trademark – Techdirt (original) (raw)

from the how-is-that-better? dept

We’ve talked a great deal about the trademark adventurism of famed burger chain In-N-Out. While In-N-Out has shown itself to be a happy trademark bully in several ways, most of our posts on the company have to do with the trademark tourism it engages in. This is the process by which the company puts up a popup restaurant once every couple of years in countries where it otherwise has no presence, purely so that it can retain registered trademarks in those countries to keep anyone else from using a similar name.

This isn’t one of those cases. Instead, this is more of the straight up trademark bullying scenario, in which In-N-Out wields questionable trademarks to bully other local businesses out of using the same or similar terms to what is trademarked. Fair Play is the name of a sports bar in San Diego and it had on its menu two items: “Animal Fries” and a “Double-Double.” Both are trademarked terms owned by In-N-Out, with the former being for fries topped by cheese, onions, and dressing, while the latter is for a burger that has 2 patties and two slices of cheese. “Animal Fries” is a term that is at least somewhat fanciful, though I would argue it is still very simplistic. “Double-Double,” on the other hand, is at least partially descriptive, as it refers to the number of two ingredients in the burger.

Regardless, Fair Play received a cease and desist notice from In-N-Out and reacted roughly as you would expect. First came the irritation over having received the notice in the first place:

‘Cease & Desist what you’re doing right now, you’ve gotta see this,’ Fairplay wrote in a social media post on National Cheeseburger Day along with a photo of the redacted letter. ‘We’ve officially been recognized by Big Burger!’

In the letter, the chain reminded Fairplay that it owned ‘multiple federal and state registrations’ for the use of the words ‘animal’ and ‘double-double’ in relation to ‘burgers and restaurant services.’

Note that In-N-Out somehow got the USPTO to grant it a trademark for restaurant services for the single term “animal”. That’s fairly odd, considering part of what In-N-Out is selling is cooked, well, animal. That sure seems entirely too generic to be deserving of a trademark.

But thanks to the USPTO granting that and the arguably descriptive “double-double” mark, In-N-Out is able to bully smaller entities in this way. And since trademark bullying tends to work due to the mismatch in legal war chests, Fair Play has agreed to change the names of these two menu items. Although perhaps not in the way that In-N-Out would have wanted.

In compliance with the letter, the restaurant did change the name of the menu items, but not before poking fun at In-N-Out’s non-trademarked phrases, including renaming their animal fries to ‘Secret Menu Fries,’ which retail for 12and12 and 12and28, depending on size.

They renamed the sandwich to ‘Burger Burger,’ which costs $16, according to its new menu.

“Burger Burger” is just inherently funny, but the real prize goes to “Secret Menu Fries.” In-N-Out is quite famous for having it’s absolutely not secret “secret menu” where you can order items that aren’t listed out for you. In fact, In-N-Out has some measure of fame for this practice. But it doesn’t have a trademark on the term, because that would be plainly too generic and/or descriptive to be deserving of a mark. And so now we have “Secret Menu Fries” at Fair Play as a result.

Look, it’s nice to see victims of trademark bullying having some fun with all of this, but in the end this is all still very annoying. Nobody is walking into Fair Play thinking that the double-double that was on the menu somehow meant there was some affiliation with In-N-Out. And the point of trademark law is to avoid that very sort of confusion.

Which means in this case that In-N-Out, once again, is just being a trademark bully.

Filed Under: animal fries, double double, trademark
Companies: fair play, in-n-out

It Happened Again: Child In UK Initially Denied Passport Over Copyright

from the stop-it! dept

It happened again and it has to stop. Back in 2014, we talked about how a UK woman had trouble getting her passport approved because her middle name was “Skywalker” and the UK’s passport office for some reason thought that Disney would have to give its permission to have the passport approved. There is nothing about a passport that would bring copyright into play, of course, and the passport office was simply wrong. But then it happened again a decade later, this time to a woman who named her daughter Khaleesi, after the Game of Thrones character. In this case too the passport office initially informed the woman that it couldn’t process a passport for her daughter without permission from Warner Bros. After this all made news internationally, the passport office reversed course and processed the passport application.

That was only a few weeks ago. And now it’s happened again, this time once again over someone who’s middle name is “Skywalker.”

Christian Mowbray, 48, is a serving soldier in The Corps of Royal Engineers at the Rock Barracks in Sutton Heath, near Woodbridge. He and his wife Becky, a former serving soldier, booked a holiday to the Dominican Republic at the end of October, the family’s first since 2014 due to their demanding work schedules and Becky’s struggles with Complex PTSD.

However, when they tried to secure a passport for their youngest child, Loki Skywalker Mowbray, the Home Office refused it on copyright grounds, telling the family to either change his name or get permission from the copyright owner, Disney.

Once again, this is nonsense. There is nothing about copyright law in the UK that somehow gives naming rights and restrictions for the children of private citizens to companies like Disney. And if someone really couldn’t get a passport because of a their given name, that’s exactly what would be occurring. And the idea that two soldiers, one retired, would have to put up with this nonsense from their own government is a shame.

Now, as you’d expect, the Home Office eventually corrected itself and began processing the passport. But once again, just as we said the last time this happened, that agency needs to educate its workforce to keep this from happening again. If for no other reason than it must be really embarrassing for them.

Filed Under: passport, skywalker, trademark, uk
Companies: disney

Nintendo, Pokémon Co. Sue Pocketpair Over ‘Palworld’ For… Patent Infringement?

from the a-patent-for-what-exactly? dept

Well, it took awhile, but we finally got here. Earlier this year, we discussed the game Palworld shortly after its release. It made our pages because the game is clearly partially inspired by the Pokémon series of video games, with some very stark differences. Similarities aside, the characters in the game are certainly different than those in Pokémon games, coupled with the use of firearms in the game along with other game mechanics that made it demonstrably different than any other game. As we highlighted at the time, this made Palworld something of an example of how the idea/expression dichotomy works and we warned that, while Nintendo or The Pokémon Co. might eventually pursue legal action over the game, a copyright suit ought to have a hard time surviving a defense using that dichotomy.

Which is why, while I wasn’t terribly surprised to learn that Nintendo and The Pokémon Co. have in fact sued Pocketpair over its Palworld game, I sure wasn’t expecting to learn that it was doing so over patent infringement.

Nintendo and The Pokémon Company announced they have filed a patent-infringement lawsuit against Pocketpair, the makers of the heavily Pokémon-inspired Palworld. The Tokyo District Court lawsuit seeks an injunction and damages “on the grounds that Palworld infringes multiple patent rights,” according to the announcement.

Beyond mere copyright concerns, though, Nintendo’s lawsuit announcement specifically alleges patent infringement on the part of Palworld (though this difference could come down to vagaries of translation from the original Japanese). A lawsuit over patents would seemingly require some unique game mechanic or feature that has been specifically granted stronger protections by the patent office. While the Pokémon Company does hold a number of (US) patents, most of them seem to deal with various server communications methods or the sleep monitoring capabilities of Pokémon Sleep.

Adding to the mystery in all of this is that nobody but the plaintiffs seems to have any idea what these patents that were infringed upon could be. I tend to agree that perhaps there’s a translation issue at work here and this really is instead a copyright and/or trademark infringement suit, but we’ll have to wait for more to come out to see.

If it is patents, I’ll be surprised. I’ll be even more surprised if there is any validity to such a patent infringement claim. That’s just not typically how these things in the video game industry work.

But if it really is a trademark and/or copyright claim, it should fail and fail hard… if this suit were brought in the United States. In Japan, however, it’s more complicated. Japanese copyright law does not have an explicit idea/expression dichotomy in the way US copyright law has, but the courts there do sometimes give a nod to and use it in a similar way.

But any sane copyright law would allow for games to be inspired by, but not replicas of, an original work. The whole point of copyright generally is not to allow any one entity own the concepts that go into a video game, but instead the specific expression of the same. And, for what it’s worth, Pocketpair too appears to be confused as to what this is all about.

“We have received notice of this lawsuit and will begin the appropriate legal proceedings and investigations into the claims of patent infringement,” Pocketpair says in a statement. “At this moment, we are unaware of the specific patents we are accused of infringing upon, and we have not been notified of such details.”

And so now we wait to see what the actual details here are. Frankly, sans some translation issue, none of this makes much sense to me. And while Nintendo and The Pokémon Co. certainly have shown themselves to be willing to stretch IP laws to be the bully generally, this seems to go beyond the norm.

Filed Under: copyright, idea expression dichotomy, japan, palworld, patents, pokemon, satire, trademark, video games
Companies: nintendo, pocketpair, pokemon company

from the getting-crabby dept

It’s amazing just how many of the trademark disputes we cover here are only disputes because the USPTO granted a trademark that it shouldn’t have. The examples of this sort of thing are legion, but they typically revolve around trademarks that are either generic, descriptive, or both.

Which brings us to Chickie’s and Pete’s, a chain of sports bars based out of Philadelphia with locations throughout the country. Chickie’s and Pete’s has a menu item for which it got a trademark. That item is “crab fries”. What are crab fries? Well, according to the company’s own menu, they are fries topped with crab meat and a side of dipping cheese sauce. If that doesn’t make the term 100% descriptive, it is very damned close. Making this slightly more confusing is that the history of their crab fries is such that it didn’t always include crab meat. Originally, it was just Old Bay spice that went over the fries.

But the USPTO granted the trademark anyway. And since then, the restaurant has bullied and/or sued other eateries over their own use of the term, sometimes to hilarious lengths.

The first trademark for Crab Fries was registered in 1998 when Chickie’s & Pete’s expanded to Veterans Stadium. Two years later, the company went after a Northeast Philly restaurant called Tony’s Place for serving a menu item called “crab fries” similar to those made by Chickie’s & Pete’s. Their victory in court helped set the precedent that “crab fries” was legally protected regardless of the actual food involved, BillyPenn reported in a rundown of the trademark’s history.

The owner of Tony’s Place put Chickie’s & Pete’s trademarks to the test again in 2013. Despite losing the earlier case, the restaurant began showing photos of crabs next to the word fries. In an 85-page complaint, Chickie’s & Pete’s argued this created “subliminal confusion” in the marketplace and caused “irreparable harm” to the business. A federal judge ruled that putting crab photos next to fries also infringed on the trademark, but denied claims of unjust enrichment that would have allowed Chickie’s & Pete’s to seek restitution.

The obvious question is if you were going to create a food item that consists of french fries topped with crab meat, what would you call it? You could go with a fanciful name and trademark it, sure. But if you’re not the sort of restaurant owner that wants to trademark every last item on your menu, you might just call them the obvious: crab fries. Because it’s descriptive. Except you can’t, or else Chickie’s and Pete’s lawyers will come calling.

And that’s what happened most recently to Betty’s Seafood Shack in New Jersey, which had a menu item for crab fries until it received a cease and desist letter from Chickie’s and Pete’s.

In what may be the most literal example yet, Betty’s Seafood Shack in Margate received a cease-and-desist letter from Chickie’s & Pete’s lawyers last week saying the restaurant couldn’t use “crab fries” to describe fries topped with jumbo lump crab meat and house-made queso, according to an Instagram post by the restaurant. The post includes a photo of the letter citing Chickie’s & Pete’s three U.S. Federal Trademark Registrations.

That Instagram post was itself confusing, as it appears the lawyers don’t really even know what is on their client’s menu. Here is the description from Betty’s as to the conversation they had.

“So I called the attorney, and asked, ‘does Chickie use crab in their Crabfries?’ He said, ‘uh, no….I don’t believe so,'” the post says. “Then I asked, ‘Does Chickie use Queso on their Crabfries?’ And he said, ‘no, they don’t.’ So I said, ‘then Betty’s is allowed to serve Crab and queso on fries as long as we don’t call them Crabfries, seeing you don’t put any crab on your Crabfries?’ And he said, ‘Yes, that’s right.’ I can’t make this stuff up. I said, ‘ok.'”

Betty’s Seafood Shack agreed to drop the Crabfries name and instead go with “Jumbo Lump Fries” when offering the special in the future.

“We have Ceased and Desisted and concurrently have entered The Twilight Zone,” the post says.

Except for two things. First, Chickie’s and Pete’s absolutely does put crab meat and queso on at least some of its crab fries. Second…it shouldn’t fucking matter! The term is descriptive in nature and not a fanciful term. If you walk up to a random person that has never had this food at all and asked them what they think crab fries are, they are overwhelmingly likely to answer that it’s a combination of french fries and crab meat. Which is what Betty’s was selling.

Whatever that is, it is not trademark infringement. The USPTO never should have granted this mark in the first place and I can’t for a second imagine a world in which the mark would survive a petition for cancellation. But, as we always say, trademark bullying works. In this particular case, the menu name for Betty’s has been changed in lieu of expensive litigation.

Filed Under: crab fries, trademark
Companies: betty's seafood shack, chickie's & pete's, tony's place

Ravinia Festival, Ravinia Brewing Settle Trademark Suit With A Name Change

from the trademark-bullying-works dept

I absolutely hate it when I have to write yet another “trademark bullying works” post. For the better part of a decade now, we have been writing about disputes between the Ravinia Festival Association, which operates the large outdoor concert venue and eatery north of Chicago, and Ravinia Brewing, a brewery based out of the same area. If you haven’t read those previous posts, there is one central fact you have to keep in mind in all of these stories. While both organizations operate out of what is now the suburb of Highland Park, that area was previously the incorporated Village of Ravinia. The village was eventually annexed into Highland Park in 1899, but the locals have retained the nickname for the area ever since. In other words, trademarks for “Ravinia” are, in large part, geographic marks.

But that didn’t stop the RFA from threatening the brewery shortly before it opened in 2018, claiming its name constituted trademark infringement. As a result of the threat from a much larger entity, Ravinia Brewing agreed to several restrictions in order to stave off any lawsuits, including how much of its beer cans could be taken up by the word “Ravinia”, restrictions on the opening of new locations, restrictions on putting on concerts, etc. In late 2023, the RFA claimed Ravinia Brewing had violated several of those restrictions, nullifying the agreement between the two organizations, and subsequently resulting in a trademark infringement lawsuit.

Now, I argued strongly that this is a fight worth fighting. The real original sin in all of this was the USPTO granting an overly broad trademark to the RFA for a geographic marker. Geographic markers typically enjoy more narrow protections than your average trademark, yet the RFA wielded its marks like a cluster bomb. And it seemed for all the world as though Ravinia Brewing was willing to fight this fight.

But in the end, trademark bullying works most of the time. Large organizations with sizable legal war chests can simply drain their victims either into non-existence or, in lieu of that, into submission. And that appears to be exactly what happened here as we learn that the trademark suit between these two has been settled.

Nearly one year after a trademark fight ended up in Chicago federal court, Ravinia Festival and Ravina Brewing announced a settlement Friday, with the craft brewer agreeing to rebrand.

While the terms of the settlement were not disclosed, Ravinia Brewing plans to abandon its hometown moniker while Ravinia Festival will both drop its trademark infringement lawsuit and help the brewery during the name change.

“After considerable discussions, we’ve reached a mutual agreement that puts our disputes behind us and enables us to both move forward,” Ravinia Festival and Ravinia Brewing said in a joint statement. “The agreement affirms Ravinia’s trademarks and provides that Ravinia Brewing Company will announce a name change and a new brand, with Ravinia providing assistance during the transition.”

This sucks for all kinds of reasons, but first among them is the “affirms Ravinia’s trademarks” piece of this. Those marks shouldn’t be affirmed at all. They should be canceled as being an overly broad geographic mark that the RFA has already proven it is willing to use in ways geographic marks shouldn’t be used. And one wonders now if this precedent set will lead the RFA to go on a bullying tour for any other local businesses that also use the former name for the area.

While other businesses, from Ravinia Plumbing to the Ravinia Barbershop, continue to share the name, the hometown brewery is expected to announce a new brand “soon,” Walker said.

Were I those businesses, I would be contacting counsel to see what dangers may lurk here.

Filed Under: ravinia, trademark
Companies: ravinia brewing company, ravinia brewing ip, ravinia festival

Superbabies Petitions TTAB For Default Judgement Claiming DC/Marvel Failed To Respond Over ‘Superhero’ Trademark Cancellation

from the wait-really? dept

Some stories just don’t end the way you expect, and the way this one supposedly might is fairly surprising. Earlier this year, we discussed how the creator of the Superbabies comic, Scott Richold, filed for cancellation for the trademarked term “Super Hero” and several variants, all jointly owned by DC and Marvel with the USPTO. As that post noted, the fact that the term is still trademarked at this point is absurd all on its own.

But when Richold’s company applied for a trademark on his comic series, the idea that DC and/or Marvel could tell him that his application for what would be a fairly unique trademark would result in trademark infringement is bonkers. “Super Hero” and its variants are plainly generic, to the point of being the term for entire genres of film and fiction in a variety of formats.

When Superbabies Ltd. put together its cancellation request for the Trademark Trial & Appeal Board (TTAB), it submitted the filing with all kinds of uses of the term that had gone unpoliced by either DC or Marvel. In fact, the filing even included several instances of employees of DC and Marvel using the term in a way that demonstrates its generic nature.

Now, I figured there was a couple of ways this would play out. The most likely was that DC and Marvel would throw its enormous legal warchest at Superbabies Ltd. to try, and perhaps succeed, in making this all go away due to the cost of the fight. The second, far less likely outcome would have been DC and Marvel admitting the mark is too generic to be worth fighting over and simply agreeing to rescind those marks.

What I never expected was for DC and Marvel to simply fail to respond to the TTAB. But that’s what Superbabies Ltd. has indicated happened in its petition for default judgment earlier this month.

Petitioner Superbabies Limited (“Petitioner”) respectfully submits this motion for default judgment. In support of its motion, Petitioner states as follows:

1. On May 14, 2024, Petitioner filed its cancellation petition in this matter.
2. Under the Notice of Institution, Respondents (DC Comics and Marvel Characters, Inc.) were required to answer the petition by June 24, 2024. 2 TTABVUE 3.
3. On June 14, 2024, Respondents filed a motion to extend their Time to Answer to July 24, 2024. 4 TTABVUE. The motion was granted. 5 TTABVUE.
4. On June 20, 2024, counsel for Respondents entered a notice of appearance. 6 TTABVUE.
5. As of the Date of this Motion, Respondents have not filed an Answer to the Petition, nor have they requested any additional extensions of time to respond. Respondents have defaulted.

When I saw this and then conferred with our own Cathy Gellis, I had to go to the USPTO site and look up the cancellation case myself. I’m still wondering if there isn’t some sort of mistake here, or miscommunication, or failure to log a document, but the history of documents in this case does not show any response from DC or Marvel after the request for extended time.

If that’s how this story ends, it’s nearly as incredible as any super hero comic that either company has produced. And I would imagine that there are some executives very unhappy with their legal counsel. Though, also, even if there’s a default judgement, Marvel & DC could likely re-engage. But for now, it appears they have not.

And if it frees the obviously generic term “Super Hero” from the restrictions of trademark law, well, perhaps this isn’t the outcome we expected, but it’s the outcome we deserve.

Filed Under: default, super hero, trademark, ttab
Companies: dc, disney, marvel, superbabies

Kinetic Green Changes ‘Zulu’ Bike Name Slightly In Settlement With Yulu In India

from the all-this-for-a-single-letter? dept

Earlier this year, we discussed a trademark infringement suit in India between two eBike companies. One was Yulu, which operates the kind of eBike rental stations you can find in all kinds of cities throughout the world. The other was Kinetic Green, which sells a line of eBikes that it branded the “Zulu” bike. As I mentioned at the time, while this doesn’t come across as the kind of absolutely crazy claim of potential customer confusion given the similarities in the names, I still didn’t think such confusion would really arise:

As you will see, the look and feel of the products themselves is quite disimilar. Add to that the fact that Yulus seem to be in the category of eBike rental stations scattered throughout cities, versus the Zulu product just being a thing you buy, and it’s hard to see how anyone is going to seriously get confused here.

And now let’s tack on the fact that “Zulu” is itself a very recognizable term, having been the name for a large ethnic group that exists in southern Africa. This isn’t two fanciful names that sound alike, but rather one original name and one that has solid footing in the global lexicon. Again, where is the confusion really going to occur here?

Between that analysis and the fact that Kinetic Green indicated that it was essentially itching for this to go to trial, even asking the courts to push up the trial dates so they could get started, I had thought this dispute might actually go all the way to a trial decision. That doesn’t appear to be the case.

Instead, the two companies have entered into a settlement agreement. And while the full details of the settlement are not available, we do know that Kinetic Green’s eBike will be coming back to market, albeit with a nearly insignificant change to its brand name.

ETAuto learns that after settling the matter out of court, a Compromise Petition was filed in the Commercial Courts last week. With this move both parties will withdraw their respective contests in the courts. Under the settlement terms, Kinetic Green will rechristen the Zulu e-scooter as e-Zulu ‘shortly’. It will have another naming layer of Kinetic Green or KG in front of the tweaked brand name.

The article then quotes Kinetic Green talking about how it is satisfied with this resolution.

Which… of course it is? All it has to do is add an “e-” to the Zulu brand name to make the lawsuits go away. The obvious question in all of this is why in the world this is enough to satisfy Yulu. It’s complaint was that the “Zulu” brand was too close in name and sound to Yulu. Slapping an “e-” in front of “Zulu” does little if anything to change that. In other words, if Yulu thought it had a valid concern before, why doesn’t it now?

Perhaps it’s because Yulu’s lawyers warned the company that the suit might be a stinker. Or perhaps the addition of the KG name to the brand was enough to calm Yulu down.

Either way, this sure seems like a lot of time, energy, and effort all for a single letter and a dash.

Filed Under: confusion, ebikes, trademark, zulu
Companies: kinetic green, yulu

L’oreal Disputes Late Trademark Renewal Over ‘NKD’ Brand, With Which They’ve Coexisted For Years

from the late-to-the-party dept

One of the common excuses companies give when enforcing their trademarks in a way that is far more ham-fisted than is actually required is: “Hey, we have to police our marks or else we risk losing them.” This excuse often exaggerates that requirement, of course, as there is no need to police marks when there is no threat of public confusion or if the products operate in different markets. But what is notable about when this excuse gets trotted out is that it almost always happens when there is a brand new mark that has been applied for, or if a mark that is of concern gets approved by the USPTO without a dispute having occurred in the first place.

Which is what makes this attempt by fashion brand L’Oreal to block a small fashion brand so strange. We’ll start off with the basics, but you really need to hold off judgement until we get into the specifics.

A salon owner says she has been left exhausted by a long-running legal battle with global cosmetics giant L’Oréal. The French firm is opposing Rebecca Dowdeswell’s attempt to renew the trademark on the name of her business – nkd – in Leicester city centre.

L’Oréal has its own trademark on a series of beauty products called NAKED and has told the 48-year-old her use of the name nkd would cause “consumer confusion”.

So a couple of things to note here. First, nkd is a brand that isn’t meant to be a short version of “naked.” Instead, it’s meant to be read as each letter aloud, “N-K-D.” Also, the overall branding of the two brands are very different. However, as these products are both within the fashion market, you might be able to squint at all of this and see how there might be public confusion that L’Oreal might rightly be worried about.

But if that’s the stance that L’Oreal wants to take, it would be an exceptionally weird one. See, the nkd brand has existed since 2009 and was trademarked by Dowdeswell at that time. The problem is that she let the mark lapse and is now attempting to get it trademarked again, essentially from scratch.

“I should have renewed it straight away. I didn’t. That was a big mistake,” she said. “That six-month window ran into the start of Covid and chaos ensued for all businesses – including beauty salons -and I missed the expiry. When I came to re-register the trademark, I was essentially starting from scratch, not renewing an existing one. L’Oréal objected on the basis they owned the Urban Decay make-up brand which has a range of eye shadow palettes called Naked. I was very surprised because we have never been Naked. We’re spelled NKD, we are pronounced N, K, D.”

Ms Dowdeswell added: “There has never been any evidence of consumer confusion. In 15 years of trading, no-one has ever said ‘are you the same brand as Naked by Urban Decay?'”

The obvious point here is that one of two things ought to happen. Either L’Oreal should produce any counter-evidence it might have that there really was actual customer confusion that it can document from the previous decade, or else it should drop its dispute entirely. After all, it’s not often we get to run a real-world experiment as to whether customer confusion will actually occur, but in this case we have one. If these two brands coexisted peacefully for a damned decade, what justification for disputing the trademark could there now be?

And, even worse, nkd notes that it has even offered up to L’Oreal as part of a potential “co-existance agreement” that it would remove the trademark classifications for “non-medicated cosmetics” or “make up” as that’s where it might compete with L’Oreal. But L’Oreal’s response was to demand that it also not hold the “nkd” trademark on the “toiletry preparations” category, which is a category where nkd’s products do sit (while L’Oreal’s do not).

Meanwhile, Dowdeswell has spent a bucket of money dealing with all of this. That’s how trademark bullying tends to work, with a larger entity that enjoys a large legal war chest beating a smaller company into submission. Hopefully, that is not what occurs here.

Filed Under: bullying, likelihood of confusion, naked, nkd, trademark
Companies: l'oreal, nkd

UK Once Again Denies A Passport Over Applicant’s Name Due To Intellectual Property Concerns

from the papers-please dept

I can’t believe this, but it happened again. Almost exactly a decade ago, Tim Cushing wrote about a bonkers story out of the UK in which a passport applicant who’s middle name was “Skywalker” was denied the passport due to purported trademark or copyright concerns. The question that ought to immediately leap to mind should be: wait, nothing about a name or its appearance on a passport amounts to either creative expression being copied, nor use in commerce, meaning that neither copyright nor trademark law ought to apply in the slightest.

And you would have thought that coming out of that whole episode, proper guidance would have been given to the UK’s passport office so that this kind of stupidity doesn’t happen again. Unfortunately, it did happen again. A UK woman attempted to get a passport for her daughter, who she named Khaleesi, only to have it refused over the trademark for the Game of Thrones character that held the same fictional title.

Lucy, 39, from Swindon in Wiltshire, said the Passport Office initially refused the application for Khaleesi, six.

Officials said they were unable to issue a passport unless Warner Brothers gave permission because it owned the name’s trademark. But the authority has since apologised for the error.

“I was absolutely devastated, we were so looking forward to our first holiday together,” Lucy said.

While any intellectual property concerns over a passport are absolutely silly, I would argue that trademark law makes even less sense here than copyright would. Again, trademark law is designed specifically to protect the public from being confused as to the source of a good or service in commerce. There is no good or service nor commerce here. Lucy would simply like to take her own child across national borders. That’s it. Lucy had to consult with an attorney due to this insanity, which didn’t initially yield the proper result.

After seeking legal advice, her solicitors discovered that while there is a trademark for Game of Thrones, it is for goods and services – but not for a person’s name.

“That information was sent to the Passport Office who said I would need a letter from Warner Brothers to confirm my daughter is able to use that name,” she said.

This amounts to a restriction on the rights and freedoms of a child in a free country as a result of the choice their parent’s made about their name. Whatever your thoughts on IP laws in general, that simply cannot be the aim of literally any of them.

Now, once the media got a hold of all of this, the Passport Office eventually relented, said it made an error in denying the passport, and has put the application through. But even the government’s explanation doesn’t fully make sense.

Official explained there had been a misunderstanding and the guidance staff had originally given applies only to people changing their names.

“He advised me that they should be able to process my daughter’s passport now, ” she said.

Why would the changing of a name be any different? My name is my name, not a creative expression, nor a use in commerce. If I elect to change my name from “Timothy Geigner” to “Timothy Mickey Mouse Geigner”, none of that equates to an infringement of Disney’s rights, copyright nor trademark. It’s just my name. It would only be if I attempted to use my new name in commerce or as part of an expression that I might run afoul of either trademark or copyright law.

What this really is is the pervasive cancer that is ownership culture. It’s only with ownership culture that you get a passport official somehow thinking that Warner Bros. production of a fantasy show means a six year old can’t get a passport.

Filed Under: khaleesi, names, passport office, passports, trademark, uk
Companies: warner bros.

CrowdStrike DMCA’d A Parody Site In Wake Of Update Outage

from the great-plan-people dept

As you will no doubt be aware, on July 19th cybersecurity company CrowdStrike did an oopsie in an update it pushed to its Falcon Sensor software that took down millions of computers around the world. The result was chaos, with everything from hospitals to airlines to banks impacted by computers and servers that went into bootloops. A rollback was performed, which fixed some of the problem, but there were still millions of machines in the public that suddenly became BSOD paperweights until a slightly more complicated fix was implemented by end users themselves. Financial damage as a result has been estimated at roughly $10 billion, while CrowdStrike’s stock fell by double digits. I heard one analyst on CNBC remark that the company’s lawyers wouldn’t be making it to the beach this summer, and maybe next summer either, so inundated with lawsuits would the company be.

The point is that CrowdStrike had a very, very bad time. And when a company is having a very bad time like this, they tend to go immediately into damage control. The most important part of that damage control, as anyone in crises PR will tell you, is to be open and honest about the mistake, help to correct the mistake, and generally try to be as forthcoming and understanding of the outrage the mistake produced as possible.

Or, if you’re CrowdStrike, you sic a third party on a parody website making fun of your mistake, issuing a DMCA over a trademark claim. That’s exactly what the company did to clownstrike.lol, an obvious parody site that made use of CrowdStrike’s logo, altered to include a clownish getup. David Senk created the site partly as a laugh, but also as someone who is critical of over-centralization within the technology industry.

Setting up the parody site at clownstrike.lol on July 24, Senk’s site design is simple. It shows the CrowdStrike logo fading into a cartoon clown, with circus music blasting throughout the transition. For the first 48 hours of its existence, the site used an unaltered version of CrowdStrike’s Falcon logo, which is used for its cybersecurity platform, but Senk later added a rainbow propeller hat to the falcon’s head.

“I put the site up initially just to be silly,” Senk told Ars, noting that he’s a bit “old-school” and has “always loved parody sites” (like this one).

It was all fun and games, but on July 31, Senk received a DMCA notice from Cloudflare’s trust and safety team, which was then hosting the parody site. The notice informed Senk that CSC Digital Brand Services’ global anti-fraud team, on behalf of CrowdStrike, was requesting the immediate removal of the CrowdStrike logo from the parody site, or else Senk risked Cloudflare taking down the whole site.

Okay, there’s a lot to unpack here, because there’s a ton that went wrong here. CrowdStrike has made some mention that there were several nefarious actors on the internet that were setting up websites making use of its logo in an attempt to take advantage of the outage. It was to combat that, according to the company, that led it to contract with CSC to issue these takedowns.

“As part of our proactive fraud management activities, CrowdStrike’s anti-fraud partners have issued more than 500 takedown notices in the last two weeks to help prevent bad actors from exploiting current events,” CrowdStrike’s statement said. “These actions are taken to help protect customers and the industry from phishing sites and malicious activity. While parody sites are not the intended target of these efforts, it’s possible for such sites to be inadvertently impacted. We will review the process and, where appropriate, evolve ongoing anti-fraud activities.”

But that is an excuse, not a valid justification. CSC is CrowdStrike’s contractor that issued a faulty DMCA notice on a parody site. It’s actions are essentially CrowdStrike’s actions and the company ought to remain far more focused on not fucking up a sizable percentage of the world rather than this sort of thing.

Also, a DMCA takedown notice for… trademark infringement? That isn’t the proper mechanism for trademark violations at all. DMCA notices are for copyright.

Corynne McSherry, a copyright expert and legal director of the digital rights group the Electronic Frontier Foundation, told Ars that even using an unaltered logo can fall under fair use.

“There’s plenty of ways in which you could use a logo, and it would still be clear parody and perfectly lawful,” McSherry said, while noting that “courts have confirmed that” CrowdStrike was obligated to consider that claiming the use is illegal, “because fair uses are, by definition, legal.”

Perhaps the biggest issue with CrowdStrike “inadvertently” targeting parody sites with DMCA takedown notices, McSherry said, is that the DMCA should not be used for trademark infringement disputes.

“It is not an appropriate use of the DMCA,” McSherry said. Further, CrowdStrike saying “that it’s inadvertent says it was a mistake. But what that also means is: we weren’t being careful before we used this process. That’s another problem.”

And then there’s Cloudflare’s process for all of this. It is notable that Senk very clearly understands more about his rights than the average person. As such, he immediately filed a counternotice… which was ignored. Instead, Cloudflare sent a second warning notice to Senk over the site, which Senk also counterclaimed. But, because he uses his Cloudflare account as part of his larger business, he elected to move the site to an overseas provider so as to not risk his account.

Despite his bad experience, Senk told Ars that because Cloudflare is “too big to ignore,” he plans to continue using the company’s services for his other professional work. One reason why he promptly moved ClownStrike off of Cloudflare was out of fear that the bogus takedown might terminate his account, which he uses to assist many clients who use Cloudflare. Senk suggested that Cloudflare owes its customers more consideration in these cases.

“Corporations, like Cloudflare, are so terrified of being sued, they’d rather forward bogus requests and take down legal content than apply any judgment and common sense to the requests,” Senk told Ars. “This is partly caused by the incredible centralization of these same tech giants; however, it should not excuse the behavior. If anything, they should be held to a higher standard because they are ‘giants.'”

It’s hard to disagree with any of that, honestly. The way the DMCA process is implemented is typically heavily in favor of the complaint as opposed to the content in question. And that’s even when the communication channels for counternotices work, as they clearly did not in this instance. Far too much collateral damage is incurred when companies like CrowdStrike carpet-bomb websites over its logos, incorrectly mind you, without taking into account the potential for fair use rights and the like.

As for CrowdStrike, maybe spend a bit more time shoring up your process for rolling out updates and you won’t have to accidentally take out parody sites making fun of you.

Filed Under: copyright, parody, takedowns, trademark
Companies: cloudflare, crowdstrike, csc