William Carleton, Counselor @ Law

Trademark beef

What foods are they serving at the US Patent and Trademark Office cafeteria?

From a Brian Rogers retweet of a tweet from Erik Pelton comes a link to this more-than-usually entertaining official USPTO Communication in connection with a federal trademark registration application.

The central issue presented: is the applicant's word mark, EAT MORE KALE, confusingly similar to the existing mark, EAT MORE CHIKIN.

In finding that the marks are confusingly similar, the PTO's examiner discusses how a word chosen in opposition to another can be calculated to invoke an association:

"Applicant . . .discusses the differences between the terms KALE and CHICKEN. The trademark attorney [examining this application] concedes that these terms are different and that they have specific definitions. But the similarities between the marks are more important than the differences. Both parties’ marks have a similar concept – encouraging those that encounter the marks to eat more of something. The marks urge action in the same way, only as to different substances and both of them are commonly consumed types of food. Given the nature of the goods and services, it is the attorney’s position that this is sufficient to find them similar. He has to be mindful of the fact that consumer confusion has been held likely even for marks that do not physically sound or look alike but that convey the same idea, stimulate the same mental reaction, or may have the same overall meaning. Proctor & Gamble Co. v. Conway, 419 F.2d 1332, 1336, 164 USPQ 301, 304 (C.C.P.A. 1970) (holding MISTER STAIN likely to be confused with MR. CLEAN on competing cleaning products); see Ralston Purina Co. v. Old Ranchers Canning Co., 199 USPQ 125 (TTAB 1978) (holding TUNA O’ THE FARM for canned chicken likely to be confused with CHICKEN OF THE SEA for canned tuna); Downtowner Corp. v. Uptowner Inns, Inc., 178 USPQ 105 (TTAB 1973) (holding UPTOWNER for motor inn and restaurant services likely to be confused with DOWNTOWNER for the same services)."

Humor aside, I find the PTO examiner's reasoning to be pretty good and the communication to be professional.

Diptych from photos by normanack (chicken) and by Tuscanycious (kale), both on Flickr.

Macy's exclusivity with Martha Stewart

We had such a good time last month parsing a license assignment clause, I thought we'd enjoy having a look at the exclusivity provisions in the contract between Macy's and Martha Stewart Living Omnimedia.

Macy's has sued Martha Stewart's company, claiming that the latter's recently announced deal with JCPenney violates an exclusive contract with Macy's. Reportedly, the judge in the case has sent the parties off to mediate for a month.

I found what looks like the most current version of Macy's complaint, along with a copy of the main contract between Macy's and Martha Stewart Living Omnimedia.

It wasn't hard to find these documents - I went straight to the new York State Supreme Court website and use the native search functions it provides - but I have to say, the news stories I've seen don't make it easy for the layperson to access primary documents. That reflects poorly on professional journalism.

If you're a journalist and you're writing about a high-profile lawsuit or a key provision in an essential contract in dispute, why not link to the complaint and to the contract? One of the glories of our open judicial system is that disputes are adjudicated in public, and so the complaints, answers, briefs and exhibits that get filed with a court are (subject to redactions when confidentiality is warranted) open to the public. When courts take the trouble to make documents available online, there really is no reason for a journalist writing about the case to not link to the source documents.

Anyway, it's going to take a post or two (or more) to unpack the contractual genesis of Macy's complaint. Maybe because the "intellectual-property" at issue is pretty nebulous - little more than the Martha Stewart name and some personality rights - the defined terms deployed go off in different directions, and it's not yet clear to me that they meet back at one consistent center. Then again, maybe they do; but it will take some work to find the center.

Here's an example of what I mean: the contract uses a defined term, "Exclusive Products," styled in the conjunctive, and in a manner that may almost seem calculated to obviate connotations of exclusivity. Here's that defined term:

"'Exclusive Products' shall mean those products in the Exclusive Product Categories that are branded under the Trademark, manufactured by Licensee, and marketed and sold by Licensee or, under the conditions set forth herein, through an MSLO DTC Channel."

There are two or three other defined terms to unpack here, for sure, but I hope you see my point. Reading this defined term in isolation suggests that products don't become "exclusive" unless and until Macy's manufactures, markets and sells them.

More to come. Maybe this post will beget a miniseries.

Redacted pages (one pictured) in the Macy's complaint remind me of the Martha Stewart Collection Dinnerware, Lisbone Black Collection.

A right answer in the Cascadia Cup trademark registration kerfuffle

It's okay to talk about sports on Counselor @ Law because this story is really about intellectual property.

Check that. The story is about where intellectual property meets cultural property.

Some background: Seattle, Vancouver and Portland have soccer clubs that, of late, play in the professional league known as MLS.

But before any of Seattle, Vancouver and Portland joined MLS, the three were in other leagues, and over years a rivalry developed.

Fans put a name to the rivalry and to the trophy awarded to the yearly champion: the Cascadia Cup.

(Side note: "Cascadia" has connotations difficult for people who don't live along the Vancouver/Seattle/Portland corridor to understand. It is a transnational (maybe even a secessionist) concept. These subversive connotations are fitting for the soccer rivalry insofar as they suggest that loyalty to the sport runs deeper than national identity.)

Comes now the MLS, looking to capitalize on the goodwill associated with regional rivalries among member MLS teams. According to this story from the AP:

"The MLS has . . . applied to trademark other rivalries, including the Rocky Mountain Cup, the Brimstone Cup between the Chicago Fire and FC Dallas, and the California Clasico between the San Jose Earthquakes and the L.A. Galaxy."

The MLS wants to treat "Cascadia Cup" as MLS IP as well, but a consortium of Seattle, Vancouver and Portland soccer fan clubs have organized to assert their own, prior rights in the trademark. See this assessment of the clash from Michael Atkins, who also links to the trademark applications at issue.

On the most recent Nos Audietis podcast, former soccer player and current TV soccer commentator Alexi Lalas seemed to suggest that the fan group should defer to the beneficence of the league. Here's what he said in answer to a question about whether it would be realistic for the MLS to newly brand the regional rivalry and ignore the Cascadia Cup mark:

"Oh yeah, it is certainly realistic.

"I see first and foremost them [the league and the fan group] getting together, them talking. I think from a CCC [Cascadia Cup Council, the fan group] perspective, they should first let MLS explain themselves much better, and let them give them detailed, point by point by point, 'this is how we are going to make your Cup better, and this is why the ownership, or being the custodians, of this Cup, is going to help it become better and become even something greater than you ever imagined. And this is why having it greater than you ever imagined is going to be good for you, and maybe even,' appealing to their sense of greater good, 'and why it is going to be good for this league and this sport that you, at least on the surface, purport that you believe in.' I think that's first and foremost hat has to happen.

"With regards to the other possibility, where they just napalm the whole thing and say 'okay fine, it's still yours, go ahead, enjoy it, do what you want to do, but there will be no mention of it, there will be no recognition of it from a league nor from a team standpoint going forward; and if it's this clandestine type of out back, alley way, post-game presentation to a player who will remain anonymous, then so be it.'

"I hope it doesn't get to that, because what will mean is that they [the MLS] will create their own version of it, and it will be diluted, and it will lack any authenticity or credibility, and it will serve to further distance the very people that are going to drive, as I said, the very fuel that is hopefully going to ignite this to something bigger and better. That would be disappointing to me, not just from a Cascadia Cup perspective, but from a soccer perspective. Because if there is one thing I think we can all agree on, it's that in order for this game to continue to go forward, there has to be communication, there has to be cooperation, and to be quite honest, that's how we've gotten so far in such a relatively short period of time. And if it starts splintering off, that can lead to big, big problems."

I think Lalas is too quick to concede that a typical, advertising sponsorship path is the right way to exploit this particular mark. But I do think he's right that the parties should focus on what they want the Cascadia Cup to mean in the coming years.

The framework for the solution is this: MLS should acknowledge the prior rights of the supporters group in the Cascadia Cup mark, assign its Candian registration to the supporters group, and decline to oppose the application that the supporters group has made in the US; in exchange, the supporters should give MLS a multi-year license to use the Cascadia Cup mark according to branding guidelines that are mutually acceptable.

The negotiations should be about the branding guidelines for the Cascadia Cup mark.

Zynga's Employee Invention Assignment and Confidentiality Agreement with Alan Patmore

I've just started looking at documents filed in the Superior Court of California, County of San Francisco, in connection with a suit brought by the game maker Zynga. Zynga filed the suit initially against its former employee, Alan Patmore, and has since amended its complaint to name Patmore's new employer, another game company, Kixeye, as well.

Patmore is a big deal in the game industry. In an entry that appears to pre-date Zynga's lawsuit, Wikipedia credits Patmore for delivering many succesful games, including one from 2002 based on The Lord of the Rings, which, Wikipedia says, sold 1.8 million copies. "Patmore," Wikipedia states, "is a much sought-after authority within the industry on topics including project management, creative development, and industry trends and practices."

Keep the phrases "project management" and "industry trends and practices" top of mind, because the coutcome of the fight among Zynga, Patmore and Kixeye may well turn on the extent to which distinctions can be drawn between Zynga-specific trade secrets, on the one hand, and general game industry expertise, on the other.

Though we're not going to unpack the various allegations, counter-allegations and defenses in the lawsuit, not today.

Instead, we'll begin our look into the case by reviewing an Employee Invention Assignment and Confidentiality Agreement between Zynga and Patmore, which was appended as an exhibit to Zynga's initial complaint.

Because Zynga is based in California and because Patmore lives in California and worked for Zynga in that state, we know Patmore's agreement with Zynga is not going to include any express post-termination non-compete covenant. To the extent that Zynga wants to impede what Patmore might accomplish for Kixeye, it is going to have to allege and show behavior on the part of Patmore that is unfair, illegal, or in breach of a contractual covenant (other than a non-compete).

Is there anything unusual in that Employee Invention Assignment and Confidentiality Agreement that might tend to give Zynga's claims broader scope?

No and yes.

By and large, the Zynga Employee Invention Assignment and Confidentiality Agreement is standard and what you would expect to see in use by an angel or VC-backed startup or emerging technology company. The Agreement requires the employee:

• to acknowledge that his work for the company is work for hire,
• that he assign company inventions to the company,
• that he schedule out prior inventions he means to retain,
• that he waive moral rights, and
• that he keep the company's proprietary information confidential.

The Agreement also contains a one-year, post-termination covenant to not solicit Zynga employees or consultants.

All of the foregoing is normal. But there are two nuances in the Zynga Employee Invention Assignment and Confidentiality Agreement, pieces of bespoke drafting, that could be important, from Zynga's perspective, in expanding the scope of what may be fairly regarded as trade secrets for purposes of this case.

The first bit of custom drafting is in the definition of Proprietary Information. Here's an excerpt of what the Agreement says are examples of the kinds of information that ought to be regarded as proprietary to Zynga:

"Proprietary Information may include information I learn about or develop in connection with my employment with the Company, such as: . . . (ii) techniques and methods for developing, coding, or improving online social games; (iii) techniques and methods to create 'virality;'  (iv) measurement techniques, and specific functionality that increases monetization and both measures and increases retention metrics; . . . (xi) the particular needs and preferences of the Company's suppliers, platform providers and business partners, and the Company's approaches and strategies for satisfying those needs and preferences . . . ."

Arguably, much of what is described in these examples could fall under the rubric of general industry knowledge or experience gained through work for a succession of employers. By including these items in a "laundry list" of what should be regarded as proprietary, Zynga is doing what it can to shift the balance somewhat, and expand, by virtue of agreement of the parties, the scope of what should be regarded as protected. On the other hand, and as you would expect, the Agreement has a standard carve-out to the definition of Proprietary Information, eliminating from the scope of what is protected such information as is generally known, was previously known, or is independently developed. This carve out will temper the expansive effect of the "laundry list."

And here's the second bit of custom drafting, an entire section of the Agreement that is clearly calculated to secure an employee's acknowledgment of an expansive view of what should be regarded as trade secret:

"14. Non-Solicitation of Suppliers/Customers. During and after the termination of my employment with the Company, I will not directly or indirectly solicit or otherwise take away customers or suppliers of the Company if, in so doing, I access, use or disclose any trade secrets or proprietary or confidential information of the Company. I acknowledge and agree that the names and addresses of the Company's customers and suppliers, and all other confidential information related to them, including their buying and selling habits and special needs, whether created or obtained by, or disclosed to me during my employment, constitute trade secrets or proprietary or confidential information of the Company." 

The title of the section leads you to believe you'll find an express, post-termination restrictive covenant, though the actual drafting is circular. The net intent appears, again, to get the employee's buy-in to an expansive view of the kinds of information that should be regarded as proprietary to Zynga.

To be continued.

Photo credit: VideogameVisionary.com, Alan Patmore in 2008, as posted on Flickr.

Feedback's ownership loop

Interesting feedback from @joshblake on App.net yesterday about App.net's written Developer Terms.

Go here to see the actual thread in which Blake framed the problem and the discussion that ensued. Here's how you might express the issue in the form of a question: how can App.net, with a straight face, ask independent developers for feedback, while at the same time insisting that App.net own any such feedback?

Any service provider with ambitions to become a platform will of course relish feedback, especially when that user is an accomplished outside developer who understands how the service works, technically, and who puts effort and imagination into fusing new applications onto the service.

That service provider will naturally covet the unrestricted ability to make use of feedback.

App.net took a wrong turn by publishing an overreaching covenant about developer feedback. Here's what it says, or said, in a version dated September 26, 2012:

Feedback

We love feedback. Please let us know what you think of the API, these Developer Terms and, in general, App.net. When you provide us with any feedback, comments or suggestions about the API, these Developer Terms and, in general, App.net, you irrevocably assign to us all of your right, title and interest in and to your feedback, comments and suggestions.

Blake opened an issue on GitHub for further discussion.

The right approach here is probably a license, rather than an assignment, from the developer.

Here's a suggested draft of a substitute feedback provision, using license language and already carrying the benefit of Blake's feedback:

Feedback

We love feedback. Please let us know what you think of the API, these Developer Terms and, in general, App.net. When you provide us with any feedback, comments or suggestions (collectively, "Feedback") about the API, these Developer Terms and, in general, App.net, you grant to us, under any right, title or interest you may have in and to such Feedback, a non-exclusive, royalty-free, worldwide, transferable, sub-licensable, irrevocable, perpetual license to use that Feedback or to incorporate it into the API, these Developer Terms, or any of App.net's products or services.

Image: Sune Petersen / Flickr.

Zombie Property Law

I'm 100 pages into Colson Whitehead's Zone One, a novel set in lower Manhattan following an apocalyptic plague that turns most residents into the undead.

Whitehead's prose is chewy. You can gnaw on it like a zombie going at a circulating intestine.

What grabs me most about the story is how corporate sponsorship morphs and survives the apocalypse.

The basic concept is that corporations "sponsor" America's reconstruction by expressly agreeing that certain of their property may lawfully be scavenged by soldiers and workers in the field.

Just below is a paragraph from pages 48-49 (of the trade paperback) that explains this evolution from simple advertising to a kind of bartered underwriting. "Buffalo" is metonym for the provisional government.

"Buffalo created an entire division dedicated to pursuing official sponsors whenever a representative turned up, in exchange for tax breaks once the reaper lay down his scythe and things were up and running again. (Additional goodies the public would never find out about weeviled the fine print.) There were understandable difficulties in tracking down survivors in positions of authority over, say, the biggest national pharmaceutical chain or bicycle manufacturer, but they strolled into camp from time to time, with the typical scars but eager to contribute. They generally put a price cap on their goods or specified a particular product in their brand family, one not too dear, but their sacrifices were appreciated nonetheless. Pledge all your tiny cartons of children's applesauce, in all the nation's far-flung groceries and convenience stores? It was a no-brainer: they were expired anyway. The civilians out in the wild, unaware of the regulations, would be welcomed into the system in time, and they would obey."

It's an intriguing idea, that respect for abstract title to property - from inventory to intangibles - is in the warp and weave of the human condition, not something to be attenuated by disaster.

Photo: e_monk / Flickr.

Michael Atkins' IP Law Reports from China

Trademark attorney and blogger Michael Atkins has been posting recently about a trip he made to China for what sounds like a very intense, 7 day IP law conference.

The kind of conferences lawyers go to in the US typically span one or two days at most. Most often, attendees leaf indifferently through presentation materials in three ring binders while presenters grimly read the words off a powerpoint deck.

But Atkins describes a conference where the participants worked, ten hours a day, over seven successive days.

He reports that Chinese judges and lawyers are committed "to developing best practices in intellectual property law." And that Chinese judges and lawyers are dealing with some of the same issues US judges and lawyers are dealing with:

"Chinese IP judges are struggling with the same IP issues our courts are struggling with. One judge commented that China has decided cases involving online auctions and keyword advertising similar to Tiffany and Rosetta Stone. With a huge IP docket, it’s no wonder China’s top judges are at the intersection of law and technology much like some of our judges are here."

Perhaps the most interesting point in Atkins' reporting is that China seems to be adopting the "famous brands" legal doctrine  - something the US has been asking China to do, in order to extend legal protection for US brands even in places where they do not do business (yet).

This is ironic, Atkins points out, insofar as the US itself does not (always) do the same for the famous brands from other nations that are (arguably) usurped in the US. He cites the case of "a famous Indian restaurant with no U.S. presence against a copycat restaurant that opened in New York," which the Second Circuit decided against the famous Indian brand. "The Second Circuit held no U.S. trademark rights means a foreign trademark owner can’t prevail here — precisely the opposite conclusion we’re encouraging China to adopt," Atkins notes.

Chinese judges read key opinions of US courts, Atkins says, and he reports that one high judge in particular said Chinese judges would read even more, were more American judicial opinions translated into Chinese.

"Note to the U.S. government," Atkins writes. "[I]f you want to influence thinking in the Chinese judiciary, translate important U.S. cases into Chinese."

Photo: "Court of Customs and Patent Appeals Reports (Patent Cases) in a large DC law library," by Mr. T in DC.