WHAT I LIKE ABOUT YOU IS CALIFORNICATION

I've said it before and I 'll say it again. Intellectual property law expands and contracts over time. Due to changes in technology and changing commercial realities.
But also because some brand owners overestimate the significance of the public's association with their brand. So what do such brand owners do? They try to assert total and everlasting control over every facet of their marketplace identity. In doing so they come off looking at best silly and at worst greedy.

And so it is with the rock bands Red Hot Chili Peppers and __________. As has been widely reported RHCP have filed a lawsuit to force Showtime to change the name of a wildly popular TV show Californication. On what basis you ask? Because in 1999 RHCP produced a mega hit rock and roll album entitled Californication. Because of this the RHCP assert that the creation of a television show named Califorication causes a likelihood of confusion. Ignore the fact that the term Californication was first used by others many years before the RHCP decided to title their album. The band somehow has come to believe that they own ALL rights associated with the term. Lots of luck.

OK its quiz time. You all know the rock anthem WHAT I LIKE ABOUT YOU. Currently it is being used as part of a TV commercial. Quick....Who performed this song?

I didn't know either. But before I tell you - I have a confession. My 11 year old son loves to play GUITAR HERO on his XBox 360. Because of this I have been lucky(?) enough to suffer through
weird versions of many iconic rock and roll tunes from the and 80's.

Sure enough one of the songs is WHAT I LIKE ABOUT YOU. Performed by The Romantics'.

WHO?????? Yeah that's what I said.

Are The Romantics claiming that their artistic rights have been violated? No. Because Activision paid for the rights to record a cover version of the song. But, according to The Romantics' the cover version is too close and, as a result, it dilutes the value of their famous trademark WHAT I LIKE ABOUT YOU and sullies their persona.

Again I say : lots of luck. They'll both need it.

SOMEWHERE THE SPIRIT OF FRANK SCHECTER MUTTERS : I TOLD YOU SO!!

Imagine that you are the owner of the internationally famous LOUIS VUITTON trademark. You spend every waking moment trying to convince women to spend ridiculous amount of money for your very plebeian products. And the only reason they do so is because they need the cachet connected with the interlocking LV letters and the LOUIS VUITTON name.

So along comes this dog toy company. You heard me right. A dog toy company. With the unmitigated gall( love the chance to use those words) to name one of its toys CHEWY VUITON! Eighty years ago when Frank Schecter first proposed the dilution doctrine this was exactly the factual setting he imagined as harmful. No real possibility that folks will mistake dog toys for purses. No, the potential harm to LV was death by a thousand paper cuts. Or put more bluntly. If you've spent enough then you should own the word or symbol. And, as with any other form of property. The essence of ownership is the right to exclude. Anyone.
It ain't about confusion. Its about control.

So why did LV lose? Because once again, a court was uncomfortable granting someone ownership rights in a name. For hundreds of years judges have been wrestling with competing notions to justify the rights of a trademark owner. Some courts have rendered decisions based on defendant's harm to the brand owner. Others have used harm to the public as the basis for protecting a verbal or non verbal symbol. The invention and implementation of the dilution doctrine has only added to the( pardon the use of the term) confusion about how and when to protect trademarks.

To lessen this confusion I offer a modest proposal. Actually, its a version of what Frank Schecter first proposed in 1927. Why not limit the dilution doctrine ONLY to claims involving non competitive goods. And, why not then let plaintiff's choose- either assert trademark infringement or assert trademark dilution. But not both.

Then a judge or jury being asked to decide will have no doubt about the basis for a plaintiff's claim. A more cynical way of stating this is: without trademark infringement to hide behind, it will be much more difficult for a judge or jury to misread the plain language of the statute. And, by choosing between the bases for relief a plaintiff makes a much more forceful commitment to the dilution doctrine.

PERHAPS TIFFANY'S SHOULD CHANGE THE COLOR OF THEIR BOX?

The wrangle between Tiffany's and eBay prompts me to make a prediction. Tiffany's will lose. Oh the court might throw them a bone- but they will not succeed in forcing eBay to come up with a method to prevent all counterfeit goods from appearing on the auction site.
Why can I make such a prediction? Because the law will not normally stand in the way of commercial progress. One of the first cases I remember from law school involved a disgruntled homeowner who sued a nearby steel mill for ruining his home- by depositing a thick layer of red dust over the entire neighborhood. Was the dust a problem? You bet.Did the dust reduce the value of the property? Without a doubt.

But to find for the homeowner would have meant shutting down a steel mill. Because hundreds, if not thousands of other homeowners would also have sued. And, at the time of the lawsuit, the steel mill employed thousands and it could not do much to reduce the impact of its operations.

And so it is with eBay. To force eBay to disassemble its business model or otherwise cripple itself- at a time when eBay is making a good faith effort to stop bogus activities on its site- means shutting down a contemporary steel mill. Ain't going to happen.

And another thing. If one searches for Tiffany on eBay one is directed to many sellers offering what they claim are genuine Tiffany's goods- with a blue box or other trade dress that appears entirely proper. How do scores of vendors purchase authentic looking Tiffany's boxes? One of Tiffany's most popular designers is Elsa Peretti. Her heart necklace is a true classic. Many such necklaces are offered on eBay. If these necklaces are bogus- and one cannot tell from the individual listing- who is making all of these bogus necklaces? Even if eBay did not exist it seems that Tiffany's might have a problem.

WEISMULLER RULES!! NO MAKE THAT WEISSMULLER PRINCIPLES ... OR HOW ABOUT WEISMULLER ULULATES

As has been widely reported, the European trademark office( OHIM) has refused an application by the estate of Edgar Rice Burroughs to register the Tarzan yell as a trademark. In a decision custom tailored to trademark geeks, OHIM refused to register the yell because it could not be represented graphically. Solution? Allow an applicant to attach a sound file. Which OHIM does now allow. And indeed a second application supported by a sound file has apparently been filed.

But as I reflected on the application several questions came to mind:

1. Why is the estate of Edgar Rice Burroughs claiming ownership in the Tarzan yell? Mr. Burroughs did not invent the yell. And the estate of Johnny Weissmuller(apparently) still makes claims to his image and persona.

2. Often when folks claim rights in non-traditional marks, they assert legal rules. But Courts and other tribunals are influenced by legal principles- even if they do not explicitly say so in their rulings.

3. One of the most well known legal rules is " you should not profit from your own wrong". Many times when brand owners seek to claim rights in an unusual verbal or non verbal symbol they do so without equity on their side. Yes the "sweat of the brow" theory has been formally rejected- in US copyright law. But all too often when brand owners seek to register or assert non traditional marks they are really trying to assert ownership to a word or phrase that the public at large or an enthusiastic sub group has first begun using in connection with their product. Examples? BUG for the air cooled Volkswagen. HOG for Harley-Davidson motorcycles.

In the US the Tarzan yell is apparently registered for toy action figures. Query: Did the estate of Edgar Rice Burroughs plan and execute a marketing strategy centered around the Tarzan yell for a line of toy action figures? Somehow I doubt it.