A motion for a more definite statement is available under Rule 12(e) of the Federal Rules of Civil Procedure. 

Such motions may be a useful and necessary response to unintelligible pleadings.  However, their use as a tactic to challenge pleadings generally is unlikely to be effective.  See e.g., Moore v. Fidelity Financial Services, Inc., 869 F.Supp. 557 (N.D.Ill. 1994)(denying motion).

As explained in Moore, Rule 12(e) motions are generally disfavored.  They are not to be used as substitutes for discovery. Notice pleading is all that is required in federal court.  Precise contentions can be determined through discovery.

 ...   more »

"ICANN UDRP: Background, Status, Hot Topics," the paper I distributed last week at the "Untagling the Web" program at DePaul Law School, is available here upon request. 

Post your request in a comment below with your address or email, or send private email to mpartridge@pattishall.com.

We will not distributed your contact information to third parties and will only use it to exchange the information you request on this site.

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1. Traffic aggregation: the hot issue. Cybersqutting: yesterday's news?

2.  1.5 million: the approximate number of registered trademarks in the U.S.

3.  64.5 million: the approximate number of registered domain names.

4.  13,000: the approximate number of domain names addressed in reported UDRP cases since 2000.

5.  New gTLDs under consideration: .asia, .cat, .jobs, .mail, .mobi, .post, .tel, .travel, .xxx.

6.  $100,000: the approximate annual cost of worldwide domain name registration in all ccTLD variations.

As an ICANN UDRP Panelist with over 100 reported decisions for WIPO and NAF, I have read many submissions over the past five years, some very good, many bad.

I recently spoke on UDRP advocacy at seminar hosted by DePaul Law School and the Intellectual Property Law Association of Chicago, and offered six tips:

1. The Complaint (or Answer) should be a brief.  This is your only chance to argue your position. Treat it like a memorandum in support of a motion for preliminary injunction or summary judgment by presenting your case as an advocate. Mere notice pleading allowed in ...   more »

Ethan Smith reports on a unique CD project in his article "This Compilation CD Is Meant to be Copied and Shared" in the September 20, 2004 issue of The Wall Street Journal.

Highlights from the article:

-The music industry has sued 4,679 alleged digital pirates to stem online file swapping.

-Next month, Wired Magazine is issuing a CD designed for file sharing called "The Wired CD: Rip. Sample. Mash. Share" featuring 16 prominent artists, including Beastie Boys, David Byrne and Gilberto Gil.

-The free CD is distributed under the Creative Commons license developed by Stanford Law School Professor Lawrence Lessig....   more »

In our trademark course, we struggle to cut to the core of trademark law, to find the essence, to reveal the fundamental principles on which all rests.

We come down to these two statements:

Rights = use + distinctiveness

Infringement = prior rights + likelihood of confusion

That is all you need to know. Everything else is a footnote.

UPDATE: For the past two years, this post has been the most popular on our site, no doubt due to the appeal of Bill O'Reilly.  If you're looking for Mr. O'Reilly, welcome to something unexpected.  Visit our main site www.GuidingRights.com for more information and free resources.  Browse around for our other postings.  Buy a copy of our book: Guiding Rights.  Enjoy.

Fox News Network was awarded the domain name www.billorielly.com based on the promotion of its news host Bill O'Reilly in Fox News Network LLC v. Bill Orielly, Case No. D2004-0464 (WIPO, September 5, 2004). Please note: the difference in "rielly" and "reilly" is not a typo but found in the original.

The manufacturer of a composite product using another's product as a component may use the component product's mark to truthfully disclose the use of the component without seeking permission or creating an infringement. Thus, Sally Sherman, a marketer of tuna salad, could state on containers: "Made With Bumble Bee Tuna." Bumble Bee Seafoods LLC v. UFS Industries Inc., 71 U.S.P.Q.2d 1684 (S.D.N.Y. 2004).

Following well-settled principles, the court cites and quotes from a treatise by my partners, Pattishall, Hilliard & Welch, Trademarks and Unfair Competition 7.06[1] (2d Ed. 2003), stating: "In permitted use decisions, the courts emphasize truthful disclosure. . . ...   more »

Recent attention to the Eighth Circuit decision in Coca-Cola v. Purdy brings to mind the class of sometimes difficult cases involving the use of another's trademark as a domain name for criticism.

An ICANN UDRP decision, Full Sail Inc. v. Ryan Spevack, Case No. D2003-0502 (WIPO October 3, 2003), by Mark VB Partridge, presiding panelist, with Frederick M. Abbott and G. Gervaise Davis III, included a review and analysis of the "your trademark sucks.com" cases that remains a useful reference worthy (I hope) of the lengthy quote below.

In relevant part, that decision states:

One of the pleasures of working in the IP field is the chance to deal with artists of all types hoping for a big break.  Today, much artistic attention is directed to filmmaking, which has become the dominant commerical outlet of a generation of creative artists (perhaps only now being replaced by the creative freedom taking place on the Internet).

The legal issues confronting aspiring filmmakers are daunting, particularly the clearance of rights.  Good legal help is expensive, often prohibitively so, but litigation arising from the failure to do things right in the first instance can be even more expensive and can destroy ...   more »

Public statements by plaintiffs in the heat of litigation can become fodder for counterclaims as defendants seek leverage. The litigation privilege can be an early way out.

NSB Technologies sued Specialty Direct Marketing for copyright infringement based on a breached royalty agreement for the use of computer software. During the case, NSB made allegedly defamatory statements about SDM, giving rise to a counterclaim.  Judge Keys of the Northern District of Illinois dismissed the counterclaim, finding that federal common law recognizes a litigation privilege barring such claims stemming from statements that are related to judicial proceedings.

NSB Technologies v. Specialty Direct Marketing, ...   more »

Del Fabbro Laurent registered and used the domain names www.porsche-buy.com and www.porschebuy.com to sell used Porsche cars.  Porsche filed a UDRP complaint to recover the domain names. Dr. Ing.h.c.F.Porsche AG v. Del Fabbro Laurent, Case No. D2004-0481 (WIPO, August 20, 2004)

Panelist Michael Bernasconi concluded that the names were used in good faith and did not constitute a violation of the Policy.

On the issue of bona fide use, the panel stated:

To be bona fide, the offering must meet several requirements (see Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946; Oki Data Americas, Inc. v. ASD, ...   more »