Seattle Trademark Lawyer

Mel Simburg and I presented today at the King County Bar Association IP Law Section’s monthly meeting. As discussed, it was on recent developments in rights of publicity.

Our slides are accessible here.

Great turnout, and interesting discussion. Here are some of the highlights:

• Parties who oppose expanding rights of publicity argue that amending statutes to expand such rights impoverishes the public domain and hurts third parties (like photographers and publishers) who relied on the public status of such rights.
• Creative parties defending against expanded rights accorded to the heirs of deceased personalities also argue that the new right constitutes a valuable windfall that wasn’t probated (and thus improperly wasn’t subject to estate tax).
• There’s a tension between copyright and state statutes granting a right of publicity, which could lead to arguments about copyright preemption.
• It’s an open question how far a plaintiff can stretch trademark law to get rights akin to those that are not available under a statutory right of publicity (i.e., if a plaintiff can’t assert publicity rights on behalf of a celebrity who died before the statute that granted the right of publicity was enacted, can it obtain similar rights under the Lanham Act?).
• Indiana’s expansive statute — the country’s broadest — may be in the process of being narrowed in court. This summer, the Southern District of Indiana found that the heirs of persons who died before the right of publicity statute was enacted can’t avail themselves of rights under the statute.  See Dillinger, LLC v. Electronic Arts, Inc., __ F.Supp.2d __, 2011 WL 2446296 (S.D. Ind. June 15, 2011). Courts also don’t automatically enforce contractual choice of law provisions agreeing to resolve disputes in Indiana according to Indiana law. See CMG Worldwide, Inc. v. Uupper Deck Co., Inc., 2008 WL 4690983 (S.D. Ind. Oct. 22, 2008).
• One correction: I stated that Judge Zilly’s order declaring parts of Washington’s publicity rights statute unconstitutional wasn’t available on Westlaw, which I found curious because it’s an important decision. Well, it used to not be available, but I just found it on Westlaw, so it apparently is now.

Seattle’s new Hotel Hotel. Catchy (though unprotectable) name.

Seattle’s Fremont neighborhood has new accommodations: Hotel Hotel.

It’s a cute name, if not downright fashionable.

The problem is that if it succeeds, anyone can copy it. That’s because the trademark is generic. (For those nonlawyers out there, a generic trademark denotes the category of good or service, rather than a particular source of goods or services within that category. For that reason, it can’t serve as a trademark or be protected as one, no matter how well known it gets. Think you could protect TELEVISION as a brand of TVs?)

I’ve looked for the generic BEER beer of my youth. Or, should I say, beer that I noticed at the supermarket when I was a kid. Generic beer that actually said BEER in black letters on the can. That’s always epitomized generic trademarks for me.

Until now.

I hope Hotel Hotel is great success. (So far, the reviews are good.) The downside is if it catches on, it’ll have imitators it can do nothing to stop.

Seattle’s Mars Hill church, just a few months removed from a trademark issue involving a Seattle graduate school of the same name, has gotten into another trademark scrape, a Christian magazine reported last week.

The Seattle church alleged in a cease-and-desist letter that a Sacramento, Calif.-based church had infringed its name and logo.

The California pastor who received the letter said his church designed its logo in 2007, and he noticed the Seattle-based church’s name and logo when he visited Seattle in 2009. At the time, he thought the Seattle church had copied his church’s design. Not so — Mars Hill (Seattle) reportedly adopted its logo in 1996.

In the end, the California church is going to change its logo but not its name, as the Seattle church initially demanded.

Earlier this year, the Christian Mars Hill Graduate School — located only blocks from one of the church’s sites — said it would change its name because of the confusion it had experienced. However, there’s no indication the church encouraged the school to do so. (STL post here.)

The lesson here for trademark owners is the same one the church-graduate school issue raised. If you’re the later-adopter, you need to be sure you’re not infringing the senior user’s rights (i.e., causing a likelihood of consumer confusion with the earlier-adopter). If you are, you’re the one that’s probably got to change to resolve the infringement.

As is now clear, Mars Hill is a common trademark for services associated with Christianity (be it a church, graduate school, or other provider). As such, the ability of one user to complain about other users that similarly have adopted the popular mark, is limited. But that’s not to mean later-adopters can appropriate the mark in a way that would lead consumers to believe there’s a connection between the later-adopter and the earlier user.

It’s nice the churches have worked out their differences. It’s just too bad the junior user didn’t research the landscape of existing use of its mark before it began using it. Changing a trademark — even if it’s just a logo — isn’t fun.

A potential second lesson is the regret Mars Hill (Seattle) has expressed over not addressing its concerns with the Sacramento church by telephone before sending its cease-and-desist letter.

“In hindsight, we realize now that the way we went about raising our concerns, while acceptable in the business world, is not the way we should deal with fellow Christians,” Mars Hill (Seattle) said in a blog post. “We made a mistake in not calling these churches prior to sending the letter. We should have picked up the phone before sending any other communication.”

I think that’s good advice regardless of what business you’re in.

At first I found this a little annoying.

The U.S. Patent and Trademark Office has announced a public meeting to discuss the feasibility of “intellectual property associations providing continuing legal education programs focusing on trademark policing measures and tactics.”

The discussion is in response to the Trademark Technical and Conforming Amendment Act of 2010, which, among other things, required the Department of Commerce to report to Congress about trademark bullying. The PTO did so (STL post here), and one of its recommendations was to “engage the private sector regarding continuing legal education programs focused on trademark policing measures and tactics.”

In other words, the PTO’s solution is to see what bar associations can do to address the problem. Sure sounds like it’s passing the buck.

But after further thought, I agree that bar associations and intellectual property industry groups are in a good position to address this problem. That’s because it largely lies with a few misinformed lawyers — lawyers who apparently tell their client they need to send cease-and-desist letters to every conceivable trademark infringer, threaten litigation, and follow up that threat by filing suit if the ostensible infringer doesn’t back down. It’s this senseless over-reaching mentality that needs to be corrected, and the PTO’s got the right idea. It should start with educating the lawyers who give that advice.

In reality, most trademark attorneys know they can pick-and-choose their battles. There’s no doctrine that says a trademark owner forfeits its trademark rights if it doesn’t wage a scorched-earth campaign against anyone and and everyone who could possibly infringe its mark. That fact should be obvious, since the test for trademark infringement is “likelihood of confusion” (i.e., a probability that consumers would be confused), not the “possibility of confusion.”

Most lawyers get this. The overwhelming majority. But there are a few who clearly don’t. They’re the ones who need to be educated, and a good way to reach them is through IP bar associations and industry groups.

For those in the vicinity of Washington, D.C., the PTO’s discussion will take place from 2-3 p.m. on Nov. 29 in the 10th Floor atrium conference room (10D31) of the Madison West building on the PTO’s Alexandria, Va., campus. The PTO asks those planning to attend to email their names to TMFeedback@uspto.gov no later than Nov. 25 with the subject line “public meeting.”

My foreign LL.M. students are sometimes skeptical that parties listen to the court when it orders them to do something, or to stop doing something. That’s apparently not always the case around the world. But here, fortunately, parties obey court orders — or suffer the consequences.

The consequences have not yet come to pass in T-Mobile USA, Inc. v. Terry. But they will.

In April 2010, T-Mobile filed suit in the Western District against Sherman Terry and a number of John Does, who T-Mobile claimed was selling unauthorized T-Mobile SIM cards and unlocked cell phones.

T-Mobile’s complaint specifically alleges that “Defendants are engaged in, and knowingly facilitate others to engage in, unlawful business practices involving the unauthorized and unlawful purchase and resale of T-Mobile Subscriber Identity Module (‘SIM’) cards and fraudulent activation of those SIM cards for use on T-Mobile’s FlexPay service, as well as the unauthorized and unlawful bulk purchase and resale of T-Mobile prepared wireless telephones, unauthorized and unlawful computer unlocking of T-Mobile Prepaid phones, alteration of proprietary software computer code installed in the Phones for T-Mobile, and trafficking of the Phones and SIM cards for profit.” T-Mobile alleges those acts amount to trademark infringement and false advertising, among other things.

In December 2010, the Court entered a preliminary injunction barring Mr. Terry and those acting in concert with him from purchasing, selling, altering, using, or shipping T-Mobile SIM cards, PIN numbers, activation codes, and other things needed to activate service or acquire airtime in connection with T-Mobile phones; purchasing, selling, unlocking, altering, advertising, or using T-Mobile prepaid handsets; and purchasing, selling, unlocking, altering, advertising, or shipping any device that bears T-Mobile’s trademarks, among other things.

Apparently, one of the defendants Mr. Terry didn’t heed the court’s order, because T-Mobile moved for an order of contempt.

On Oct. 21, the court granted T-Mobile’s motion. The court’s order — which states Mr. Collette Terry admitted he had violated the injunction — is recounted below.

“Following notice to the defendant, George Collette [presumably one of the John Doe defendants], a trial was scheduled for October 21, 2011 at 2:30 p.m. Plaintiff put on its first witness who testified about the actions of George Collette in violation of the Preliminary Injunction issued in this case. George Collette confessed that he violated the injunction. The Court, by clear and unequivocal evidence, finds George Collette guilty of civil contempt. The Court defers any sanction at this time. George Collette has assured this Court that he will not violate the injunction in the future. If subsequent acts by George Collette, [are] in violation of the injunction, the Court will address the issue of compensatory and coercive measures, to include the conduct which is the subject of this Order.”

There are a few lessons to be learned from this case, but I think they’re pretty obvious.

The case cite is T-Mobile USA, Inc. v. Terry, No. 11-5655 (W.D. Wash. Oct. 21, 2011) (Leighton, J.).