Just this past Monday, GP won its jury trial in North Carolina, and the jury awarded GP about $790,000 in damages.  Unfortunately, being a jury trial, there is no written opinion to review or report upon.  I suspect that there will be an appeal.

So the obvious question is this:  how can GP lose its case in Arkansas, lose the subsequent appeal, then go on to win in North Carolina on substantially the same facts and claims?  Well, that’s a good question, and one that may feature in an appeal of the North Carolina case.  There is a principle in law called “issue preclusion.”  The idea is that once a party has tried a particular legal issue on particular facts, others may rely upon the outcome of that decision and hold it against the party that tried the issue.  Here, GP lost on its trademark infringement claim in Arkansas, therefore, in theory, it should lose that issue on the same facts in North Carolina.  Unfortunately, the defendant in the North Carolina case, in the court’s opinion, waited too long to raise the defense of issue preclusion, so the court denied application of the doctrine.

In my first week of law school, my Torts professor stressed the importance of procedural posture in each case and how it can affect outcomes.  This case is a good example, and the possible negative impact of the delay is amplified by a few other GP cases pending around the country:

• On Sept. 8, 2011, GP survived a motion to dismiss a suit in the Southern District of Ohio where the motion was based upon applying issue preclusion from the Arkansas / 8th Circuit case.
• On Nov. 4, 2011, GP lost a motion to dismiss a stuffing suit in the Northern District of Ohio based upon the application of issue preclusion from the Arkansas / 8th Circuit case.  GP is currently appealing to the Sixth Circuit Court of Appeals.  (The other Ohio case above is currently stayed pending the outcome of the appeal, which is likely to be binding in that case.)
• Another case pending in the District of Nevada is stayed until at least next month.  This case has been stayed since late 2010, initially awaiting the outcome of the 8th Circuit appeal, and now likely awaiting the outcome of the 6th Circuit appeal.

It looks like the North Carolina jury award will not be the final word in this matter, and even if it is, I have a difficult time believing that $800k will cover GP’s attorneys fees in five federal lawsuits and three appeals (possibly four).  It appears that GP is questing to have paper towel dispensers treated like soda fountains–insuring that the product in the machine matches the label on the front.  Unfortunately, as the 8th Circuit pointed out, even GP will sell towels for use in others’ dispensers.

We shall stay tuned to see if the score changes…

Of the ingredients that go into our fruitcakes, whiskey is the most expensive, as well as the hardest to obtain:  State laws forbid its sale.  But everybody knows you can buy a bottle from Mr. Haha Jones.  And the next day, having completed our more prosaic shopping, we set out for Mr. Haha’s business address, a "sinful" (to quote public opinion) fish-fry and dancing cafe down by the river.  We’ve been there before, and on the same errand; but in previous years our dealings have been with Haha’s wife, an iodine-dark Indian woman with brassy peroxided hair and a dead-tired disposition.  Actually, we’ve never laid eyes on her husband, though we’ve heard that he’s an Indian too.  A giant with razor scars across his cheeks.  They call him Haha because he’s so gloomy, a man who never laughs. As we approach his cafe (a large log cabin festooned inside and out with chains of garish-gay naked light bulbs and standing by the river’s muddy edge under the shade of river trees where moss drifts through the branches like gray mist) our steps slow down.  Even Queenie stops prancing and sticks close by.  People have been murdered in Haha’s cafe.  Cut to pieces.  Hit on the head.  There’s a case coming up in court next month.  Naturally these goings-on happen at night when the colored lights cast crazy patterns and the victrola wails.  In the daytime Haha’s is shabby and deserted.  I knock at the door, Queenie barks, my friend calls:  "Mrs. Haha, ma’am?  Anyone to home?"

Footsteps.  The door opens.  Our hearts overturn.  It’s Mr. Haha Jones himself!  And he is a giant; he does have scars; he doesn’t smile.  No, he glowers at us through Satan-tilted eyes and demands to know:  "What you want with Haha?"

For a moment we are too paralyzed to tell.  Presently my friend half-finds her voice, a whispery voice at best:  "If you please, Mr. Haha, we’d like a quart of your finest whiskey." 

His eyes tilt more.  Would you believe it?  Haha is smiling!  Laughing, too.  "Which one of you is a drinkin’ man?"

"It’s for making fruitcakes, Mr. Haha.  Cooking."

This sobers him.  He frowns.  "That’s no way to waste good whiskey."  Nevertheless, he retreats into the shadowed cafe and seconds later appears carrying a bottle of daisy yellow unlabeled liquor.  He demonstrates its sparkle in the sunlight and says:  "Two dollars."

We pay him with nickels and dimes and pennies.  Suddenly, jangling the coins in his hand like a fistful of dice, his face softens.  "Tell you what," he proposes, pouring the money back into our bead purse, "just send me one of them fruitcakes instead."

"Well," my friend remarks on our way home, "there’s a lovely man.  We’ll put an extra cup of raisins in his cake." 

The black stove, stoked with coal and firewood, glows like a lighted pumpkin.  Eggbeaters whirl, spoons spin round in bowls of butter and sugar, vanilla sweetens the air, ginger spices it; melting, nose-tingling odors saturate the kitchen, suffuse the house, drift out to the world on puffs of chimney smoke.  In four days our work is done.  Thirty-one cakes, dampened with whiskey, bask on window sills and shelves. 

Yum.  Merry Christmas to all!

This decision is among the first paragraphs in a new chapter of domain-related trademark issues that are arising in light of ICANN’s roll out of new generic top-level domains next year.  It is unsurprising that companies are attempting to secure trademark rights in top-level domains, since the new gTLD scheme is seemingly set up to encourage the Balkanization and proprietization of gTLDs.  Verisign, the long time "owner" of the .com gTLD, among others, used to own this registration for ".COM .NET THE WORLD’S MOST TRUSTED NAMES."  Verisign now has an application pending to register the tag line "THE WORLD IS CONNECTING BETWEEN THE DOTS," which it is using in connection with a rotating banner on its home page to promote its gTLDs–.com, .net, .gov, .name, and .tv. 

Other groundwork for this has been under construction for some time: 

• Neustar owns two registrations for .BIZ (and Design, ".biz" disclaimed)
• The Cooperative League of the USA owns a registration for DOTCOOP (i.e. ".coop")
• The Public Interest Registry owns registrations for .ORG (and Design, ".org" disclaimed)
• Telnic Limited owns registrations for .TEL (and Designs, ".tel" not disclaimed)

There are numerous implications for viewing a TLD as a trademark.  For companies that do, do they intend to license every second level domain registered in the domain space?  If not, how do they plan to maintain the association of the TLD with a single source?  The .MUSIC decision makes clear that merely placing a "." in front of a descriptive term is not distinguishing for a TLD directed at goods and services described by the term.  Would applications for .QUARTERNOTE for the same goods and services be registrable?  Is a three-syllable TLD too long to be an effective TLD?  

This site appears to be maintaining a list of announced new TLD initiatives.  As I peruse it, I do not see much in the way of creativity.  I think that the most successful new gTLDs will be ones that have at least a dash of creativity and a good marketing plan.  Internet users–both content providers and consumers–will need incentives to break out of the .com paradigm, and descriptive TLDs offer few incentives. The new gTLD initiative may eventually take off, but it will need some more creative offerings to do so.

I recently learned that a number of sugar companies (that’s cane sugar or beet sugar) sued the Corn Refiners Association in federal district court in April for false advertising under the Lanham Act, claiming that calling high fructose corn syrup "corn sugar" is false and misleading.  The court recently issued an opinion on the Corn Refiners Association’s motion to dismiss, essentially allowing the case to proceed.  A PDF of the first amended complaint is here, and it is fascinating.

At the risk of stating the obvious, one issue that frequently arises in the arena of trademark law is the meaning of words.  Many trademarks are comprised of words, and the suggestive or descriptive connotation of such words in view of the goods or services provided under the mark is highly relevant to the legal status of a trademark.  In this "Big Sugar v. Big Corn" case, the words at issue are "sugar" and "corn sugar," but they are not trademarks.  They are generic words.  As it turns out, the Corn Refiners Association might not legally be able to simply "rebrand" high fructose corn syrup to be "corn sugar."  Corn sugar, as it turns out, has an "official" definition in federal regulations, which you can see here.  Corn sugar is "produced by the complete hydrolysis of corn starch with safe and suitable acids or enzymes, followed by refinement and crystallization."  This does not define high fructose corn syrup.  

Words matter, and making sure that we all have a common understanding of generic words like "sugar" and "corn sugar" is a predicate to any meaningful dialogue on trademarks and branding.  We will keep an eye on Big Sugar v. Big Corn and report on developments. 

I use quotes around the "legal" reasons because not all of my proffered reasons are strictly legal.  From a strictly legal standpoint, a company that intends to rely on its trademark rights to preserve its own space on various social networking sites may have no protection whatsoever.  Painting with broad strokes, conventional trademark law often cannot reach the use of a domain name in an Internet address because such use is often not considered trademark use.  Uniform Domain Name Resolution Proceedings (UDRP) and Anticybersquatting Consumer Protection Act (ACPA) actions are generally directed at cybersquatting and typosquatting of domain names, not path extensions in particular domain name spaces.  (And I hasten to add that I have not researched this point.  I would be curious to know if anyone is aware of an ACPA action against use of a mark in a URL path, as opposed to a domain name.  Trademark types might review the definition of "domain name" in the Lanham Act under 15 USC 1127 and consider its import.  The ACPA is at 15 USC 1125(d).)  So much for "legal" remedies.

So if strictly legal rights and remedies often do not work for protecting a mark or brand in an Internet address path, what then?  Well, the various websites themselves might provide some recourse.  FaceBook’s trademark help page is here.  Twitter’s is here.  Though I have not reviewed these in detail, it is not uncommon that these remedies, much like UDRP and ACPA remedies, will only be beneficial against bad-faith uses.  Good faith uses, such as another company with the same mark or name, or fair uses, like gripe sites, will often be outside of the reach of these remedies. 

If those don’t work, you’re pretty much down to the basic wild west legal principle of "I was here first"–known generally in legal circles as the "first in time" principle.

There are two points worth making about the first in time principle as applied to Internet addresses.  The first is the hackneyed but true economic point that an ounce of prevention is almost always cheaper than a pound of cure.  Reserving marks, brands, and company names is often a low cost or cost-free exercise in social media spaces, but hiring a lawyer to advise on prying a valuable name away from a third party is almost certain to cost hundreds or thousands of dollars.  So there’s an economic reason.

But here’s the second point about the first in time principle in Internet addresses:  there is a new paradigm in town.  Trademark law has long tolerated pluralism.  My favorite example is DELTA:  Delta Air Lines, Delta Faucet, and Delta Power Equipment can all happily coexist because airline services, faucets, and power tools are sufficiently different from each other that the use of identical marks for different sources is not confusing.  But on the Internet, there is only one delta.com, and it belongs to Delta Air Lines.  There is only one twitter.com/delta (or @Delta), and it belongs to Delta Air Lines.  There is only one facebook.com/delta, and it belongs to Delta Air Lines.  There is only one youtube.com/delta, and it appears to belong to Delta Air Lines.  Internet addressing does not tolerate pluralism.  It is driving towards monism.  So, on the Internet and social media sites, get your name first or get a different name. 

As I have detailed elsewhere, the costs for recovering a cybersquatted or typosquatted domain name is typically thousands of dollars, and there is no guarantee that a domain like "brand.xxx" will be recoverable if it is registered.  The opt-out will exempt the relevant trademark from registration as a second-level name for any reason.  While I have heard complaints that this seems like a stick-up, opting out is a relatively cheap defensive measure in the evolving Wild West of the Internet that will make sense for many registered trademark owners.

Now, in this company’s defense, its name is just First National Bank, and the above signage really just combines two marks.  An image of a yoked ox separates the "1st" from the "First" in the first line, but when I saw the sign, my immedate (first?) thought was, "Is that really the first First National Bank?" 

Probably not.  In my earlier post, I wondered how many "First" banks there are.  I now wonder how many First National Banks there are.  These are just from the first page of hits from an Internet search (and the names are courtesy the search engine results, not each bank’s linked page):

• First National Bank of Omaha
• First National Bank in Hermitage, PA
• First National Bank
• First National Bank
• First National Bank Texas
• First National Bank Alaska
• First National Bank
• First National Bank of Northern California
• First National Bank of St. Louis
• First National Bank of Bemidji

As it turns out, the phrase "National Bank" is a term of art in the U.S. banking industry, as explained here.  So far, I have been unable to locate anything explaining whether "First National Bank" or just "First" are also terms of art in banking.  Does anyone know? 

Though I have not had much occasion to delve into this area in practice, I suspect that there are numerous federal and state regulations governing bank naming, which may be difficult to reconcile with creative and trademark considerations.  Nevertheless, some great bank names are out there–you just have to look. 

My principal question about "onesies" is this:  if onesie is not generic, what is the proper generic term for a onesie?  It is a ONESIES® brand . . . ?  It’s not a t-shirt, not quite a leotard, not a pant suit.  What is it?  According to Gerber’s website, it is ONESIES® brand one-piece underwear, or just underwear.  (Competitor Carter’s calls them "bodysuits."  I have it on good authority that Carter’s bodysuits are superior to ONESIES® brand one-piece underwear.)

Unfortunately for Gerber, there are currently forty-one U.S. trademark registrations for marks used in connection with "onesies," often among other goods.  That’s right, even the U.S. Trademark Office is using "onsies" generically in describing goods (or allowing trademark applicants to do so).  The first hit on an Internet search for "onesie" is for a Wikipedia article titled, "Infant bodysuit."  These things are not necessarily fatal to Gerber’s claims or rights, but it does merit placing ONESIES on Genericide Watch.  Perhaps Gerber can keep this brand from the genericide graveyard, like ROLLERBLADE and XEROX. 

Jesting aside, and as always, I wish Gerber luck in its suit, and hope that they can get an injunction against the CCR garments themselves, if not the trademark.  

On the left is a Samuel Adams, and there is a bottle cap "floating" a ways down in the rather frothy head.  But I’ll give it to them — the interior of the cap is dry, so I suppose it is floating in some sense. 

The center photo is of the weakest beer I could think of — a Bud Light (OK, Coors Light is probably weaker, but I’m not going to run tests to find out).  For the record, the beer had a head for about five seconds after I finished pouring (down the center, not down the side — beer needs to breathe).  And, there is a bottle cap floating quite comfortably.

On the right is a glass of water, and the bottle cap is floating nicely there as well. 

When it comes to false advertising, an ad need not be literally false to be considered "false advertising" in a legal sense.  An ad that is misleading or that implies something that is not true could be problematic.  In this case, the implication of the statement about the head on a Sam Adams is that the heads of at least some other beers are not so thick as to support a bottle cap.

Of course, for this ad to be actionable, the misleading statement also has to be material to a consumer’s purchasing decision, and that is where The Boston Beer Company is probably safe–beer purchasers are likely not running out to buy this beer because of the implied bottle cap-floating qualities of its head.  This is more along the lines of puffery, which is fairly widely tolerated.  (And I have a difficult time seeing a competitor making a case for being damaged by this ad.)

Copyright is a complex area of law, but there are some general rules in the U.S. that are useful to commit to memory.  One of these regards "authorship" and initial ownership of a copyrighted work:

Copyright in a work protected under [Title 17 of the U.S. Code] vests initially in the author or authors of the work.

17 U.S.C. 201(a).  This means that anyone who creates a copyrightable work is its author and initial owner.  For instance, a photographer owns the copyright in his or her photographs.  (There are exceptions to this general rule, but I’m skipping them so as not to write a treatise here.) 

Another general rule is that the owner of a copyright has the exclusive right to reproduce and duplicate the copyrighted work (among other rights).  This rule is subject to an exception known as "fair use."  Copyright fair use itself is a topic that could alone fill a treatise.  Briefly, the fair use principle can be stated as follows:

[T]he fair use of a copyrighted work . . . for purposes such as criticism, comment, news reporting, teaching . . . scholarship, or research, is not an infringement of copyright.

17 U.S.C. 107.  All three of these doctrines are on display in the discussion over at TechDirt, which may further implicate the "work for hire" doctrine, depending upon the employment and/or contractual status of the (human) photographer, David Slater, whose equipment was used by the monkeys.  It is also important to note that my quotes and cites above are U.S. law.  The monkeys are in Indonesia, and Mr. Slater appears to be a U.K. citizen.  U.S. law and/or legal principles may not apply at all in this case.  (I warned you that copyright law is complex — a point underscored by the reply from Caters News Agency to TechDirt’s assertion of fair use:  "regardless of the issue of who does and doesn’t own the copyright – it is 100% clear that the copyright owner is not yourself.")

Additional details of the photographer’s experience with the monkeys can be found at the Daily Mail Online here.  David Post also has amusing commentary over at The Volokh Conspiracy.