13 June 2011

Apples Growing Clouds


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Image by Sean MacEntee on Flickr

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Apple officially launched its much-hyped iCloud suite of services, applied for the registration of the trademark “iCloud” and entered the hostile territory of trade mark infringement: the Arizona based iCloud Communications LLC brought legal proceedings against Apple Inc before the Federal District Court for the District of Arizona.

Does it sound familiar? I personally felt reminded of Apple’s dispute with Fujitsu over the iPad trade mark. Indeed, the current situation is similar to the iPad case, but nevertheless distinctive in some important instances.

When I first read about the lawsuit I navigated to the US Patent and Trademark Office’ website and performed a search thereby processing the sign “iCloud”.
And you know what?
Apart from Apple’s numerous applications, there is only one US registered trade mark consisting of the iCloud sign and it is owned by the Swedish company Xcerion AB. The same is true also with respect to the Community Trade Mark  iCloud. Xcerion has registered both, the US and the Community Trade Mark for classes 9 and 42.

What follows is that iCloud Communications’ mark

Is Not A Registered One

Should they then qualify to claim infringement at all?

Yes, however not on the ground of registered trade mark infringement, but on unfair competition and false designation.
Indeed, iCloud Communications’ complaint relies on § 1125 (a) of the Lanham Act as well as on Arizona state law.
Precisely, iCloud Communications claims that Apple infringes upon the iCloud trade mark of iCloud Communications, because

By virtue of iCloud Communications’ long and extensive use of the iCloud Marks, its advertising and promotional campaigns and expenditure of substantial monies thereon, iCloud Communications had, prior to June 6, 2011, established significant goodwill and valuable rights in and ownership to the iCloud Marks in connection with computer telephony and electronic data transmission and storage services.

and

The goods and services with which Apple intends to use the “iCloud” mark are identical to or closely related to the goods and services that have been offered by iCloud Communications under the iCloud Marks since its formation in 2005.

Reads pretty logical, does it not?
Well,

Besides One Thing

Apple’s attempt to register and use the iCloud mark is not the first one: iCloud Communications themselves mention the previous trade mark registration of Xcerion

whose use of the mark post-dates that of iCloud Communications by two years.

So, is there any reason why iCloud Communications omitted to sue Xcerion?

Hmm, from what I read on the Internet, some wagging tongues allege that Xcerion’s Pockets

Were Not Deep Enough

Hence, observing the development of the iPhone and iPad disputes, this one is also likely to end up in a settlement agreement.

In that event Apple will have to pay a (negligible) amount of money to operate a nursery in the clouds.

From a legal point of view, however, the matter involves the (alleged) infringement of an unregistered trade mark by a registration application.
This is not really common place and thus of a greater interest for me.
I will therefore stay focused on it.

Did I miss something? It is now you turn to add -)!

13 May 2011

Why You Cannot Trademark Free Speech


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Image by opensource.com on FLickr

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In the free speech context, the function of trade marks can be quite complicated. In recent time, trade marks have become a general purpose device for private parties to use when they want to suppress speech they do not like. And they are trying to suppress the speech of others not merely to protect their legitimate economic interests but because of aesthetic and political disagreements.

Anyway, to understand how intertwined trade marks and free speech are, you need first to

Understand Trade Marks

in general.

You should think of consumer protection in order to best understand trade mark law: trade marks are instruments that help consumers orient in an ocean of goods and services and, help them make respective choices. Therefore, trademarks are protectible; albeit to the extent they represent the quality or reputation associated with a product or service. The proprietorship over a trade mark allows trade mark owners to claim damages, when their trade marks are infringed.

But what is a

Trade Mark Infringement

in the first place?

Usually, this is one trader’s act of unauthorised use of a sign that is similar or identical to another trader’s trade mark. First trader’s  unauthorised use must be with respect to products or services identical or similar to those of the second trader, it must further occur in the course of commerce and be likely to create confusion among the consumers as to the origin of first trader’s goods. Why will the consumers be confused? Because they will think the first trader is the source of the products or services and not the second one.

Indeed, this is all legitimate in a commercial context, but should it apply to

Non-Commercial Expressions

of political views?

This question has already been the subject of judicial review, for instance, in Lucasfilm Ltd. v. High Frontier, 622 F. Supp. 933, 934 (D.D.C. 1985) and MasterCard International, Inc. v. Nader 2000 Primary Committee, Inc. 70 U.S.P.Q.2d (BNA) 1046 (S.D.N.Y. 2004).
The judicature’s answer has steadily been a clear “no”.

Likewise, the US District Court for the District of Utah has recently delivered a ruling dismissing the claims of Koch Industries, a billion dollar company, against Youth For Climate Truth, a group concerned about climate change.
In particular, the honourable Justice Dale A. Kimball held

“On its Lanham Act claims, Koch lacks any evidence or plausible theory as to how Defendants could have profited commercially from an anonymous spoof website that sold no products and solicited no donations, that was disclosed only to reporters, and that was only online for a matter of hours. Defendants’ speech proposed no commercial transaction. Instead, it sought to draw public attention to Koch’s controversial stance on a political issue. Koch’s trademark and unfair-competition claims, therefore, fall outside the scope of the Lanham Act and are foreclosed by the act’s commercial-use requirement.”

You can check EFF’s website for further details on the case or read Eileen Rumfelt’s brilliant analysis on trade marks and the First Amendment for further deliberations.

In this respect it appears also worth referring to some French and hence

European Jurisprudence

on political/social uses of a trade mark.
In Greenpeace v. Esso the Paris Tribunal de Grande Instance held that

“the constitutional principle of the freedom of expression implies that the Greenpeace Association…can, in its writings or on its internet site, denounce, in whatever form it feels appropriate to the objective pursued, the environmental damage and the risks caused to human health by certain industrial activities. Although this freedom is not absolute, it can nevertheless only be subjected to the restrictions necessary for the protection of the rights of others …the Greenpeace Association through the modifications… clearly shows its intention…without misleading the public as to the identity of the author of communication…the E$$O symbol… even if it refers to the trademarks held by the respondent company, it is clearly not intended to promote the marketing of products or services…it is of a polemical character that is alien to business life.”

In Greenpeace v. AREVA the same court followed the Esso principles.

What are then the

Consequences

of this all?

It seems that both, legislature and judicature in western-type democracies have provided for the specific purpose of trade marks law: to be a shield against infringement in a commercial context. By the same token, legislature and judicature have well restrained trade mark owners from using the rights conferred by trade marks law as sharp-edged weaponry to pierce the right to political and hence non-commercial speech.

Still asking why no one can trademark free speech? It is simple: trade marks and free speech are fundamentally at odds.

Thoughts?