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Doe v. Geller et al. |
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| Doe v. Geller et al. | |
Practice Area | ||
|
John Doe, who is known publicly by the pseudonym Brian Sapient
(“Sapient”), as part of his religious beliefs and mission to debunk
what he alleges are “irrational beliefs and theories,” uses YouTube, a
California-based file-sharing website, to “reach thousands of audience
members and promote [his] activist messages and campaigns
online.” As part of this campaign, Sapient uploaded a video clip
that originally aired on the NOVA television program featuring an
illusionist named James Randi challenging claimed psychic Uri Geller’s
alleged powers. The clip Sapient uploaded contained an embedded
clip, the copyright to which Explorologist, Inc., of which Uri Geller
is a controlling shareholder, owns. Geller and Explorologist sent
YouTube a takedown notice identifying Sapient’s post as infringing and
demanding it be removed. YouTube did so and suspended Sapient’s
account for more than two weeks. On May 7, 2007, Explorologist
filed suit against Sapient in the Eastern District of Pennsylvania
where Sapient resides alleging copyright infringement under British
law. On May 8, 2007, Sapient filed suit in the Northern District
of California against Geller and Explorologist, alleging violation of
the takedown provisions of the Digital Millennium Copyright Act
(“DMCA”), 17 USC § 512(f) (2000), claiming that Geller and
Explorologist knowingly misrepresented to YouTube that one of
plaintiff’s video postings infringed defendants’ copyrights. On February 4, 2008, the Northern District of California dismissed Sapient’s suit for lack of personal jurisdiction. The Court first concluded that it need not reach the difficult issue of subject matter jurisdiction presented by this case stating that no federal court has addressed subject matter jurisdiction under § 512(f) and the issue is particularly complex in this case since the defendants’ act of sending the YouTube takedown notice occurred in England and this fact was significant because United States copyright laws do not apply extraterritorially and copyright law is generally unsettled when it comes to cross-border communications. Noting that arguably an alleged violation of § 512(f) is not, itself, a copyright claim, the Court explained that treating the case as an ordinary tortuous misrepresentation or analogizing to other federal misrepresentation statutes provided “scant guidance” on how to resolve the subject matter jurisdiction question, and therefore the Court turned to the alternative ground of personal jurisdiction to decide the case. After finding no clear guidance on the “purposeful direction” prong of the California personal jurisdiction test for metaphysical Internet free speech injuries, the Court found clear insufficiency on the third prong of the jurisdiction test which is that jurisdiction must be reasonable. While defendants had the burden of showing that that the exercise of jurisdiction would be unreasonable, they did so where on balance of a seven-factor test, they showed that 1) their “purposeful interjection” into California consisted of a single takedown notice and was not aimed at a California resident; 2) there was no indication that Geller frequently traveled to California for business or had an agent in California to alleviate a foreign defendant’s burden of litigating in another country; 3) sovereignty considerations weighed against jurisdiction where the defendants were a British resident and a British corporation and the clip at issue was filmed in England; 4) the forum state’s interest was slight since Sapient was a Pennsylvania resident, not California, and California state law was not at issue; 5) the most efficient judicial resolution of the controversy was in the Eastern District of Pennsylvania where a suit was already pending; 6) plaintiff failed to show any concerns that would make California “important” to the claims; and 7) the plaintiff did not meet its burden of proving the “unavailability of an alternative forum.” Doe v. Geller et al., No. 07-2478, 2008 WL 314498 (N.D. Cal. Feb. 4, 2008) |
Litigation and Alternative Dispute Resolution Intellectual Property Business Disputes Advertising, Marketing, Publishing & Media The Arts, Entertainment & Sports |
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| Lennon, et al. v. Premise Media Corp. | |
Practice Area | ||
| Plaintiffs
Yoko Ono Lennon, other Lennon family members, and EMI Blackwood Music
filed suit against Premise Media Corporation, producers of the movie,
“Expelled: No Intelligence Allowed” alleging claims of copyright and
trademark infringement for utilizing fifteen seconds of the song
“Imagine” without permission of the plaintiffs, who own the copyright
to the song. Plaintiffs moved for a preliminary injunction prohibiting
the continued distribution of the movie and a recall of the existing
copies. However, on June 2, 2008, the United States District
Court for the Southern District of New York denied that motion
concluding that plaintiffs failed to make the required showing of a
“clear” or “substantial” likelihood of success on the merits to obtain
an injunction with both prohibitory (maintaining the status quo by
prohibiting further distribution of “Expelled”) and mandatory aspects
(demanding the positive act of recalling copies of the movie already
distributed) because the defendants would likely prevail on their
defense of fair use. The doctrine of fair use under the Copyright Act of 1976, 17 U.S.C. § 107 allows the “fair use” of a copyrighted work without the permission of the copyright owner for purposes such as “criticism, comment, news reporting, teaching …, scholarship, or research.” The Court considered the following four codified factors: “(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work; and (4) the effect of the use upon the potential market for or value of the copyrighted work.” 17 U.S.C. § 107. The court noted that the first factor, whether the use of a commercial rather than educational nature, is the “the heart of the fair use inquiry,” but is not decided merely on the consideration of whether the sole motive of the use is for monetary gain, but whether the use produces a value that benefits the broader public interest. The Court found that, in this case, while the defendants conceded that “Expelled” was a commercial film from which they sought profit, the film’s use of the copyrighted work was highly transformative and contributed to the broader public interest by stimulating debate on an issue of current political concern and therefore the commercial purpose weighed only weakly against a finding of fair use. Moreover, while defendants obtained permission for all other music used in the movie, that this fact did not evince bad faith because if the use is otherwise fair, then no permission need be sought. As to the nature of the work, while again conceding that “Imagine” is a creative work, and as such, at the “core” of copyright protection, the Court explained that because the work was widely published and the secondary work (the film) comments on the “social and aesthetic meaning” of the original, the second fair use factor has limited weight. As to the third factor concerning the amount and substantiality of the portion used, the Court found that the quantitative component “clearly favors defendants,” while the qualitative aspect was “more complicated.” The plaintiffs’ expert musicologist opined that the fifteen-second excerpt at issue contained the “heart” of the song, repeated in 48.8 percent of its total duration and immediately recognizable as being from “Imagine.” The Court found that because the song was repetitive it was not clear that defendants could have used any portion without referencing a part of the overall composition and from this alone the Court could not conclude the defendants’ use was unreasonable. Furthermore, the Court found that Supreme Court precedent had established that copying was not excessive in relation to a parodic purpose merely because the portion taken was from the heart of the copyrighted original, and in fact the criticism or commentary would be less effective if not directed at that recognizable portion of the work. Hence, the Court found the defendant’s copy quantitatively and qualitatively reasonable. With regard to the effect on the potential market value of the work, the focus of the inquiry according to the Court is whether the secondary use usurped the market of the original. The Court rejected the plaintiffs’ lost licensing revenue argument as not weighing strongly “if at all” since plaintiffs proffered no evidence showing that permitting defendant’s use would usurp the licensing market for the song. Finally, the Court found that the plaintiffs failed to show that the balance of harms tipped “decidedly” in their favor since substantial costs of reediting the movie and reprinting the affected portions were established and plaintiffs lost licensing fees were merely speculative. Lennon, et al. v. Premise Media Corp., No. 08 CV 3813 (S.D.N.Y. filed Apr. 22, 2008) A copy of the complaint can be found here. A copy of the preliminary injunction order can be found here. |
Litigation and Alternative Dispute Resolution Intellectual Property Advertising, Marketing, Publishing & Media The Arts, Entertainment & Sports |
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| FCC v. Fox Television Stations, Inc. et al | |
Practice Area | ||
| The United States
Supreme Court is revisiting the issue it visited in 1978 when it
narrowly upheld the Federal Communications Commission’s (“FCC”)
sanction against the radio station that broadcast George Carlin’s
“Filthy Words” monologue, a 12-minute monologue listing those “words
you couldn’t say on the public … airwaves,” despite First Amendment
arguments against the sanction. The Court in 1978 explained that while
it had “not decided that an occasional expletive … would justify any
sanction,” FCC v. Pacifica Found., 438 U.S. 726, 750 (1978), the
monologue was nonetheless “verbal shock treatment” to which a sanction
in accord with the FCC’s rule making authority to regulate “indecency,”
did not violate the First Amendment. Id. at 760-761 (Powell, J.,
concurring). After the Pacifica case, the FCC did not sanction what it
considered “fleeting” expletives, those that were not used in a
sustained or repeated manner, until 2004. On March 17, 2008, the Supreme Court granted certiorari to review the Second Circuit’s ruling striking down as arbitrary and capricious under communications law the FCC’s policy shift in 2004 to regulate and sanction the broadcast of a single expletive as “indecent.” The FCC’s policy shift arose specifically after a “fleeting expletive” was delivered by pop singer Bono during an acceptance speech at the live broadcast of the 2003 Golden Globe Awards. The issue for the Supreme Court’s review is whether the FCC provided adequate explanation, or acted arbitrarily and capriciously, in shifting its policy to permit fleeting uses of expletives on broadcast television to be considered “indecent” under federal law. While the Second Circuit did not rule on the broadcasters’ constitutional challenges under the First Amendment, it did comment that it doubted that the FCC policy could withstand First Amendment scrutiny. The case has been fully briefed by Petitioner FCC and Respondents Fox Television Stations, Inc., et al., Center for Creative Voices in Media, Inc., and NBC Universal, Inc., NBC Telemundo License Co., CBS Broadcasting, Inc., and ABC, Inc. The Court has also received nine amicus briefs from the following: National Religious Broadcasters in Support of Petitioner, Morality in Media, Inc., in Support of Petitioner, Alliance Defense Fund and Family Research Council in Support of Petitioner, Center for Constitutional Jurisprudence in Support of Petitioner, Parents Television Council in Support of Petitioner, Decency Enforcement Center for Television in Support of Petitioner, American Center for Law and Justice and United States Representatives Charles Pickering, Roscoe Bartlett, Kevin Brady, Paul Broun, Danny Davis, John Doolittle, Mary Fallin, Trent Franks, Wally Herger, Jim Jordan, Doug Lamborn, Kenny Marchant, Jeff Miller, Marilyn Musgrave, Joe Pitts, Mark Souder, Tim Walberg and Dave Weldon, American Academy of Pediatrics, Benton Foundation, Children Now, National Institute On Media and the Family, Parent Teacher Association, and United Church of Christ, Office of Communications, Inc., in Support of Neither Party, and Free Press, Consumer Federation of America, Consumers Union, New America Foundation, Participatory Culture Foundation, Cuwin Foundation, Ethos Group, ACORN Active Media Foundation, Freenetworks.Org, Monroe Price, Susan Crawford in Support of Neither Party. The case is expected to be argued during the Court’s term beginning October 6, 2008. FCC v. Fox Television Stations, Inc. et al., United States Supreme Court No. 07-582 (petition for writ of certiorari granted Mar. 17, 2008) A copy of the Second Circuit Court’s opinion can be found here. Copies of the briefs can be found here for Petitioners Respondent Respondent Center for Creative Voices in Media, Inc. Respondents NBC Universal, Inc., NBC Telemundo License Co., CBS Broadcasting, Inc., and ABC, Inc. and Amicus. |
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| Leadsinger, Inc. v. BMG Music Publishing, et al. | |
Practice Area | ||
| On
January 2, 2008, the Ninth Circuit Court of Appeals, in a matter of
first impression in the circuit, upheld the district court’s dismissal
for failure to state a claim of Leadsinger, Inc.’s complaint for
declaratory judgment against music publisher defendant BMG Music
Publishing that it was entitled, by use of its karaoke device, to print
and/or display song lyrics in real time with song recordings as long as
it obtained a compulsory mechanical license under the Copyright Act, 17
U.S.C. § 115 or under the fair use doctrine of 17 U.S.C § 107. The
Court found no viable claim under § 115 because that section only
applies the compulsory licensing scheme to “phonorecords,” which
excludes audiovisual works and, according to precedent, excludes the
synchronization of musical compositions with the content of audiovisual
works which requires a synchronization license from the copyright
owner. The Court found that Leadsinger’s karaoke device met each
element of the statutory definition of an audiovisual work. With regard to fair use under § 107, the Court found that no viable claim existed because Leadsinger had not alleged facts that, under the four factors considered in determining whether use of a copyrighted work is fair, could establish the use through the karaoke device was fair. Under the first factor, whether the use is commercial in nature or is for nonprofit educational purposes, the Court found the purpose of the use to be primarily commercial. With regard to the second factor, addressing the nature of the copyrighted work, it was clear that song lyrics were works of creative expression which is precisely what the copyright law aims to protect. Under the third factor, looking at the amount and substantiality of the portion used in relation work as a whole, Leadsinger was claiming the right to print or display all of the lyrics to an entire song and therefore this factor clearly weighed against fair use. Finally, with regard to the fourth factor, the effect of use upon the potential market for or value of the copyrighted work, the Court agreed with the district court’s conclusion that Leadsinger’s complaint did not permit an analysis of the effect that the sale of Leadsinger’s karaoke devices would have on the market. The Court found that while publishers have never or rarely demanded a print license for non-karaoke uses, the Court also acknowledged that publishers have charged in the context of karaoke uses and therefore the Court could not infer that no harm would result from Leadsinger’s use. However, the Court concluded that because it is “well accepted” that when the use is for commercial gain the likelihood of harm may be presumed. This combined with the showing on the other factors justified the dismissal of the Leadsinger’s request for a declaration based on the fair use doctrine. Leadsinger, Inc. v. BMG Music Publishing, et al., 512 F.3d 522 (9th Cir. 2008) |
Litigation and Alternative Dispute Resolution Intellectual Property Advertising, Marketing, Publishing & Media The Arts, Entertainment & Sports |
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| Eastwood v. Palliser Furniture Ltd. et al. | |
Practice Area | ||
| Clint
Eastwood is seeking a federal court injunction against Palliser
Furniture Corporation for using his name without authorization by
naming one of its home theater chairs “The Eastwood.” The
complaint was filed on January 16, 2008 in the Central District of
California, alleging claims for false designation of origin and false
endorsement in violation of the Federal Lanham Act, in addition to
claims for misappropriation of name or likeness under common law and
the California Civil Code. The claims are based on the allegation
that Palliser’s use of Eastwood’s personality rights was without
authorization and creates the false impression that Eastwood is somehow
associated with the manufacturer. The complaint explains that the
chair dubbed “The Eastwood” is sold and marketed within a line of home
theater chairs named by defendants after various living and deceased
celebrities, including “The Brando,” “The Cagney,” “The Cooper,” “The
Bronson” and “The Connery.” The complaint also states that
Eastwood has a long history of rejecting third-party licenses,
reserving the exploitation of his personality rights and goodwill
associated therewith for motion picture and other business ventures in
which he is personally involved. In addition to injunctive
relief, the complaint seeks to recover all profits earned as a result
of selling the chairs and punitive damages for defendant’s “knowing,
willful and conscious disregard” for Eastwood’s rights. Eastwood v. Palliser Furniture Ltd. et al., No. 08-00266, (C.D. Cal. filed Jan. 16, 2008) |
Litigation and Alternative Dispute Resolution Intellectual Property Publicity & Life Story Rights Advertising, Marketing, Publishing & Media The Arts, Entertainment &Sports Business Transactions and Organizations |
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| Wuterich v. Murtha | |
Practice Area | ||
| On
September 28, 2007, United States District Judge Rosemary M. Collyer
refused to dismiss a libel and invasion of privacy case related to the
deaths of Iraqi civilians in the town of Haditha in 2005, and ordered
Defendant Rep. Jack Murtha (D-Pa.) to testify therein. The ruling
did not outright reject Rep. Murtha’s claim that his comments were made
in his capacity as a lawmaker and thus protected by the Speech or
Debate Clause of Article I, Section 6 of the Constitution.
Instead, the court held that it needed testimony and documents in order
to determine whether the particular comments were
protected. In a Capitol Hill news conference and follow-up
TV interviews in May of 2006, Murtha accused Marines of “cold-blooded
murder and war crimes” during the Haditha incident. Murtha’s statements
were allegedly based on information that he had received from Defense
Department officials as a member Defense subcommittee of the House
Appropriations Committee and contacts at the Pentagon and related to
his opposition to the Iraq war. On August 2, 2006, Frank
Wuterich, a Marine sergeant involved in the incident, sued Murtha for
libel and invasion of privacy. A copy of the complaint, the AP
news report of the September 28, 2007 decision by Judge Collyer and a
November 19, 2007 article on CQ.com about Murtha’s appeal of the ruling
can be found below. Wuterich v. Murtha, No. 1:06CV01366 (D.C. Cir. filed Aug. 2, 2006) AP News Report Murtha Fights Marine’s Defamation Suit, CQ.com, 11/19/07 |
Publicity, Privacy and Defamation Advertising, Marketing, Publishing, and Media |
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| Kiedis, et al. v. Showtime Networks Inc., et al. | |
Practice Area | ||
| On
November 19, 2007, band members of Red Hot Chili Peppers (hereinafter
“RHCP”) filed a lawsuit in the Los Angeles County Superior Court
against Showtime Networks and the producers and writer (hereinafter
“Showtime”) of Showtime’s hit cable television series entitled
“Californication,” seeking injunctive relief, treble damages, and
disgorgement of profits. The case was removed to federal court on
December 17, 2007. The complaint claims violations of the federal Lanham Act for unfair competition and dilution based on the use of the title “Californication,” the title of RHCP’s 1999 multi-platinum, Grammy-nominated composition and albums of the same name, and use of the nickname “Dani California” for a character in the series, which was also the name of a character who is the subject of or mentioned in three RHCP songs, including the “Californication” composition, and the title of another multiple Grammy-winning hit single by RHCP. RHCP claims that the title “Californication” is distinctive, famous, and immediately recognized by consumers as associated with RHCP and their composition and album, and has thereby acquired secondary meaning long before defendants used the term beginning at least with the series debut in August 2007. Therefore, according to the complaint, defendants’ actions in creating and distributing the television series “Californication” constitutes a false designation of origin and has caused and continues to cause a likelihood of confusion, mistake, and deception as to source or sponsorship in the minds of the public, a violation of section 43(a) of the Lanham Act. Moreover, the complaint alleges that the use of the “Californication” mark by defendants dilutes the quality of the mark by diminishing its capacity to identify RHCP’s goods, services, sponsorship and affiliation. Showtime filed a motion to dismiss claiming that Plaintiffs’ false designation of origin claims fail because Defendants’ use is protected by the First Amendment. In particular, Showtime argues that the term “Californication” has been used for decades, beginning with a 1972 Time magazine story entitled “The Great Wild Calfornicated West,” and continuing with bumper stickers and various sound recordings and registered copyrights for print and sound recordings from the 1980s and 1990s that include a form of the term “Californication.” Also, use of this common term did not mislead as to the source of the work nor did the title suggest, explicitly or otherwise, that Plaintiffs had sponsored it. Specifically, because the term accurately represents the themes of the California lifestyle and a character who attempts to deal with writers’ block through a series of sexual encounters, hence “California” and “fornication,” Defendants’ use of the term is noncommercial expressive speech artistically relevant to the substance of the series, and therefore it is protected by the First Amendment and exempt from dilution statutes. The court ruled on Defendants’ motion to dismiss on February 19, 2008, denying in part and granting in part. It denied the motion as to the Lanham Act unfair competition and the state law unfair competition and unjust enrichment claims, while granting the motion and dismissing RHCP’s federal and state law trademark dilution claims with prejudice. Relatedly, Showtime filed an application with the U.S. Patent and Trademark Office on April 10, 2007, to register the mark CALIFORNICATION, “for entertainment in the nature of an on-going comedy series.” The mark was published for opposition on October 2, 2007, and RHCP filed a motion to extend time for filing an opposition on October 22, 2007. Although granted, RHCP’s motion to extend time for filing was rendered moot when Showtime abandoned its application on November 21, 2007. A copy of Showtime’s motion to dismiss can be found here. A copy of the notice of removal can be found here. A copy of the court’s minute order regarding Showtime’s motion to dismiss can be found here. |
Litigation and Alternative Dispute Resolution Intellectual Property Advertising, Marketing, Publishing & Media The Arts, Entertainment & Sports |
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| Bank Julius Baer & Co. Ltd. | |
Practice Area | ||
| In
November of 2007, “Wikileaks.org” proved itself more effective than the
Freedom of Information Act in providing information regarding the
United States military detention facilities at Guantánamo Bay, Cuba.
Since 2003, the Pentagon had resisted an American Civil Liberties Union
Freedom of Information Act request for the 238-page, “Camp Delta
Standard Operating Procedures” manual dated March 28, 2003. However, in
November of 2007, WikiLeaks.org anonymously published a copy of the
manual that the Pentagon grudgingly confirmed was authentic. WikiLeaks.org is an international website, formatted like the popular Wikipedia.com, with the goal of “developing an uncensorable Wikipedia for untraceable mass document leaking and analysis.” The site quickly became popular for some profound successes eluding court gag orders and providing a forum for whistleblowers. Contributors or organizers of the site include “Chinese dissidents, journalists, mathematicians and startup company technologists, from the US, Taiwan, Europe, Australia and South Africa,” and a “public Advisory Board,” consisting of “journalists, representatives from refugee communities, ethics and anti-corruption campaigners, including a former national head of Transparency International, human rights campaigners, lawyers and cryptographers. The site is also recently responsible for leaking several Bank Julius Baer documents from a Swiss banking whistleblower purportedly showing offshore tax evasion and money laundering by wealthy and politically sensitive clients from the US, Europe, China and Peru. The Bank succeeded in temporarily shutting down the site by obtaining what purported to be a “Permanent Injunction” issued on February 15, 2008, by District Court Judge Jeffery White of the California Northern District Court in San Francisco, by aiming their request for an injunction against the Domain Name Registrar, rather than the actual publishers of the material who would have been outside of the US jurisdiction. Apparently upon Dynadot’s (the Domain Name Registrar) stipulation, the court ordered Dynadot to use its access to the Internet website name registration system to delete the records for “Wikileaks.org” and to replace the content with a blank page. The Court also issued Temporary Restraining Orders preventing anyone aware of the injunction from linking to the site’s content. However, the site was almost immediately back up and running under its many “back-up” international sites and domain names despite the order. On February 29, 2008, the court reversed its prior orders after it was bombarded with several motions and briefs in support of the site and its right to operate. Twelve media organizations filed a joint Amici Curiae (“friends of the Court”) brief in support of the site opposing the “permanent” and temporary injunctions, including the Reporters Committee for the Freedom of the Press (RCFP), The American Society of Newspaper Editors (ASNE), The Associated Press (AP), Citizen Media Law Project, The E.W. Scripps Company (newspapers, TV, cable TV etc.), Gannet Co. Inc. (largest publisher of newspapers in the US, including USA Today), The Hearst Corporation (media conglomerate which publishes the San Francisco Chronicle), The Los Angeles Times, National Newspaper Association (NNA), Newspaper Association of America (NAA), The Radio-Television News Directors Association (RTNDA), and The Society of Professional Journalists (SPJ). The Public Citizen Group, founded by Ralph Nader and the California First Amendment Coalition (CFAC) also filed a separate brief in support of the site. Finally, The Electronic Freedom Foundation (EFF), the American Civil Liberties Union (ACLU), The Project on Government Oversight (POGO), and Jordan McCorckle (an individual at the University of Texas and user of WikiLeaks.org) filed their own motion to intervene as Defendants in the case. Among other arguments made in the briefs, those supporting WikiLeaks pointed to the overly broad nature of the injunction against the site’s total operation as an unconstitutional prior restraint on the public’s right to access information guaranteed by the First Amendment, tantamount to shutting down an entire newspaper because of the content of one article. The Court agreed, and dissolved the “permanent injunction” and declined to extend the temporary restraining orders previously issued, stating that neither was narrowly tailored enough to be appropriate even if a more limited injunction redacting personal information from specific documents may be constitutional given sufficient evidence. For copies of the Court’s February 15th and February 29th orders, go to 021508 Order, 021508 TRO, 012508 Order to Seal, and 022908 Order |
Litigation and Alternative Dispute Resolution Intellectual Propertys Software & the Internet Advertising, Marketing, Publishing, and Media Municipal and Public Disclosure Law |
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| Warner Brothers Entertainment Inc. and J.K. Rowling v. RDR Books and Doe | |
Practice Area | ||
| On
October 31, 2007, Warner Brothers Entertainment Inc. and J.K. Rowling
filed a civil action in the U.S. District Court for the Southern
District of New York against RDR Books and Doe defendants because
defendants plan to publish a 400-page book entitled “Harry Potter
Lexicon,” allegedly based on a Harry Potter fan website www.hp-lexicon.com.
Rowling and Warner Bros. asserted claims for federal copyright
infringement, trademark infringement, unfair competition and false
designation of origin, false advertising, and New York State law claims
of deceptive trade practices, and unfair competition. Prior to
filing the suit, Rowling and Warner Bros. had demonstrated reluctance
to pursue claims of infringement against fan websites, and had even
been supportive of the hp-lexicon website. However, as stated in
the complaint, their acceptance of “the innumerable Harry Potter fan
sites’ latitude to discuss the Harry Potter Works in the
context of free, ephemeral websites” is not the same as “unilaterally
repackaging those sites for sale in an effort to cash in monetarily on
Ms. Rowling’s creative works….” On November 7, 2007, Defendants and Plaintiffs agreed to an order temporarily restraining completion and publication of the book. Defendants gathered a notable legal team for their defense. Stanford law school announced that its own Fair Use Project was joining as co-counsel for the defense, whose team included David Hammer, a former federal prosecutor; Anthony Falzone, Stanford University’s Fair Use Project executive director; Julie Ahrens, Stanford University’s Fair Use Project associate director; and Stanford Professor Lawrence Lessig, the author of Free Culture, and the founder and director of Stanford’s Center for Internet and Society. RDR Books argued it had the right to publish its encyclopedic reference under the fair use doctrine, which safeguards unlicensed third parties using copyrighted material so long as the use is transformative and does not damage the market value of the original work. Examples of “fair uses” include guides to the fictional worlds created by authors J.R.R. Tolkien (guides to “Middle Earth”) and C.S. Lewis (guides to “Narnia”), and the more common CliffsNotes. A bench trial commenced on April 14 and concluded April 16, 2008. Both J.K. Rowling and Steven Vander Ark, founder of the website and creator of the Lexicon were called upon to testify. Proposed Findings of Fact and Conclusions of Law were filed May 9, 2008. On September 8, 2008, Judge Robert P. Patterson entered his 68-page Opinion and Order in favor of Ms. Rowling and against RDR Books, finding that Plaintiffs had established copyright infringement, while Defendant had failed to establish its affirmative defense of fair use and ruling that Defendants publication of the Lexicon is permanently enjoined. The Court concluded that, “Ultimately, because the Lexicon appropriates too much of Rowling’s creative work for its purposes as a reference guide, a permanent injunction must issue to prevent the possible proliferation of works that do the same and thus deplete the incentive for original authors to create new works.” Warner Brothers Entertainment Inc. and J.K. Rowling v. RDR Books and Doe, 575 F. Supp. 2d 513 (S. D. N. Y. 2008) To read more about Stanford’s involvement in the defense click here. For Wall Street Journal’s Law Blog posts regarding the trial, click here. |
Intellectual Property, Business Disputes Advertising, Marketing, Publishing, and Media |
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| U.S. District Judge Rosemary M. Collyer refused to dismiss a libel and invasion of privacy case | |
Practice Area | ||
| On
September 28, 2007, United States District Judge Rosemary M. Collyer
refused to dismiss a libel and invasion of privacy case related to the
deaths of Iraqi civilians in the town of Haditha in 2005, and ordered
Defendant Rep. Jack Murtha (D-Pa.) to testify therein. The ruling
did not outright reject Rep. Murtha’s claim that his comments were made
in his capacity as a lawmaker and thus protected by the Speech or
Debate Clause of Article I, Section 6 of the Constitution.
Instead, the court held that it needed testimony and documents in order
to determine whether the particular comments were
protected. In a Capitol Hill news conference and follow-up
TV interviews in May of 2006, Murtha accused Marines of “cold-blooded
murder and war crimes” during the Haditha incident. Murtha’s statements
were allegedly based on information that he had received from Defense
Department officials as a member Defense subcommittee of the House
Appropriations Committee and contacts at the Pentagon and related to
his opposition to the Iraq war. On August 2, 2006, Frank
Wuterich, a Marine sergeant involved in the incident, sued Murtha for
libel and invasion of privacy. A copy of the complaint and the AP
news report of the September 28, 2007 decision by Judge Collyer can be
found below. http://www.nctimes.com/articles/2007/09/29/military/9_28_189_28_07.txtt http://jurist.law.pitt.edu/pdf/murthacomplaint.pdf |
Publicity, Privacy and Defamation Advertising, Marketing, Publishing, and Media |
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| The city of International Falls, Minnesota v. the city of Fraser, Colorado | |
Practice Area | ||
|
The city of International Falls, Minnesota won the first battle in the
legal fight with the city of Fraser, Colorado for the moniker “Icebox
of the Nation” when they successfully renewed their trademark for the
slogan in February 2008. International Falls has allegedly used
the title since 1948, and even paid Fraser $2,000 in 1989 for dropping
any claim to the title. However, when International Falls failed
to renew its federal trademark in 1996, Fraser again filed a
registration for the mark, claiming that it had been
abandoned. In December 2007, Fraser also instituted a
lawsuit against International Falls, and International Falls responded
by filing a counter suit against Fraser demanding Fraser prove its
earliest use of the mark. In the previous dispute over the slogan
in 1988, International Falls submitted as evidence to the U.S. Patent
and Trademark Office a 1988 affidavit from a meteorology professor,
stating that Fraser could not be the nation's icebox, “because 11
months out of the year its meat would thaw and its ice cream would
melt, while throughout the winter all meat and ice cream would be safe
in International Falls.” Though Fraser, Colorado argued it had
first use of the nickname since 1956, an Associated Press article on
February 10, 2008 reports that International Falls City Attorney Joe
Boyle said that the city had photographic proof that its 1955 Pee Wee
hockey team traveled to Boston with jackets which read, “The Icebox of
the Nation.” The AP article also reports that International Falls Mayor
Shawn Mason said that the city also used the title to market itself to
industry as the nation's premier site for cold-weather testing. For the AP articles on the story: http://www.msnbc.msn.com/id/23096109/ http://minnesota.publicradio.org/display/web/2008/02/09/falls/Summit Daily News Article:http://www.summitdaily.com/article/20080112/NEWS/304284311 |
Intellectual Property Advertising, Marketing, Publishing, and Media |
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| Intellectual Property Act of 2007 | |
Practice Area | ||
| The
House of Representatives has introduced the Prioritizing Resources and
Organization for Intellectual Property Act of 2007 (PRO IP Act) (HR
4279). The Act seeks to establish the Office of the US
Intellectual Property Enforcement Representative to serve as the
president’s chief intellectual property advisor and create an
Intellectual Property Enforcement Division within the Department of
Justice. The Act is also intended to strengthen current IP
laws. To do so, it proposes increasing copyright damages
recoverable by allowing courts to “make either one or multiple awards
of statutory damages with respect to infringement of a compilation, or
of works that were lawfully included in a compilation, or a derivative
work and any preexisting works upon which it is based” based on a
consideration of “any facts it finds relevant relating to the infringed
works and the infringing conduct, including whether the infringed works
are distinct works having independent economic value.” The Act also
greatly increases the statutory damages for trademark infringement in
the form of commercial counterfeiting. The Act would also allow
the Department of Justice to seize and auction the computer or other
property used to facilitate copyright crime. In a December 13,
2007, hearing before the House Subcommittee on Courts, the Internet and
Intellectual Property, the act received the support of NBC Universal
executive vice president and general counsel Rick Cotton, Teamsters
president Jim Hoffa, who cited the need to dedicate more enforcement
resources to the growing problem of counterfeiting and piracy and the
loss of jobs attributable to counterfeit and pirated media.
Critics of the Act included Gigi B. Sohn, representing the public
interest group Public Knowledge, who noted that many of the provisions
would likely hurt ordinary consumers. Copy of the Act: |
Intellectual Property Software & the Internet Advertising, Marketing, Publishing, and Media The Arts, Entertainment & Sports |
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| Mediacom Communications Corp. v. Sinclair Broadcast Group, Inc. | |
Practice Area | ||
| Mediacom
Communications Corporation brought an action against Sinclair Broadcast
Group, Inc. asserting, among other claims, violations of the Sherman
Antitrust Act seeking to preliminarily enjoin Sinclair from terminating
an existing retransmission agreement allowing Mediacom to carry
Sinclair’s broadcast stations and from initiating any active marketing
campaign designed to induce Mediacom’s subscribers to discontinue
services with Mediacom. Due to the increasing popularity and competition among satellite television and cable companies, Sinclair became aware both that satellite companies would pay for analog signals cable companies traditionally did not pay for and the amount that cable companies routinely paid for non-broadcast stations such as TNT, HGTV, and Animal Planet. Hence, for the first time in 2005, Sinclair sought compensation from cable companies, including Mediacom, for analog signals when negotiating retransmission rights. In response, Mediacom said it would only consider purchasing retransmission rights for thirteen Sinclair stations affiliated with major networks (“Tying Stations”) and were not interested in retransmission rights for the other stations (“Tied Stations”) that were of little value due to low subscriber demand, the absence of which would free up channels to the benefit of Mediacom. Sinclair refused offers made by Mediacom that included less than all stations and then announced an agreement with a Direct Broadcast Satellite (“DBS”) company, either DirectTV or The Dish Network, both direct competitors of Mediacom. Under the terms of the alleged agreement, Sinclair would be reimbursed for any lost advertising revenue due to any interruption or termination of its relationship with Mediacom and receive consideration for each subscriber that switched to the DBS company as a result. Mediacom then sought a preliminary injunction against Sinclair’s termination of Mediacom’s 2002 retransmission agreement, requiring Mediacom to give notice to its subscribers of the subsequent change in service. The United States District Court for the Southern District of Iowa agreed with Sinclair that the potential injuries Mediacom would suffer would not be as a result of alleged antitrust violations stemming from illegal “tying” arrangements. Rather, the injuries that both Mediacom and its customers would face would be due to the termination of the retransmission agreement and would be tangible losses, not the kind of “irreparable harm” that a preliminary injunction requires. Further, with regard to factoring in the likelihood of success on the merits, the Court found that Mediacom had not shown that the packaging of stations by Sinclair made buying the desired stations “prohibitedly more” in the context of multi-million dollar cable companies, than they otherwise would be without the tying, despite an additional one million dollar price tag. Further, Mediacom failed to define the parameters of the market in which it claimed Sinclair had market power to control the tying product’s market, nor did Mediacom show that negotiating on a “bundled basis” was unusual when negotiating retransmission rights. Finally, the public interest was better served by the free market bargaining that would take place without the imposition of the injunction. Mediacom Communications Corp. v. Sinclair Broadcast Group, Inc., No. 4:06-cv-491 (S.D. Iowa filed Oct. 24, 2006)
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Litigation and Alternative Dispute Resolution Business Disputes Advertising, Marketing, Publishing, and Media |
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| Nichols v. Moore | |
Practice Area | ||
| James
Nichols, brother of convicted Oklahoma City bomber Terry Nichols, sued
documentary film producer, Michael Moore, for allegedly defamatory
statements Moore made in his movie Bowling for Columbine. The district
court granted summary judgment in favor of Michael Moore, holding that:
(1) the statements regarding James Nichols in Bowling for Columbine
were substantially true; and (2) Nichols was a limited public figure
and could not satisfy the “actual malice” standard. The Sixth Circuit
Court of Appeals agreed with the district court’s conclusions and
affirmed. The Sixth Circuit also found that the district court
correctly rejected Nichols’s “defamation by implication” claim as he
did not present any evidence indicating that Michael Moore intended to
falsely implicate him in the Oklahoma City bombing. Nichols failed to
prove that Moore’s narration included either false statements or the
omission of material facts. Therefore, noting that such “defamation by
implication” claims face a severe constitutional hurdle, the Sixth
Circuit concluded that Moore was not responsible for defamatory
implications viewers might draw from his true report of facts, absent
evidence that he intended the defamatory implications. Nichols v. Moore, No. 05-2075 (6th Cir. filed Feb. 20, 2007) |
Publicity, Privacy and Defamation Advertising, Marketing, Publishing, and Media |
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| International Profit Associates, Inc. v. Paisola | |
Practice Area | ||
| Plaintiff
consulting company brought action against representative of former
customer for violations of the Lanham Act, violation of the Illinois
statute prohibiting eavesdropping, and defamation. The consulting
company moved for a temporary restraining order (TRO) based on the
plaintiff’s Lanham Act claims that defendants were incorporating
plaintiff’s trademarks into the search terms used to lead people to its
website, using those trademarks in the domain name of one of its
websites, and using plaintiff’s trademarks in the content of its
websites. The United States District Court for the Northern District of
Illinois granted the plaintiff’s request for a TRO on the “cyberpiracy”
and “cybersquatting” claims that defendants’ website was using a domain
name that was likely to cause confusion among consumers between
plaintiff’s website, “ipaopinions.com” and defendants’ website,
“ipaopinion.com.” The court reasoned that plaintiff had established a
likelihood of success on these claims having shown that defendants had
started using the plaintiff’s trademarks only after plaintiff had
registered and began using “ipaopinions.com” and therefore the intent
to cause confusion was apparent, and actual confusion had apparently
occurred, and the damage to the goodwill of the plaintiff was
irreparable as it would be almost impossible to quantify. The
defendants were therefore ordered to cease making content available on
the Internet through the offending domain name, cease conducting
advertising using the trademarked terms, and cease from using
plaintiff's trademarks as keywords for any Internet advertising
service, including services run by Google or Yahoo. However, the court found that a limited injunction was appropriate for the plaintiff’s defamation claims because, though plaintiff had demonstrated a likelihood of success on this claim as well, only a TRO prohibiting defendants from publishing false statements was in the public’s interest. International Profit Associates, Inc. v. Paisola, No. 06 C 6154 (N.D. Ill. filed Nov. 14, 2006) |
Litigation and Alternative Dispute Resolution Intellectual Property Publicity, Privacy and Defamation Software & the Internet Advertising, Marketing, Publishing, and Media |
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| Entertainment Software Association v. Swanson (formerly ESA v. Hatch) | |
Practice Area | ||
| In
a suit seeking to permanently enjoin Minnesota’s new statute
prohibiting persons under the age of 17 years from buying or renting
certain video games, the United States District Court for the District
of Minnesota joined the 7th, 8th, and 9th Circuits, as well as various
other District Courts, in finding Minnesota’s statute and others like
it violated the First Amendment. The Minnesota Restricted Video Games
Act prohibited persons under the age of 17 from buying or renting video
games that were rated M (Mature) and AO (Adults Only) by the
Entertainment Software Rating Board (“ESRB”), a private entity which
bases its ratings on reviews made by a randomly-selected group of three
trained reviewers. Noting that the standard for a permanent injunction
is virtually the same as that for a preliminary injunction, the only
substantive difference being the showing of actual, as opposed to a
probability of, success on the merits, the Court explained that the
plaintiffs had established the four factors: (1) success on the merits;
(2) the threat of irreparable harm; (3) the balance between that harm
and any injury the relief would inflict on other parties; and (4) the
injunction would serve the public interest. Since the state admitted
that it was incapable of showing a causal link between playing video
games and deleterious effects on the psychological, moral, or ethical
well-being of minors and it was impossible to determine “from the data
presented whether violent video games cause violence, or whether
violent individuals are attracted to violent video games,” the state
could not demonstrate the harms the statute sought to alleviate were
“real, not merely conjectural, and that the regulation will in fact
alleviate those harms in a direct and material way.” Interactive
Digital Software Ass'n v. St. Louis County, 329 F.3d 954, 958 (8th Cir.
2003). Further, the state could not show that restricting just video
games, rather than other violent media, would have alleviated the harm,
and therefore the statute was not narrowly tailored enough to survive
First Amendment strict scrutiny for protected speech. The Court further found that the Act's delegation of authority to the ESRB to determine which video games were prohibited violated due process under the Fourteenth Amendment in delegating public regulatory authority to a private body. Subsequently, the Court found that the loss of First Amendment freedoms and the chilling effect therefrom “unquestionably constitutes irreparably injury” from which there was no adequate remedy at law. Further, the state could not show that the harm to minors outbalanced the First Amendment harms because the state could not establish any evidence linking the availability of video games with any harm to Minnesota’s children. The permanent injunction against enforcement of the Minnesota Restricted Video Games Act was therefore granted. The State of Minnesota appealed and the Eighth Circuit upheld the decision of the district court. Judges Wollman, Smith and Benton reasoned that the State had failed to proffer “incontrovertible proof of a causal relationship between the exposure to violence” in video games and “subsequent psychological dysfunction,” it therefore had not satisfied its evidentiary burden. On March 28, 2008, the State petitioned the Eighth Circuit for a rehearing en banc. Entertainment Software Association v. Swanson, 443 F. Supp. 2d 1065 (D. Minn. 2006) The district court’s decision granting permanent injunction can be found here. The Eighth Circuit opinion affirming can be found here. |
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| C.B.C. Distribution and Marketing, Inc. v. Major League Baseball Advanced Media | |
Practice Area | ||
| In
a suit brought by a producer of fantasy major league baseball games for
a declaratory judgment against defendant owners that it had the right
to use the names and statistics of players in its games, and wherein
Players’ association intervened, the United States District Court for
the Eastern District of Missouri found that there was no violation of
players' right to publicity, under Missouri law because: (a) the use of
names and statistical records was in conjunction with playing the
games, rather than for an independent commercial benefit to be derived
from names and statistics; (b) there was no implication that players
were endorsing games; (c) producers did not use the names of players as
symbols for the players' identity or persona; (d) the use of the names
and statistical data did not involve character, personality, reputation
or physical appearance of players, or other factors shaping identity;
and (e) producers did not contravene public policy underlying the
protection of the players' rights by creating games using the names and
statistics since their actions had no impact on the ability of the
players to earn a livelihood through the playing of actual games and
existence of fantasy games might have made actual games more lucrative.
Further, the producer’s First Amendment right of freedom of expression
outweighed the players' right to control publicity since the names and
statistical information on major league baseball players constituted
non-commercial speech protected by First Amendment, even though
producer profited from games, entertainment was involved and games were
interactive. The court further found that the names and statistics of
players lacked the originality required for copyright protection,
precluding the defendants’ and interveners’ copyright infringement
claim. C.B.C. Distribution and Marketing, Inc. v. Major League Baseball Advanced Media, L.P., 443 F. Supp. 2d 1077 (E.D MO. 2006) |
Intellectual Property Publicity, Privacy and Defamation The Arts, Entertainment & Sports Advertising, Marketing, Publishing, and Media |
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