Thunderbolt Update: A Trademark Victory for Apple?

I reported in February that Apple and Verizon/HTC might be headed for a tussle, in light of their identically-named products.  Apple announced its new THUNDERBOLT peripheral interface earlier this year, while HTC dubbed its first Verizon 4G LTE smartphone the HTC THUNDERBOLT.  At the time, I located a trademark application filed by Verizon for THUNDERBOLT in class 9, for a “wireless communications device.”  That application was dated December 2, 2010.  I see that the application was eventually published, but recently it went abandoned.

Meanwhile, an application for THUNDERBOLT in the same class for “handheld and mobile digital electronic devices for the sending and receiving of telephone calls, faxes, electronic mail, and other digital data” and for “mobile telephones” was filed in the same class by Apple on May 6th, 2011, claiming the priority of an earlier foreign filing for the same mark in Jamaica — wait for it — on November 9, 2010.  That beats Verizon’s file date by approximately three weeks. Touché, Apple.

Thank You, Professors!

I’d like to thank the academy.  The legal academy, that is.

Yesterday, I completed the last final exam required by my LL.M. (Master of Laws) program, which may very well be the last final exam that I will ever take — or so I keep telling myself every few years.

The LL.M. program has been a great experience and all that remains is to put the finishing touches on my thesis, which I hope to iron out in the approaching months.  Arriving at the end of another phase of my academic career has left me feeling a little introspective and a bit nostalgic, hence the compulsion to dedicate some lines to writing about what a long, fun, challenging ride it has been and where I hope that it will take me.

As a preliminary matter, I should probably offer a little perspective about my journey by providing a brief recap of my academic history.  I almost hesitate to include this for fear that it will be read as a self-gratifying compendium of my academic achievements, which is not my intent — that’s what curricula vitæ are for, and I don’t even have one of those posted on this site.  I think that it is fair to say that my years in academia have been as much the product of vocational wandering as the result of intellectual curiosity, so please hold onto your chapeau for the time being.  Here’s the tally:

  • 4 years – undergraduate
  • 4 years – dental school
  • 3 years – dental/surgical hospital residencies
  • 4 years – law school1
  • 2 years – LL.M. program

All told, that adds up to 17 years of higher education and a long string of confusing letters after my name.  I don’t pride myself on my math skills, but when I tally the academic semesters contained within those years (including the mandatory summer sessions required by some of the programs) I arrive at a total of around forty semesters, plus three very intensive years of residency training.  I wish I could tell you how many times during those years I sat down to “you will have three hours to complete this exam,” but — actually, no; I don’t think I really want to figure that out.  Mentally consolidating all of those hours of nail-biting, scribbling, and furtive clock-watching into one patch of neurons would probably require therapy.

But I digress.

My love affair with academia began soon after I finished dental school, when I felt a profound sense of trepidation at the prospect that my full-time pursuit of learning was at its end and life held only the promise of applying what I had managed to absorb by the age of twenty-eight.  I suspect that for many people, eight years of post-high school education could be filed under “more than enough,” but I didn’t view it that way.  As students, we invest an incredible amount of energy into acquiring knowledge and to expanding the breadth of that knowledge into new realms, but then most of us move on to applying only a little slice of that knowledge to the very narrow framework of our chosen careers. And it is hard to find fault with that approach: to master something and successfully make a career of it is unquestionably admirable.

But I felt a little cheated when I finished dental school, recognizing that much of what I had learned over the years would be slowly relegated to forgotten corners of my brain before being erased forever.  Part of my regret also stemmed from the fact that I pursued dual majors in biology and English as an undergraduate.  I loved science, but I also loved to write, and dentistry provided little outlet for the latter.

I confess that following a linear path from school to work to retirement never made much sense to me either.  Ralph Waldo Emerson is credited with first writing that “life is a journey, not a destination,” and perhaps in the same frame of mind, Thomas Edison once said, “I have not failed. I have just found one thousand ways that won’t work.”  Edison seems to have believed that success is built as much on failure as on the ultimate realization of a goal, while Emerson suggested that success is less important than the pursuit of one’s ambitions.  Both Emerson and Edison seem to have shared the belief that the path to enlightenment is at best a winding one, while success is the reward of those who persist in navigating that path.

Along my own winding path, I enjoyed several unexpected opportunities to serve as a teacher, first to dental students and later to law students.  Those experiences opened my eyes to the possibility of a career direction that I hadn’t considered.  Teaching gave me the chance to interact with people who made a career of gathering knowledge and it allowed me to continue to learn in an environment that transcended my role as a student.  It also permitted me to guide others down paths that had once challenged me, and the reward that I felt from making those paths less arduous to others was substantial.

I have practiced law with some of the largest, most prestigious firms in the world and I have practiced dentistry in some of the humblest dental practices imaginable. Those experiences have shaped my views of the world, offered me perspective, and helped me to grow as a person. Along the way, I have learned to view life as an experiment and I have repeatedly felt the call to return to learning.  Academia has provided a doorway for me to heed that call and my professors have been the key to that doorway.  I genuinely respect the guidance that my law professors have offered and I understand why they have chosen to pursue careers in legal education.

The law presents a dynamic subject that is constantly evolving in response to changes in technology, societal norms, and nature itself.  There are an infinite number of topics to write about and no shortage of students willing to learn. The law provides the opportunity to  pursue new ideas and to share them with colleagues, while offering students the opportunity to discover the law in the same way that I did: through curiosity nurtured by educators who genuinely love to teach.

To all of my professors: thank you.

_________________

1. I practiced dentistry full-time while attending law school.

Antitrust Digital Music Presentation

I gave a presentation today at the University of Akron School of Law entitled The Record Industry & Digital Music Price Fixing: Starr v. Sony BMG Music Entm’t, 592 F.3d 314 (2d Cir. 2010), cert. denied, 131 S. Ct. 901 (U.S. 2011).  With respect to the cited case, the U.S. Supreme Court decided by not deciding — that is to say that, the class action victory in the Second Circuit was left undisturbed by the Supreme Court.

The gist of the suit was grounded in the class action plaintiffs’ assertion that during the early days of digital music downloads — prior to the $0.99 iTunes era — the defendant record companies conspired to keep downloadable music prices artificially high so that its established revenue stream generated through CD sales would continue uninterrupted.

The Supreme Court’s decision was a bit of a coup for the plaintiffs, because at the district court level, the judge found no compelling evidence of parallel conduct by the Defendant music companies that would suggest antitrust behavior.  In contrast, the Court of Appeals identified at least seven non-conclusory factual allegations suggesting that there was indeed quite a bit of parallel conduct by the Defendants.  The district court and the appellate court could not have been much further apart, and the Supreme Court effectively sided with the latter.

In the grander scheme, I find the case to be especially interesting because it fits well into a discussion about the difficulties that corporate entities and the law itself experience when they attempt to play catch up with new digital technology, a theme that I return to frequently in my writing.  In this case, the music industry was overwhelmed by the emergence of file sharing, particularly during the Napster era, and both industry and the law were initially ill-equipped to manage a technology that simultaneously held so much promise and so much threat for the music industry.  It has been argued that the music industry made some poor decisions at the outset and has invested heavily in supporting those decisions ever since.

It will be interesting to see what the district court decides upon remand, now that the Supreme Court has declined to grant cert to the record companies.  The case has a bit of a Shakespearean quality of the “something is rotten” variety, when you consider that the district court’s ruling was almost diametrically opposed to the Second Circuit’s subsequent decision with respect to the evidence of parallelism.  This alone wouldn’t be particularly bothersome, if not for the district court judge’s admission that she has a potential conflict of interest: her husband represents several of the largest record companies.  And yes, she declined to recuse herself.

Once the case shakes out, I hope to convert my PowerPoint slides and research into a new article.  Stay tuned.

A Thunderbolt by Any Other Name

I have been anxiously awaiting the arrival of Verizon’s first 4G LTE smartphone, the HTC Thunderbolt.  If it boasts the same Rx/Tx speeds that I am getting with my LG 4G USB modem, I will be very pleased.  After the usual delays, the HTC Thunderbolt is due to hit Verizon stores any day now.  Curiously, I see that Apple is planning to offer a new proprietary peripheral connection interface on its devices which will compete with USB 3.0.  Also dubbed Thunderbolt, the new interface was developed by Intel and it should be appearing on Apple MacBook laptops soon.

Apple/Intel's Thunderbolt Interface

While smartphones and computer peripheral interfaces are not identical goods, I would not want to be the party with inferior registration rights in that trademark battle, particularly if Apple, which protects its marks aggressively, finds itself in a corner.

There is one interesting quirk here, with respect to the HTC Thunderbolt: in the past, HTC has, as far as I can tell, always filed U.S. trademark applications for the phones it develops (Incredible, EVO, Incredible S, etc.). But in this case, Verizon was the party which filed an intent-to-use application for THUNDERBOLT. This may simply be the result of an agreement between Verizon and HTC whereby Verizon will be the only carrier to sell an HTC phone bearing the THUNDERBOLT mark and consequently the trademark registration responsibilities were handed off to them. Ultimately, whomever owns the mark (presumably Verizon) will grant a license to the other to use it as well.

Verizon’s application Ser. No. 85188944 for THUNDERBOLT was filed with the Trademark Office on December 2, 2010.  I can find no U.S. applications for THUNDERBOLT by Apple or Intel, although Apple has a history of being coy about its mark registrations, so it may have something in the works.

My Brush with Soapbox Derby Stardom

My wife Kelleigh is currently associate producing a film called 25 Hill  that is being made right here in Northeast Ohio.  The film, written and directed by Corbin Bernsen, tells the story of a boy who wants to compete in the All American Soap Box Derby, an event which has been held in Akron, Ohio since 1935.  In both the film and in the real world, the Derby may be forced to shut down due to waning interest and financial troubles.  I won’t spoil the story, but suffice to say that it delivers a good message that I think is appropriate for these troubled times.

In the soap box derby world, competitors paint their cars, often with a name or logo on the side.  Shortly before the filming of 25 Hill began last month, my wife mentioned that the protagonist’s car was to be adorned with the patriotic phrase “Spirit of America” on the side.  The title was familiar, so naturally I began to wonder about IP issues.  While the name is obviously reminiscent of the “Spirit of St. Louis,” the single engine plane that Charles Lindberg flew nonstop from New York to Paris, it seemed to ring some other bells as well.  I dug around on the Internet and found some more examples.  Goodyear (also located here in Akron) has a blimp named the Spirit of America, which didn’t really trouble me, but I found another reference that did:  Craig Breedlove, who has spent more than forty years setting land speed records in the Bonneville Salt Flats, has named all of his jet cars Spirit of America.

One of Breedlove’s Spirit of America jet cars

The Wikipedia article (read: dubious) that describes Breedlove’s cars suggests that “Spirit of America” is “the trademarked name used by Craig Breedlove for his land speed record-setting vehicles.”  I performed a quick federal trademark search for the phrase, but I could not locate any particularly relevant federal trademark registrations for SPIRIT OF AMERICA or the like which overlap with 25 Hill’s intended use of the term for a soap box car in a motion picture.

In the big picture, SPIRIT OF AMERICA might be regarded as a descriptive mark of sorts for anything patriotically American, especially in the vein of technologically superior vehicles like planes, airships, and cars, and one could make the argument that anyone who uses the mark in this context does so in a crowded field and is thus entitled to weak protection at best.  Nevertheless, it just seemed like a bad idea to contaminate the film with a potential trademark issue, so I talked it over with my wife, who in turn mentioned it to Corbin.  To my surprise, Corbin asked if I would come down to the production office to offer my thoughts.  After explaining my views and relaying a story about a similar case that my former firm handled successfully on behalf of a trademark owner-client a few years ago, everyone agreed that it was in the best interest of the film to choose a new name.  Some brainstorming followed, a new name was chosen, and I watched with fascination as Corbin and Kelleigh hand-edited the script so that the new name would fit the existing storyline.  Since the soap box car in question will be featured prominently in the film, I will be able to see my small contribution to film history on the big screen, which, I have to say, is pretty great!

Kelleigh and the newly dubbed “Faith and Courage” on the set of the film 25 Hill. Photo courtesy of Jim Biss

Cookie on the Run

I must vent — I can’t help it. Someone is infringing upon the Eat ‘N Park smiley cookie trademark.  The “Clever Cookie Company,” a New York-based company that sells kosher goods via the Internet, has begun producing cookies that are nearly identical to my beloved smiley cookies. If only I was the one representing Eat ‘N Park. I would let loose the virtual wrath of generations of angry, hungry steel workers on those clever bakers in Long Island. Clever Cookie Company indeed. Don’t mess with my Smiley Cookie!®

Admittedly, my Pittsburgh bias is showing through here.  Eat ‘N Park restaurants and their well-known baked goods are a staple of the town that I came to love during the years that I lived there.  What really leaves crumbs in my covers, though, is the difficulty that the public and press have with recognizing the trademark law issues here. Not because I feel that they should have a better understanding of the sometimes counter-intuitive nuances of trademark law, but because I feel that they should have a better understanding of trademark law before they crush the cookie into crumbs. Here is what some of the locals are saying:

“As far as I know the law – all you need to do is change a product 20%, and there is no copyright infringement.” (confusing copyright with trademark)

“Surely that smiley face must be in the public domain by now. Everyone uses it. There would be lawsuits galore!” (trademark rights, unlike copyrights, can exist in perpetuity)

“Does that mean Eat ‘N Park will be suing everyone who uses emoticons?” (Eat ‘N Park owns trademark rights for smiley faces on COOKIES,* not on all things in the universe)

“If Eat ‘N Park somehow prevails, Kings never has to sweat Denny’s introduction of Malevolent muffins or Scowling scones.” (this one is actually pretty funny, although a little misguided)

Eat ‘N Park has a legitimate case. Fortunately, they are well-represented by the Webb Firm in Pittsburgh and I hope that they get a fair shake in court. I also pray that the Clever Cookie Co. does not retain my firm to represent them, as I could not in my heart defend them. I am loyal to just one cookie.

eat n park cookie
I’m very close to the Cookie

* and pancakes too, actually