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Intellectual Property Law

: IPKat

Letter from AmeriKat - New York Times v Wall Street Journal

By Johanna Gibson, David Pearce, Jeremy Phillips and Ilanah Simon.

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Yesterday morning while the rest of London was awakening to a beautiful summer morning, the AmeriKat was feverishly writing about money laundering and conflict of interests in the first of her final LPC exams. Battling the oncoming pilgrimage of English sun worshippers streaming their way to Hyde Park three hours later, she exhaustedly pawed her way back home to face another stack of revision that was eagerly awaiting her return. This particular stack is for a three-hour slog next Sunday which unfortunately means she will be unable to post her weekly Letter next week. (picture, left - the AmeriKat studying away for the final exams) The final death throws of her two year LPC slog will finish in 11 days, when the AmeriKat will return to her regularly scheduled programming. In the meantime, the AmeriKat has a little IP fodder for you to digest until then.

New York Times v Wall Street Journal

Last Thursday, The New York Times sent a cease and desist letter written by their attorney Richard Samson to the VP of Marketing of Dow Jones & Co,Jennifer Jehn, demanding that the WSJ stop using the slogan "Not Just Wall Street. Every Street". For readers who, unlike the AmeriKat, can not geekily name the legal entity that publishes a newspaper, Dow Jones & Co publishes the WSJ. They are in turn both owned by News Corporation and Rupert Murdoch (see an interview with Murdoch regarding the iPad).

By way of background, when Murdoch bought the WSJ in 2007, there was much comment over the purchase (see in particular this Wall Street Journal article here) which changed the power structure of the US newspaper industry, skewing ownership towards big business and therefore potentially their interests. For non-US readers, Murdoch's American media empire tends to include the more conservative media organizations like Fox News. Following the purchase of the WSJ, and particularly in the past few weeks, Murdoch has had The New York Times in his eye-line with a view, some say, of knocking them off their "perch". The streets of New York are now the PR battleground for the two newspapers, with the Times' letter being just the latest.

According to the Times' letter the WSJ used the slogan in a 26 May advertisement that ran in their print edition and also occasionally on their website as part of the promotion of their new Greater New York section. [To compare the two ads click here] The Times' CEO Janet Robinson stated yesterday that the Greater New York section had not had an impact on the Times' circulation. The Times' letter stated that the slogan is subject to a "trademark application pending with the U.S. Patent and Trademark Office." The letter went on to state:

?While we are flattered by your admiration of our marketing efforts, please note that The Times owns the trademark rights in the slogan and your brazen appropriation of our intellectual property rights constitutes a willful infringement and dilution of The Times' rights under the Lanham Act."

On Friday, the WSJ sent a letter to the Times stating that it had "never intended to run the ad for long" and that "our lawyers tell us that we were within our rights to use the tag line to compare our two offerings." According to the WSJ, the letter also stated that the WSJ believed the Times' slogan was itself referring to the WSJ. The AmeriKat can see what they were trying to get at, but before the Wall Street Journal there was a street called Wall Street, which was what the slogan was referring to (although there probably is a bit of a wink behind slogan as well). Further, the phrase has entered a new parlance in the US after the financial crisis with politicians demanding Washington protect "Main Street interests, not just Wall Street's".

Jehn's letter also stated that the WSJ did not think that New Yorkers would be confused by the its use of the slogan. Unlike in the UK, under section 1114 of the Lanham Act US trade mark owners have to prove that the defendant's use of their mark confused consumers. In the Second Circuit, which includes New York, the test for confusion is that as laid down in the Polaroid Corp v Polarad Elecs. Corp (1961) case. If this case goes any further and the slogan is indeed valid and registered, the Times' would have to provide evidence for the following factors under this test:

The strength of their logo - [the AmeriKat is sceptical to the level of the logo's distinctiveness]
The degree of similarity between the two - [identical!]
The proximity of the products and services - [identical!]
The likelihood that the senior user will "bridge the gap" into the junior user's product service line - [if there even is a 'gap' it is very likely because they are competitors]
Evidence of actual confusion between the marks
Whether the WSJ adopted the mark in good faith - [well, if the Jehn letter is anything to go on...]
The quality of the WSJ's products - [The AmeriKat must state she is a faithful WSJ reader, so obviously cannot comment impartially]
The sophistication of the parties customers -[obviously incredibly sophisticated, see 7 above]

The Wall Street Journal's letter concluded with the following taunt which seems to show what was behind their use of the identical slogan:

"We think we've made our point. And to get a rise out of you is just a special bonus."

In this industry no one has the last word, so on Friday a Times spokesperson stated plainly:

"We don't think theft of intellectual property is a joke."

Of interest, a month ago, the Wall Street Journal ran another ad (seen here) which stated "Introducing Greater New York. Ahead of the times." Ahhh... competitors hiding behind the veil of trade mark generality!

The AmeriKat will keep her ears and whiskers apprised of any further developments in the newspaper battle heating up the already muggy New York summer (photo, right)!

Full post as published by IPKat on June 06, 2010 (boomark / email).