On Sunday, the Vanguard brought you a story about the letter we received from Kortny Ficke, Online Enforcement Assistant with the Collegiate Licensing Company. In a story so bizarre that many of our readers believed it had to be an April Fool’s joke, she requested that the Vanguard ask a poster using as his username the University’s mascot name, Gunrock, to “choose a different name?”
It turns out the joke is on us, however, though it is difficult to imagine a more fruitless waste of time and, it turns out, resources.
The Vanguard, of course, had to get to the bottom of this. Julia Ann Easley of the University News Service informs the Vanguard that Ms. Ficke is associated with CLC, the university’s licensing agency.
“Under our contract,” she writes, “CLC gets $20,000 for every $100,000 in gross royalties. The contract is administered by Student Affairs.”
Boy, there’s a nice little deal, though we do not know exactly how much of that goes to actions such as this.
We are not the only ones who think this is a complete waste of time and money.
Bob Dunning wrote on Wednesday, “BLOG THIS … my friend David, who is the chief cook and blog-watcher at the Vanguard, forwarded me a piece of correspondence he received concerning his site.”
His response: “Oh my goodness gracious … does my beloved alma mater have nothing better to do than worry about a user name on a local website? … is Cruz Reynoso available to do an investigation? …”
He writes, “Adds the letter: ‘The university is concerned that visitors may believe that this user is associated with the university.’ … who knows, if this is allowed to go on unchecked, it could affect graduation rates and retention of tenured faculty … maybe even research grants …”
Finally he adds, “Bottom line here is that this whole debacle could have been avoided if UC Davis had never agreed to trade longtime beloved mascot Ollie Mustang for the likes of an untested upstart like Gunrock …”
The thing is, I just can’t bring myself to respond to the letter that is now a little over a week old.
Ordinarily, I would have a Vanguard attorney respond, but that seems almost as much of a waste as the initial letter.
I can’t really bring myself to make a serious response.
A kind reader suggested that that we “just put a disclaimer at the bottom of the Vanguard‘s front page, that states: “Disclaimer: The Vanguard does not control what username a person selects, in an effort to protect the user’s anonymity. Any opinion expressed by the user, regardless of the username chosen, is solely that of the user.”
I thought about it, that too would cost me $100 and it would require me to take this seriously, and I flat out refuse to.
I probably cannot reprint what I would actually like to respond, so Ms. Ficke, if you are reading this, the answer is no, we are not going to ask our poster to change his or her moniker. We do not believe there is a reasonable possibility that someone would think that the poster is speaking on behalf of the university.
Frankly, the user may be associated with the university for all I know, certainly an alumnus if not an employee. So be it.
—David M. Greenwald reporting
David, as the official mascot of UC Davis, I feel I can no longer be silent. The use of “Gunrock” by some other Davisite is highly troubling to me.
When I first was born on the campus stable, my mother said to me “twas no other given your name, twas declared by our licensing agency, under threat of lawsuit, so thou shalt be safe from brand dilution.”
And here I have come to see that indeed, this safety net is being disregarded, and my hooves are inflamed with madness.
Here is the basic law on the issue from [url]http://cyber.law.harvard.edu/metaschool/fisher/domain/tm.htm#7[/url]
[quote]7. What constitutes trademark infringement?
If a party owns the rights to a particular trademark, that party can sue subsequent parties for trademark infringement. 15 U.S.C. �� 1114, 1125. The standard is “likelihood of confusion.” To be more specific, the use of a trademark in connection with the sale of a good constitutes infringement if it is likely to cause consumer confusion as to the source of those goods or as to the sponsorship or approval of such goods. In deciding whether consumers are likely to be confused, the courts will typically look to a number of factors, including: (1) the strength of the mark; (2) the proximity of the goods; (3) the similarity of the marks; (4) evidence of actual confusion; (5) the similarity of marketing channels used; (6) the degree of caution exercised by the typical purchaser; (7) the defendant’s intent. Polaroid Corp. v. Polarad Elect. Corp., 287 F.2d 492 (2d Cir.), cert. denied, 368 U.S. 820 (1961).
So, for example, the use of an identical mark on the same product would clearly constitute infringement. If I manufacture and sell computers using the mark “Apple,” my use of that mark will likely cause confusion among consumers, since they may be misled into thinking that the computers are made by Apple Computer, Inc. Using a very similar mark on the same product may also give rise to a claim of infringement, if the marks are close enough in sound, appearance, or meaning so as to cause confusion. So, for example, “Applet” computers may be off-limits; perhaps also “Apricot.” On the other end of the spectrum, using the same term on a completely unrelated product will not likely give rise to an infringement claim. Thus, Apple Computer and Apple Records can peacefully co-exist, since consumers are not likely to think that the computers are being made by the record company, or vice versa.
Between the two ends of the spectrum lie many close cases, in which the courts will apply the factors listed above. So, for example, where the marks are similar and the products are also similar, it will be difficult to determine whether consumer confusion is likely. In one case, the owners of the mark “Slickcraft” used the mark in connection with the sale of boats used for general family recreation. They brought an infringement action against a company that used the mark “Sleekcraft” in connection with the sale of high-speed performance boats. Because the two types of boats served substantially different markets, the court concluded that the products were related but not identical. However, after examining many of the factors listed above, the court concluded that the use of Sleekcraft was likely to cause confusion among consumers. AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979).[/quote]
[quote]8. What constitutes trademark dilution?
In addition to bringing an action for infringement, owners of trademarks can also bring an action for trademark dilution under either federal or state law. Under federal law, a dilution claim can be brought only if the mark is “famous.” In deciding whether a mark is famous, the courts will look to the following factors: (1) the degree of inherent or acquired distinctiveness; (2) the duration and extent of use; (3) the amount of advertising and publicity; (4) the geographic extent of the market; (5) the channels of trade; (6) the degree of recognition in trading areas; (7) any use of similar marks by third parties; (8) whether the mark is registered. 15 U.S.C. � 1125(c). Kodak, Exxon, and Xerox are all examples of famous marks. Under state law, a mark need not be famous in order to give rise to a dilution claim. Instead, dilution is available if: (1) the mark has “selling power” or, in other words, a distinctive quality; and (2) the two marks are substantially similar. Mead Data Central, Inc. v. Toyota Motor Sales, U.S.A., Inc., 875 F.2d 1026 (2d Cir. 1989).
Once the prerequisites for a dilution claim are satisfied, the owner of a mark can bring an action against any use of that mark that dilutes the distinctive quality of that mark, either through “blurring” or “tarnishment” of that mark; unlike an infringement claim, likelihood of confusion is not necessary. Blurring occurs when the power of the mark is weakened through its identification with dissimilar goods. For example, Kodak brand bicycles or Xerox brand cigarettes. Although neither example is likely to cause confusion among consumers, each dilutes the distinctive quality of the mark. Tarnishment occurs when the mark is cast in an unflattering light, typically through its association with inferior or unseemly products or services. So, for example, in a recent case, ToysRUs successfully brought a tarnishment claim against adultsrus.com, a pornographic web-site. Toys “R” Us v. Akkaoui, 40 U.S.P.Q.2d (BNA) 1836 (N.D. Cal. Oct. 29, 1996).[/quote]
[quote]9. What other potential causes of action are there?
Although likelihood of confusion and dilution are the two main trademark-related causes of action, there exist a number of additional state-law causes of action under state unfair competition law: passing off, contributory passing off, reverse passing off, and misappropriation. Passing off occurs when the defendant tries to pass off its product as the plaintiff’s product. So, for example, manufacturing computers and claiming that they are made by Apple Computer, Inc. Contributory passing off occurs when the defendant assists or induces another (typically a retailer) to pass of its product as the plaintiff’s product. So, for example, inducing a computer store to represent that the computers are made by Apple, when in fact they are not. Reverse passing off occurs when the defendant tries to pass off the plaintiff’s product as its own. So, for example, taking a computer made by Apple, removing the label, and putting on a different label. Finally, misappropriation is a highly unstable, but potentially fruitful source of additional trademark-related claims.
[/quote]
[quote]10. What defenses are there to trademark infringement or dilution?
Defendants in a trademark infringement or dilution claim can assert basically two types of affirmative defense: fair use or parody. Fair use occurs when a descriptive mark is used in good faith for its primary, rather than secondary, meaning, and no consumer confusion is likely to result. So, for example, a cereal manufacturer may be able to describe its cereal as consisting of “all bran,” without infringing upon Kelloggs’ rights in the mark “All Bran.” Such a use is purely descriptive, and does not invoke the secondary meaning of the mark. Similarly, in one case, a court held that the defendant’s use of “fish fry” to describe a batter coating for fish was fair use and did not infringe upon the plaintiff’s mark “Fish-Fri.” Zatarain’s, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786 (5th Cir. 1983). Such uses are privileged because they use the terms only in their purely descriptive sense.
Some courts have recognized a somewhat different, but closely-related, fair-use defense, called nominative use. Nominative use occurs when use of a term is necessary for purposes of identifying another producer’s product, not the user’s own product. For example, in a recent case, the newspaper USA Today ran a telephone poll, asking its readers to vote for their favorite member of the music group New Kids on the Block. The New Kids on the Block sued USA Today for trademark infringement. The court held that the use of the trademark “New Kids on the Block” was a privileged nominative use because: (1) the group was not readily identifiable without using the mark; (2) USA Today used only so much of the mark as reasonably necessary to identify it; and (3) there was no suggestion of endorsement or sponsorship by the group. The basic idea is that use of a trademark is sometimes necessary to identify and talk about another party’s products and services. When the above conditions are met, such a use will be privileged. New Kids on the Block v. News America Publishing, Inc., 971 F.2d 302 (9th Cir. 1992).
Finally, certain parodies of trademarks may be permissible if they are not too directly tied to commercial use. The basic idea here is that artistic and editorial parodies of trademarks serve a valuable critical function, and that this critical function is entitled to some degree of First Amendment protection. The courts have adopted different ways of incorporating such First Amendment interests into the analysis. For example, some courts have applied the general “likelihood of confusion” analysis, using the First Amendment as a factor in the analysis. Other courts have expressly balanced First Amendment considerations against the degree of likely confusion. Still other courts have held that the First Amendment effectively trumps trademark law, under certain circumstances. In general, however, the courts appear to be more sympathetic to the extent that parodies are less commercial, and less sympathetic to the extent that parodies involve commercial use of the mark.[/quote]
Elaine- I am now highly troubled by your extensive copying of the http://cyber.law.harvard.edu website.
While you may believe your first amendment right to reproduce entire sections of their copyrighted page on this blog trumps their right to exclusive use of their words, I think otherwise.
Furthermore, if your posting was intended as a parody of their website, in so much as the nonofficial “Gunrock” poster on this website could be considered a parody, I plead with you to consider the commercial consequences of your actions, which, in so much as there is money changing hands, I prefer my hands to be part of the transaction.
So…..the company thinks that people be confused and will think that the real Gunrock is actually posting on this blog? Gunrock. The Aggie mascot. The horse. The horse is logging in and posting comments.
Too funny.
Ryan Kelly,
I agree with you. A horse? The Aggie mascot is logging in and posting? But then I realized that of course Gunrock THE HORSE is posting. We live in one of the most educated communities and should expect nothing less from our mascot. David, perhaps you and Gunrock can think of an interesting Picnic Day collaboration to show your blue and gold spirit! *joking aside* UCD spends money on this while raising tuition?