Beverly A. Berneman
If the words “reply all” sound familiar to you, then you probably use email to communicate with others for various and sundry reasons. Despite their widespread use, these two words became the subject of trademark litigation.
In 2012, Reply All Corp. started to sell software to let users create and share conversations.
In 2014, Spotify’s Gimlet Media began producing a podcast named “Reply All”. The hosts, PJ Vogt and Alex Goldman talk about strange stories and trending topics.
Would you confuse Reply All’s software with the “Reply All” podcast? Gimlet Media was convinced that customers would be.
Gimlet Media sued Reply All for trademark infringement. After about 5 years of litigation, a judge ruled that almost every factor of a likelihood of confusion weighed against Gimlet Media and in favor of Reply All. The court found that the mark was fairly weak. Gimlet didn’t have a record of sales or marketing expenditures to show commercial strength. And the court acknowledged that the term “reply all” is a common term which is recognized by anyone who uses email. The names might be the same but the logos are different (see the graphic) and the products are different. They don’t compete in the same customer space. The court pointed out that Gimlet Media had no evidence of actual confusion. Note that you don’t have to prove actual confusion; it’s just one factor to look at. In this case, the court thought it was a significant factor.
WHY YOU SHOULD KNOW THIS. For registration purposes, most countries, including the US have adopted an international scheme of classes of goods and services. There are 45 of them. It is almost impossible for someone to register a trademark in all 45 classes. The class distinction is helpful when evaluating a likelihood of confusion between trademarks. If someone uses a word for the wholesale distribution of auto parts (Class 035), consumers are unlikely to be confused if someone used the same word for graphic t-shirts (Class 025). In the Reply All case, the words are the same but they were used for totally different goods and services. One caveat though. Some trademarks are so famous that even if the goods and services don’t compete directly, the owner of the famous mark (like Barbie, Rolex, Nike and Jack Daniels) can shut down the use of the trademark even if someone is using it in a different class of goods or services. This is called dilution.
Beverly A. Berneman
Thru Inc. sued Dropbox for trademark infringement claiming to own the “DropBox” trademark. After a lot of litigation and some really good discovery, Dropbox was able to show that Thru may have had some bare rights to the “DropBox” mark but it never actually used the mark. Thru then sat back and watched as DropBox branded itself and became a household name for shareable file storage. Then Thru continued to drag its heels in litigation to cash in on DropBox’s initial public offering in 2018. DropBox discovered emails from Thru’s CEO which unabashedly chronicled Thru’s strategy. In the end, DropBox obtained a $2.3 million judgment that included attorney’s fees and costs.
So what was Thru to do? It filed for relief under Chapter 11 of the Bankruptcy Code. It proposed a plan to pay the entire judgment with interest in six years. The plan was confirmed over DropBox’s objections. DropBox appealed. The district court affirmed the bankruptcy court’s confirmation of the plan. Then DropBox appealed to the Sixth Circuit Court of Appeals. Dropbox argued the Chapter 11 plan was just a sham and indicative of Thru’s conduct in the underlying case. The appeal was dismissed due to mootness. The problem was that DropBox hadn’t sought any orders to stay the enforcement of the bankruptcy plan. DropBox argued that the concept of “equitable mootness” is antiquated and shouldn’t have any bearing on the appeal. The Sixth Circuit disagreed. By the time the appeal was heard in the Sixth Circuit, the plan had already been in place for some time and some payments had already been made. Therefore, at this late stage, it would cause undue hardship to unwind the plan.
Why You Should Know This. Filing bankruptcy is a legitimate strategy after a huge judgment. As is usually the case, Thru’s pre-bankruptcy petition conduct is irrelevant. Bankruptcy allows a debtor to reorganize and pay off at least some debt. In this case, as long as Thru continues to be in business, DropBox is probably getting more than it would have gotten if Thru closed its doors. As to DropBox’s failure to get a stay of enforcement of the plan pending appeals, bankruptcy courts are reluctant to do that. It basically hurts the other creditors waiting to be paid while a single creditor pursues at grudge.
ON ANOTHER NOTE: On February 19, 2020, the Small Business Reorganization Act went into effect. Small companies whose debts are less than $2.7 million can file a streamlined Chapter 11. It is both less expensive and faster than normal Chapter 11s. The attorneys at Golan Christie Taglia have already filed a number of these. So if you have any questions, please feel free to reach out.
Beverly A. Berneman
For your stay at home pleasure, 2020 has granted us with a whole inventory of content that is now in the public domain.
In 1976, the Copyright Act was completely overhauled. The system of protecting copyrights changed giving longer protection and making it easier to claim a copyright. But pretty much all of the pre-1976 works were going to be treated differently. So the Copyright Act grandfathered in and extended the protection for these pre-1976 works. Originally, works created in 1923 or before were still in the public domain. On January 1, 2020, any works created from 1924 went into the public domain.
Those works include (this list is by means exhaustive):
o Douglas Fairbank’s, Thief of Bagdad;
o Clark Gable’s film debut, White Man;
o Buster Keaton’s, Sherlock Jr.; and
o The first screen adaptations of Peter Pan and The Age of Innocence.
o George Gershwin’s, Rhapsody in Blue;
o Giacomo Puccini’s opera, Turnadot;
o Everybody Loves My Baby;
o It Had to be You; and
o I’ll See You in My Dreams.
o Edgar Rice Burroughs’, The Land That Time Forgot and Tarzan and the Ant Men;
o Agatha Christie’s, The Man in the Brown Suit and Poirot Investigates;
o W. E. B. Du Bois’, The Gift of Black Folk;
o E. M. Forster’s, A Passage to India;
o Emma Goldman’s, My Further Disillusionment in Russia;
o Herman Melville’s, posthumously published Billy Budd;
o A. A. Milne’s, When We Were Very Young; and
o Mark Twain’s, Autobiography (posthumous).
o Bertolt Brecht’s, The Life of Edward II of England, adapted from Marlowe;
o Noël Coward’s, Hay Fever and Easy Virtue; and
o Eugene O’Neill’s, Desire Under the Elms.
o Edward Hopper’s, New York Pavements;
o Paul Klee’s, Asiatic God, Carnival in the Mountains, Flower Garden;
o Joan Miró’s, the Head of a Catalan Peasant (first work in sequence); and
o Diego Rivera’s fresco, Day of the Dead.
WHY YOU SHOULD KNOW THIS. When a work falls into the public domain, it is available for copying, preparing derivative works, distribution, display and performance without having to pay royalties or a license fee. But, be careful, some works may have their own derivative works that haven’t fallen into the public domain. For instance, in a recent case involving the Sherlock Holmes books, the court held that if the characters or situations were created before 1923, they were in the public domain and could be used. But new characters or situations that Arthur Conan Doyle published after 1923 are still protected by copyright.
IN CASE YOU WERE WONDERING: No doubt you noticed that IP News for Business has been gone for a little over a month. Not to worry. Everything’s ok. I had knee replacement surgery in the first week of March. Things are going well and I’m “back in the saddle”.