I posted about this case once before. Australian Gold, a sun tanning lotion company with offices in Indianapolis(where I live) is now batting .500 in its efforts to perpetuate a restrictive and outdated distribution network.
Under the Australian Gold distribution model, Internet sales of sun tanning lotion are forbidden. Not only that, but distributors may only sell to certain authorized retailers.
Why you ask? The for public consumption explanation is that only by selling through trained retailers can the unsuspecting public be protected from the horrors that can occur when sun tan lotion is improperly applied.
But, as is all to common under such arrangements, someone saw a chance to make a buck. The defendants bought supplies of sun tan lotion from retailers- under circumstances that were sometimes sleazy- and resold the sun tan lotion on the Internet.
To protect its cozy position Australian Gold sued the defendant in two different federal jurisdictions. Charging several violations including tortious interference with contract, and trademark infringement, Australian Gold lost in Nevada and won in the NY under factually identical circumstances.
How can that be? Well, of course there can be many reasons. But IMHO the Nevada court properly adopted a consumerist posture while the NY court was swayed by the semi- sleazy conduct of the defendant in securing sun tan lotion from retailers.
As I have noted before, Australian Gold was arguably unharmed by the defendant's actions since ALL the sales of sun tan lotion were legitimate sales. And though I am not intimately familiar with the facts, I find it very difficult to believe that sun tan lotion is such a dangerous instrumentality that only a trained retailer can sell it. Such arguments have been raised by those in the hair care industry who sought to preserve similar semi-monopolistic arrangements. And judges gave the arguments a Bronx cheer.
The Southern District of New York is undoubtedly the most influential trademark court in the United States. I hope that they have a chance to comment on this case.



Ah the always changing contours of trademark law. Recently Ohio joined numerous other states in passing a law directed to oldies rock and roll performers. Apparently the state legislators, in their wisdom, felt the need to protect baby boomers from paying to see inauthentic aging overweight strangers rather authentic aging overweight strangers sing oldies that are more than 50 years old.

Only an original member of a rock and roll/r&b group such as the Coasters can use the name the Coasters in connection with their act. For those of few you who don't know, the Coasters were/are an African American rhythm and blues singing group that crossed over to a white rock and roll audience for 2 or 3 years in the late 50's. During those few years they had several whimsical rock and roll hits including Charlie Brown, Poison Ivy and Yakety Yak( Don't Talk Back).

I suspect that the number of folks- white or black- who could identify the original members of the Coasters- is a very small number. Nevertheless, only the "original" members of the group can use the name. And now for the law of unintended consequences to assert itself.
Firstly, even during the 50s and 60s there were numerous folks who performed as part of the 4 member Coasters. Is an artist from the early 60's who performed for many years an "original"member if he replaced someone who was with the band for a short time in the 50's? Second, if each so- called original member wants to use the Coasters name- can he gather up 3 other strangers and present the group as the Coasters? If you remember groups from this period you will also remember that they got much, if not all, their identity from the voice of the lead singer. If the man singing bass gets three others to perform but they sound nothing like the original group, is this the Coasters?

And in any event, if all I remember is the sound from the old 45's, can an the original group even begin to reproduce that sound 50 plus years later? Wouldn't I rather hear a group of entirely new members if they can most accurately reproduce the sound that makes me 16 again?



Thanks to the TechDirt blog for alerting me to the enforcement practices of the Car-Freshener Corporation. This company produces the very well known evergreen tree shaped air freshener.A parent corporation has registered the evergreen tree shape as a trademark. And therein lies the problem.
In attempting to maintain its monopoly over use of the evergreen tree shape as a source identifier for an air freshener( as well as unrelated products) the company produced an advertisement suggesting that their evergreen tree shape is their private property AS USED FOR ANY COMMERCIAL PURPOSE. On their website the company also suggests that the law requires them to pursue any and all possibly infringing uses by others or risk losing their rights to the evergreen tree shape as a trademark.
This is a less flagrant example of what has become an all to common practice. The established rights holder overstates or misstates the scope of its rights to chill any commercial use of a verbal or non verbal commercial symbol by others. The recent assertion of rights by the Jones Day law firm is perhaps the most flagrant and unjustified example.
But with the ubiquitous evergreen tree shaped air freshener the problem dear Brutus lies not in the stars but in the shape. For all the ink that has been spilled over non traditional trademarks- the simple fact is that trademark law always functions best when the battle is over a trade symbol not the underlying product. Trademark doctrine deals comfortably with a circumstance where I misuse your name to sell perfume. Because there is no debate whether I can legally sell perfume. The debate rages over the name for the perfume.
But when the identifier for the thing and the thing itself merge- and the law grants me protection- I smile broadly but the cost to society may be prohibitive. Because now I may have a perpetual monopoly on the production of a good not simply the name of the good.
So what if I want to use an evergreen tree shaped hang tag for my line of purses or briefcases? Or I decide to market an evergreen tree shaped shredded wheat biscuit.
Or what if I produce a pine cone shaped air freshener?

I don't have answers. But I feel comfortable in saying that the conduct of the owner of the evergreen tree shaped product/trademark is calculated to stop others from pursuing such answers.



OK its not really official. But if lawyers were forced to honor the maxim " first do no harm" then most patent attorneys would not go near a trademark matter- let alone blog about it.
Why do I say this? Because the patent attorney author of one of the more popular IP blog sites has put his literary/ legal foot in his mouth. As is all too common. And no I am not going to name the blog site.

It all started with Bill O'Reilly. Apparently our boy Bill discovered that the owners of the term AMERICAN IDOL were upset that a so-called gentlemen's club has adopted the term STRIPPER'S IDOL for a contest involving amateur women baring their breasts. He brought some lawyer's on his show who opined " how could anybody be confused?".

This was reported by the patent attorney who chastised the attorneys for their misunderstanding of trademark law. He then went on to glorify the trademark dilution doctrine at the expense of traditional trademark likelihood of confusion analysis. Trademark dilution is the will o' the wisp of trademark law. The number of factual settings in which it should be preferred over traditional trademark law doctrine is a very very small number.
When I gently pointed this out to him in a comment- he sort of agreed. But then he cited several old trademark dilution cases- all overruled by amendments to federal law that are now several years old- to suggest that niche fame could still be the basis for bringing a dilution claim.

It's not just that every area of intellectual property law is so volatile that it is impossible to be conversant with copyright, patent and trademark law. It's more subtle yet more fundamental.

IMHO there is a linear quality to patent matters. A quality that is harmonious with the scientific method and the personality of the engineer. But trademark law is notoriously amorphous, uncertain and ambiguous. These are characteristics that grate against the certainty and digital duality of science and technology.
So when lawyers with technical training confront the ambiguity of trademark law they seek to impose a certainty on what cannot be certain. In doing so they run the risk of doing a disservice to their clients and until they get their butt kicked by a trademark specialist they may live in a fools paradise of misplaced expertise.
Put more crudely- if you get a patent attorney to speak candidly- she will tell you that trademark law is easy -something to do once in awhile- but patent law is the really hard stuff. It's that attitude, combined with a linear view of the world, that can cause all sorts of mischief.

Some day there will be a survey to support the musings of the trademark troll.