UPDATE [1. New story here. Indictment here. ]

On 22 October, a federal judge in Los Angeles granted an injunction prohibiting gang members, relatives and associates from wearing, licensing, selling or distributing patches with the Mongols logo.  The case is believed to be the first in which the government has sought to take control of a gang’s identity.  

Under an indictment issued last Tuesday, 64 Mongol members have been arrested in 6 states, including Ohio.  Federal prosecutors say the Mongols routinely engage in murder, torture, drug trafficking and other offenses.

I am not sure how enforceable this injunction will be.  Indeed, if I represented the Mongols, I would certainly challenge this order – on any number of grounds, free speech being foremost.  

Perhaps the government would have better luck trying to cancel the trademark registration and be done with it.  I don’t foresee the federal government getting in the business of “association services, namely, promoting the interests of persons interested in the recreation of riding motorcycles” – although it does seem to want to get in the business of banking and insurance.

Deutsche Post AG, Europe’s largest mail carrier, won a ruling from Germany’s highest civil court that may allow it to keep its trademark for POST.   The Federal Court of Justice reversed a ruling by the German Patent Court that had ordered cancellation of the registration.

Deutsche Post has been involved in various lawsuits over the term POST, the German word for “mail”. In June, it lost suits aimed at stopping competitors from using the word in combination with other terms in their company names.

The term was registered as a word mark in 2003 after Bonn-based Deutsche Post showed that 84.6% of Germans associated the term with Deutsche Post, it said in an e-mailed statement on 24 October.

With a nod to Mr. Coleman, this crazy story.  Independent label Quote Unquote Records’ (which operates with donations) web site was recently shut down by its own hosting provider.  The host had originally written telling the label that it was hosting copyrighted materials and, unless the label could prove ownership, the site would be shut down.  The host demanded actual certificates of registration showing ownership.  When Quote Unquote couldn’t produce copyright registration certificates for songs posted on its website in mp3 format, the site was shut down.

It is important to note that no take-down notice was sent to the host.  It did this sua sponte – on its own.

The web host should learn that copyright registration is not required for ownership and copyrights are created automatically when work is completed.

Apparently, the hot-selling product at Amazon.fr is a Nicholas Sarkozy voodoo doll. And French President Sarkozy doesn’t like it.  So much so, in fact, that he has sued the manufacturer to have the dolls taken off the market.  

Sarkozy’s lawyer is arguing that the president — like any French person — owns the right to his own image under the law.

Publishing house K&B Editions is insisting that the right to humor stems from freedom of expression.

Well, I know how this lawsuit would turn out in the United States.  However, I am not an expert on the French right of publicity.   A decision from the Paris court is expected Wednesday.

For those who are interested in the manufacturer’s description of the product, here’s a loose translation:

You hate Nicolas Sarkozy because he’s too far to the right? You scorn Nicolas Sarkozy because he’s not far enough to the right? You wonder if he thinks before speaking? You think of taking a second job to keep your head above water? Well-played! You thought of electing a man who would reform the country and would make France shine all over the world? And yet, you have always so much to deal with at the end of the month and dream to leave this company which does nothing but benefit the rich to go to sell French fries at the seaside. Breathe. Because this is where The Handbook Voodoo Nicolas Sarkozy comes into play. Thanks to the magic spells concocted by the specialist in sorcery Yaël Rolognese, you can entreat the evil eye and prevent Nicolas Sarkozy from causing more damage. Then why do you wait? When you take your retirement at 87 years, it will be too late.  Act as fast as possible and start to rebuild the French political scene thanks to The Handbook Voodoo Nicolas Sarkozy.

Then again, maybe it’s working and that’s why Sarkozy wants it off the marker.  ;-)

The non-profit, run by  journalist Bill Kurtis and his sister, Jean Schodorf, that operates the “Little House on the Prairie” museum in Kansas said it is being sued by the makers of the former TV show with the same name.

The twist?  The museum is located on the homestead where it is believed Laura Ingalls Wilder, the author of the “Little House” series of books, lived as a young child with her family between 1869 and 1871.

The show’s producer, Family Friendly Productions, insists in its lawsuit that it acquired decades ago the rights from the author’s heirs to “Little House on the Prairie” for TV, movies, theme parks and merchandise.  It seems to me to be a tough case to make.  Copyrights and trademarks are different beasts.  This should make for an interesting case.

As “Little House” is a former series, it is interesting to note that Family Friendly Productions has very recently (August ’08) filed two (2) applications for LITTLE HOUSE ON THE PRAIRIE.  One covers:  entertainment services, namely an ongoing television series.  The show went off the air in 1983.  Is that an “ongoing television series” in 2008?  Interesting question:  Does TV syndication count as an “ongoing television series”?  I know what I think.

“Little House on the Prairie,” the Norma Desmond of the 21st century…

A Bay Shore, New York man, Rajesh Kapoor, 38, has been arrested and charged with counterfeiting.  Kapoor operates a kiosk at the Sunrise Mall in Massapequa.  He was arrested and charged with trademark counterfeiting after he offered to sell undercover officers fake brand-name wallets, jewelry, handbags and other items, according to Nassau police. 

The counterfeit items represent an estimated loss to the trademark owners of more than $9,000.  Kapoor was charged with second-degree counterfeiting.

Shoe giant, Nike, Inc. has sued discount retailer Wal-Mart for patent infringement.  The lawsuit, filed Monday in the U.S. District Court for the Northern District of Illinois, claims that the Wal-Mart shoes too closely resemble its Nike Shox footwear.

India’s Health Ministry has rejected  the new definition of counterfeit drugs proposed by an agency backed by the World Health Organization.  In so doing, “[t]he government is concerned about certain words being used in the new definition of counterfeits proposed by IMPACT. We are afraid developed countries may use such a definition to stifle the growth of our generic industry,” drug controller general of India (DCGI) Surinder Singh said.

It is learnt that the new definition considers apparent ‘trademark violations’ as ‘counterfeit’ cases. The government feels this may harm exports of generic medicines from India. “Calling trademark violations counterfeit may also mean that if a drug is not registered in a country then it becomes a counterfeit, which is completely wrong. The drug may not be registered because it may not suit that country’s environment. This does not make it a counterfeit,” Dr Singh said. 

Google is not allowing third parties to use the now-famous Chrome comic book, the Chrome Logo, etc.  On Sept. 24, site proprietor Troy Carly blogged that he had received an e-mail from Google Senior Trademark Counsel Terri Chen telling him he couldn’t use the snapshot of the Google Chrome comic, the Google Chrome icon and the Google Chrome logo.  That same article indicates, “[t]aking what Carly said into consideration, he has a valid point. It seems evil to open-source something and place these types of restrictions around it, but the Creative Commons license does in fact afford Google and others certain  protections.”

People fault Google for this position; however, open-source code does not mean free use of trademarks, logos and other copyrighted materials.

Is it not enough that Google offers open-source applications for everyone to enjoy?  As compared to, say, Apple and its original restrictions on any app development for the iPhone.  Google gives a lot away for free for our use.  Surely, simply the domain name chromeplugins.com could well be perceived as being sponsored or endorsed by Google (yes, the very definition of trademark infringement).  Google lets you work with its coding.  In exchange, be respectful of the elements in which Google is asserting rights – even if the rights actually claimed by Google seem unclear at the moment.

This article discusses the dilemma that many online marketers face. Here’s a snippet:

Marketers first need to understand the rules, which the engines spell out quite clearly. Each of the leading search engines allows marketers to bid on competitors’ trademarked terms but prohibit the use of these terms in the actual ad copy. So Kohl’s can bid on the term Target and Target can bid on the term Kohl’s, for example. But neither can use the other’s trademarked terms in their ad copy.

On a related note, here’s an article about how Google’s AdWords can reject legitimate claims for one’s own marks or business names.