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Thursday, 15 April 2010

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Actually, in some countries (including Poland) "copying a document" is almost unheard of - "xeroing a document" is the preferred form.

Also, the common term for the sport shoes is, in fact "adidas" (in plural). This also applied to mobile cassete players (remember those?) - these were invariantly known as a "walkman" in popular speech.

Obviously, the companies that own the respective trademarks (Xerox, Adidas, Sony) are not happy about the fact that they are no longer enforceable. This is what makes the "global" trademarks so tricky - yes, they may be protected in the USA, but could have lost the status in other places as they became generic names.

"In the era of print publications, there were relatively few sources of potential misuse to track."

...but, one could not just "google" their trademark to find it in those printed publications.

;~))

Cheers! Jay

Recently in the Netherlands, OLM (small, new company) lost a lawsuit to Heineken (whom I think you've all heard of) for looking too much alike:

http://i.fokzine.net/upload/100316_238961_olm_en_heineken.jpg

Well, you might look into what the Monster Cable company is engaged in. It seems to threaten everyone who uses the word "Monster" in any trade name with a lawsuit. This lawsuit can then be averted by giving equity in the business in exchange for not sueing. Quite profitable, I'm told - see here:
http://www.techdirt.com/articles/20090409/1525324455.shtml

Your example of McDonalds was perhaps a poor one as they just managed to bully a teenager for naming her charity festival "McFest." She was using the "Mc" from her own last name, but McDonald now claims a trademark over anything that begins with "Mc" now...
http://www.walletpop.com/blog/2010/01/17/teens-charity-name-draws-the-mcire-of-mcdonalds/

A friend who runs a recording studio called "Monster Island" was threatened by Monster cable some years ago and fought it successfully. He hasn't changed the name of the studio--

http://www.monsterisland.com/

I habitually referred to McDonalds as the Antichrist, but the Vatican warned me they have that one registered already.

"Obviously, the companies that own the respective trademarks (Xerox, Adidas, Sony)"

I would have thought that getting your name verbed in the way that Xerox, Hoover and Google have would be beneficial to your marketing. These companies have created a brand presence which is bigger than their brand. You won't hear manyone talk about Samsunging the carpets or Canoning a document.

Companies like Xerox and Kleenex may have successfully prevented publications from using their trademarks as a general turn and convincing the courts that these trademarks have not become generic terms, but in the real world they have. Nobody asks for a tissue, they ask for a Kleenex, ell ask for a tissue most places in Canada and you'll get looked at strangely.

Xerox is dying off as a term for photocopying, but photocopying itself is dying off, or at least photocopiers are, having been replaced by multifunction printers.

FedEx is in a better situation simply due to dominance. As a practical matter, it's FedEx and UPS as the primary couriers globally, so if you FedEx something, usually you are doing it via FedEx. Google is in the same situation, their dominance of the market is the only thing which keeps their trademark attatched to their product in the real world.

How about Crescent wrench(adjustable wrench) and Skil saw (circular saw)?

Quite a timely article, as I've been cteining this issue recently while creating a slogan for my photography business.

I'm determined to come up with something better than Headshots that open doors™. :-)

About a million years ago (OK, more like 1975) newspaper reporters who weren't absolutely scrupulous about certain trademarks regularly got phone calls from corporate reps paid to worry about this sort of thing. (What a sad job.....)

These were usually polite and ingratiating and often accompanied by small bribes.

"We ask that you capitalize Hula-Hoop because it's our trademark. We don't want to become another kleenex," was how it would go. "Where can I send your new Hula-Hoop?"

Or Frisbee.

Or even a case of Coke.

I was always mildly irritated that companies could pretend they owned the language I used.

Still am.

I'd be interested to know what Google's approach is to "Googling." I'm guessing they consider it a form of free advertising.

How do you protect a trademark? Simple; you register it! First come, first served; prior use and art don't particularly enter into it.

That's not entirely accurate. You can obtain rights to a mark either by use or registration.

re Photoshop -- I don't think this is a big problem for Adobe at the moment, but they need to be careful about it. AFAICT, "photoshop" is rapidly becoming the standard verb for the digital manipulation of photos, and if this trend continues Adobe could have a problem in a few years. THe real issue with Adobe (and Google) is marketshare -- as long as they maintain a dominant market position the use of those terms as a verb is no big deal. But if iphoto, apeture, and even lightroom continue to gain popularity, Adobe will have to take steps to ensure that "photoshop" is associated only with that particular product.

Interesting, but not directly connected to photography.

I've seen reference to people using 'shopped to mean Photoshopping a picture. That's the stuff that keeps IP lawyers up at night.

When I was over there in the States, there was a TV story (a whole show? don' remember anymore) about trademarks. It included the case of the state of Montana being sued by designer Claude Montana for... using the word Montana. Or some guy who had a shop he called Planet (something) being sued by Planet Hollywood for using the word planet.

Okay, I understand trademarks better now than I understood then, but such cases still look like attempts to have institutionally sanctioned racket. Just like Monster Cable.

Incidentally, there's a huge scandal over here about an attempt to take over the country's biggest food manufacturer illegaly. The people involved created a company in Malta to do... well, to syphon out money or something. :) They called it Apple. :)))

Henk Coetzee: "You won't hear manyone talk about Samsunging the carpets"

I don't know if it was accidental or intended, but I love the term "manyone" you have used here. The individual and the mass smudged together indistinguishably. Poetry.

Dear Isaac,

My choice of McDonalds was an excellent one. If you reread my article with a mind towards how the FACTS I present contradict the ASSUMPTIONS of that article's author and the teenager involved, you'll have a much better idea of how naive and ignorant people (read: that author and the protagonist) are about trademark.

Ms McKlusky mistakenly thinks her name gives her special status. It doesn't. If her name was Lauren Apple and she was a programmer and wanted to start up a software company, Apple (Computers), Inc might not be terribly happy if she called it "Apple Software" and they'd be extremely displeased if she tried to trademark that-- a trademark she'd be properly refused. So she has "Mc" in her name-- big whoop. Irrelevant.

Also note that McDonald's didn't object until Ms McKlusky attempted to register a trademark for her event. There's no evidence they attempted to prevent her from throwing her McFests until she tried to stake out legal turf. Then they very legitimately raised the legal question of whether her request for a trademark infringed on theirs. They didn't sue her, they didn't try to intimidate her, they simply filed an opposition so that it would go to a hearing. Too damn bad if she thinks that's a huge inconvenience for her. They're entitled to the hearing; their case is not obviously without merit.

To make an analogy, suppose there's a nice cherry tree that's close to straddling the boundary between your property and your neighbor's. There's a good chance it's on your side of the boundary, but it's so close as doesn't really matter. You've been OK with her picking as many cherries from the tree as she wants. Then one day she gets a notion in her head that she should build a fence along the boundary and it should circle the tree so it's legally enclosed on her property. Do you think at that point you might have some reason to ask for a proper survey and a judge to rule on the matter? (correct answer is : yes) Do you think she'd really have a defense if she said, "Well, you never stopped me from picking cherries, so you shouldn't object if I legally claim the tree? (correct answer is : no)

Also worth noting that McDonald's has said they want to settle this amicably-- they don't say that when they want to nail someone to the wall for unequivocal infringement.

And, again, I must repeat with emphasis-- IF YOU DON'T DEFEND A TRADEMARK, YOU LOSE IT. 


pax / Ctein
==========================================
-- Ctein's Online Gallery http://ctein.com
-- Digital Restorations http://photo-repair.com
==========================================

Dear Leon and others,

Well, I don't really care how Monster Cable and others are behaving badly. Whenever there is turf involved, whether it's intellectual, financial or real property, there will be bullies and people trying to use their muscle unjustly. Doesn't really have anything to do with the laws or their legitimate use.

~~~~~~~~~~~~~~~~~

Dear Jay,

That's one of the conundrums that interests me-- it's easier for companies to find infringement, but harder for them to herd the myriad and increasing hoards of cats. So, how does that affect their control of their trademarks?

Would still like to hear from some company/corporate/legal types about what the efforts and policies look like. Hint, hint. Comments, please?


~~~~~~~~~~~~~~~~~~


Dear Henck,

Success has unfortunate costs. If you, for example, were to become so famous in the US that you were a figure of public interest, you would lose a substantial amount of your legal protections against privacy infringements and libel. You might not wish that!

No company wants to become so successful that they become a generic. Then they lose control of the brand name that brought them their success.


pax / Ctein
==========================================
-- Ctein's Online Gallery http://ctein.com
-- Digital Restorations http://photo-repair.com
==========================================

My least favorite example of bizarre ideas of what can or should be trademarked is the Lone Cypress in California. Here is a blurb from wikipedia:

http://en.wikipedia.org/wiki/17-Mile_Drive
"In 1990 the Monterey Journal reported that Pebble Beach's lawyer, Kerry C. Smith, said "The image of the tree has been trademarked by us," and that it intended to control any display of the cypress for commercial purposes. The company had warned photographers that "they cannot even use existing pictures of the tree for commercial purposes."[1] Other legal commentators have questioned the Pebble Beach Company's ability to invoke intellectual property laws to restrict others' use of such images.[2]"

And here is a link to a story that describes how the Pebble Beach Co. has used their money and bugus trademark to bully people:

http://www.montereycountyweekly.com/archives/1999/1999-Jan-14/3172/1/@@index

While not exactly a trademark case, this is related and equally bizarre!

http://www.fastcompany.com/blog/fast-company-staff/fast-company-blog/eiffel-tower-repossessed

C'est la vie.

Well, you do Canon documents in Mongolia! ^^

Here's another one....try using "Kitty Litter" in a story....you must put the little © copyright symbol (option G on a Mac) at the end of the letters or your will get a letter from the Kitty Litter© company...at least we did in the newspaper business in years past...

Two non-expert thoughts: My impression is that there's only so much that can be done, and only up to the point where momentum reaches a tipping point. I imagine there are also benefits for a company to be so ingrained in the public consciousness.

Perhaps someone in the know can comment on Styrofoam, which is always acknowledged by institutional publications as a DuPont trademark, and used generically by everyone else to refer to any polystyrene foam. Right up against that tipping point, it seems to me.

Interesting case: When Psion sued Intel in 2008 to stop using the term "netbook", which it had trademarked in 1996, the companies eventually settled out of court "amicably" and Psion withdrew all trademark claims, legally genericising the term.

There is a fascinating Wikipedia entry on generic and genericised trademarks that is chock full of such references. The list of genericised trademarks include: aspirin, zipper, primal therapy, and freeware. Each with its own and sometimes weird story.

- robert e

P.S. Mike, this is fascinating, no doubt, but some of us are impatiently waiting to hear about the Waukesha fireball (and hoping for pictures)!

Ha, David, I was thinking of Monster Island too.

I disagree with Ctein about "Band-Aid" -- in my experience, it is indeed a common synonym for "adhesive bandage", and in fact, the preferred form.

Monster cable seems to be known for some nefarious bullying tactics regarding patent and trademark infringement. At least according to this link, Funny read.
http://www.audioholics.com/news/industry-news/blue-jeans-strikes-back
I hope the linky thing works, its my first time.
Bryan

I personally find the Xerox one very odd, as I had never heard of the term Xeroxing, or knew what Xerox sold (though I had heard the name) previous to hearing it on the internet. I live in UK, I don't know how common this is here.

Nico

Dear Adam,

Several folks have provided entertaining examples of the variations worldwide in usage. Some terms are utterly generic in some locations and utterly unknown in others. Goes to an aspect of trademark that I didn't get into, which is that trademarks have a geographic scope as well as a relevant-business one. There's no such thing a a simple 'trademark.'

~~~~~~~~~~

Dear Bob,

"Owning" the language is a necessity. Most business and product names are not new, invented words. There has to be some way for you to make sure that your business, or product, name isn't co-opted by someone else. Both for the sake of your reputation and income, and your customers' well-being. That's what trademark is for.

~~~~~~~~~~

Dear Petersson ,

Very much connected to the BUSINESS of photography. And I am not constrained to write solely about photography. In fact, 6 out of 7 readers (we polled them) would rather I weren't.

If it bores you, skip to the next article. I won't be offended nor feel snubbed [g].

pax / Ctein
==========================================
-- Ctein's Online Gallery http://ctein.com
-- Digital Restorations http://photo-repair.com
==========================================

Ctein:

I'm still scratching my head over "(McDonald's case is) not obviously without merit."

Obviously. Not.

Bill

Regarding Monster Cable and Blue Jeans Cable, the term "RCA Connector" is an excellent example of a genericized trademark. This type of audio connector was originated by the Radio Corporation of America (now just RCA) in the 1930s.

Dating myself here...but during the Watergate hearings in May of 1973 one of the Senators (Sam Irvin?) read a protest from Xerox Corp that the term "Xeroxing" was being used too frequently in the hearings as a substitute for "photocopying". Neat - Xerox Corp not only got to defend their trademark, but got free advertising on television and radio.

Disclaimer - the office I worked in then didn't have a Xerox machine...although we did have a photocopy machine.

As part of my job training a few years ago, I had a quick 45 minute crash course in copyright law. The most interesting thing the guy told us (he was a copyright/trademark lawyer) was that back in the 80s, Best Buy faced a lawsuit from a small mom-and-pop electronic store in Iowa that also called itself Best Buy. When the issue went to court, the Best Buy lawyers chose to argue that "Best Buy" was a generic term that shouldn't be subject to trademark law. The judge agreed with them and dismissed the mom-and-pop lawsuit.

The result? Since the precedent has been set, ANYONE can now open a store/business and call it Best Buy. The teacher explained that in this case, the smart thing for Best Buy would have been to give cash settlement to the mom-and-pop store, thereby maintaining exclusivity over the Best Buy name.

Unfortunately, I can't find any documentation or mention of this case on the internets. Little help, anyone?

This is no doubt irrelevant to the overall point, but "Band-Aid" has most definitely become a virtually universally used term to describe an adhesive bandage. I've known it as this my entire life, and it is extremely rare (in my experience) to hear anyone call it anything else. Before reading this article, I've never heard anyone use the term "adhesive bandage"! In fact, the term has gone into such widespread usage that people talk about "band-aid solutions"; that is, where a solution just covers up a problem without dealing with the underlying cause.

What about the fact that in Polish language word bicycle is actually "rower" (where "w" is pronounced as "v" in English)? As the story apparently goes, some 100 or more years ago, Rover (the company) was the most known supplier of bicycles in Poland. As a result "rover" ("rower" in Polish) has became the name for bicycle...

I hope your IP friend didn't tell you that if you're outside the registrant's "area of business," you're home free. You strongly imply that this is pretty much the case, whether you meant to or not. It most certainly is not the case. :)

In fact, aside from direct infringement (using the same or a confusingly similar mark for the same or similar goods and/or services) there are other things which trademark owners have the legal right to act against. The big one is that in many countries holders of "famous" marks can legally stop people from "diluting" their famous marks. The two main ways you can do this are by "blurring," which is doing something like opening "McDonalds' Photo Studio" and using a clown as your mascot, which "blurs" the famous mark by creating an association with unaffiliated goods, and by "tarnishing," which is associating the mark with something bad.

That latter comes up a lot with "famous" marks. I had a client who wanted to sell industrial jewelry using a mark which was the name of a particular famous Medieval torture device that I can't specify because a musical entertainment services provider threatened to sue him into oblivion because they felt that his use of the name would tarnish their mark for their musical entertainment services which happened to be the same.

In exchange for not suing him into oblivion for already having used it on his tiny little website for goods totally unrelated to anything they sold or ever had sold, he agreed to never bring it up again and as his attorney I do likewise. If he'd had the budget to fight, I think the claim was laughable, and that's my professional opinion, but here's where this kind of thing is *really* relevant to a lot of photographers. If you tick off somebody who spends more on lawyers every month than your house cost, the fact that you're in the right is but one factor of many to consider.

I think it's disgusting, personally, but the law is the law.

To add to the fire with a comment of small relevance... locally, there are several small businesses that bill themselves as variations on 'Jacko's Bobcat Hire'(substitute own first name). I often wonder if the owners of these businesses know that 'Bobcat' isn't a generic term for a skidsteer loader, but an actual trademark. The funny thing is, most of them use machines from companies other than Bobcat...

I'm not a lawyer, but probably one should be consulted before giving much more advice on this topic.

One particular thing to be aware of is that certain marks have extra strength, because they are "famous trademarks", and receive special protection -- even outside of the company's sphere of business.

The definition of what, exactly, is famous is blurry and as far as I can see from a layperson's point of view inconsistently applied (and there's an addition to the law from 2006 which stipulates that the mark must be famous outside of just one specific niche, but it's apparently still pretty broad), but there's no question that names like "Coca-Cola", "Disney", and, yes, "McDonald's" are in fact famous marks with special extra protection.

Dariusz reminded me: tooth paste used to be known as kalodont here, which was the brand name of a wide-spread brand. AFAIK, it slowly goes out of use and you hear it only from people above certain age. :)

BTW, about the geographical extents of a trademark and trademark "looks"... There used to be company called Selk around here. They manufactured digital watches and their logo looked just like the logo of Seiko which, around here, was known as the manufacturer of digital watches then. The company went out of the watch business years later but I don't know that Seiko ever sued them.

Dear Matthew,

Oh, you're never going to find me giving ADVICE on how to handle trademarks. Copyright law I understand pretty well-- almost at the attorney level. Patent law, I can kinda fake my way through. Trademark law, not a bit. It's got enough weirdnesses, mostly born of practical business necessity, in it to make it rocket-scientish.

pax / Ctein

Ctein said,

"To make an analogy, suppose there's a nice cherry tree that's close to straddling the boundary between your property and your neighbor's. There's a good chance it's on your side of the boundary, but it's so close as doesn't really matter. You've been OK with her picking as many cherries from the tree as she wants. Then one day she gets a notion in her head that she should build a fence along the boundary and it should circle the tree so it's legally enclosed on her property. Do you think at that point you might have some reason to ask for a proper survey and a judge to rule on the matter? (correct answer is : yes) Do you think she'd really have a defense if she said, "Well, you never stopped me from picking cherries, so you shouldn't object if I legally claim the tree? (correct answer is : no)"

Eh, not exactly right, though probably right most of the time. The little tiny town I live in -- in which Ctein has actually set foot, and where I will eventually erect a 'Ctein was here' monument, just had to deal with an issue like this, and found that "customary use" had overruled legal (surveyed) property lines, in not one, but two cases. In the first case, there was a space between two houses which was legally surveyed as right-of-way for a street. The street never was built, for the very good reason that it would go over a bluff into a lake. Over many years (decades, actually) the landowners on both sides had taken over the strip and used it as part of their lawns. Then a developer who had a tract of land off the lake had advertised new homes as having "lake access" -- and when the buyers asked where the access was, he pointed to city maps that showed the right of way going over the bluff. This led to a major hassle (the pathway would have been within feet of one man's house) and eventually the "customary use" prevailed, and the right-of-way was officially vacated by the city.

In another case, it seems that two survey monuments had been misplaced during a survey from the early 1900s. If you measured from one official monument, lot lines were in one place; if you measured from another, they were in another place. The difference was only about six feet, but a number of houses, because of the odd conformation of lakeside lots, would come very close to crossing their neighbors' lot lines if measured from one direction. The city decided, no, that customary use rules.

If the cherry picking lady could establish that the cherry tree had been assumed to be on her side of the line, and that everybody acted that way for years, she might have an argument...

The Mcdonald's example raises an interesting question,which is related to the Adobe product: what of derivative usage? Which, I suppose, is why they asked. But the derivatives seem to come from common usage (McLibel, McJob etc). So there's a nice circular argument (just the stuff for lawyers) - common usage begets the derivation begets the new infringement, which leads to the original usage becoming infringement (unless it's merely in the registering that the infringement occurs, the point of inquiry McDonald's were raising). It's enough to make one's head spin.
Which leads to the Adobe point. They are pretty specific on their website what constitutes proper use. So what if derivative of Photoshop start being used as nouns or verbs for generic photo editing? Would they start to be enforceable or not?
And related, is Adobe's passive protection (instructions on their website) enough to start forming a protection defence?

And even more - does the mere act of becoming sufficiently powerful to be considered generic in this way start to lead to cometition/monopoly issues? That would be even more incentive to make a defence.

There's a big gap between what will pass in a law court and what companies will threaten other companies/people with. The Monster Cable Company is a fine example of this - the potential income from settlements is way larger and more likely to happen than the potential loss from a court case.

In San Francisco, there is an Irish "McDonald's pub" right next to a McDonald's. I have no idea if they can keep the name due to prior use or McD doesn't care or what.

Robert E:

Perhaps someone in the know can comment on Styrofoam, which is always acknowledged by institutional publications as a DuPont trademark, and used generically by everyone else to refer to any polystyrene foam.

Trademarks can be generic in one usage and associated in another. The most famous case is Aspirin, which was originally Bayer's trademark for aceytlsalicylic acid in medical usage. In some jurisdictions, it got genericized for the consumer market, but retained its trademark for the pharmacy market for some time and in fact in many jurisdictions is still a protected trademark. (Interestingly, in the US and some other countries, it specifically lost its trademark status as part of the war reparations set forth in the Treaty of Versailles.)

It may be that to thee and me (assuming you're not a person in a relevant industry) all polystyrene foams anything like Styrofoam are "styrofoam," but it could also very well be that to a person in such an industry, when he thinks of "Styrofoam," he thinks of DuPont's specific product marketed under that trademark. "Plexiglass" is another good example of this - to layfolk, any "plastic glass" used to seal openings but retain visibility is "plexiglass" or "plexi," but to an engineer, the proper word to use is PMMA or acrylic glass or whatever, and they associated Lucite and Plexiglas with specific manufacturers.

M

Marc,
The two Trademark-related letters I remember getting as a magazine editor were about Plexiglas and Phenidone. The latter is Ilford's trade name for 1-phenyl-3-pyrazolidinone, a developing agent. I was informed in both cases that that I needed to capitalize the words to indicate that they were proper nouns. That was it!

Mike

@Ctein,

Point well taken: the bullies are not the norm. But they take their cues from somewhere, to be sure! More to the point, perhaps: the fact that the 'web makes everyone a publisher notwithstanding, it may well be that this does not give all communications any more weight than ephemeral conversation. The fact that a lot of this casual conversation is stored for much longer than we are used to may lead to different perceptions of what constitutes a publication, but the fact that it's stored somewhere and can be retrieved is not the same as that it's actually "published" in a sense that calls for immediate action from trademark holders.

So shortly put: I think trademark holders are wise to keep going after the "big infringers" or stake their claim only when someone else makes a counterclaim which they cannot ignore.

However, the current confusion about what constitutes publishing does expose innocent bystanders to incidental bullying. And the Monster case fits in somehow too: the WWW makes it easier to find people to bully!

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