Friday, July 24, 2009

No Vacancy at

Such a pity. tried, tried, tried to obtain a trademark in its name "," but alas the Court of Appeals for the Fed Circuit ruled the mark was a too generic. Too generic? Really? So, my hopes of getting a trademark in "" for my new business delivering milk might run into problems as well? Generic. Humph.

The Court said that the USPTO's Trial and Appeal Board's refusal of the registration was appropriate, and affirmed the TTAB's rejection of's argument that the “dot-com” suffix showed converted the generic term “hotels” into a brand name.
Really going out on a limb there, TTAB; bold, controversial assertion of the law.

Of course, in some deference to ("some," meaning not a lot, meaning the subtextual "what the hell were you thinking?" still applies), it appears that the website had originally sought to register its mark for the services of “providing information for others about temporary lodging; travel agency services, namely, making reservations and bookings for temporary lodging for others by means of telephone and the global computer network.” So it wasn't, e.g., just giving people access to hotels? Oh, you see that's where I was mistaken.

Seems the TM examiner had the same thought I did, that “” was “merely descriptive” of hotel reservation services. (No, it's for "providing information . . . .") In any event: denied. Possibly without even visiting the site (which looks a lot like a site where you make hotel reservations, folks), the TTAB affirmed the rejection, finding that “hotels” identified “the central focus of the information and reservation services” provided on the site, and concluding that “" was therefore simply a term that identified the focus of the service, and was thus "generic for the services themselves.” appealed, arguing that the mark was not generic because the Web site does not provide lodging and meals for its users and isn't synonymous with the word “hotel.” It further argued that its name had effectively acquired secondary meaning (or acquired distinctiveness), saying that the mark was widely associated with the company itself, and is not viewed as a generic term or common name for hotel services.

The Fed Circuit ruled that "the generic-descriptive-suggestive-arbitrary-fanciful continuum of words and their usage as marks of trade, there is no fixed boundary separating the categories; each word must be considered according to its circumstances.” In other words, while generic terms cannot themselves be registered as trademarks, descriptives may acquire distinctiveness and serve as a trademark.

But, the Court did not side with that that had happened in this instance. It agreed with the TTAB that "hotels" identified the core component of the services at issue, and that “” was the functional equivalent of granting a service mark to the unadorned word, “hotels,” which it was not about to do. In short, the Court found that the combination of “hotels” and “.com” did not produce a new meaning when used in combination with one another. It held that “registrability does not depend on the .com combination.”

So, is left without registered mark in the brand it has worked so hard to develop. What does this tell us? Talk to a trademark attorney before selecting a a mark in which you intend to invest mucho money? Now there's an idea!

Friday, July 17, 2009

Twitter: Password Security Breach

Was interviewed by the L.A. Times on this topic. The article is very interesting (my quoted comment just makes for a pithy conclusion). Here is the link

Wednesday, July 15, 2009

TechCrunch Publishes Confidential, Internal Twitter Documents

Techno/news website TechCrunch today published confidential, internal documents from Twitter, including Twitter’s financial projections (o.k., while it may be unseemly to repeat: Twitter projected it would bring in $400,000 in revenue this quarter and $4 million during the fourth quarter), and a document showing an internal discussion about a proposed reality television show (do we really need another? How about one in which we watch an over-worked lawyer typing out his blog in between sips of coffee and hoping to finish before his wife calls and says “If you’re not billing, come home!”).

Why would TechCrunch do this? Well, it’s fabulous publicity. It’s snarky, it’s quasi-newsworthy, it’s provoking. It will drive up traffic to their site, and thus increase (dramatically) their relevance and their value. Bingo! But, when the dust settles and the news moves to something more relevant (FLASH: Michael Jackson NOT Really Dead; Spotted at Disneyland’s Toontown), I suspect there will be some legal bills to pay.

As I’ve said before, stuffing your site with high quality, original content is an excellent way to increase readership and web traffic. Stuffing it with content poached from another site will only lead to trouble (or, as the case may be, increased readership and web traffic). Copyright protects a wide range of works being reproduced without the permission of the copyright owner. 17 U.S.C. § 102. This would include many of the internal documents TechCrunch decided to republish. Perhaps they’ve forgotten that the owner of the copyright has the sole right to authorize a reproduction of the work, distribute copies, or display it publicly. 17 U.S.C. § 106.

Or maybe they’ve decided to test the limit of a fair use defense. Remember the fair use doctrine? As the U.S. Supreme Court observed in Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, “some opportunity for fair use of copyrighted materials [is] necessary to fulfill copyright’s very purpose, ‘[t]o promote the Progress of Science and useful Arts. . .’.” I’ll bet my bonus that TechCrunch will argue that the fair use doctrine permits its republication because it was intended to spur discussion and debate (under that doctrine, as codified in 17 U.S.C. § 107, short quotations used “for purposes such as criticism, comment, news reporting, teaching … scholarship or research [are] not an infringement of copyright”).


But the analysis doesn’t stop there. Courts evaluate fair use by considering four factors: (1) the purpose and character of the use; (2) the nature of the copyrighted work; (3) the amount and substantiality of copying, and (4) the market effect. The most significant is the last one. If the copy lessens the demand for the original work, it’s difficult to claim fair use. On the other hand, if the copy is used strictly for purposes of parody, criticism, or news reporting, it’s more likely to be deemed “fair.” So if you happen to receive confidential, internal Twitter documents, and truly believe that they are news worthy, wouldn’t it be best to discuss them generally, quote selectively, and adhere to the principal that “less is more,” rather than “more and more and more”? Well, maybe. I suppose TechCrunch could still argue that what it took had no effect on the market, so taking more (ok, all) of the material didn’t reduce it’s value, but the better approach might have been to exercise some restraint from the get go.

Moreover, even if TechCrunch avoids liability on copyright grounds, it could still face a claim for misappropriation of trade secrets or unfair competition under California Business and Professions Code §17200 (which broadly applies protect against unfair and “unethical” conduct).

And notably, it does not appear that TechCruch would have much of a defense these claims under the Telecommunications Act of 1996, 47 USC § 230(c). As we’ve seen recently, that is a fairly robust Section that makes providers of interactive computer services immune from liability for content created by third parties. That is, the service providers are immune when sued “as the publisher or speaker of any information provided by” someone else. 47 U.S.C. § 230(c). For example, courts have found that this Section shielded the publisher where third party content was posted on a roommate matching site (See Fair Housing Council v. Roommate.Com, 489 F.3d 921 (9th Cir. 2007)); an on line newsletter (Batzel v. Smith, 333 F.3d 1018, 1031 (9th Cir. 2003)); and a blog entitled “” that warned consumers about unscrupulous practices and bad service. Certainly, Section 230(c) has also been used as a defense to claims of negligent misrepresentation, interference with prospective advantage, unfair business practices. But Section 230(c) loses its shielding strength where the service provider itself is deemed the speaker/poster of the content.

By the way, this is what Twitter posted on its blog about this: “We are in touch with our legal counsel about what this theft means for Twitter, the hacker, and anyone who accepts and subsequently shares or publishes these stolen documents. We’re not sure yet exactly what the implications are for folks who choose to get involved at this point but when we learn more and are able to share more, we will.”

Oh, I’m sure of it.

On the horizon (or so I predict): Twitter sends TechCrunch a “take down notice” pursuant to the Digital Millennium Copyright Act (17 U.S.C. §§ 512(c)), and then possibly sues; TechCrunch sees a big up tic in hits, and enjoys its time in the spotlight.

You're Invited! BC Edge, July 29, 2009, Noon Pacific Time

If you're reading this, you're invited to our next “BC Edge” roundtable on July 29 at noon PST.

This quarter's topic: "The Copyright Alchemists: From 'Happy Birthday' to 'This Land is Your Land,' Making Millions from Songs in the Public Domain."

The purpose of this roundtable is to bring together Bryan Cave attorneys from all practice areas (not just IP), guests and clients who share an interest in cutting edge intellectual property issues.

This quarter's topic will focus on instances where licensors have made money licensing of songs which they may -- on closer inspection -- not actually own.
Our special guests will include the Electronic Frontier Foundation's Fred von Lohmann, George Washington University's Robert Braunies, and music law attorney Michael Perlstein.

As with every BC Edge, the topic I've outlined is just the beginning: where the conversation goes from there is up to all who participate.

I hope that will include you.

Toll Free Dial In Number: 800-300-1596
Passcode: 949-223-7173