Duets Blog : Creativity and the Law: DuetsBlog

You may have heard the news that iTunes has hit the 10 billion (with a "b") mark in number of songs downloaded.  Sales began in 2003.  That's an average pace of more than 1.4 billion downloads a year.  Considering that a typical single song retails for $0.99 on iTunes (likely higher than average price, as many albums with more than ten songs go for $9.99), I thought, "Wow, that's about $10 billion in sales!"  Well, yes and no.  It's only $9.9 billion in sales--$100 million short of $10 billion.  I sometimes tend to think that one decimal place, one hundredth, is "close," and in a sense, $9.9 billion is close to $10 billion.  In another sense, $100 million is a lot of money standing on its own. 

This reminds me of a point made at a trademark infringement trial a few years ago.  A lawyer (not me) asked a business owner whether a production cost difference of a few pennies per piece part was a big deal--hoping to make the point that it was insubstantial.  The owner replied, "It's a big deal when I'm ordering hundreds of thousands of parts."  All of this, of course, is not new.  I recall learning about economies of scale in my 10th grade Economics class, though the lesson obviously continues to impress. 

But here is another big number to consider:  the folks over at FairWinds recently discovered a company that was losing 47 million initial web impressions to typosquatting domain names.  Josh Bourne has a recent post at the Domain Name Strategy blog discussing this and some related SEO (search engine optimization) issues, and it is worth a read. 

Pay attention to how those little things add up!

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by Mark Prus of NameFlash^SM

Some of my name development clients are fans of long, keyword-rich names. Obviously the appeal of a search engine spotting your website is driving this approach.

Some of my naming clients are fans of short names that can be easily shared on Twitter.

Which approach is better?

I will confess I am a fan of short, memorable names. Steve Baird would agree. As Steve so eloquently puts it, “we live in a sound bite world.”

But I strongly believe that picking a name because it would be more attractive to search engines or because it is short enough to Tweet is a huge mistake. Any time you allow tactics to drive your strategy, you are heading down the road to ruin.

A far better approach is to hone your brand’s strategy and test it with consumers until you find the positioning that is going to make all the difference in your business, then develop a name. David Ogilvy once said "The results of your campaign depend less on how we write your advertising than on how your product is positioned." The same is true for your name. Spend time developing a positioning that rings the bell with consumers and then go find the perfect name that brings that positioning to life.

Sound like a difficult thing to do? Not really. I know I am biased by my 25+ years of experience in building great consumer brands, but this task is not difficult. Time consuming? Yes. At times painful? Yes. Expensive? Could be. But in the end, the process of honing the brand positioning and using that as a basis for name development will pay dividends for years to come.

If the name you choose ends up short enough to Twitter, then you may wish to include that tactic in your arsenal. If your name includes relevant keywords, so much the better! But please, don’t pick names because they work better with tactic A or Tactic B!

Your thoughts?

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Putting aside, for now, the unsettled question of who currently owns the iPad trademark, and Dan's perspective on Apple's trademark clearance strategies, from last week, look at what our finely-tuned e-mail spam filter just snagged:

It is a similar story to my previous Free Dell XPS Laptop Spam Scam? blog post from last December. Here, however, the Apple, iPad, and the (possible) iPad configuration trademarks, are the newest form of brand bait for what appears to be an ongoing type of spam e-mail scam. They're fast. It only took about two weeks after Apple's announcement of the iPad for these folks to bait their electronic hook with the newest branding lure.

By the way, how is it that these folks can make the free offer before Apple's iPad tablet is even available to the public? As of today, Apple still has a notify me page, if you'd like to "be among the first to receive iPad." So, doesn't the present unavailability of the iPad add to the misleading nature of the above advertisement because it seeks "testers" for this "new" product?

What do you think, misleading advertising, fair use of Apple's intellectual property?

This story also appears related to the topic covered in my previous Is Wal-Mart Giving Away Free $1,000 Gift Cards? blog post too.

What do these unsolicited e-mail programs have in common? Well, besides the fact that they all appear to originate from Canada (for reasons unknown to me), they use well-known, if not famous brands to attract attention online and convince you to supply them with your e-mail address. Really, would anyone pay even an ounce of attention to any of these e-mail spam solicitations without the unauthorized use of these popular brand names and images?

In an apparent attempt to avoid misleading anyone and confusion, of course, as was the case with the Free Dell XPS offer and the Wal-Mart $1,000 Gift Card offer, the Apple iPad ad offers a purported disclaimer:

The advertisers in this email are not affiliated with any of the above brands.

This is a third party advertisement sent to you by the list owner. If you no longer wish to receive email from this advertiser, please write Reward Group 191 7 West 4th Avenue, Suite 279 Vancouver, B.C. VJ6-1M7 or visit our email removal site by click here.

If you do not wish to receive correspondence from the list manager you will need to follow the unsubscribe instructions provide by the list manager on how to remove you from their list.

Who are the advertisers? Who is the list owner? It says the advertisers are not affiliated with any of the brands, so does that mean the list owner is? Does this disclaimer do the job with claims relating to likelihood of confusion as to source, affiliation, sponsorship, and approval?

Even in the unlikely event it does, what about claims for initial interest confusion? Where is the disclaimer for that additional type of unlawful trademark confusion? And, since there is a reasonable claim of trademark fame for many of these brands, is it even possible to have a disclaimer that avoids a state or federal dilution claim concerning a famous mark?

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Same drill as yesterday. Another email spam scam? More trademark fair use abuse?

Is it just me, or is the branded email spam coming out of the virtual woodwork, or what?

It appears that spam email -- complete with fully branded solicitations -- is becoming more and more aggressive, both from legal and technology perspectives.

We have a pretty aggressive email spam filter, but this one, like the one I blogged about yesterday, slide right through our screen, just like butter.

From the legal and trademark perspective, don't these advertisers pay attention to the limitations of the nominative fair use defense?

With respect to the purported disclaimer, if you were to scroll all the way down to the bottom of your computer screen, before you hit the CLICK HERE icon, you'd find it is virtually identical to the one from yesterday, only the mailing address has changed:

The advertisers in this email are not affiliated with any of the above brands.

This is a third party advertisement sent to you by the list owner. If you no longer wish to receive email from this list owner, please write Gift Sponsors 7B-871 Victoria Street North, Suite #105, Kitchener, Ontario N2b 3S4 or visit our email removal site by click here.

If you do not wish to receive correspondence from the list manager you will need to follow the unsubscribe instructions provide by the list manager on how to remove you from their list.

Now, at least one website suggests that Wal-Mart is the one actually behind these kind of free gift card offers, here, but I find that really, really hard to believe.

What do you think? What do you know?

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What if you were told that if you agreed to "test" a Dell XPS laptop you could keep it, for free?

Would you expect the offer to be from Dell Computer?

After all, who else but the manufacturer would care to give a computer away for simply having you test it?

Would you at least expect the offer to be affiliated with, or authorized, or approved by Dell Computer?

What if the unsolicited email offer avoided your spam filter and looked something like this?

Would you click on the "CLICK HERE" icon as instructed, or would you scroll all the way down to the bottom of the page to see if you might be able to learn more before clicking?

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Every once in a while, a really solid advertising campaign comes along that stands out among its peers.  There is obviously no accounting for taste, but one characteristic that attracts me is timelessness -- timelessness as opposed to trendiness, whether that be embodied in a gag, a joke, a celebrity endorsement, or some other hook that loses about ninety-five percent of its effectiveness after one viewing.

I think American Express has hit on a timeless campaign in its "The Faces of Charge" campaign, where it uses everyday objects to portray sad faces and happy faces, like these:

The voiceover on the television ads suggests that an American Express charge card can take the pain out of some inconvenient consumer experiences, like the breakdown of recently purchased products, theft, or traveling.  Enhancing the parade of faces is the spartan accompaniment of Bach's Cello Suite No. 1, which subtly changes mood with the faces.  Less is more.  (It is almost always more.)  The television ads end with a simple and direct presentation of the charge card products against a black background above the tagline, "Don't take chances, take charge."  The "take charge." then morphs to "TAKECHARGE.COM."  Very well played.  This campaign will likely stand the test of time. 

The Inspiration Room has a post on this campaign, as well as video of one of the commercials. 

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A recent domain name decision under ICANN's Uniform Domain-Name Dispute-Resolution Policy (UDRP Policy), captioned Bin Shabib & Associates (BSA) LLP v. Hebei IT Shanghai ltd c/o Domain Administrator, found reverse domain name hijacking, under some rather interesting, if not questionable circumstances. The Rules that govern the UDRP Policy define Reverse Domain Name HiJacking as "using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name." 

What caught my eye was the three-member panel's use of the ill-fated "knew or should have known" phrase in finding the requisite "bad faith" for hijacking; a phrase well-known to those who follow the trademark fraud case law and appreciate that recently this same "should have known" standard was flatly rejected by the Court of Appeals for the Federal Circuit (CAFC) in In re Bose, as being nothing more than a test for simple negligence. For more on the In re Bose decision, see here and here.

The Bin Shabib & Associates three-member panel, assigned by NAF, was unpersuaded that complainant had proven common law trademark rights in the acronym BSA (under the first UDRP element), so it declined -- as unnecessary -- to make any findings on the second and third elements under the UDRP, namely, the "lack of legitimate interest" and "bad faith" elements. Despite making no findings on either of these two key elements, the panel held as follows:

Also, the Panel finds that Complainant knew or should have known that it was unable to prove that Respondent lacks rights or legitimate interests in the disputed domain name or that Respondent registered and is using the disputed domain name in bad faith. Based on the foregoing, the panel finds that reverse domain name hijacking has occurred. See NetDepositVerkaik v. Crownonlinemedia.com, D2001-1502 (WIPO Mar. 19, 2002) (“To establish reverse domain name hijacking, Respondent must show knowledge on the part of the complainant of the Respondent’s right or legitimate interest in the Domain Name and evidence of harassment or similar conduct by the Complainant in the fact of such knowledge.”); see also Labrada Bodybuilding Nutrition, Inc. v. Glisson, FA 250232 (Nat. Arb. Forum May 28, 2004) (finding that complainant engaged in reverse domain name hijacking where it used “the Policy as a tool to simply wrest the disputed domain name in spite of its knowledge that the Complainant was not entitled to that name and hence had no colorable claim under the Policy”) (emphasis added).

A couple of curious points are worth discussion. First, putting aside for a moment the dubious "should have known" standard of bad faith, how can complainant be guilty of "bad faith" -- sufficient for hijacking -- in failing to appreciate that it had no chance of proving the very two elements for which the panel made no findings? Second, neither of the quoted parentheticals go far enough to support the quoted  "should have known" standard; instead, both speak only of actual knowledge.

As it turns out, however, there is some prior WIPO panel support for the "should have known" standard in finding "bad faith" sufficient for reverse domain name hijacking. Nevertheless, in each of these decisions, the panels made findings on all three UDRP elements before finding "bad faith" and ruling in favor of a claim for reverse domain name hijacking, see here, here, and here.

So, what do you think? Is the "should have known" standard defensible in reverse domain name hijacking decisions? If not, what about gross negligence? How about reckless disregard? What is the appropriate level of culpability? Does it even matter, or is a hijacking finding "of little import" to most complainants?

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I have never participated in early morning Black Friday sales.  For me, those hours each year are most often spent peacefully enjoying the last fruits of a tryptophan-induced slumber.  It is not just a lack of interest, either.  There is a bit of loathing mixed in.  For instance, my goal for the last two year's shopping seasons was not to go to the largest mall in the area.  Increasingly, when I shop, as I stand in lines, fight traffic, and not find what I'm looking for, I repeatedly arrive at a conclusion I need to recall before I step out the door:  shop online. 

The interesting thing about shopping online, though, is the overwhelming number of options.  Comparison shopping conventional retailers' online stores can sometimes be as time consuming as physically running from store to store.  On the other hand, online clearinghouses don't always inspire confidence.  It seems that many retailers are a bit slow at comprehending where some of the future value lies on the Internet, but not all.  Toys 'R Us has figured it out:  it owns toys.com and etoys.com. 

Here's a brief survey of websites residing at some "generic" domain addresses pertinent to the season, roughly in order (as of this writing) of least developed to most developed:

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This reminder is a bit late for new Christmas-season consumer products, but it bears repeating year round, as companies contemplate new products:  buy domain names associated with a new product before announcing the new product.  This seems like an obvious thing to do, but I regularly read stories where companies fail to perform this step of a new product launch, then have to go and spend thousands of dollars to secure related domain names that could have been purchased for perhaps $10 per year prior to launch. 

The latest lesson comes from the otherwise savvy Apple Inc., who just won an uncontested UDRP arbitration on the domain name "ipodnano.com."  As flagged by Domain Name Wire, Fusion Media Ltd. registered ipodnano.com two days before Apple announced the product.  In order to win a UDRP arbitration, the complainant must show that the respondent both registered and used the domain name in bad faith.  Having registered this particular domain name a mere two days before the product launch suggests that Fusion Media either (1) made a fortuitous guess, or (2) heard advanced news about the new product.  Even if Fusion Media's guess on the "nano" part of the name was completely in good faith, the "ipod" part of the name was not.  Fusion Media did not respond to the UDRP arbitration complaint, so we may never know, but it is interesting to note that Apple apparently only asserted its trademark rights in IPOD in the arbitration.  (And, as I think of it, maybe Apple isn't so savvy . . .)

To borrow a phrase from Steve Baird, other examples of this sort of thing can be found here, here, and here. 

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Millimeters apart on the label, miles apart in meaning. Yes, a few extra millimeters of blank space can make all the difference in the world for some brands. Especially when the brand name consists of two words, and the typical visual treatment has all letters appearing in identical size and style (all caps), and when compressing the words yields an unintended, unfavorable meaning. Take the above luxury skin care brand owned by La Mer Technology, one of the Estee Lauder companies.

Honestly, I'm not sure how, but a few weeks ago, I came across Felicia Sullivan's blog post "Covet Fall's Top 10 Beauty Indulgences" on The Huffington Post, featuring the above product image. I took a double take at the brand name, laughed out loud (initially thinking it was a spoof product), and after realizing it wasn't, I knew I couldn't resist writing about it.

Part of my due diligence involved questioning my wife about it, she being far more experienced in these kinds of matters. I was "kindly" informed that "anybody who is anyone" knows La Mer is a coveted luxury skin care brand. Since being educated, I now introduce my wife as anyone, and myself as no one. Ironically, you might say I fit at least one slang definition of "lamer" -- "a person who is out of touch with modern fads or trends, esp. one who is unsophisticated." There are other meanings too, that I suspect don't implicate the target market for $130 an ounce skin care products, or value-priced 16.5 ounce containers at $1,390. Just so you know, I also have come to know that anyone who knows anything about the French language knows La Mer means "the sea".

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Trademark Infringement is a sticky subject online. Our first blog talked about Twitter and trademark infringement and today I want to address trademark infringement in relation to affiliate marketing. 

Affiliate Marketing is a process that rewards a blog or website for every customer that is brought to the company (the affiliate) that blog or website is promoting. The goal of the affiliate marketer is to bring visitors to the affiliate’s website in efforts to sell the affiliate’s products or services. Affiliate marketers will try numerous things in efforts to market these products or services in efforts to make money. In the past there have been lawsuits brought against marketers like this due to improper claims they were making about a product or service, who endorsed it, and if it worked. 

In August, a complaint like this was filed against not only the affiliate marketers but the affiliate as well. The claim is that the affiliate should be monitoring any and every marketing vehicle and message that is used in relation to its product.

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The single-letter branding and trademark truncation trend continues.

Can you name the retailer selling online gift cards sent by e-mail, using no other identification besides the li'l "a" shown here?

Does this li'l "a" logo with a radish inside help?

How about these, do they help?  

Well, just so you know, it's not this retailer: 

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Professors at the University of Pennsylvania and at UC Berkeley School of Law released a study this week conclusively titled "Americans Reject Tailored Advertising," suggesting that there is high resistance among individuals to tailored advertising on the Internet.  (Press release from Penn here, NYT coverage here.)  Although I have been unable to download a copy of the study, it apparently suggests that there is a desire for legislation in this area.  From the Penn press release:

The Berkeley-Annenberg team found that 92 percent of those polled agree there should be a law that requires websites and advertising companies to delete all stored information about an individual, if requested to do so.  Sixty-three percent believe advertisers should be legally required to delete information about their internet activity immediately, whether requested or not.

Apparently, these findings are not without controversy.  In March, a company called TRUSTe, a self-proclaimed "leading internet privacy services provider," released survey results suggesting that people are increasingly comfortable with being tracked on the Internet, and that they are really more annoyed by advertising that is irrelevant to their needs and wants. 

I have not had the chance to wade through both studies, each of which is based upon its own survey of about 1,000 individuals, but it seems to me simply from reading the press releases related to each that both studies suffer from problems of bias.  In addition, I ran across a headline this week that sales of Internet advertising are outpacing sales of TV advertising in the U.K.  I understand that this statistic is not directly on point:  it is U.K. data, not U.S. data, and it does not distinguish targeted ads from non-targeted ads.  Even so, it seems to me that whatever the studies and surveys supposedly say, or are designed to convey, there seems to be a rather robust market for advertising on the Internet.

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Have you ever experienced or observed marketing styles that might be fairly described as high-octane, fast-paced, or perhaps, so hopped-up on Red Bull® or some other energy drink, there is simply no time for meaningful collaboration, much less careful, proactive, strategic thinking or planning? Perhaps a fun, exhilarating experience, but what are the consequences?

If you have, as you might know first hand (or at least imagine), this style can seriously compromise valuable intellectual property rights and protection. You know when the trademark attorney gets the call if this style controls, right? Immediately upon encountering a serious and unfair competitive threat. But in many instances, this will be long after a coherent strategy might have been created, well after packaging is designed and introduced, well after marketing materials are finalized and distributed, long after websites have been launched, and well after all the unknowing, but self-inflicted damage is done. In some cases the resulting damage is manageable and can be repaired, other times it is not, and legal claims that might have been strong and viable suddenly have turned dead-on-arrival.

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As promised, here are some additional thoughts (beyond the very frank and practical non-legal advice already shared by Jason Voiovich) about Lion's Tap's trademark infringement case against McDonald's over the "Who's Your Patty?" slogan.

Here's the multi-million dollar question: What did McDonald's know and when did they know it? Those are questions likely to get a lot of attention in this case.

Could McDonald's have known about Lion's Tap's prior use of the "Who's Your Patty?" tagline from a drive by the single restaurant location? Not according to the exterior signage shown above.

Could McDonald's have known about Lion's Tap's prior use of the "Who's Your Patty?" tagline by checking for state or federal trademark registrations? No, Lion's Tap didn't register in Minnesota or attempt to federally-register the tagline until a week before filing suit, well after McDonald's had launched its "Who's Your Patty?" campaign.

Could McDonald's have known about Lion's Tap's prior use of the "Who's Your Patty?" tagline by conducting appropriate internet searches? Recognizing that most comprehensive trademark searches will examine the internet, here is where it might get interesting.

Just for you, I did a little poking around, and despite the fact that the current Lion's Tap website prominently displays the "Who's Your Patty?" tagline, The Wayback Machine (having archived updated content on Lion's Tap's website for these dates: November 5, 2005, December 27, 2005, June 26, 2006, January 26, 2007, January 27, 2007, December 1, 2007, and February 1, 2008), does not appear to show or document any use of the "Who's Your Patty?" tagline as late as February 1, 2008, the last time the site apparently was crawled by The Wayback Machine. Interestingly, those archived pages show other Lion's Tap taglines in use, such as: "Any Fresher and it Might Get Slapped," "Sponsoring the Napkin Industry Since 1977," "Yes, They Really Do Exist. Come See One for Yourself," and "Lions and Burgers and Fries, Oh My! "

So, where was the "Who's Your Patty?" tagline being used by Lion's Tap prior to McDonald's adoption and use of the "Who's Your Patty?" slogan? Was it being used in a way that McDonald's could have found it, using reasonable precaution and diligence?

You might be interested to know that my most recent visit to the Tap -- after the complaint was filed -- revealed surprisingly minimal use of the "Who's Your Patty? tagline within the restaurant interior (and none on the exterior of the restaurant). It wasn't on wall-board menus or the on-table menus, nor on any interior signage, at least that I saw. It did appear on one wall-mounted t-shirt with a price tag on it, and one of the servers was wearing a t-shirt bearing the "Who's Your Patty?" tagline.

Let's not forget that Lion's Tap is also claiming a "famous" mark in the "Who's Your Patty?" tagline, at least "famous" in Minnesota. What do you think, does this amount of use qualify for fame?

Stay tuned, as we continue to follow this very interesting case.

As a tangentially-related side note, ironically, Patty Wood, a real estate agent from Deer Park, Texas, appears to have beaten both Lion's Tap and McDonald's to the punch in registering the internet domain whosyourpatty.com.

UPDATE: Here.

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In giving advice in the field of intellectual property, one hackneyed phrase repeatedly crosses my lips:  an ounce of prevention is worth a pound of cure. 

When it comes to protecting a brand or trademark on the Internet, I may start saying, "an ounce of prevention is worth a ton of cure."  A couple of weeks ago, the Corporation Service Company released the results of a study that found, among other things, that brand owners had spent more than $220 million to obtain domain names from third parties through the UDRP dedicated arbitration process.  The study found that if the brand owners had registered the disputed domain names privately (prior to the third party doing so), the costs to obtain the domain names would have been approximately $1.1 million.  An ounce of prevention, indeed.  That is a 200:1 ratio. 

As I noted previously, the going rate for a domain name registration for one year is somewhere around seven to ten dollars (retail, not wholesale).  At the National Arbitration Forum, the cheapest filing fee to initiate an arbitration on a single domain name is $1,300.  Attorney's fees to prepare a UDRP complaint will typically run anywhere from a couple to several thousand dollars.  Given the cost disparity, I think that a brand owner is well advised to sit down and contemplate this question:  "What domain names would I spend several thousand dollars to obtain if a third party came along and started using them to advertise confusingly similar goods or services?"  The domain names that answer that question are the domain names that the company should go out to register proactively.

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Let's talk turf today, two kinds. OK, maybe three.

First, with Target Field looking more and more like the long-anticipated brand new outdoor home ballpark for the Minnesota Twins, all Twins fans and the local media can think or talk about this week is the new real bluegrass blend turf being installed now (as I type this blog post, in fact, see live webcam here), as it was just transported from Graff's Turf Farms in Fort Morgan, Colorado.

Second, most are looking forward to saying goodbye to the artificial turf of the 27-year old Hubert H. Humphrey Metrodome, and have been counting down the final days for some time.

Last, and most importantly for the purposes of this blog, let's talk about the importance of legal turf.

Selecting the legal turf or forum where a trademark dispute or battle is fought in federal court is often a very strategic decision. Litigants not infrequently end up battling over where the dispute will be decided, long before even getting to the substance of their dispute. Certain aspects of the federal trademark laws are interpreted differently around the country, which can lead to what lawyers call "forum shopping," basically, making forum selections based on where the plaintiff believes his or her case will most likely receive a favorable judgment. Indeed, most companies who file trademark lawsuits would prefer to file them close to home (unless forum shopping benefits dictate otherwise), in their own backyard, for that perceived home field advantage, and, because the out-of-state defendant typically ends up needing to hire two sets of lawyers to defend, their usual trademark counsel and local counsel too.

The general legal rule is that the first to file a trademark lawsuit is the one who gets to select the turf where the battle will be decided. There are exceptions to this general rule, perhaps we'll explore those another time. For now, however, suffice it to say, being the first to file, often creates some helpful advantage or at least some leverage to bring the matter to a more favorable amicable resolution. The first-to-file plaintiff is able to make his or her settlement demand, with the comfort of knowing that -- if it is not accepted -- he or she already has secured the place for the dispute to go forward. If it happens to be a place where the defendant does not want to litigate, for one reason or another, this can facilitate perhaps better settlement terms for the first-to-file plaintiff.

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So what is viral marketing? The simple answer is: a marketing strategy that encourages people to pass along a marketing message. Some will argue it’s a fancy word for word-of-mouth marketing. Others insist it has to take place online—through blogs, Twitter and such. But no matter how you define it, the beauty of a well thought out and executed viral marketing campaign can help make a mountain out of a molehill. Or a beloved local icon out of a fiberglass sculpture—as was the case when the Lake Creature arrived in Minneapolis.

When the Lake Creature appeared in the waters of Lake Harriet, we knew it would cause a ripple among folks in the area. But it was the strategic viral marketing campaign that turned it from a ripple to a tidal wave among greater Minneapolis residents and area visitors.   As visitors to Lake Harriet took in the creature’s beauty, their imaginations ran wild: Who brought it here? And what it was doing in the community? For the first week, the only clue was a sign at the lake with the address to a non-branded micro site where, upon logging in, residents could continue the fun by helping build the mystical creature’s lore.

That same week, the chatter on Twitter proved people were taking their conversations about the creature from the shoreline to online. “There’s a creature in Minneapolis,” they said. “Lake Harriet has its very own Nessy.” Some passed along the microsite address, others just speculated as to what the creature was doing in the Cities and why. Within minutes of posting their tweets, the powerful influencers would receive a message from the Lake Creature inviting them to follow her on Twitter and help direct people to the microsite to submit photos and stories. 

So when the Minneapolis Parks Foundation stepped forward in mid-July to announce it was behind the project and hoped the creature’s presence would help enhance the lives of residents and bring awareness to Minneapolis’ beautiful parks, most would say “mission accomplished.” In the first week alone the Lake Creature gained more than 150 followers on Twitter; nearly 7,000 people visited her site and the effort generated more than 3 million media impressions. She even has her own Facebook fan page. Some would say that’s a viral marketing fairy tale—and we won’t disagree.

—Allison Checco, Fast Horse

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This unsolicited e-mail communication from the Caribbean Island of Nevis got trapped in our spam filter, but I thought I'd remove the link and bring it out under a short leash for some legal training and discussion:

Trademark fair use, you ask?

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Learning at least a few new things each day is a good thing. One of the many things the special women in my life (wife and daughter) taught me today is the meaning of the apparently ubiquitous acronym BFFL: "Best Friends for Life." So, the special men in my life learned something along with me today. I'm not sure what that says about me and my boys?

Anyway, this acronym got me thinking about all the billboard advertising promoting Friends reruns I have encountered over the last several months. It's everywhere. What has struck me about this advertising (besides the sheer volume) is how different it is from the advertising that used to run while the television series was still being filmed and before the syndication of Friends, at least, as I recall. The website for KSTC-TV Channel 45 (based in the Twin Cities) depicts the kind of promotional photograph I recall seeing reguarly while the series was running and pre-syndication:

All six Friends cast members were promoted together as a united group or ensemble of, well, friends, apparently subscribing to the belief that the whole (the program) was greater than the sum of its parts (the cast members). This marketing approach (apparently required by Warner Brothers in the early days of the program) also was consistent with and reminiscent of the solidarity the Friends cast demonstrated during their multiple contract re-negotiations with NBC and Warner Brothers over the years. It is reported that each of the six received $1 Million per episode during the last two seasons, despite the likelihood that each of their relative values most likely was not commercially equivalent.

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Sometimes the world hands you lemons, and sometimes it hands you lemonade . . . or free beer . . . or even free advertising.  What serendipity for the Bud Light, Red Stripe, and Blue Moon brands that the media's most recent tempest in a teapot has culminated in a "Beer Summit," and that it is being widely reported that the principals will quaff these three brews while finally solving the nation's proverbial race relations problems.  (The last clause of that sentence is hyperbole.)

While this occasionally happens--a commercial product being in the right place at the right time in a news cycle--the Internet adds a whole new dimension to the import of appellations like "Beer Summit."  (And, by the way, it is high time for some new hackneyed appellations in political reporting.  "___ Summit" or "___-gate" are quite tired for being applied to every controversy / scandal / kerfuffle / etc. that touches D.C. politics.)  So, imagine all the Internet searches occurring today for the "beer summit," and how that may impact an event like Beer Summit or a company like Summit Brewing Company, which, after news results, are generally the first and second hits in Yahoo, Google, and Bing search results for the string "beer summit."  Interestingly, Summit Brewing's website is generally the top hit for the search string "summit beer," so word order is relevant in search strategy.

Cheers!

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Before the emergence of the Internet, there were two major conventional ways of doing intellectual property consumer surveys — mall intercept surveys and telephone surveys.   Mall intercepts work best for branded, consumer products where there is a visual element to be tested. They are moderately expensive and require some incentive. Telephone interviews are good for brand names, genericness studies or other types of research where the respondent does not need to view a visual. Most telephone research requires no incentives.

The Internet, in theory, combines the best of both worlds. Internet surveys not only permit the asking of verbal questions and recording verbatim answers, they also permit transmission of visual images such as products, labels, logos and packaging. Internet technology also permits sound transmission. Transmission costs are minimal with an e-mail blast of 5,000 names costing about $800 or $160 per thousand. (Typical mall costs are $30-$40 per interview). Unfortunately, there is no telephone book for e-mail addresses, and in order to use this medium you have to hook into a vendor that has large opt-in consumer panel data bases. By using opt-in panels, you will bypass all the SPAM filers and anti-SPAM on-line watchdogs. Moreover, you have an instant, real-time tabulation process.

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Hot on the heels of Dan Kelly's prediction of the eventual fall of social networking sites, it seems that Facebook has embroiled itself in another controversy.  The upshot of the most recent story is that Facebook is essentially using its power of cyber eminent domain to sieze and use photos posted by users for advertisements unless they change their privacy settings.

For me, this raises two questions:  The first is, whether or not Facebook users might have an action under right of publicity laws.  Generally, a right of publicity claim requires the plaintiff prove that somebody (1) appropriated plaintiff’s name and likeness to their advantage, (2) without plaintiff's consent; and (3) resulting injury to the plaintiff.  Typically, these claims are limited to celebrities because non-famous people usually don't have value in their name and likeness that the misappropriation injures.  However, its not unthinkable to believe that there is a conceivable theory of injury for Facebook users to pursue these claims.  (On a side note, I'm sure Facebook's terms of use give them some level of authorization to use photos, so that would be a likely hurdle as well.)  

The second question is, does Facebook really need this revenue?  It seems like the outcry from users would be pretty predictable.  Although the public expects and accepts a certain level of encroachment by advertisement, there's a line.  If you cross that line, you risk alienating a substantial portion of your audience.  The stakes are even higher when the people you are alienating are responsible for the content on the site.  If Facebook really has to go this far, it would seem that social networking sites are doomed to fail.

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Rapala, the world's largest manufacturer of fishing lures has pleasured us with some pretty clever and creative advertisements over the years, a lot of them award-winning ads too. For example, Carmichael Lynch created the above billboard ad that over time gradually "attracted cats" to the billboard featuring a super-sized Rapala minnow fishing lure. Lots of cats, in fact, many more than you can shake a stick at, you might say, if you fancy idioms and don't happen to be fond of those feline types. Carmichael Lynch notes: "With simplicity and humor, we've helped the [Rapala] brand connect with its enthusiast audience and grow to be the undisputed market leader for fishing lures." This is simply delicious creativity.

More recently, however, the undisputed market leader for fishing lures is now using the brand name of the undisputed market leader for Internet search engines in Rapala billboard advertising, apparently to continue growing Rapala's fishing lure business. Although there are Twitter tweets and other mentions on the web referring to this new Rapala billboard ad, I haven't been able to locate an online image yet, so I'll have to take a picture of the one I have seen myself and post it here when I can. In the meantime, just picture the above billboard minus the cats (and minnow lure) and with this slogan in large prominent black type above the red Rapala logo: "More Hits Than Google". Is this new Rapala billboard ad one of the award-winning variety?

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Moore’s Law holds that the power of an integrated circuit will double every two years. That prediction, made in 1965 by Intel co-founder Gordon Moore, has proved remarkably durable.

The continued application of Moore’s Law has taken us in a few decades from crude transistor radios to handheld information devices packing more power than entire rooms of mainframe computers that sent the first spaceships to the moon.

And it’s unleashed an unprecedented burst of creativity, as the reach of the Internet allows people from around the globe to exchange information and build on each other’s ideas at dizzying speed.

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Mommy Bloggers are an ever-growing group of women, estimated to number well into the millions, connecting over the Internet and sharing stories, tips and information relating to all aspects of motherhood.  There is no doubt Mommy Bloggers are impacting the on-line advertising and marketing world.  BusinessWeek recently ran an article dedicated to pitching products and services to Mommy Bloggers and many major companies are attempting to wield the Mommy Blogging economic power.  For example, Wal-Mart’s web site now includes a blogging hub for moms (Elevenmoms) and General Mills has a new blog, written by hundreds of moms recruited to blog about free products they are asked to review, in the hopes the bloggers will spark interest in the products they like.

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In April the FDA sent formal letters to a number of pharma companies warning them of their misleading paid search ads in Google. Essentially the FDA wants pharma brands to put their full name of their product and associated risks in the ad. The problem as stated by pharma companies is that these paid search ads in search engines are only 95 characters in length and there isn’t enough space to include the name and the risks, not to mention the benefits.

If you’ve been following the subsequent online discussion about these FDA letters, you’ll see that much of the debate is centered around the idea that the FDA suggestions may be making things more confusing for the consumer rather than helping them. Although there is the potential for the FDA to drive some unintended, consequences, it seems to me that there is some common sense interpretations of the FDA suggestions that are the right thing to do for all parties.

The unintended consequence most mentioned, is that forcing further requirements on pharma companies has reduced participation from them and thus opened the door for Canadian online pharmacies and natural supplements. If you do a drug search today, you’ll see this is already happening. (Side note: Google has a fairly responsive protocol for a brand to file trademark paperwork to stop other brands from using their trademark.)

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I have a good friend who, on point of principle, eschews endorsing large corporations.  Consequently, when he comes to possess t-shirts that bear corporate logos, he wears them inside out, so as to defeat the nominal marketing power they may have.  He gets a bit of a thrill knowing that he will not be a pawn in that game.  I once ran some errands with him in such a condition, and just about every person that saw him told him that he was wearing his shirt inside-out.  To each one, he briefly preached his gospel, "No corporate sponsorships, ma'am!" 

He hasn't converted me yet (and he may be a trendsetter), but his antics are an apt background to those who are at the opposite pole:  consumers who voluntarily create marketing materials for major brands.  The Internet has amplified this considerably.  I recently hit upon an illustrative case:  Johnsonville Sausage.  About a month ago, I saw a billboard with an enlarged photo of some bratwurst cooking on a grill with a simple white word overlay:  TASTYVILLE.  I salivated like Pavlov's dog.  Just last week, I saw a second, similar billboard, and the word was SUMMERVILLE.  Then it occurred to me:  I bet the Johnsonville website is carrying this theme as well.

Not only is the Johnsoville website playing off of this theme, but the company is conducting a contest in which users can create their own _______VILLE advertisements.  I realize that this marketing concept is hardly novel, but it really struck me how far technology has enabled us to go when it comes to customer-created advertising. 

Of course, art has always imitated life, and the videos here and here really prove it.  Move over YMCA!

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Airbrushing is a familiar technique among advertisers looking to avoid the risk of trademark infringement or dilution liability when branded props of others appear and would otherwise be recognizable. It can work well when removing a traditional visual trademark, i.e., a logo or word mark, because there can be no likelihood of confusion with (or dilution of) a visual mark when the claimed mark cannot be seen. 

But what about when a branded prop dominates the ad or the identifiable trademark is another's product container or package, a single color, trade dress, or perhaps the shape or configuration of the product or prop itself? What is critical for advertisers to appreciate is that when non-traditional trademarks are the subject of the ad and concern, the airbrush and any digital manipulation are less helpful and may be entirely ineffective in erasing trademark liability.

By way of a hypothetical example in the non-alcoholic beverage world, airbrushing the Coca-Cola word mark may not be sufficient to avoid liability, so long as the distinctive Coca-Cola bottle is left intact, say, in a Chevrolet ad. Likewise, by way of another hypothetical example, this time in the alcoholic beverage world, presumably the current owner of the Schlitz brand would object to another's commercial use of its distinctive Schlitz label even if the Schlitz word mark was airbrushed or otherwise removed.

Now, for a not so hypothetical example concerning Schlitz' ads, continue reading after the jump.

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The overlap of virtual reality and intellectual property is a relatively recent phenomenon. The advent of virtual worlds, such as Second Life, has created increased opportunities for legitimate marketing and branding, as well as, increased opportunities for infringement. Second Life even has its own bar association for those interested in virtual legal practice.

If you noticed the dates from the links above, you'll see that I'm not the first blogger to address some of these topics. Indeed, questions about intellectual property in virtual worlds have been percolating for years. However, recently a real-world lawsuit was initiated over virtual-world infringement. Taser International, Inc. has sued Second Life's creator, Linden Research Inc, alleging that Linden is selling virtual weaponry that infringes its rights. Among the interesting issues likely to arise in this suit will be vicarious and contributory trademark infringement and whether or not the use of a trademark in a virtual world constitutes a “use in commerce” which is necessary for trademark infringement. It will be interesting to see how traditional trademark principles are actually applied in the virtual environment.

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Which is better: a descriptive brand name like Rollerblade, an abstract/emotional brand name like Virgin, or a suggestive brand name that hints at either the function or the benefit like Energizer? The lawyers will tell you to go abstract (they like wildly differentiated names because they’re easier to protect). But marketers need more than just protectability. They need to promote their wares too.

Of course, each of these naming styles has advantages and disadvantages, and each can be used effectively. The two drivers that should dictate your preference are projected ad budget (and likely marketing channel), and how variable your business model is. The more abstract your brand name is, the more you will likely spend on advertising. The more descriptive your name is, the less flexibility you have to adjust your business model under that brand.

Consider three examples from the online job posting arena: Monster.com, TheLadders.com, and CareerBuilder.com. Three different styles of names, all for pretty much the same business.

Monster.com is the most abstract of the names. It doesn’t say anything about employment or personal development (the functional side of the business) nor does it say anything about efficiency or multiplicity of listings (the benefit side of the business). The upside of being so abstract is the company can adjust its business model over time: The brand “Monster” could offer relocation services just as easily as it could offer job hunting services. Furthermore, the name really stands out from the crowd. The downside? Names like this require a more substantial ad budget to make them stick. This company has bought television ad time during the Superbowl, and they constantly have to remind people what service they provide.

TheLadders.com is a more suggestive brand name. Still says nothing about job listings, but the key benefit of the service (climbing up the corporate ladder) is clearly communicated. While this name doesn’t afford quite as much flexibility for the business, it still gives a lot of room to maneuver. And the name stands out without being so abstract that they need to spend a gazillion dollars promoting it.

CareerBuilder.com is the most descriptive name of the three. This name clearly communicates its function: helping you build your career. Easy to promote in any channel (radio, tv, print, online) and easily understood by a wide audience. What this name lacks is charisma; it’s kind of boring (a common affliction of more descriptive names). Perhaps because these guys are competing with the likes of Monster and TheLadders, they too have spent quite a bit on their ad campaigns (including one of my favorite Superbowl commercials of all time).

One final question for readers: is it more important for a name to stand out (a la Monster) or for a name to be intuitive (a la CareerBuilder)?

—Burt Alper, Catchword Branding

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Time and time again we have had a client bring up the fact that one or more of their competitors is bidding on our client's trademarked or company-oriented keywords on the search engines. When this happens to our clients they cry fowl and often run to us with the question, can my competitors bid on my trademarked terms or name? Google says yes and no.

Yes, you can bid on another company's trademarked terms. After all, these are ads. If you're standing in an aisle at a store, you may see POP displays or store banners or coupons urging you to purchase one brand over another. Isn't this the same thing? As long as the ad or promotion does not convey anything negative about your competitor and does not mention the trademarked terms then it is okay.

Google's stance is that it wants you to have content on your site (within two clicks) that pertains to the keywords you are bidding on. They give you "credit", if you will, for having applicable content. If you don't have relevant content, the clicks get very expensive. Google does not see the value for the user - an ad pointing to a page that does not have content related to the ad is misleading to the user.

And no. Google has earmarked certain trademarked names as non-touchable by competitors.

This is an ongoing topic for discussion, especially after the American Airlines trademark cases. Some folks argue that you should be able to bid on a competitor's trademarked or branded keyword terms because these are ads. Others say, no, what is the use of a trademarked term if it is not enforceable? Even the search engines' views vary. Google says yes, in certain situations. MSN says yes but only if it is within their guidelines and does not infringe on a third party's trademark or rights. Yahoo says only if you are one of two types of sites - a reseller of the trademarked product/service or an informative site - but definitely not a competitor.

Where do you stand on targeting a competitor's brand within your PPC campaign?

—Ted Risdall, Risdall Marketing

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Remember what you were doing back in September 2006? 

Keyword ad trademark infringement lawsuits were being filed left and right (that hasn't changed much). The hot issue at the time: Does the sale (by a search engine) or purchase (by the competitor of a brand owner) of another's trademark -- as a search engine keyword -- constitute "use in commerce," a necessary element of a successful trademark infringement lawsuit?

Search engines and other defendants were hoping that the technical "no use" defense would permit a short-circuiting of these growing number of lawsuits. In fact, this hope was fueled on September 28, 2006 when Google had just prevailed in dismissing such a lawsuit brought by Rescuecom.

A federal district court in New York had dismissed the Rescuecom suit, saying that the sale of Rescuecom's trademark as part of Google's AdWords program did not constitute a "use in commerce," so there was no need to even consider the question of likely consumer confusion. For the next few years, other courts followed suit (mostly in NY) and similarly short-circuited and dismissed such claims.

As of last Friday, two and a half years after Google's initial win, and a full year after oral arguments were made to the Second Circuit Court of Appeals, Rescuecom may be singing, "We're back!"

In reversing the September 2006 dismissal, the Second Circuit Court of Appeals found sufficient trademark "use" for the case to proceed, relying on Rescuecom's allegation that "Google displays, offers, and sells Rescuecom's mark to Google's advertising customers when selling its advertising services. In addition, Google encourages the purchase of Rescuecom's mark through its Keyword Suggestion Tool." As such, the Rescuecom case will proceed and is sent back to the federal district court in New York to determine "whether Google's actual practice is in fact benign or confusing."

The Trademark Blog provides a helpful link through Scribd to obtain a copy of the court's 15-page decision (including the 19-page Appendix) here.

Professor Eric Goldman's detailed analysis can be found at his Technology & Marketing Blog by clicking here. 

You might remember my keyword advertising post on DuetsBlog from a couple of weeks ago here.

Bottom line: It appears that this latest ruling will pave the way for decisions that actually rule on the critical likelihood of confusion question.

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