that 3Taps “displays craigslist’s copyrighted content in virtually identical visual fashion to the manner in which they appear on craigslist.”

August 1: After filing its July suit, Craigslist amends its TOU, telling users they were not permitted to cross-post their sales items anywhere else on the internet:

Clicking ‘continue’ confirms that Craigslist is the exclusive licensee of this content, with the exclusive right to enforce copyrights against anyone copying, republishing, distributing, or preparing derivative works without its consent.

August 5: Craigslist instructs all general search engines to stop indexing CL postings.

August 9: CL amends its TOU – again – to remove “exclusive license” language from its TOS:

Second, Craigslist may be able to rely on copyright arguments similar to those historically made by mapmakers and telephone book publishers, where the compilation of otherwise public facts is itself copyrightable. (See, for example, Feist Publications, Inc. v. Rural Telephone Service Co., 499 US 340 (1991).)  This argument, where the unique presentation, design, layout, or formatting give a compiler a copyright edge, still gives scant protection to the component parts, but it can give viability to a legal claim of misappropriation.

Other Arguments – Trademark and Unfair Competition

Craigslist makes other legal arguments, including most notably trademark infringement and dilution claims and California state law unfair competition claims.  These are subjects beyond the scope of the present discussion, although they do seem to raise the kinds of issues that the likes of Rockefeller Plaza in New York City deals with: Once a year, every year, the plaza is closed to public access in order to allow its owners to continue to assert their private ownership.   Perhaps Craigslist, too, feels some periodic necessity to remind its users that freedom of internet use is not free.

September 24: 3Taps files answer and counterclaim against CL.  Counterclaims:

  • Antitrust
  • Unfair competition
  • Interference with economic advantage

From 3Taps antitrust counterclaim complaint:

3taps is not alleging that craigslist acquired its widespread monopoly power improperly – far from it; craigslist should be applauded for bringing online classifieds into the modern age and achieving its initial dominance over various U.S. markets for the “onboarding” (i.e., the process of inputting and uploading factual content on the internet) of user-generated classified ads by those seeking a personal exchange transaction for various goods and services, including apartment rentals, jobs, personal services, general goods, and other sales.

What 3taps is complaining about is how craigslist has maintained (and continues to maintain) its monopoly power in these three related markets. Certainly, craigslist has not maintained this power by competing on the merits. Indeed, for years, craigslist has espoused the classic principles of a monopolist that believed it did not need to compete: a “strategy” of “unbranding,” “demonetizing,” and “uncompeting” —the epitome of a lethargic monopolist. And why not?  As an unchallenged monopolist across these various markets, craigslist has generated revenues somewhere between $100-$300 million per year, and that’s without sinking any significant costs into research and development or innovation.

September 24: Craigslist launches its own mapping capability.

Bruce Fryer, an intern with Mirsky & Company, PLLC, contributed to this post.

Read More

What is a “Trademark Use”? Using Other’s Trademarks

What is a “trademark use”?  This question comes up in this way: You want to use a trademarked name or brand or logo (not yours).  You want to make commentary about the trademark, or simply reference the trademark in some way.

Trademark protections give their owners the right of exclusive use to the trademark, but only when used “as a trademark”.  If the use of the mark is for any purpose not a “trademark use”, that use does not fall within the exclusive rights of the trademark owner.

The Good and The Ugly – Trademark Use Examples

Some examples illustrate the point:

1. A magazine story features a photograph of a woman wearing a tee-shirt with picture of a Marvel Comics character.  The story is about the woman and her battle with a difficult disease, having nothing to do with the Marvel trademark.  The trademark is clearly incidental to the photo and to the story.

2. A cash-for-gold jewelry dealer in Toronto (featured in a New Yorker profile this past week) promotes his business through television commercials featuring the character “Cashman” dressed in a red cape and pair of blue tights and dollar signs on his chest.  “Cashman” bursts out of telephone booths to frighten desperate Torontonians into parting with their family heirlooms.  The owner of the Superman trademarks felt compelled to ask – nicely at first, not so nicely in the subsequent lawsuit – that “Cashman” stop trading on the Superman goodwill.

Read More

Actual Halloween (Trademark) Story (Part 2): “Field of Screams”

In March of this year, the U.S. District Court for the District of Maryland denied the preliminary injunction that the Pennsylvania “Field of Screams” had sought against the Maryland “Field of Screams.” Andrew Mirsky wrote about this case last fall, a trademark infringement action involving a haunted amusement house in Pennsylvania operating under the name “Field of Screams” and a Maryland operation of the same name.

The court’s opinion denying the preliminary injunction can be viewed here.  The preliminary injunction was denied on the grounds that the plaintiff was unable to show that its case was likely to succeed in court – the standard required to obtain a preliminary injunction.  

Read More

Trademarks: Apple Still Fighting “Video Pod”

Sector Labs, a California company that makes a smartphone-size video projector, filed a federal trademark registration in 2003 for the name “video pod”.

Apple, Inc. challenged the registration, filing an opposition to Sector Lab’s registration with the U.S. Patent and Trademark Office.  Apple claimed (among other things) that Sector Labs’ “video pod” “is extremely similar to Apple’s [“iPod” trademarks]”, “consists in part of a significant portion of [iPod] and the entirety of POD, which consumers use as an abbreviation to identify and refer to Apple’s iPod mark and products”, and that Video Pod “covers a device that is or will be used to transmit video for entertainment and other purposes” – much like Apple’s iPod.

Apple’s legal position is that Sector Labs registration would cause source confusion, namely a likelihood of confusion among consumers as to the source of the two companies’ products, and trademark dilution.  Or in other words, “video pod” would dilute the value of Apple’s iPod franchise by reducing the exclusive association in the marketplace of “pod” with Apple and its ubiquitous iPod.

Read More