Twitter and Twittad Settle Trademark Infringement Suit; Twitter agrees to restore Twittad’s account

Due to the popular social networking site Twitter, the noun/verb “tweet” is now a familiar and exhausted term in everyday discourse. However, it is also a registered trademark, and Twitter expressed its protectiveness over the mark in a recent complaint against advertising company Twittad’s registration of “Let Your Ad Meet Tweets.”

Twittad, a limited liability company with its principal place of business in Iowa, maintains the website twittad.com, which offers advertising services contingent on Twitter’s services. Twittad currently pays a network of over 27,000 private users for tweeting commercial ads. In its federal trademark application for “Let Your Ad Meet Tweets,” Twittad specified that the registration was namely for providing advertisement space on the internet for others.

In its complaint, Twitter points out that Twittad failed to mention that its advertising services were meant to be used solely in connection with Twitter’s services. According to Twitter, “Tweet” is the only distinctive portion of this mark, which was registered in order to exploit the “popularity and fame of Twitter’s ‘Tweet' brand." (2011 WL 3983379 (N.D.Cal.)). As Twitter also owns a host of “tweet” marks including “Cotweet,” “Tweetdeck,” and of course “Retweet,” Twittad’s mark could appear to be in this family of marks and confuse consumers.

Twitter is specifically claiming that “Let Your Ad Meet Tweets” should be cancelled pursuant to 15 U.S.C. §1502(d), §1064, and §1119. Also known as the Lanham act, the federal statute provides that a trademark registration should be refused if it “comprises a mark which so resembles a mark registered in the Patent and Trademark Office,” 15 U.S.C.A. § 1502(d) (West)). A petition to cancel registration may be filed by “any person who believes that he is or will be damaged, including as a result of a likelihood of dilution by blurring or dilution by tarnishment.” Id. § 1064 (West). Courts have the power to cancel such registrations under §1119.

However, according to JurisNotes, as of 10/19/2011, Twitter has agreed to drop its suit against Twittad in exchange for being assigned the entire interest in the mark. While other terms of the settlement are confidential, it seems that Twittad’s Twitter account will be restored and it can continue its advertising services while still using the tagline “Let Your Ad Meet Tweets.”

For more information, see the original complaint for declaratory judgment filed in the Northern District Court of California. (2011 WL 3983379 (N.D.Cal.). The trademark registration for “Let Your Ad Meet Tweets” can be found here: http://tess2.uspto.gov/bin/showfield?f=doc&state=4010:bpjbqg.2.1The assignment of title history for the mark clearly indicates that Twitter was assigned the entire interest on 10/11/2011. http://assignments.uspto.gov/assignments/q?db=tm&qt=sno&reel=&frame=&sno=77513740

Reddit's Right in a Movie Script?

An unknown author writes a script that gets purchased by a major production company. It sounds like a fairly straightforward story and licensing deal, right? Not for James Erwin who wrote "Rome, Sweet Rome" a story about a modern day U.S. Marine who goes back in time to fight in Ancient Rome. Erwin then sold the exclusive movie rights to Warner Brothers. However, this deal presents some interesting copyright issues because Erwin originally shared his ideas for "Rome, Sweet Rome" on Reddit, a social news website whose content is entirely user created. In addition to publishing his story here, user content was contributed by the community and arguably used by Erwin to finalize his story.

Reddit has a stake in Erwin's deal because of the User Agreement that all Reddit users agree to when they join the website community. The agreement specifies that users "agree that by posting messages, ... or engaging in any other form of communication with or through the Website, you [the user] grant us [Reddit] a royalty-free, perpetual, non-exclusive, unrestricted, worldwide license to use, reproduce, ... distribute, ... or sublicense any such communication in any medium ... and for any purpose, including commercial purposes, and to authorize others to do so." This presents the possibility that Reddit could now turn around and sell the portions of "Rome, Sweet Rome" divulged on the website. Section 205(e) of the Copyright Act states that a "nonexclusive license ... prevails over a conflicting transfer of copyright ownership" which seems to indicate that Reddit could legally license away the movie rights to "Rome, Sweet Rome," specifically the portions of the story and feedback trading on Reddit.

James Erwin, per Warner Bros. advice, has since removed "Rome, Sweet Rome" from Reddit and Reddit has not made any public efforts to sell its rights in the script. However, Reddit is operated by Advance Publications, a subsidiary of Conde Nast Publications. This means that they might be more likely than a small, independent website to license rights out to test the legal waters on the issue.

Regardless of whether Reddit acts on "Rome, Sweet Rome," it brings about an interesting issue of the rights of nonexclusive rights of licensees and licensors. For more on this story, see Does Warner Bros. Really Have Exclusive Movie Rights to a Story Posted on Reddit?

PIPG Wine & Cheese Salon

Please join the Penn IP Group for a Wine & Cheese Salon to discuss some relevant and interesting IP issues. The event will be held tomorrow, October 20 at 4:30 in Gittis 213. PIPG members and interested students are encouraged to come out, discuss IP topics, and enjoy some cheese, wine, and non-alcoholic beverages. Prompts for tomorrow include the new Smith-Leahy America Invents Patent Act and IP issues related to Fashion Law (to get excited for the Spring Symposium). We hope to see you there!