Trademarks are meant to identify the source of products and services.

Do you get confused between Coca Cola and Pepsi Cola? Between Payless Shoes and Comfort Shoes? Between Domino’s Pizza and Papa John’s Pizza? Probably not. “Cola,” “shoes” and “pizza” are what trademark law classifies as “generic” terms - they describe the product, not its source or origin. If someone started selling a drink called “Rockstar Cola,” Coke and Pepsi would have no legal grounds for objection. The “cola” part of their trademarks are generic, and in a trademark infringement suit a court’s focus would be on the first word in the trademark, “Rockstar.” On the other hand, if someone started selling Koka Cola or Popsi Cola, the lawyers for Coke or Pepsi would be working overtime to prepare their lawsuit.

Now let me ask you a question that might be part of a “trademark survey” - a survey designed to determine how strong a trademark is, whether two trademarks are confusing, or whether a trademark is generic:

What do you call a sightseeing tour that uses an amphibious vehicle to transport tourists on land and water?

What other names, if any, do you use to refer to this type of sightseeing tour?

Did you answer “duck tour” to the first question and “don’t know” to the second? If you did you went right to the heart of the First Circuit Court of Appeals’ decision in Boston Duck Tours v. Super Duck Tours. And, you did very quickly what it took two federal courts almost a year and 85 pages of turgid legal prose to do.

The issue in this case (linked at the bottom of this post) was straightforward: Did Super Duck Tours infringe the trademark of Boston Duck Tours by offering duck tours in Boston? U.S. District Judge Nathan Gorton concluded that it did, and issued a preliminary injunction in July 2007, ordering Super Duck Tours to stop using this name.

Last month the First Circuit reversed, holding that the term “duck tours” is generic (it describes the service, not the source of the service). A “duck tour,” the First Circuit concluded, is generic for amphibious, sightseeing tours. Consumers were unlik ely to focus on the generic “duck tour” part of the overall mark (any more than they would focus on “cola” in comparing Coca Cola and Pepsi Cola), and instead use “Boston” and “Super” to differentiate between the two marks at i ssue. In reaching this conclusion the First Circuit noted that the media often used “duck tours” to refer to amphibious sightseeing tours; that “duck tours” was used by many other companies around the country that provide the same or similar services; and that Boston Duck had used the term “duck tours” generically in its own marketing literature.

There’s a great deal more to the First Circuit’s decision in this case. In fact, the opinion is likely to be an important guide to the application of trademark law in the First Circuit Court of Appeals for many years. And, I’ll resist the temptation to make duck jokes about this case, as so many lawyers and commentators have done already; none of them can touch the Marx Brothers. (Judge Selya, where are you when we need you?)

The decision is linked below at scribd.com. Using scribd.com you can view the document in the window below, increase the font size in the window, view ful-screen, download, share, embed in a web page, and all kinds of other cool things.

So, anyone up for an amphibious sightseeing tour?

Some thoughts on the recently concluded Entwistle murder trial in Massachusetts.

A trial is the art of persuasion.

Civil or criminal, jury or jury-waived, the same principles of persuasion apply. Generations of lawyers have spent their careers thinking about these principles, trying to understand, refine and apply them. The huge number of uncontrollable variables in a courtroom make trial persuasion an art rather than a science, but as in all competitive activities, even small advantages can increase your odds, so lawyers keep studying and trying.

Some of the most basic principles of trial advocacy are well accepted by now. One of these is captured by the expression: “tell them what you’re going to tell them, tell it to them, and them tell them what you told them.” In a trial, this rule of advocacy applies most importantly to what lawyers call the “theory of the case.”

Every experienced lawyer knows the persuasive importance of “primacy” (the first things the jury hears) and “recency” (the last things they hear). Simply put, people tend to remember the first and last things they hear better than the stuff in the middle. The principle of “primacy” is so important that many studies have found that jurors are inordinately influenced by the opening statement in a trial, and therefore most lawyers put particular effort into crafting their openings. Some jurors pay little attention to anything except the openings and closings.

Lawyers also are taught early on that every party in a case needs a “theory of the case.” The evidence presented by each side is designed to explain the evidence in a way that is consistent with that theory. Common examples are: “my client wasn’t negligent, the injured plaintiff was reckless.” Or, “my client didn’t commit the crime, the evidence the State is using to attempt to convict him is defective because the crime lab mishandled it.”

Or, less commonly, “my client didn’t murder his wife and child. His wife killed their daughter and then committed suicide. My client removed the murder weapon from the murder site in order avoid shaming his wife’s memory. ”

Typically, the theory of the case is introduced in the opening statement (tell them what you’re going to tell them), and each side attempts to introduce evidence to support its theory and discredit the competing theory (tell it to them). In final argument, the lawyers for each party attempt to persuade the jury that the facts and the opinions of experts support their theory (tell them what you told them). By then, the jury has heard each party’s theory repeatedly. And most importantly, the opening statement has given the jury a mental framework within which to organize and make sense of the the (often chaotic) evidence presented during the trial.

It appears that these basic rules of persuasion were not followed in the Entwistle case. Defense counsel for Neil Enwistle did not introduce his defense theory during his opening, but rather introduced it in closing argument. As one Boston paper summarized:

“Neil found Rachel and Lillian dead,” defense attorney Elliot Weinstein said in his closing argument in Middlesex Superior Court, where he said Entwistle had returned the gun to his in-laws’ home and did not report finding the bodies because he did not want to shame his wife.

“Neil saw the .22 and knew instantly what had happened, and in those moments, he knew what he had to do and what he couldn’t do,” Weinstein said. “He had to get the .22 back to Carver, and he couldn’t call the police because he couldn’t tell them what Rachel did. He wouldn’t tell them because he wouldn’t tarnish Rachel’s memory.”Was he thinking rationally, clearly or correctly? Of course not. How could he? Neil drove to Carver and returned the .22.”

If this is accurate, this defense violated every rule in the book.

First, the jury was unprepared for this “suprise” defense theory. The jury didn’t hear it fully expressed until closing, although I understand it may have been hinted at or implied during the trial (but not in the defense’s opening statement). For the jury to hear this theory for the first time in closing was the worst possible way for Entwistle to present it. It required the jury to test the theory against the evidence after the evidence had been introduced, rather than as it was being introduced. A worse approach to the psychology of persuasion is hard to imagine.

Second, from what I’ve read about the trial, the defense gave the jury no evidence to support this theory of the case. No only did Entwistle not testify to what he did and his motivation for doing it (he didn’t testify at all), but no one else provided any evidence to support this theory.

Along the same lines, the defense presented no expert testimony on the phenomenom of postpartum depression. There was no evidence showing that Entwistle’s wife was depressed, much less that she was so depressed that she would kill her baby daughter and then herself. If such evidence had been available, and expert opinion explaining postpartum depression and its possible consequences would have been essential to the defense.

Judges always instruct jurors that the evidence comes from the testimony of witnesses, as well as documents or objects (guns, clothing) that are allowed into evidence. What the lawyers say is not evidence. The Entwistle defense may have presented a theory of the case in closing argument — depression, murder, suicide, husband found wife and daughter, husband returned the gun to the wife’s father’s house to avoid shaming his wife — but there was no evidence to support this theory.

Rarely has a defense to a murder charge been so weak. It’s possible that Entwistle played the only hand he had and prayed for a miracle. It’s also possible that the district attorney’s office was unwilling to negotiate a plea that was acceptable to Entwistle, and Entwistle felt he had nothing to lose by going to trial.

However, to me the defense recalled the old Lenny Bruce line, “if your old lady walks in on you [when you're in bed with another woman] deny it. Yeah. Just flat out and she’ll believe it.”

(Disclaimer: I am not a criminal lawyer, and I did not attend this trial. The trial was covered heavily by the Boston press, and my observations are based on media reporting. This is the first time, and very likely the last time, that I will comment on a criminal case in this blog, but the rules of persuasion are much the same in a capital case and a case involving the infringement of intellectual property rights, and hence my interest in the defense in this case.)

We need more laughs in the legal profession, believe me. Lawyers take themselves way too seriously - and I’m putting that very politely.

Evan Schaefer of The Legal Underground is working to correct this with a long-running series of “advice” letters: advice to young lawyers, advice to federal judges, advices to partners, and so on. If you’ve worked in a large law firm (typically his target), you realize he has a talent for this. If you haven’t you probably can’t believe this stuff (admittedly, a lot of it is over the top). However, there is at least a germ of truth to all of this.

Example from “Advice to Young Lawyer #24″, dated January 7, 2005:

Here’s a link to a collection of all the “advice” letters, and here’s a link to an earlier posting of some of his stuff (”17 types of lawyers”) on this blog.

I think Evan may the be the Garrison Keillor of the legal profession, or more to the point, our Hunter S. Thompson.

I would be remiss if I didn’t provide a link to the Boston Herald blog on the Entwistle case, which is being tried in Middlesex Superior Court in Massachusetts. The case has attracted international attention due to the horrific and gruesome facts of the case, and that the defendant, who is accused of the cold-blooded murder of his wife and infant daugher, is British. The Boston Herald is “live blogging” this trial.

When I started a music blog a couple of years ago (sadly ignored of late), I started getting promotional CDs from some small publishers. I’m not sure how they got my home address, and for the most part the music wasn’t very good. However, I did notice that in a few instances the CD cases were stamped “promotional, not for resale,” or words to that effect.

Had I sold these CDs on eBay or at a garage sale, I might have ended up in the shoes of Troy Augustino, who (like every good eBay entrepreneur) purchased some promotional CDs from music shops and online auctions, and resold them for a higher price on eBay.

Stop! Universal Music said. You have no right to resell the CDs, since we only “licensed” them, and the license prohibits resale. By reselling you’re violating our copyright rights!

No dice, ruled a California federal district court judge. Universal did not “license” the CDs, it gave them away as a gift. And, under the copyright “first sale” doctrine, a purchaser or gift recipient is free to resell (or regift) the promo CDs.

The “first sale” doctrine is easy to understand, since most of us take it for granted: if you buy a CD, DVD or book, you are free to resell it. The copyright owner has the right to prevent you from reproducing the work, distributing copies, publicly performing or creating derivative works. But, you are free under the “first sale” doctrine to resell the physical disk or book which holds the copyrighted work. And that’s what Mr. Augustino did here. The outcome of this case was predictable, and why Universal Music, the largest music company in the world, chose to file this lawsuit will likely forever remain a mystery.

The Massachusetts employment bar is abuzz with word that a Massachusetts Commission Against Discrimination (MCAD) Commissioner has publically stated that the Massachusetts Maternity Leave Act (MMLA) will apply to new parents of either sex. This means that new fathers would be entitled to eight weeks of unpaid leave upon the birth or adoption of their child. (The MMLA applies to employers with six or more employees).

This all unfolded in a strange manner, to say the very least. There has been no formal written announcement. The MCAD online regs have not been changed to include fathers. The underlying statute still refers only to “female employees”, and makes no mention of fathers. There has been no formal press release or request for comment or feedback from the Massachusetts business community. Legislation by adminstrative fiat.

Apparently, the MCAD Commissioner announced this at a speaking event at a law firm in Boston in early June. His comments were confirmed in a follow-up interview by Massachusetts Lawyers Weekly, which quotes the Commissioner as follows:

I’m not going to tell you how we are going to come out on every case, because it depends on the facts and circumstances presented,” he said. “But what we are saying is that if a man now walks in and makes a complaint, we are going to take that complaint and investigate it — which, yes, is something that wouldn’t have happened in the past.

This is all a bit weird, but then again, this is Massachusetts. Maybe now that California has followed Massachusetts’ precedent and made same sex marriage legal (judicial fiat, in both states), Massachusetts regulators felt they needed to do this to keep one step ahead.

Will there be a court challenge to this new policy? You can bet your life on it. Massachusetts employment lawyers are already jockeying to be the lucky lawyer to bring that case.

Yesterday’s decision in Quanta Computer, Inc. v. LG Electronics, Inc. is linked below (via scribd.com, which I am becoming quite enamored of as a place in the “cloud” to hold and link to documents or embed them in a web site or blog).

This is a very technical case, and probably is of little interest to non-patent/licensing-professionals. The holding is as follows:

The authorized sale of an article that substantially emboides a patent exhausts the patent holder’s rights and prevetns the patent holder from invoking patent law to control postsale use of the article.

Layman’s translation: once you license a patent to someone, your rights in the patented product or method are “exhausted.” You are not entitled to demand a patent royalty from subsequent purchasers “downstream” from your customer. This is analogous to the “first sale” doctrine in copyright law.

In both cases (patent and copyright) the exception is that you are able to restrict downstream uses by contract with your purchaser or licensee.  However, negotiating contract rights that limit downstream use of a patented product or method is much more difficult than relying upon the operation of law; hence, the issue presented in this case.

The Supreme Court held that its ruling applied to “method patents” as well as utility patents. And, the exhaustion doctrine extends to include the sale of products that that do not fully practice the invention when the products include essential features of the patent and the “reasonable and intended use” of the product is to practice to patent.

For a more detailed treatment of this case, see this discussion at the Patent Prospector.

I don’t think Letterman or Darrell Hammond have a lot to worry about, but it’s nice to see a lawyer making fun of himself once in a while.

Tom Goldstein: Hire Me For Your Supreme Court Case

Sometimes being a lawyer is like being an airline pilot - hundreds of hours of tedium, interrupted by moments of sheer panic.

In the case of lawyers, the panic can hit from a number of sources: a missed court filing date or statute of limitations, the discovery during trial that your client has failed to produce key documents during discovery, the failure to discover a controlling legal precedent, the realization that a client has lied to you, or “inadvertant disclosure.”

To lawyers, the term “inadvertant disclosure” means that during discovery documents protected by attorney-client privilege or work-product immunity have been produced to the other side, by mistake. You (the disclosing attorney) usually learn of this when the opposing lawyer calls you up to gloat (under the guise of politely informing you of the incident, which is required under the ethical rules). It’s enough to ruin any lawyers day: you demand (or beg for) the return of the documents; the opposing lawyer refuses; you file a motion with the court asking for an order that the documents be returned to you (after that embarrassing call to your client); the other side opposes your motion; and finally, the judge writes a decision ruling one way or the other on your request for return, but in either case informing the world of what a sloppy or incompetent lawyer you were to have produced the documents in the first place.

Of course, a whole body of case law has emerged establishing legal tests for whether documents should be returned in these situations. To make things worse, different courts around the nation have created different tests. To make matter much worse ESI (electronically stored information) has made the whole process far more complicated than in the “old days,” when lawyers or paralegals could simply look through hard copy before production, and be reasonably confident they had caught any privileged documents.

The risks and technical issues associated with privilege review of ESI are illustrated by a May 29, 2008 decision by a judge in the Federal District Court for the District of Maryland. In this case, Victor Stanley, Inc. v. Creative Pipe, Inc., a large quantity of ESI was produced by the defendant. The defendant tried to weed out privileged documents by using a “key word” search. For example, the names of the defendant’s attorneys were searched, in the hope that all communications with defendant’s counsel would be located and the items removed.

In this case the keyword search method failed, and the judge ruled that keyword searching for privileged and work-product documents was not
sufficient to avoid a “waiver.” The decision (linked below via scribd.com) is quite detailed, and provides a good analysis of the risks associated with inadvertent production of ESI based on a keyword search failure.

Of course, there is a potential solution to this problem that ESI savvy lawyers tend to use: in the protective order filed with the Court early in the case (or separately if there is no protective order), include a “clawback” provision that provides that if either side engages in inadvertent production, the waiver doctrine will not apply and the documents will be returned. Especially at the beginning of a case, when the risk of inadvertent production may be viewed as equal by both sides, the lawyers on each side may conclude that it’s in their best interests to agree to clawback.

Here is a sample “clawback” provision:

1. Inadvertent or Unintentional Production

(a) The inadvertent or unintentional production of Discovery Materials without a confidentiality designation shall not be deemed a waiver in whole or in part of a party’s claim of confidential treatment under the terms of this Order. Any document that initially is produced without bearing a confidentiality designation may later be so designated, with respect to future disclosure by the Producing Party, and the receiving party shall make all reasonable efforts to retrieve all copies, if any, of such document disclosed to persons other than those authorized in Sections 6 through 8 hereof and to prevent further use or disclosure of confidential information contained therein by such persons.

(b) If information subject to a claim of attorney-client privilege, attorney work product or any other legal privilege protecting information from discovery is inadvertently produced to a party or parties, such production shall in no way prejudice or otherwise constitute a waiver of, or estoppel as to, any claim of privilege, work product or other ground for withholding production to which the producing party or other person otherwise would be entitled. If a claim of inadvertent production is made pursuant to this Section, with respect to information then in the custody of another party, such party promptly shall return to the claiming party or person that material and all copies or reproductions thereof as to which the claim of inadvertent production has been made, shall destroy all notes or other work product reflecting the contents of such material, and shall delete such material from any litigation-support or other database. The provisions of this Section shall not be deemed to prevent any party from seeking an order compelling production of any document or information, including documents or information contained in documents that are returned as a result of a claim of inadvertent production.

Link to the case: Victor Stanley, Inc. v. Creative Pipe, Inc.

Here is a copy (below) of the June 2, 2008 decision of Judge Sidley Stein in the Southern District of New York, holding that a 15 second snippet of the Lennon song “Imagine,” within the feature length movie “Expelled“, is “fair use” under U.S. copyright law. In other words, the film makers did not infringe Yoko Ono’s copyright rights. “Expelled” is a documentary that deals with “intelligent design” (vs. Darwinism, Creationism, ect.), and is narrated by Ben Stein of Ferris Buehler fame (presumably no relation to Judge Stein, but bad luck of the draw for Yoko Ono nevertheless).

The “fair use” doctrine is an exception to the legal rights of U.S.copyright owners.  It permits the use and publication, without permission, of parts of the work for purposes of “criticism, comment, news reporting, teaching … scholarship, or research.” A large body of judge-made law has built up interpreting and applying this doctrine.

The court’s ruling on fair use is no surprise, and applies “black-letter” fair use law to undisputed facts. Any outcome other than a ruling in favor of fair use would have been a surprise.  For more on fair use click here.