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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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| National Athletic Trainers' Association Inc. v. American Physical Therapy Association et al. | |
Practice Area | ||
| On February 1, 2008, National Athletic Trainers’ Association Inc (“NATA”), claiming to represent 30,000 certified athletic trainers worldwide, filed suit against the American Physical Therapy Association (“APTA”), the main United States organization representing physical therapists. The suit claims that APTA violated the antitrust laws of the Sherman Act, 15 U.S.C. § 2 by monopolization and attempted monopolization and violating Section 1 of the Act through restraint of trade and group boycott. The suit alleges that the APTA falsely told the public that only certified physical therapists can perform “manual therapy,” the “skilled use of hands to evaluate or treat a neuromuscular skeletal condition.” The complaint further alleges that APTA furthers their monopoly on the manual therapy market by conspiring to and engaging in a pattern of conduct designed to prevent NATA members and other certified athletic trainers from completing professional educational requirements to effectively compete in the manual therapy market, including advising its members that it is illegal to train NATA members or other athletic trainers manual therapy procedures and by baring NATA members from education conferences and training programs on the practice. The complaint explains that while plaintiff “acknowledges [that] physical therapy may only be practiced by [physical therapists], the techniques used by [physical therapists] are neither owned by them nor exclusively for their use.” Plaintiffs seek treble damages and permanent injunctive relief. National Athletic Trainers’ Association Inc. v. American Physical Therapy Association et al., No. 08-158 (N.D. Tex., Dallas Div. filed Feb. 1, 2008) |
Litigation and Alternative Dispute Resolution Business Disputes Business Transactions and Organizations |
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| Ex parte Sacha Baron Cohen et al. | |
Practice Area | ||
| Kathie Martin, who owns and operates the Etiquette School of Birmingham, filed a lawsuit against Sacha Baron Cohen, Twentieth Century Fox Film Corporation and other production companies associated with the film Borat: Cultural Learnings of America for Make Benefit Glorious Nation of Kazakhstan (hereinafter referred to as "the Borat movie"), stating claims alleging fraud and deceit, quasicontract and unjust enrichment, commercial appropriation and invasion of privacy, and intentional infliction of emotional distress. Martin alleged that she had been embarrassed and humiliated by scenes in the Borat movie in which she is seen teaching etiquette to the film’s main character during a dinner party, and she claims that she thought she had been legitimately hired to teach etiquette to a foreign reporter for inclusion in a documentary film. On April 26, 2007, the trial court denied defendants’ motion to dismiss based on the forum selection clause in the contract signed by Martin and Springland Films (one of the defendant production companies) that provided that New York County, New York was the exclusive venue for Martin’s claims. The defendants sought mandamus relief from the denial of their motion to dismiss.On January 18, 2008, the Supreme Court of Alabama found that the primary purpose of the transaction between plaintiff and defendants was interstate commerce, “specifically, to provide for Martin's appearance in a film that might be used ‘without restriction in any media throughout the universe.’” Consequently, the Court found that the Commerce Clause of the United States Constitution precluded the courts of Alabama from applying a state law rendering void contracts made by foreign corporations that fail to first obtain a state certificate of authority to transact business within Alabama. The Court concluded that Martin could not then prevent the petitioners from enforcing the consent agreement between the parties, which includes a forum selection clause, the clause under which defendants had previously brought a motion to dismiss based on lack of jurisdiction. Ex parte Sacha Baron Cohen et al., (In re: Kathie Martin v. Sacha Baron Cohen et al.) [Ms. 1061288] (Ala. Jan. 18, 2008) Jefferson Circuit Court, CV-06-7333. A copy of the Supreme Court of Alabama’s opinion can be found here. |
Litigation and Alternative Dispute Resolution Intellectual Property Business Disputes The Arts, Entertainment & Sports Business Transactions and Organizations |
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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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| Hormel Foods Corp. v. Spam Arrest, LLC | |
Practice Area | ||
| On November 28, 2007, Spam Arrest, LLC, a software and services provider won a five-year legal battle against Hormel Foods Corp. that sought to cancel Spam Arrest’s registered federal trademark. Hormel Foods had initiated cancellation proceedings against Spam Arrest claiming dilution of Hormel’s “SPAM” family of trademarks, including the derivatives “SPAMTASTIC,” “SPAMBURGER,” “SPAMARAMA,” and “SPAM JAM.” Hormel had argued that it uses its family of SPAM trademarks to include, not just canned meat, but a variety of goods and services such as clocks, knives, recipe books, mouse pads, and entertainment celebrations, and has registered its mark for use on such various goods as hand kitchen slicers, jewelry, playing cards, pens, mugs, tennis balls, toys, wearing apparel, and the service of participating in automobile races, and that because of this wide variety of use, Spam Arrest’s mark would likely be confused with Hormel’s mark and dilute the distinctiveness of Hormel’s mark. In defense of its application, Spam Arrest argued that “spam,” when used in relation to unsolicited commercial email, is generic, and acquiescence and estoppel on the part of Hormel due to postings on Hormel’s website explaining that Hormel did not object to the term “spam” being used in relation to unsolicited commercial email. The Trademark Trial and Appeal Board found that at least two dictionaries and even the United States Congress (“CANSPAM Act”) have defined the term “spam” in relation to unsolicited commercial emails. In finding no likelihood of confusion between the marks, the Board explained that the “dichotomy” between the undisputed fame of Hormel’s mark and “the generic meaning of that same term” would inform its analysis of the du Pont factors considered. After consideration of the similarities, the Board found that, when used on the type of goods Petitioner was marketing, software and computer related products, the term “spam” would be viewed as having the generic meaning relating to unsolicited email, rather than relating to Hormel’s meat product, even given Hormel’s collateral uses of the mark. Moreover, for dilution analysis, the Board recognized that, to the extent that the term had become generic by use in referring to unsolicited commercial email, the distinctiveness of Hormel’s mark had already been diluted before Spam Arrest either used or registered its mark, and could not be more diluted thereby. Hence, Hormel had not prevailed on either a likelihood of confusion or dilution claim against Spam Arrest’s registration. However, the Board noted that, had Spam Arrest not won on the dilution and likelihood of confusion analyses, it would not have had a defense of acquiescence since it could not show it either knew of or relied upon the statement on Hormel’s website. Hormel Foods Corp. v. Spam Arrest, LLC, Cancellation No. 92042134 (TTAB 2007): A copy of the opinion can be found here. |
Intellectual Property Business Disputes Software & the Internet |
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| McIntosh v. Monsanto Co. | |
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| Farmers brought action against genetically modified corn and soybean producers for violations of the Sherman Act to raise, fix and stabilize the price of genetically modified soybean seed. Farmer plaintiffs alleged that producer Monsanto, who owned the patented technology giving it the exclusive right to make and sell “Roundup Ready soybean seed,” conspired with producers Pioneer and Syngenta by establishing as part of Pioneer’s and Syngenta’s licenses to make and sell Roundup Ready “Grower License Agreements” that required the licensee seed company to either collect a technology fee (set by Monsanto) from each user of the seed for each bag of Roundup Ready or pay to Monsanto a royalty (also set by Monsanto) for each bag sold. Defendants’ motion for summary judgment with regard to this claim was denied. Defendants’ summary judgment motion was also denied regarding plaintiffs’ allegation that defendant Monsanto violated the Sherman Act in conspiring with Aventis by entering into an anti-competitive agreement to restrict the amount of “Liberty Link soybean seeds” through an “output restriction.” Monsanto argued that pursuant to the United States Supreme Court’s holding in Zenith Radio Corp. v. Hazeltine Research Inc., 395 U.S. 100 (1969), its patent allowed it to license the right to use the gene to Aventis subject to restrictions, including a restriction on production. However, citing more recent decisions from the United States District Courts for the District of New Jersey (2004) and the Eastern District of New York (2001), the Eastern District of Missouri found that patent holders can, in some circumstances, still be liable for antitrust violations in connection with licensing agreements and denied summary judgment on the claim. McIntosh v. Monsanto Co., No. 4:01CV65 RWS (E.D. Mo. filed Nov. 20, 2006) |
Business Disputes |
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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) |
Litigation and Alternative Dispute Resolution Business Disputes Advertising, Marketing, Publishing, and Media |
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| Netflix, Inc. v. Blockbuster, Inc. | |
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| In a suit brought by Netflix, Inc. against Blockbuster, Inc. for infringing two patents for the business method of renting DVDs and computer-implemented business method of renting DVDs, Blockbuster counterclaimed alleging that Netflix violated Section 2 of the Sherman Antitrust Act by committing “knowing willful fraud on the Patent and Trademark Office when applying for the two patents in issue, and by asserting these patents in bad faith in sham litigation.” Netflix moved for dismissal of Blockbuster’s antitrust claim, but the United States District Court for the Northern District of California found that Blockbuster had sufficiently pled its Walker Process claim, based on the Supreme Court’s decision in Walker Process Equipment, Inc. v. Food Machinery & Chemical Corp., 382 U.S. 172, 176 (1965). The District Court found that Blockbuster adequately alleged that: 1) Netflix failed to identify as prior art similar patents during the prosecution of either patent in suit; 2) was aware of the existence of those similar patents but nevertheless failed to point them out to the PTO examiner, and in fact did not point out any prior art in applying for at least one of the patents; 3) that but for the omission of the similar patents from Netflix’s patent applications, the patents in suit would not have issued; and 4) Netflix had fraudulent intent in failing to disclose the similar patents evidenced by its barrage of the PTO with prior art references, not including those that were at issue, to conceal the discovery of the similar patents and Netflix’s own CEO referred to one of their patents as a “joke.” Netflix, Inc. v. Blockbuster, Inc., No. C 06-02361 WHA (N.D. Cal. filed Aug. 22, 2006) |
Litigation and Alternative Dispute Resolution Intellectual Property Business Disputes |
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| Reilly v. MediaNews Group, Inc. | |
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| Plaintiff Clinton Reilly sought an emergency order blocking the proposed sale of four San Francisco Bay Area newspapers, claiming that the three current owners of the major Bay Area newspapers, Defendants The Hearst Company, Media News Group, Inc., and California Newspapers Partnership, were planning to consolidate ownership of those newspapers, divide the geographic markets between them, and thereby effectively forego competing with each other in violation of Section 7 of the Clayton Act, and Sections 1 and 2 of the Sherman Act. The United States District Court for the Northern District of California found that Hearst’s acquisition of the Monterey Herald and Pioneer Press did not fall within the relevant geographical market and therefore plaintiff was unlikely to succeed on the merits of his antitrust claim with respect to these two papers, and therefore denied the request for an emergency restraining order. However, with regard to the sale of the San Jose Mercury News and the Contra Costa Times, while the Court found the transaction troubling, the plaintiff had not presented sufficient evidence to meet a “heightened” showing of likelihood of success on the merits where plaintiff had not shown irreparable harm from increased subscription rates, increased advertising rates, and decreased quality of the newspapers due to the lack of competition. Reilly v. MediaNews Group, Inc., No. C 06-04332 SI (N.D. Cal. filed July 28, 2006) |
Litigation and Alternative Dispute Resolution Business Disputes |
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| People ex. rel. Spitzer v. Wever Petroleum, Inc. | |
Practice Area | ||
| The New York State Attorney General brought an action against a gas station seeking an order to permanently enjoin the station from price gouging in violation of New York’s price gouging statute (N.Y. Gen. Bus. Law § 396-r) and to remit any excess profits resulting from price gouging and to pay a civil penalty for each violation of alleged price gouging. The gas station had marked up its prices the day immediately following Hurricane Katrina. The Supreme Court of New York found that the gas station had marked up the price of its gas in an “unconscionably excessive” amount representing a gross disparity between the price of the goods or services and their value measured by the price at which such goods were sold or offered in the usual course of business immediately prior to an abnormal disruption of the market. The Court therefore issued the permanent injunction and awarded the petitioner costs. People ex. rel. Spitzer v. Wever Petroleum, Inc., 827 N.Y.S.2d 813, 2006 N.Y. Slip Op. 26414 (N.Y. Supp. filed Aug. 23, 2006) |
Business Disputes |
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| In re Compact Disc Minimum Advertised Price Antitrust Litigation | |
Practice Area | ||
| The United States District Court for the District of Maine found that an inventor and supplier of a technology that calculated discount prices of compact discs (CDs), who licensed the technology to a music distributor, did not have standing under Section 1 of the Sherman Act to assert a claim that record companies conspired to maintain the minimum advertised price of retail CDs. The plaintiff inventor claimed that various record companies, motion picture studios, and music distributors engaged in a price-fixing conspiracy to maintain the minimum prices of retail CDs, and that the defendants engaged in a concerted refusal to license copyrighted musical recordings and movies in order to prevent competition from online music and “video-on-demand” distribution. However, because plaintiff did not bring his claim as either a consumer who paid higher prices or a competitor in the CD retail market, but simply as a supplier of a technological product that CD distributors refused to use, he did not have standing to bring an antitrust conspiracy claim. Further, with regard to his claims that record companies conspired to prevent online competition, plaintiff did not have standing to bring an antitrust conspiracy claim because he did not allege that he sought and was denied a license by the record companies. Lastly, with regard to his conspiracy claims against the movie studios, plaintiff failed to make anything but conclusory factual allegations that could not withstand a motion to dismiss. In re Compact Disc Minimum Advertised Price Antitrust Litigation, MDL No. 1361 (D. Mo. filed Oct. 2, 2006) |
Litigation and Alternative Dispute Resolution Business Disputes |
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| Santa-Rosa v. Combo Records | |
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| The First Circuit affirmed the District Court’s dismissal of the plaintiff’s claims on appeal for rescission of his recording contract with the defendant and for a declaratory judgment that he had ownership in the recordings. Santa Rosa, a salsa singer, producer and composer, sued Combo Records for compensation from the sales of five albums, recorded fifteen years earlier and sold by Combo since that time. Santa Rosa recorded four albums between 1986 and 1989 and Combo later released a compilation of the plaintiff’s songs, paying him an advance on royalties. Since 1989, Combo sold the albums but never paid Santa Rosa additional royalties or provided royalty statements. Santa Rosa did not request additional royalties until he brought suit in 2004 seeking rescission for material breach of contract, damages for unjust enrichment, a declaratory judgment as to the ownership of the recordings and violation of the Lanham Act. While the parties disputed the existence and terms of the contract, the Second Circuit held that Santa Rosa’s contract claim was preempted by 17 U.S.C. § 301(a) of the Copyright Act because he sought rescission, not damages. The Court of Appeals did not decide whether a mere breach of contract claim is preempted by the Copyright Act, but found that if the contract was rescinded the Court would need to look to the Copyright Act to determine the plaintiff’s ownership rights. Accordingly, Santa Rosa’s only remedy was under the Copyright Act and the Court affirmed the dismissal of the contract claim. The Second Circuit also affirmed the District Court’s ruling that the plaintiff’s declaratory judgment claim for ownership of the recordings was barred by the statute of limitations. 17 U.S.C. § 507(b) provides that such actions must be brought “within three years after the claim accrued,” and begins to run when the plaintiff knows or should have known of the basis for the claim. Because Santa Rosa was obviously present when he recorded the albums for Combo Records, he had reason to know of his claim of ownership to the recordings as soon as each album was created, which claim began to accrue more than three years before he brought suit. Therefore, the Second Circuit affirmed the District Court’s ruling that his declaratory judgment action was barred by 17 U.S.C. § 507(b). Santa-Rosa v. Combo Records, No. 05-2237 (1st Cir. filed Dec. 15, 2006) |
Intellectual Property Business Disputes Business Transactions and Organizations |
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| Marder v. Lopez | |
Practice Area | ||
| The Ninth Circuit upheld the district court’s dismissal of the plaintiff’s claims in Marder v. Lopez, where the general release she had signed in the 1980’s “constituted a waiver of all claims against Paramount arising out of any of her contributions to the film Flashdance,’” allegedly based on her life. The Appeals Court further upheld the dismissal of plaintiff’s suit against Sony and Jennifer Lopez under the Lanham Act, the Copyright Act and the state law right of publicity and unfair competition based on its finding that because the plaintiff could not assert a valid copyright interest in the work and had no evidence of copyright ownership, she could not bring an infringement action based on a music video featuring Lopez which recreated scenes from the movie. In 1982, the plaintiff signed a general release, purporting to discharge Paramount and its subsidiaries from claims arising out of the creation of Flashdance in connection with her providing information to the studio, understanding that it would use the information to create a screenplay. Subsequently, in 2003, Sony released a music video of a song by Lopez, which featured her performance in scenes recreated from the movie. Giving effect to the parties’ mutual intent at the time they entered the contract, the court found that the language of the release was quite broad and that the plaintiff had “released a broad array of claims relating to any assistance she provided during the creation of” the film. As a result, the court held that the release precluded each of plaintiff’s claims against Paramount and that because she could not sue it to assert co-ownership in the film, she could not establish “a prima facie case of copyright infringement against Sony and Lopez.” Marder v. Lopez, 450 F.3d 445 (9th Cir. 2006) |
Intellectual Property Business Transactions and Organizations Publicity, Privacy and Defamation Business Disputes |
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| Hotels Nevada v. L.A. Pacific Center, Inc. | |
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| In an action alleging rescission of a contract based on fraud and cancellation of written instruments based on illegality and conspiracy, wherein defendant sought to compel arbitration pursuant to the contract, the California Court of Appeal held that the trial court erred when it denied defendant’s petition to compel arbitration without an evidentiary hearing. The court found that a petition to compel arbitration should not be denied simply because the plaintiff alleged fraud in an unverified pleading. Rather, the trial court should have required the plaintiff to produce evidentiary support by affidavit or declaration under penalty of perjury for the facts supporting the plaintiff’s claim that the arbitration clause in the contract was void due to the defendant’s fraud in the execution of the agreement Hotels Nevada v. L.A. Pacific Center, Inc., No. B185814 (Cal. App. 2 Dist. filed Nov. 7, 2006) |
Litigation and Alternative Dispute Resolution Business Disputes |
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| Canon Latin America, Inc. v. Lantech (CR), S.A. | |
Practice Area | ||
| In a conflict involving alleged breach of a distributorship agreement between Canon Latin America, Inc. (“Canonlat”) and Lantech (CR), S.A., (“Lantech”), Lantech filed an action against Canon in Costa Rica seeking indemnity from Canon and damages for hiring a new distributor when Canon was unable to collect payment from Lantech. Canon then brought an action against Lantech seeking a declaratory judgment as to choice of law and forum provisions of the parties’ distribution agreement, an injunction enjoining the parties from litigating in Costa Rica, and a preliminary injunction enjoining Lantech from taking any action to further its proceedings against Canon in Costa Rica. Acknowledging that enjoining foreign proceedings raised significant and substantial issues of international comity and sovereignty, the United States District Court for the Southern District of Florida nonetheless granted a preliminary injunction enjoining the furtherance of the foreign suit because Lantech’s action frustrated the policy of the federal courts of enforcing the forum selection clause included clearly in the parties’ written agreement. In addition, the Court found that Lantech’s action was “vexatious” since it forced Canon to post a one million dollar bond in order to avoid losing its right to import products into Costa Rica. However, on November 21, 2007, the Eleventh Circuit reversed, vacated the injunction and remanded the case for dismissal of Canon’s outstanding claims. The Court of Appeals reasoned that at least one of the threshold requirements for issuing an anti-suit injunction are not satisfied and that Canonlat has not shown that resolution of its claims in the district court would be dispositive of Lantech’s claims in Costa Rica, a prerequisite to determining whether the injunction was proper. Canon Latin America, Inc. v. Lantech (CR), S.A., No. 05-20297 (S.D. Fla. filed Sept. 27, 2006) A copy of the Eleventh Circuit’s opinion can be found here. |
Litigation and Alternative Dispute Resolution Business Disputes Business Transactions and Organization |
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| Tillamook Country Smoker, Inc. v. Tillamook County Creamery Ass’n | |
Practice Area | ||
| The holder of the trademark “Tillamook Country Smoker,” used in connection with meat products, brought a declaratory judgment action seeking a determination that its mark did not infringe upon the “Tillamook” mark, used in connection with dairy products. Tillamook County Creamery brought counterclaims for trademark infringement, dilution and unfair competition. The Ninth Circuit Court of Appeals affirmed the District Court’s grant of summary judgment for plaintiff, holding, in part, that the senior user of the “Tillamook” mark “knew or should have known of possible confusion” shortly after the junior user began using the “Tillamook Country Smoker” mark and, therefore, the Creamery’s claims were barred by laches. In 1976, Tillamook Country Smoker began selling meat products under its name. The Tillamook County Creamery Association, the maker of Tillamook cheese for nearly 100 years, had actual knowledge of Smoker’s activities but never complained and even sold the Smoker’s products in its gift shop and catalog. Twenty-five years later, when the Smoker began selling its products in supermarkets, the Creamery claimed trademark infringement and sought to enjoin the Smoker from making any further use of the name. The Ninth Circuit held that “[t]o establish progressive encroachment, the Creamery would have had to show that Tillamook Country Smoker “expand[ed] its business into different regions or into different markets” but that the Smoker’s growth of its business and increase in its use of the mark was not progressive encroachment. The court indicated that its holding would have been different had the Tillamook Country Smoker “expanded its business” into selling cheese in grocery stores. Tillamook Country Smoker, Inc. v. Tillamook County Creamery Ass’n, 465 F.3d 1102 (9th Cir. 2006) |
Intellectual Property Business Disputes |
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| Au-Tomotive Gold, Inc. v. Volkswagen of America, Inc. | |
Practice Area | ||
| A maker of key chains and license plate covers that were copies of automobile manufacturers’ trademarks brought an action seeking a declaratory judgment that its activities did not amount to trademark infringement, trademark counterfeiting or trademark dilution. Volkswagen and Audi counterclaimed for trademark infringement. In reversing the District Court’s grant of summary judgment in favor of Au-Tomotive, the Ninth Circuit Court of Appeals held, in part, that rather than being functional features related to the performance of the plaintiff’s products which would not be entitled to trademark protection, Volkswagen’s and Audi’s marks were entitled to protection under the Lanham Act and the unauthorized use of the trademarks was likely to cause consumer confusion as required to support a claim for infringement. Au-Tomotive Gold, Inc. v. Volkswagen of America, Inc., 457 F.3d 1062 (9th Cir. 2006) |
Intellectual Property Business Disputes |
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