WHAT WERE THEY THINKING REDUX OR WHAT IN THE WORLD WERE THEIR TRADEMARK LAWYERS THINKING?

Call it hubris, vanity, arrogance, pettiness, spitefulness- whatever the correct word would any of us want these words connected to our brand? Of course not!! .. So you say. But the smart folks at MoveOn.org and Lowe's are the latest to enter the cease and desist letter hall of shame.

First disclaimer. I very much admire MoveOn.org. Not counting the betrayus fiasco they have been an important voice from the left side of the political spectrum. Important voice or not, they put their political ( you choose the proper portion of the anatomy) in their mouth when they attacked Cafe Press, a website that lets people offer custom designed bumper stickers, T shirts, coffee mugs etc. As reported in the September 24th edition of the LA TIMES online, MoveOn.org sent a strongly worded letter to Cafe Press demanding that they stop selling some T shirts and bumper stickers that were critical of MoveOn. And the basis for their indignation? That Cafe Press was violating MoveOn's merchandising rights!!
These are the moments when I always find myself asking: What WERE they thinking? Something like

I have a great idea-- Why don't we, an organization whose raison d'etre is based on free speech, why don't we stomp on the free speech rights of some folks who have criticized us. We'll show them won't we!!

But MoveOn isn't entering the hall of shame alone. Lowe's wants to join them.

Second disclaimer. Jimmy Johnson is ok but I'm a Tony Stewart fan.
Anyone in retailing who is able to draw a breath has, by now, heard about the .sucks websites. Such sites are often established by disgruntled customers who use them as a podium to express their gripes. And though many have tried the votes are in--Courts all over the country have upheld the First Amendment rights of customers to establish such sites. Claims by brand owner that such sites infringe or dilute their trademarks have, almost without exception, been dismissed. And the language used by judges has often not been kind to brand owners.

Did that stop Lowe's or their trademark attorneys/ Heck No!! They fired off a nasty gram to the lowessucks site owner with the boilerplate trademark mumbo jumbo. Oh by the way- the site did not use any Lowe's brands.

As I have said, say now and will continue to say. The Internet changes everything. If it EVER made any sense to send off such letters -SURELY it don't make no sense anymore.

WHAT WERE THEY THINKING?

IN CASE YOU FORGOT... IT IS CRUCIAL TO KNOW WHAT THEY HAD FOR BREAKFAST

I have just finished reading The Nine, Jeffrey Toobin's widely acclaimed portrait of how the United States Supreme Court really functions. Based on a series of exclusive interviews with the justices, this is a book that every American should read as a matter of citizenship.

Make no mistake- this is not a gushing, fawning, tribute to a group of reclusive, detached, scholars -embarked on a mission to discover legal rules. To the contrary, the justices are on display as unmistakeably human- and often deeply flawed. Toobin traces the history of the Court from 1994-2005 to express his deep concerns about the present Court. In his view the evangelistic conservatism of the Court's new majority is undermining much of the Court's own precedent, in a manner that is abhorrent to Sandra O'Connor and other conservatives such as justice Rehnquist. Along the way, Toobin insightfully describes how the personalities and experiences of the justices influence the process by which they decide cases.
Through him we also gain access to the group dynamics of the Court- and how those dynamics change over time.
There is even a brief mention of a copyright case. In profiling justice Souter, Toobin applauds his performance in MGM v Grokster.

Ironically, Toobin also mentions Critical Legal Studies, a scholarly movement of the early 1980's that has strongly influenced my understanding of the law. This movment has been roundly criticized, with good reason- but for a moment, during its reign, we were forced to confront the fact that law is not separate from politics; rather law is but often the masked expression of political power.

This is a truth that we as a culture are loath to accept. We deeply want to believe that the process of judicial decisonmaking is a fundamentally different process from all other forms of decisionmaking. As Toobin documents, those on the left AND the right desperately seek to appoint judges who will adhere to predetermined beliefs in their rulemaking. Yet at the same time, liberals, conservatives and even the judges themselves, will speak of adhering to the rule of law -without regard to their own personal views. Part of the answer to this can be found in what I have seen called the relative autonomy of the law. Under this notion judges can indeed ignore their own beliefs..... SOMETIMES.....
On other occasions the judges will be unable to escape their own values or beliefs. Toobin cites the fascinating example that arose from a decision by justice Alito, when he served on the Third Circuit. One of the many abortion decisions that came before the Supreme Court involved a provision that required a married woman to get permission from her husband before she got an abortion. The provision was a minor part of legislation that otherwise reflected changing attitudes in America about abortion- keep it legal with some restrictions.

But for O'Connor, with her background of struggle as a woman, this provision was anathema. And so, as the swing vote, she shot down much of the legislation and overruled justice Alito. And she never forgot it. Indeed one of the other major themes of the book is how the old line conservatives on the court became more liberal as they were exposed to other cultures and other judicial systems. Influences that were seen as deeply UnAmerican by fundamentalist conservatives.

So, while I was deeply moved by the book, I was saddened by its truths. For I too would like to believe in an apolitical rule of law. But I cannot do so.

IS THIS WHAT WE HAVE COME TO?

Yesterday I attended the 17th l All Ohio Annual Institute on Intellectual Property, held in Cleveland and Cincinnati, Ohio each year. As always it was informative and, dare I say it, entertaining.
As I was settling into my chair for the talk entitled Professionalism: Developments in USPTO Practice, I was fully prepared NOT to pay attention. Since I don't file patent applications I knew that much of the talk would not directly concern me. But as the big cheese general counsel from the USPTO began to speak I found myself riveted upon his words.
As I said, I don't file patent applications, but I have been AROUND patent law for a long time. I have a passing familiarity with patent prosecution jargon. And I was aware that charges of inequitable conduct routinely arise when patents are in dispute.
But I had no bloody idea.

Big cheese PTO general counsel had a passel of PowerPoint slides and a well thought out speech. And his message was very clear.

No more submitting papers to the PTO without READING the papers.

Sorry but you can't continue to bury information that undercuts your patent application under a mountain of spurious stuff.

No more patent applications with 3,000 dependent claims.

Can't file a document and repeatedly support it with a a bogus check, or repeatedly fail to put money in a deposit account.

He had many other examples of what some people apparently believe to be proper advocacy.

I was stuuned. And saddened.

Sure, the importance of intangible property cannot be overstated. Admittedly, the stakes are often very high.

You can call me naiive. You can tell me that I don't undertand. And you will be right.

Because I cannot imagine being asked to do or doing any of the things that big cheese PTO general counsel described.

IT'S SOOOOO HARD BEING GOOGLE

I mean think of it. Here you are a third wave company awash in money. Trying your best to reshape culture, do good for humanity and oh yeah take over the world. In a post industrial post modern post capitalist post 20th century manner. But the old worn out rules of intellectual property keep making life unduly complicated. Never mind selling trademarks as key words- this is far more important. As owner of YouTube, Google is mulling over whether to oppose the efforts of a company called Netparty LLC to federally register the term JewTube. But wait there's more. Turns out there are two other JewTube sites. One in the UK and another JewTube.com that is indeed a video sharing site for people of the Jewish faith.

So what's Google to do? Take the view that we MUST squash you folks to protect our very very very valuable YouTube name? And the PR bloodbath? Well of course that's just post modern post everything business.

Ain't trademark law amazin.

DO YOU WANT DOCTRINAL FEEDBACK OR TRADEMARK EXTORTION WITH THAT BURGER?

I believe that the law expands and contracts over time. I hope to say more about this in the future. But for the moment please consider that intellectual property law- all forms of intellectual property law- is in a period of contraction. Two recent articles describe different ways in which trademark rights have become oppressive. The authors each suggest that the rights of trademark owners/holders should be cut back. And, based on the holdings of recent Supreme Court decisions it would seem that these commentators have a receptive audience for their views.

James Gibson, the Director of the Intellectual Property Institute at the University of Richmond,
School of Law, published an article in volume 116 of the Yale Law Journal titled, Risk Aversion and Rights Accretion in Intellectual Property Law. Gibson posits that due to what he calls doctrinal feedback intellectual property doctrine is inadvertently expanding entitlements and eroding the public's right of unfettered access.
Doctrinal feedback occurs when a marketer wishes to use the brand of another for commercial purposes. Should the marketer get permission or seek a license before such use? Rather than risk being charged with infringement a risk averse competitor will blur out a brand reference or seek some form of license from the owner- even when it is far from clear that any form of permission is necessary. This acquiescence then becomes a precedent that shapes the conduct of other competitors- who then feel obliged to seek permission to engage in similar conduct. Thus the otherwise unsettled question whether such permission is even necessary becomes clear- of course it is necessary because so many in the industry have genuflected to the rights of the brand owner- rights that become established when there may or may not be a legal basis to support them.

Professor Kenneth L. Port, in a draft article available on the Social Science Research Network, speaks to a different manifestation of this same phenomenon. In Trademark Extortion: The End of Trademark Law, Professor Port, director of intellectual property law studies at the William Mitchell College of Law, aims his pen directly at the Lanham Act, to conclude that far from being an unqualified success, the Act is used by trademark holders to distort competition by willy nilly suing competitors and thus either barring them from entry, increasing their cost of entry or making it more difficult for them to remain competitive. Professor Port's attack is based on a research project he has undertaken. With a methodology that would bring a smile to the face of any legal realist Professor Port demonstrates that the Lanham Act creates incentives for rights holders to engage in trademark extortion. His key insight is that since the 2001 recession damages awards, fees awarded, number of reported dispositive decisions have all decreased while the number of lawsuits filed has continued to increase.

I don't claim to understand the relationship between scholarly commentary and judicial decisionmaking- but these articles support the notion that a contraction of rights is either underway or needs to begin.

AH YOU MIGHT WANT TO RECONSIDER THAT $1,000 PER HOUR BILLING RATE OR FURTHER EVIDENCE THAT THE INTERNET IS CHANGING EVERYTHING

Thanks to law.com I stumbled onto the website AMAZING FIRMS, AMAZING PRACTICES www.gerryriskin.com A very recent post at this site concerns the outsourcing of legal services to India. The author of the site offers a link to an article that appeared in THE HINDU NEWS titled: Three Myths About Legal Services Offshoring. The newspaper's reporters "interviewed" Mr. Russell Smith the head of Smith Dornan Global the outsourcing subsidiary of a US law firm.
Although Mr. Smith can hardly be considered an objective source, he offers some persuasive counterpoint to the self serving criticism levelled at the concept of outsourcing.

Think that Indian lawyers are not able to handle complex US legal matters? Well think again Tonto. Citing a recent study by the Harvard Law School and Lexis/Nexis, Smith notes that 75% of US law school graduates admit that they don't have any of the skills necessary to actually practice law. That same study noted that 64% of young lawyers receive no organized OJT. Instead, these new lawyers learn by trial and error- an education paid for by clients.

And what about the notion that you get what you pay for otherwise known as low price equals low quality? What you really get is:


1. fixed costs many many times greater than those in in India

2. work done by people who admittedly lack the necessary legal skills but who are paid over 100K per year.

3. a bill that reflects the inefficiency and dishonesty that is directly linked to the hourly billing system

4. a high level of review by senior lawyers- at a cost of $300-$2000 per hour
(by comparison Indian rates are $25 to $90 an hour for the same review)


And the risk of ethical violations or breaches of confidentiality?

No ethical violation as long as a US lawyer reviews the work. Just like the work of first year associates whose billing rate often exceeds $250 per hour. As for confidentiality- the Indian firms employ hack proof servers and Cisco firewall protection- a much more robust system than the IT systems used by most US law firms.
Not surprisingly Mr. Russell predicts a bright future for the legal services offshoring industry in India. If he is correct this should cause a revolution in the delivery of legal services. Law firms will be forced to confront the "India Price"

Yesterday car parts. Today corporate legal instruments. Bye bye 1K per hour.

SLEEP NOW PAVARROTI

I don't care how you feel about opera. Go to YOU TUBE and play any one of the video clips that show Luciano Pavarroti singing nessum dorma. To hear him sing is to know that you are still alive.

PRIDE SURE DOES COME BEFORE A FALL... AKA...WHAT WERE THEY THINKING?

When I first began practicing law the daily New York City legal newspaper ran a series on several famous NYC lawyers from the late 19th and early 20th centuries. Each of these towering figures had been struck down because of hubris. Indeed, if I recall correctly, the series was titled HUBRIS.

The many modern definitions of the word hubris all seem to include an overconfident pride and arrogance. Suffering and punishment are often linked to the term.

Every once in a while the conduct of a trademark owner seems to fit squarely within the meaning of hubris- with the resultant suffering and punishment. Less elegantly I have often found myself saying to anyone who would listen"What WERE they thinking?" And by they I mean the lawyers as well as the brand owner.

The lawsuit and settlement between Google and American Blinds & Wallpaper Factory brought the word hubris squarely to the top of my mind. American Blinds has been battling with Google for several years over Google's sale of their trademarks as key words. Indeed, Google's sale of trademarks as key words has been, and still is, a red hot topic in US trademark law. Several lawsuits have been brought, with mixed results tending to favor Google.

And what of American Blinds? Their settlement agreement was nothing less than complete capitulation. But that's not the worst of it. In an earlier ruling the judge had declared that the firm American Blinds had no trademark rights in the term AMERICAN BLINDS. Not only that but the judge sanctioned American Blinds for abusive discovery practices and ordered them to pay Google $15,000.00. And their legal fees to get this kind of result? One can only imagine.

One can also imagine that from the day that American Blinds first discovered that Google was selling the terms American Blind and American Blinds, they had many, many opportunities to say to themselves " What are we doing here?'"What's the downside?"
or "Give me the worst case scenario".

But propelled by hubris, they become blinded(Ah Freud!!) to the infirmities of their case. Instead, the term American Blinds took on all the attributes of the term EXXON.

But make no mistake about it, American Blinds is not the first company to find itself suddenly acknowledging reality. I now add their name to my ever growing list of brand owners whose conduct makes one shake one's head and ask " What WERE they thinking?"

I DON'T WEAR HAWAIAN SHIRTS BUT...

The most recent issue of IP LAW & BUSINESS www.ipww.com features an article on tiny IP boutiques. Part of the header copy for the article reads "By focusing on a niche, tiny IP firms can flourish" The article then describes the pros and cons of promoting a micro boutique practice. At one time it was the height of folly to hold oneself out as a non-patent intellectual property lawyer. But that was BI. Before the Internet.

The Internet has given rise to the so called Long Tail effect- allowing online providers such as Amazon and Neftlix to ignore the 80-20 rule and thrive. I seek to apply the Long Tail effect to the delivery of specific legal services.