“Phifty-50” and “50/50” Not the Same Trademark, No Confusion About Origin

Eastland Music Group owns the rights to Phifty-50, a rap duo.  Phifty-50 maintains a website and released a 2003 album and a t-shirt.  Eastland registered “PHIFTY-50” as a trademark and claims a trademark in “50/50.”  Lionsgate Entertainment and Summit Entertainment named their 2011 motion picture “50/50,” referring to the main character’s chance of surviving cancer. 

Eastland sued Lionsgate and Summit for trademark infringement.  The district court ruled that the movie’s title was descriptive and dismissed the complaint on a Fed. R. Civ. P. 12(b)(6) motion for failure to state a claim upon which relief can be granted.  The Seventh Circuit affirmed the district court’s ruling, holding that there was no confusion about origin.

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Rosetta Stone’s Trademark Infringement Suit Against Google Resuscitated by Fourth Circuit

Rosetta Stone sued Google over Google’s keyword search and advertising trademark use policies, contending that those policies create both a likelihood of consumer confusion and actual consumer confusion.  Rosetta Stone asserted that the likelihood of confusion and actual confusion misleads Internet purchasers into purchasing counterfeit Rosetta Stone software.  Rosetta Stone claimed the Lanham Act (trademark law) claims of direct, contributory and vicarious trademark infringement and trademark dilution, and the state law claim of unjust enrichment.

The district court granted Google’s summary judgment motion on the Lanham Act claims and dismissed the unjust enrichment claim.  On appeal, the Fourth Circuit affirmed the district court’s rulings on the vicarious infringement and unjust enrichment claims, but vacated the district court rulings on the direct infringement, contributory infringement and dilution claims and remanded those claims to the district court for further proceedings.

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Coca-Cola Facebook Approach Does Not Fit in FranklinCovey Seven Habits Situation

I enjoyed reading blogger Ron Coleman’s  post, The seven habits of highly annoying lawyers. Ron created his own list of seven habits.  The “seven habits” phrase originated from The 7 Habits of Highly Effective People®, written by Stephen R. Covey and published by FranklinCovey.  It is a highly regarded book discussing “proven principles of fairness, integrity, honesty, and human dignity.”

FranklinCovey recently sent a cease and desist letter to Schlock Mercenary for publishing an ongoing, online webcomic called “The Seven Habits of Highly Effective Pirates.”  Ron’s post commented on the post of another legal blogger who thought that FranklinCovey’s cease and desist letter was unwarranted and that FranklinCovey missed the opportunity to put into play “think win-win,” one of The 7 Habits of Highly Effective People.  Under a comparison and competition based approach to life, one side wins and the other side loses and there is only so much pie to go around.

“Win-win sees life as a cooperative arena, not a competitive one….Win-win means agreements or solutions are mutually beneficial and satisfying.  We both get to eat the pie, and it tastes pretty darn good.” 

Unfortunately, trademark law does not operate on a “win-win” approach.  Trademark law arose out of unfair competition law.  Trademark law requires the trademark owner to use and protect the trademark or lose it.  This is particularly true in the 7 Habits situation.  7 Habits is probably a famous trademark, which entitles it to greater protection than ordinary trademarks, but also requires greater vigilance on the part of the trademark owner.

The Coca-Cola Facebook situation is an example of how a trademark owner created a “win-win” out of a trademark infringement and potential media disaster.  Michelle Golden  describes this situation on pages 68-69 of her book, Social Media Strategies for Professionals and Their Firms. Coca-Cola fans created a Coca-Cola Facebook page, included the Coca-Cola logo and posted content the corporation could not control.  Coke did not attempt to shut the page down, but instead, invited the two people who created the Facebook page to corporate headquarters.  There, Coke entertained them and began a collaboration with the fans to work on the page together.  Both the two fans and Coke executives are administrators of the page.  This is a “win-win.”  The fans get to keep their Facebook page and Coke gets to have a voice in the content.

Why won’t the same thing work for FranklinCovey?  Because FranklinCovey does not like the message about its mark.  Schock Mercenary’s message about the FranklinCovey trademark pokes fun at the mark and is undesirable for the corporation, whereas the Facebook message about Coca-Cola was a positive one that the company wished to encourage.  For FranklinCovey, there is no possibility of a “mutually beneficial and satisfying” solution when another is using its mark in such a manner.

Getting back to the famous trademark discussion in the fourth paragraph, as the owner of a famous trademark, FranklinCovey has the responsibility of policing its mark by refusing to let others “tarnish” it.  Tarnishment is “association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark.”  Policing the mark means taking action to stop parodies or other undesirable uses of the mark.

“[A] ‘parody‘ is defined as a simple form of entertainment conveyed by juxtaposing the irreverent representation of the trademark with the idealized image created by the mark’s owner.”

A parody is not categorically a fair use and can still create a likelihood of confusion.