The Substantially Similar Weblog

As usual, Ed Felten offers a well-conceived analysis of the Cablevision decision from a technologist’s perspective (for a lawyer’s perspective, see William Patry). The money quote:

The question, in other words, was who was recording the programming. Was Cablevision doing the recording, or were its customers doing the recording? The customers, by using their remote controls to navigate through on-screen menus, directed the technology to record certain programs, and controlled the playback. But the equipment that carried out those commands was owned by Cablevision and (mostly) located in Cablevision buildings. So who was doing the recording? The question doesn’t have a simple answer that I can see.

This general issue of who is responsible for the actions of complex computer systems crops up surprisingly often in law and policy disputes. There doesn’t seem to be a coherent theory about it, which is too bad, because it will only become more important as systems get more complicated and more tightly intereconnected.

Agency, intent/scienter, and responsibility are indeed tricky issues with software and the law. I’ve experienced the problem in my own practice. Although it arises particularly frequently in copyright disputes, it is also common in patent and trademark cases (and of course contract disputes inasmuch as clickwrap-type agreements are implicated). I don’t have any coherent theory to propose, but a more uniform framework would certainly introduce some predictability into these sorts of cases (and thus perhaps avoid litigation).

Update: Mike Madison also has some interesting comments on the case.

Excellent little annotation on the Trademark Blog regarding the iPhone trademark dust-up. Schwimmer concludes:

DISCLOSURE: I HAVE NEVER REPRESENTED EITHER PARTY. I HAVE CLIENTS WHO ARE EITHER ADVERSE TO OR HAVE DEALINGS WITH APPLE (SOMETIMES BOTH). I AM TYPING THIS ON A POWERBOOK. I DOWNLOAD MUSIC FROM iTUNES. MY PHOTOS ARE STORED ON iPHOTO. I WANT TO BUY AN iPHONE.

Via BNA’s Internet Law News, from the “does this argument pass the straight face test?” department:

SPAM MAKER SEES TRADEMARK BID CANNED
Hormel Foods, which owns the trademark for the spiced-ham food product Spam, has failed in its attempt to register “spam” as a European Union-wide trademark when used to designate unsolicited e-mails. Hormel argued in an appeal to the Office of Harmonisation for the Internal Market, the EU trademark body, that the general public would not immediately recognize the use of the word spam as pertaining to junk e-mail but would instead associate it with “a kind of spicy ham” food product.
http://news.com.com/2100-1030_3-6123095.html

The American Chemical Society· has filed a trademark infringement lawsuit· against Google for its new Google Scholar· service. ACS uses SCIFINDER SCHOLAR for its desktop scientific research tool; Google uses GOOGLE SCHOLAR for its web-based research journal search engine.

I haven’t reviewed the papers, which at this point I expect consist just of a complaint, but at first blush this appears to be a weak suit.

ACS’ mark SCIFINDER SCHOLAR was only registered on May 6, 2003. Registration gives the mark a presumption of validity. After five years of registration, a trademark holder can file for “incontestable” status which makes it more difficult for a defendant to challenge the mark’s status, but a newly registered mark does not have that benefit.

Trademark strength is evaluated on a spectrum ranging from arbitrary and fanciful (think Volkswagen’s “farfegnugen”) to suggestive (7-ELEVEN for a store open from 7 to 11) to descriptive (PHOTO CENTER) to generic (DINER). SCIFINDER SCHOLAR is, at best, suggestive, and arguably descriptive.

Another problem for ACS is that SCIFINDER SCHOLAR is only registered in its stylized form (see right). If the registration were in block letter form, it would cover all forms of the mark—stylized and plain. Here, there is no argument that Google infringes the stylized design of ACS’ mark; and not even the whole mark, just the “scholar” part. While it is true that in trademark law, similarities between marks are generally weighed more heavily than differences, in this case, SCIFINDER SCHOLAR (stylized) is pretty dissimilar from GOOGLE SCHOLAR as used by Google (below).

There is a long line of trademark cases that hold that the use of a trade name or house mark in connection with another mark reduces the likelihood of confusion. In other words, GOOGLE SCHOLAR is less likely to be confused with SCIFINDER SCHOLAR than if the mark Google were using was just SCHOLAR. Furthermore, the GOOGLE part of the mark is much larger than the SCHOLAR part. Consumers are not likely to be confused about who is providing the service: Google is a household name, and it should be clear that it is providing the service, not ACS.

Finally, the class of prospective consumers for each service is likely dissimilar. SciFinder Scholar is a “desktop research tool for students and faculty·”, while Google Scholar is likely to have a much broader and less specialized audience. This is often a problem with Internet trademark lawsuits: the prospective audience is possibly the whole world, and a trademark that might be well known within a small niche (academic research scientists) might be entirely unknown to the Internet population. I’m sure Google has already collected statistics on its Google Scholar service based on the IP addresses of users doing searches.

This lawsuit seems like a dumb move on the part of ACS. People always get upset about trademark lawsuits brought on shaky grounds, especially when the defendant seems to be involved in the dissemination of useful information rather than just pawning off substandard goods. I’m sure some people will characterize this lawsuit as a claim by ACS that they own the word SCHOLAR, which isn’t quite what they’re arguing, but it can’t possibly be good publicity for ACS. I can’t imagine its academic membership is too happy about this.

As an interesting side note, observe that the ACS website· uses “ACS Google” to do a site search.

(As an example of the effectiveness of Google Scholar, here are some references to a chemistry paper for which I did the initial experimental research, which, ironically enough, was published in the Journal of the American Chemical Society. You would have to pay to read the article online; unfortunately I don’t have an electronic copy myself.)

Update: I found a copy of the complaint in ACS v. Google, which basically confirms my analysis. ACS claims that it, and its users, often refers to its service as “SCHOLAR” and that Google’s research tool operates under the name and trademark “SCHOLAR.” This is apparently how they’re going to try to get around the “house mark” issue—but I haven’t found any instance of SCHOLAR alone on Google’s site—it always appears as GOOGLE SCHOLAR. They’ll likely lose on the facts on this one.

Second update: Thanks to Joseph Lorenzo Hall who got my a copy of my paper, Peroxidase Activity in Heme Proteins Derived from a Designed Combinatorial Library. The experiment in a nutshell was to see if proteins designed de novo based on a combinatorial pattern of amino acids designed to form four-helix bundles would have catalytic properties. The answer is that they did. This is not a very surprising finding today but a few years ago it was significant.

Ray Bradbury·, author of the acclaimed novel Fahrenheit 451·, is demanding that Michael Moore· apologize and change the title of his new film·, Farenheit 9/11·, which starts playing this Friday·. Bradbury says he wants to avoid litigation, but it’s not clear he’ll back down unless the film’s title is changed, which strikes me as unlikely.

This is poor judgment on Bradbury’s part. I would be willing to put money on the release of Fahrenheit 9/11 helping sales of the book Fahrenheit 451. I’m not sure what sort of claim Bradbury would make, but I assume it would be under trademark law. I can’t imagine Bradbury demonstrating: (1) that there will be any likelihood of confusion at all as to the source or origin of Moore’s film or (2) damages. Or perhaps it would be a claim for copyright infringement. I’m not aware of any cases where a copyright holder has demonstrated infringement based on similarity of title alone, but I may be mistaken.

This reminds me of the ongoing battle over DJ Dangermouse’s The Grey Album·, in which the Beatles’ record label has shut down distribution of a remix of the White Album. In both cases, a younger generation who may not have been exposed to the earlier work is made aware of it, and is much more likely to purchase copies of the earlier work.

Fundamentally, though, it’s not about money, it’s about control. One of the points John Zorn makes repeatedly in the documentary A Bookshelf On Top Of The Sky is that you can’t control a work of art you’ve created. It’s not really “yours” any more than a child you create is “yours.” You have all these ideas about what you want your child to be and what you want your child to do, but it takes on a life of its own and you just have to let it go. I’m sure, however, that many copyright holders do not entirely share Zorn’s philosophy.

The U.S. Trademark Trial and Appeal Board announced on Tuesday that the term “realtor” is not generic, but instead a protectable mark. In other words, “realtor” isn’t just anyway who sells real estate, but attaches only to a member of the National Association of Realtors.