Seattle Trademark Lawyer

Wikipedia “went dark” Jan. 18 to protest PIPA and SOPA,
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Last week, Congress went from PIPA and SOPA to OPEN.

These are the acronyms for the federal bills aimed at curbing the sale of counterfeit goods through foreign Web sites.

It was a remarkable change. Congress had broadly supported the Senate’s Preventing Real Online Threats to Economic Creativity and Theft of Intellectual Property Act (PIPA or PROTECT-IPI) and the House’s similar Stop Online Piracy Act (SOPA). Indeed, the Senate was scheduled to vote on PIPA on Jan. 20.

But Google, Wikipedia, and other online providers fought back. They argued the bills’ authorizing the Justice Department to order search engine providers to remove foreign Web sites that sold counterfeit goods from search engine results — rendering them invisible for practical purposes — constituted censorship, turned search engine providers into the Internet police, and unfairly threatened them with liability if they did not comply.

So on Jan. 18, they launched a coordinated campaign against the bills. Wikipedia, most dramatically, “went dark” by making its content inaccessible to illustrate what would happen to a violating site if the bills passed. Google and others implored visitors to oppose the legislation.

That same day, both the House and Senate introduced a compromise bill, the Online Protection and Enforcement of Digital Trade Act (OPEN). The new bill moves enforcement authority to the International Trade Commission, directs compliance efforts at payment processors and advertisers doing business with foreign Web sites that are “primarily” and “willfully” infringing the trademarks and copyrights of U.S. owners, and gives the site owners an opportunity to be heard. It also excepts Web sites that follow reasonable notice-and-takedown policies when IP owners complain about infringing content.

And, voila, congressional support for PIPA and SOPA seemingly evaporated. Even some of the bills’ co-sponsors withdrew their names and said they would oppose the measures if put to a vote.

It’s remarkable how quickly it happened. Not to mention how PIPA and SOPA instantly became cocktail party fodder — and not just with intellectual property lawyers.

The text of OPEN is accessible here; Wikipedia treatment here. At first blush, I’m in favor of it. Some parts of our economy are getting hammered by counterfeiters. Our enforcement tools are expensive and cumbersome. If a counterfeiter, its Web site host, and its domain name registrars are all located in Foreign Country X, a rational counterfeiter may very well take his chances with a U.S. court whose power only extends to U.S. borders. OPEN seems to address that problem, and isn’t as heavy-handed as PIPA and SOPA.

Until someone convinces me otherwise, I think it’s a big improvement over the status quo.

I lost a good friend and mentor last week. The whole Seattle legal community did.

George Bassett — the first person I was fortunate enough to work with when I joined Graham & Dunn — passed away after a courageous, years-long battle with cancer. I can’t think of a better example of how to practice law, treat others, and live life. George had a zest for it all. He was honest and respectful to a fault. He had so many interests and was so well-read, I doubt he ever got bored. He was a real role model — an embodiment of what to strive for in life.

Here’s what Graham & Dunn had to say when it broke the sad news on Friday:

“Our beloved friend and partner George Bassett passed away on January 19, 2012, peacefully, at home with his family. George grew up in Michigan and moved to Seattle in 1969, after having graduated earlier that year from Michigan Law School. George was an upstanding member of the Washington bar for more than 42 years, practicing first in the state attorney general’s office, then as a founding member of the Bassett & Morrison law firm, and finally as a shareholder at Graham & Dunn since 1991.

“After his family, and maybe fishing, George most enjoyed practicing law, and he was extremely good at it. Known as an astute and skilled litigator who achieved great results for his clients, George also was universally recognized for maintaining the highest standards of civility and professionalism throughout his career. He was always ready with a kind word or sage advice whether he was a colleague or an adversary. A rare man, George will be greatly missed.”

Well said. 

George will be greatly missed, indeed. I know I will never forget him.

I’ve got a fantastic opportunity coming up.

In February, I’m going to Guangzhou, China, with Chief Judge Randall Rader of the Federal Circuit and Washington, D.C., attorney Michael Remington to help train 200 Chinese judges at the National Judges College in new developments in U.S. intellectual property law. Chief Judge Rader’s got patent law, Mr. Remington has copyright law, and I’m covering trademark law.

So, trademark developments have been more on my mind than usual.

And this begs the question: what are the hot trends in trademark law?

Here’s what I’m chewing on:

• The proposed PROTECT-IP Act (Senate) and SOPA (House) bills aimed at stopping the importation and sale of counterfeit goods through foreign Web sites, and the downsides of each.
• Trademark bullying — over-reaching brand owners and how angry consumers pay them back.
• Keyword advertising, including which way the wind seems to be blowing in the Rosetta Stone v. Google appeal.
• Liability for online auctioneers following Tiffany v. eBay.
• Rights of publicity, including the Greene v. CMG appeal and how some states confer broad rights that likely differ from those recognized in China.

What am I missing? What would you want Chinese judges to know about?

Counterfeit! Wizard’s authentic (left) and Marticek’s counterfeit cards

In December, Seattle card-game maker Wizards of the Coast LLC sued New Jersey resident Victoria Marticek and a number of other defendants in the Western District for counterfeiting.

Among other things, Wizards alleged that Ms. Marticek uploaded YouTube videos depicting counterfeit cards for use in Wizards’ “Magic: The Gathering” game and encouraged consumers to purchase such cards through her online business, MTGReplica, and third party Web sites such as Etsy.com and iOffer.com.

Wizards alleged Ms. Marticek had offered at least 82 different counterfeit cards for sale.

Ms. Marticek agreed to a confession of judgment with a permanent injunction and monetary relief in the amount of $14,500. Judge Thomas Zilly entered the judgment Jan. 11.

Wizards’ similar claims remain pending against the other defendants, who have not answered Wizards’ complaint.

The case cite is Wizards of the Coast LLC v. Redmore, No. 11-02090 (W.D. Wash.).

In fishing, the more weight equipment can hold makes a big difference.

Therefore, misstating the breaking point isn’t playing fair.

That’s what fishing equipment maker SPRO Corp. alleged in the false advertising complaint it filed in the Western District against competitors Eagle Claw Fishing Tackle Co. and Wright & McGill Co.

The complaint alleges that defendants represent that each of their fishing swivel products has a breaking strength that exceeds a particular weight (e.g., “The packaging of Defendants’ Size 2 swivel states that its breaking strength is 230 pounds”).

The complaint also alleges that SPRO sent defendants’ swivels to an independent laboratory for strength and failure analysis, which determined that defendants’ swivels break at weights below their advertised breaking strength.

Defendants have not yet answered SPRO’s complaint. SPRO filed its complaint in September, but it did not ask the court to issue summonses for defendants until until last week.

The case cite is SPRO Corp. v. Eagle Claw Fishing Tackle Co., No. 11-1507 (W.D. Wash.).