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Brand Venture IP's Ongoing Discussion On the Role and Function of IP Law in the World of Business and Brands
Sunday, January 20, 2013
Saturday, January 5, 2013
Essential ®eading: The Google Shortcut to Trademark Law
From the Yale Law School Information Society Project, Lisa Larrimore Ouellette has written a compelling companion article that highlights many of the important issues she recently discussed at a presentation delivered at Oxford University.
Click here to download the article.
To provide our readers with a preview and overview of the truly important read for trademark practitioners and intellectual property law academics alike, we borrow from the abstract she has used to describe the thesis and contents of the 52 page paper, a paper sure to be receiving much justified attention in the coming months in the legal community and the IP law community in particular.
Borrowing from her abstract, her paper contends the following with respect to the value and utility of the Google Search Engine and its ability to function as a primary reliable source when seeking to determine the strength of a trademark and the likelihood that a particular trademark will be or is being confused with another trademark or several existing trademarks:
"The strength of a trademark — the extent to which consumers view the mark as identifying a particular source — is difficult to evaluate in practice. Assessments of “inherent distinctiveness” are highly subjective, survey evidence is expensive and unreliable, and other “commercial strength” factors such as advertising spending are poor proxies for consumer perceptions. Courts often fall back on heuristics and intuition rather than precise logical analysis.
But there is a simpler way to determine whether, when people look for a mark, they mean to find a certain product: Google. Google dominates the web search market by correctly predicting what people think of when they type a word or phrase, and Google results thus can increase the predictability and accuracy of the subjective tests in trademark law. Courts have generally given online search results little weight in offline trademark disputes. But the key factual questions in these cases depend on the wisdom of the crowds rather than expert judgment, making Google’s “algorithmic authority” highly probative.
Through a study of federal trademark cases and contemporaneous search results, I argue that Google can generally capture both prongs of the test for trademark strength: if a mark is strong — either inherently distinctive or commercially strong—then many top search results for that mark relate to the source it identifies. The extent of search overlap between two different marks can also be relevant for assessing the likelihood of confusion of those marks. In the cases where Google and the court disagree, I argue that Google more accurately reflects how consumers view a given mark." (Ouellette, Lisa Larrimore, The Google Shortcut to Trademark Law (January 3, 2013). Available at SSRN: http://ssrn.com/abstract=2195989).
As the Internet and Internet searches become an increasingly ubiquitous part of our society and their use as evidence in trials and as part of the trademark examination process increases, it will be interesting to see how the thesis presented in this paper holds up and whether courts and administrative agencies are resistant to the role of internet searches increasing and as such reticent of these online tools being given too much recognition or probative value in determinations of trademark strength and likelihood of confusion with other trademarks.
Click here to download the article.
To provide our readers with a preview and overview of the truly important read for trademark practitioners and intellectual property law academics alike, we borrow from the abstract she has used to describe the thesis and contents of the 52 page paper, a paper sure to be receiving much justified attention in the coming months in the legal community and the IP law community in particular.
Borrowing from her abstract, her paper contends the following with respect to the value and utility of the Google Search Engine and its ability to function as a primary reliable source when seeking to determine the strength of a trademark and the likelihood that a particular trademark will be or is being confused with another trademark or several existing trademarks:
"The strength of a trademark — the extent to which consumers view the mark as identifying a particular source — is difficult to evaluate in practice. Assessments of “inherent distinctiveness” are highly subjective, survey evidence is expensive and unreliable, and other “commercial strength” factors such as advertising spending are poor proxies for consumer perceptions. Courts often fall back on heuristics and intuition rather than precise logical analysis.
But there is a simpler way to determine whether, when people look for a mark, they mean to find a certain product: Google. Google dominates the web search market by correctly predicting what people think of when they type a word or phrase, and Google results thus can increase the predictability and accuracy of the subjective tests in trademark law. Courts have generally given online search results little weight in offline trademark disputes. But the key factual questions in these cases depend on the wisdom of the crowds rather than expert judgment, making Google’s “algorithmic authority” highly probative.
Through a study of federal trademark cases and contemporaneous search results, I argue that Google can generally capture both prongs of the test for trademark strength: if a mark is strong — either inherently distinctive or commercially strong—then many top search results for that mark relate to the source it identifies. The extent of search overlap between two different marks can also be relevant for assessing the likelihood of confusion of those marks. In the cases where Google and the court disagree, I argue that Google more accurately reflects how consumers view a given mark." (Ouellette, Lisa Larrimore, The Google Shortcut to Trademark Law (January 3, 2013). Available at SSRN: http://ssrn.com/abstract=2195989).
As the Internet and Internet searches become an increasingly ubiquitous part of our society and their use as evidence in trials and as part of the trademark examination process increases, it will be interesting to see how the thesis presented in this paper holds up and whether courts and administrative agencies are resistant to the role of internet searches increasing and as such reticent of these online tools being given too much recognition or probative value in determinations of trademark strength and likelihood of confusion with other trademarks.
Monday, December 24, 2012
Did the Estate of Mario Puzzo Make Paramount an Offer They Couldn't Refuse?
In a new development in the dispute between the Puzo Estate and Paramount Pictures, Paramount Pictures and Mario Puzo's heirs agreed to drop legal
action that began when the movie studio sued "The Godfather" author's
estate to prevent the publication of a sequel to the novel about a
Mafia family.
The parties voluntarily dismissed the lawsuit, according to a stipulation filed Thursday in federal court in Manhattan. No details were given.
According to an article in The Portland Press Herald:
While the real "mafia" is reportedly a shell of its former self and its various iterations exist on the fringes of a society well aware of its ruthless nature, its archaic and loosely adhered to code of honor (thank you RICCO and automated 25-life sentencing), and its indefensible methods of ensuring compliance with its demands and resolution of its disputes, this present dispute, while reports reflect an innocuous transgression of events, does cause one to take pause and wonder if there is a studio head at Paramount with a headless horse or barely survived an unwelcome visit from a real life Luca Brasi.
The parties voluntarily dismissed the lawsuit, according to a stipulation filed Thursday in federal court in Manhattan. No details were given.
According to an article in The Portland Press Herald:
"Paramount said in its complaint that after Puzo died in 1999, the company agreed to allow Bertelsmann's Random House to publish one "Godfather" sequel, "The Godfather Returns," which came out in 2004. The estate published another novel, "The Godfather's Revenge," in 2006, without Paramount's approval, the studio said. Paramount sued after the estate announced a plan to publish a third sequel, "The Family Corleone."
The sequel, written by Ed Falco, was published in May by Grand Central Publishing, a unit of Paris-based Hachette Livre. The terms of an interim settlement reached earlier this year stated that proceeds from the book would be put in escrow pending the outcome of the litigation, court papers said.
Paramount claimed the Puzo estate infringed its copyright with the publication of the novel and infringed its trademark with the design of the book. Puzo's heirs said that the contract between the late author and the studio gave him certain rights, including book publishing."
Thursday, October 25, 2012
Brand of Interest: Presidio Sports
Unlike local newspaper coverage, Presidio Sports had the ability to offer readers the benefits of real time reporting and free news coverage, two significant advantages local newspapers are unable to offer its readers. Unlike national media outlets, whether online websites such as ESPN or national newspapers such as the L.A. Time, Presidio Sports brand and operations are deeply rooted in the Santa Barbara community and focused solely on local sports stories and local event coverage from the high school to professional level.
In some cases, national sports stories are featured when there is some connection to the Santa Barbara area, for instance, when a professional sports figure gains national attention and grew up in the area of attended UCSB, Presidio Sports will cover such stories without deviating from the brands focus on local sports coverage.
Founder, John Dvorak, came up with the idea for the website while working in the sports section of the Santa Barbara News Press. Frustrated with the limitations of printed media and the dwindling readership that was increasingly impacting newspapers both locally and nationally, he took his passion for sports reporting and brought it to the Internet, a transition that was ahead of its time when the site launched but is now the trend followed by almost all printed media publications. Now century old media brands such as Newsweek have only just recently transitioned their publications to an online only format.
Through local strategic partnerships, the integration of audio-visual content, real-time reporting, strong relationships with local sports programs and the schools where they are based, and the hard work of a small but talented group of local journalists, Presidio Sports is not only a case study for the successful transition to online news reporting, but also exemplifies the increasing need for news publications to successfully monetize their websites as advertising revenue is being redistributed from printed newspapers to other advertising platforms.
Presidio Sports has weathered the first few years since its launch and has found success by embracing the online media platform that was the premise behind the brand since its inception. Given its growing readership and its ability to offer those benefits afforded to the users of online platforms (live streaming of sporting events, lower overhead, and more creative advertising opportunities), Presidio Sports is well situated to become not only a viable alternative to local and national newspapers in the Santa Barbara area, but the leader in local sports coverage in Southern California. Don't be surprised to see many other publications follow suit, and be ready for Presidio Sports to one day be the trusted source of sports journalism in your area as well.
Click here to take a look at the Presidio Sports website.
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