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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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| 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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| 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, 021508 Order to Seal, and 022908 Order |
Litigation and Alternative Dispute Resolution Intellectual Property 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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| 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. AP articles on the story can be found at msnbc.msn and minnesotapublicradio.org The Summit Daily News Article can be found here. |
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. A copy of the Act can be found here. |
Intellectual Property Software & the Internet Advertising, Marketing, Publishing, and Media The Arts, Entertainment and Sports |
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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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| Netflix, Inc. v. Blockbuster, Inc. | |
Practice Area | ||
| 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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| 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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| Pritchett v. Pound | |
Practice Area | ||
| The
Fifth Circuit affirmed the District Court’s grant of summary judgment
to the plaintiff, a consulting firm, which had sole ownership of books
written by the defendant as works made for hire and held that the
plaintiff’s declaratory judgment action was not barred by the statute
of limitations. An employment contract governed Pound’s
employment with Pritchett, providing that any written materials he
produced in the scope of his employment would be on behalf of and
belong exclusively to the employer. The deceased defendant co-wrote two
handbooks sold and paid for by the employer which also received all
profits. When Pound died, his widow signed a release discharging
the employer from any claims she might have against it. But, she and
Pound’s estate subsequently sued Pritchett in state court, alleging
co-ownership in the copyrights and seeking an accounting of and
royalties from the book sales. After failing in its effort to remove
the case to federal court, Pritchett filed suit in the District Court
seeking a declaratory judgment that it was the sole owner of the
copyrights in the books, to which Pound’s widow and estate asserted
counterclaims. The Fifth Circuit affirmed the District Court’s holding
that Pritchett was the sole owner of the books, consistent with the
employment agreement. Pritchett’s ownership of the copyrights defeated
the claims for royalties and the Court did not address any effect the
release may have had. Further, the Court affirmed the finding that the
statute of limitations did not bar Pritchett’s declaratory judgment
action, noting that such actions are usually sought by defendants and
do not bar the defense asserted to defeat a plaintiff’s claims.
Accordingly, the Court of Appeals found that Pritchett’s “claim” that
the books were works for hire was a defense to Pound’s initial state
court claim and that Pritchett’s declaratory judgment action did not
accrue until Pound’s estate asserted accounting claims. Because the
work for hire assertion was made by Pritchett in 2003, it was within
the three year statue of limitations period. The Fifth Circuit also
affirmed the District Court’s award of attorneys’ fees to Pritchett as
the prevailing party. Pritchett v. Pound, No. 05-41445 (5th Cir. filed Dec. 18, 2006) |
Intellectual Property Business Transactions and Organizations |
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| Santa-Rosa v. Combo Records | |
Practice Area | ||
| 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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| In the Matter of Mechanical and Digital Phonorecord Recording Rate Adjustment Proceeding | |
Practice Area | ||
| The
Register of Copyrights of the United States Copyright Office (the
“Register”), pursuant to a request for guidance from the Copyright
Royalty Board and the Recording Industry Association of America (RIAA),
held that cell phone ringtones qualify as digital phonorecord
deliveries for purposes of the statutory licensing provision of the
Copyright Act 17 U.S.C. § 115. The Register found that whether a
specific ringtone falls within the scope of the statutory license
depends on whether the performance is of an original or a portion of
the original musical work, or a work that is adapted or transformed so
that it becomes an original work entitled to copyright protection as a
derivative work. Further, the Register held that ringtones that are
only excerpts of a preexisting sound recording fall within the scope of
the statutory license. On the other hand, ringtones that contain
additional material are considered original derivative works outside
the scope of the Section 115 license. If a newly created ringtone is a
derivative work, and has been distributed with the authorization of the
copyright owner, then anyone may use the statutory license to make and
distribute the musical work in the ringtone. For newly created
ringtones that have not been distributed to the public and that fall
outside the scope of the statute because they are derivative works, or
for any other reason, Section 115 does not apply and licensing rights
must be obtained through voluntary or commercial licenses. The Register
stated that when the status of a ringtone for Section 115 licensing is
unclear, a court should determine whether the ringtone falls within the
scope of Section 115. It further noted that a ringtone will generally
fall under the compulsory license provision unless the musical
composition has been so altered that it is a derivative work and that,
therefore, Copyright Royalty Judges should determine royalties for the
compulsory license of ringtones. In the Matter of Mechanical and Digital Phonorecord Recording Rate Adjustment Proceeding (U.S. Copyright Office, No. RF-2006-1, Sept. 14, 2006) |
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| WB Music Corp. v. RTV Communication Group, Inc. | |
Practice Area | ||
| The
Second Circuit vacated a judgment awarding statutory damages for
copyright infringement to the plaintiffs, music publishers that owned
copyrights in musical compositions. The defendants made and distributed
copies of seven unauthorized CD compilations containing songs that
infringed thirteen of the plaintiffs’ musical works. The District Court
found that the infringement was willful and allowed the plaintiffs to
recover increased statutory damages under 17 U.S.C. § 504(c) of the
Copyright Act. On appeal, the Second Circuit rejected the District
Court’s conclusion that even though there were thirteen copied works
and thus thirteen infringed copyrights, 17 U.S.C. § 504(c)(1), which
provides, in part, that all parts of a compilation or derivative work
constitute one work, required the District Court to award only seven
statutory damages awards—one for each unauthorized compilation. In
reversing the award, the Second Circuit held that the defendants’
infringement of thirteen copyrights by copying thirteen songs onto
seven distinct compact discs warranted thirteen statutory damages
awards. WB Music Corp. v. RTV Communication Group, Inc., Nos. 04-3890-CV (L), 04-3892-CV (CON), 04-3901-CV (CON) (2d Cir. filed April 19, 2006) A copy of the Second Circuit opinion can be found here. |
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| Laws v. Sony Music Entertainment, Inc. | |
Practice Area | ||
| The
plaintiff brought suit against Sony Music Entertainment, Inc. for
misappropriating her voice and name in a song by Jennifer Lopez and
L.L. Cool J. The District Court found that rather than imitating Laws’
performance, Sony had obtained a license to use a sample of Laws’ song
and held that plaintiff’s claims under California law for violation of
her common law right to privacy and her statutory right of publicity
were preempted by the Copyright Act. The Ninth Circuit affirmed the
District Court’s grant of summary judgment for Sony, holding that Laws’
misappropriation claim was within the subject matter of the Copyright
Act because her voice was embodied in a copyrighted sound recording.
The Court of Appeals further held that while California law recognizes
an interest in the publicity associated with one’s voice, federal
copyright law preempts such a claim “when the entirety of the allegedly
misappropriated vocal performance is contained within a copyrighted
medium.” In affirming the District Court, the Court of Appeals also
determined that the rights plaintiff asserted under California law were
equivalent to rights protected under the Copyright Act. As long as
other state and common law actions contained different elements to
those in an action for copyright infringement, the court’s holding was
not intended to preempt such claims. Laws v. Sony Music Entertainment, Inc., 448 F.3d 1134 (9th Cir. 2006) |
Intellectual Property Publicity, Privacy and Defamation |
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| Funky Films, Inc. v. Time Warner Entm’t Co., L.P. | |
Practice Area | ||
| The
creators of a screenplay, “The Funk Parlor,” brought a copyright
infringement action against producers of the television series “Six
Feet Under.” The Ninth Circuit Court of Appeals held that the
screenplay and television series, both about a funeral home and the
family members operating it, were not substantially similar, and the
plaintiffs were not entitled to additional discovery on the issue of
defendants’ access to the screenplay. To prove copyright infringement,
a plaintiff must prove “‘(1) ownership of a valid copyright, and (2)
copying of constituent elements of the work that are original.’”
Without proof of direct copying, “‘proof of infringement involves
fact-based showings that the defendant had ‘access’ to the plaintiff's
work and that the two works are ‘substantially similar.’” While summary
judgment is not favored in copyright cases on the issue of substantial
similarity, it is “appropriate if no reasonable juror could find
substantial similarity of ideas and expression” in the two works.
After comparing the two works, the Appeals Court found that while the
plots shared general similarities, such “[g]eneral plot ideas are not
protected by copyright law.” Therefore, the Appeals Court affirmed the
trial court’s grant of summary judgment for HBO and upheld its refusal
to grant appellant’s request for additional discovery on the issue of
access to the screenplay because they could not “meet the lower burden
required by the substantial similarity test.” Funky Films, Inc. v. Time Warner Entm’t Co., L.P., No. 04-55578 (9th Cir. filed Aug. 30, 2006) |
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| Wall Data Inc. v. Los Angeles County Sheriff’s Dep’t | |
Practice Area | ||
| The
Ninth Circuit Court of Appeals affirmed the district court’s order
entering a final judgment of copyright infringement against the Los
Angeles County Sheriff’s Department, following a jury trial, and
awarding Wall Data its attorneys’ fees and costs as the prevailing
party under the Copyright Act, 17 U.S.C. § 505. In that case, Wall Data
sued the Sheriff’s Department for copyright infringement after it
purchased 3,663 licenses for Wall Data’s computer software, but
installed the software on over 6,000 computers. Even though the
computers were configured in a way that the total number able to access
the software did not exceed the total number of licenses purchased, the
Appeals Court held that such use did not constitute fair use under the
Copyright Act and was thus not a defense to liability for infringement,
affirming the district court. Wall Data Inc. v. Los Angeles County Sheriff’s Dep’t, No. 03-56559 (9th Cir. filed May 17, 2006) |
Intellectual Property Software & the Internet |
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| Natural Wealth Real Estate, Inc. v. Cohen | |
Practice Area | ||
| Plaintiffs,
various financial institutions, brought a defamation claim and action
against prominent recording artist Leonard Cohen and other defendants
to enjoin defamatory statements published on Mr. Cohen’s website
regarding the loss of his funds allegedly at the hands of the
plaintiffs. Mr. Cohen hired plaintiff Tactical Allocation Services, LLC (“Tactical”) directed by the plaintiff Neal Greenberg to invest for him the assets placed into three charitable trusts. The assets were derived from the sales of Mr. Cohen’s intellectual property and were intended to provide long-term financial support. However, Mr. Cohen allegedly drew large sums from the trusts, depleting the principal amounts and impeding plaintiffs’ efforts to successfully invest. Mr. Greenberg warned defendant Kelley Lynch, Cohen’s manager, who oversaw and had power of attorney over Cohen’s financial dealings, and Cohen that he was spending too much and absent a change of habit would become destitute. Mr. Cohen proceeded to sell additional intellectual property and to convey the intellectual property to an entity of his creation called Traditional Holdings LLC, in which he held one percent interest and Ms. Lynch held 99%. Traditional Holdings sold the intellectual property to Sony Music and then served as an annuity for Mr. Cohen under Ms. Lynch’s management to enable Mr. Cohen to benefit from the sale without suffering adverse tax consequences. Traditional Holdings hired plaintiffs to invest its assets. Mr. Cohen instructed the plaintiffs to follow Ms. Lynch’s directions concerning management of Traditional Holdings’ assets and, purportedly at Mr. Cohen’s direction and on his behalf, Ms. Lynch continued to make unsustainable withdrawals from the trusts and from Traditional Holdings. In 2004, Mr. Cohen and Ms. Lynch parted ways and began issuing competing directives to plaintiffs, each blaming the other for Mr. Cohen’s financial distress. After allegedly attempting but failing to extort the lost sums from plaintiffs through plaintiffs’ insurance companies, defendants, using Mr. Cohen’s fame as a prominent recording artist, allegedly published defamatory statements about the plaintiffs, posting such defamatory statements on Mr. Cohen’s web site and submitting them to the press, blaming plaintiffs for the loss of the monies. Mr. Cohen instructed the plaintiffs to follow Ms. Lynch’s directions concerning management of Traditional Holdings’ assets and, purportedly at Mr. Cohen’s direction and on his behalf, Ms. Lynch continued to make unsustainable withdrawals from the trusts and from Traditional Holdings. In 2004, Mr. Cohen and Ms. Lynch parted ways and began issuing competing directives to plaintiffs, each blaming the other for Mr. Cohen’s financial distress. After allegedly attempting but failing to extort the lost sums from plaintiffs through plaintiffs’ insurance companies, defendants, using Mr. Cohen’s fame as a prominent recording artist, allegedly published defamatory statements about the plaintiffs, posting such defamatory statements on Mr. Cohen’s web site and submitting them to the press, blaming plaintiffs for the loss of the monies. On February 21, 2008, the Court granted plaintiffs’ motion for summary judgment as to Mr. Cohen’s breach of contract counterclaim, which contended plaintiffs had breached their contractual duty by sending monthly email reports that were false and misleading, which purportedly enabled Ms. Lynch to make unauthorized withdrawals. The Court determined that although defendant wants to blame plaintiffs for the depletion of the accounts, under the terms of the agreement with Tactical, both Mr. Cohen and Ms. Lynch were “the client.” The Court went on to paraphrase Justice Holmes in noting that the person reposing confidence in Ms. Lynch was not plaintiffs, but Mr. Cohen, and since the unauthorized transactions went on for a period of two years, plaintiffs could reasonably have expected Mr. Cohen to notice if anything was wrong; he could not, therefore, blame plaintiffs for his own negligence in this regard. Natural Wealth Real Estate, Inc. v. Cohen, No. 05-cv-01233-LTB-MJW (D. Colo. filed Dec. 4, 2006) |
Intellectual Property Business Transactions and Organizations Publicity, Privacy and Defamation Software & the Internet Business Transactions and Organizations |
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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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| 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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| Rudolph Int’l, Inc. v. Realys, Inc. | |
Practice Area | ||
| In
response to California’s regulations requiring the disinfection of all
nail instruments used on multiple customers, Plaintiff, a manufacturer
and seller of nail files, developed a line of nail files that withstand
the disinfection process. It began using the term “disinfectable” in
product packaging and advertising and attempted to register
“disinfectable” as a trademark with the Patent and Trademark Office,
but its application was rejected. Defendant, also a manufacturer and
seller of nail files, began using the term “disinfectable” on its nail
files prompting Plaintiff to file suit against it for trademark
infringement. Defendant moved for summary judgment and the District
Court granted Defendant’s motion, finding that the term “disinfectable”
is a generic term when used in the nail file industry and cannot be the
subject of trademark protection. The Ninth Circuit Court of Appeals
affirmed the District Court’s decision. Rudolph Int’l, Inc. v. Realys, Inc., No. 05-55605 (9th Cir. filed April 12, 2007) |
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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) |
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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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| In re Brouwerij Nacional Balashi NV, Serial Nos. 78304942 and 78304953 | |
Practice Area | ||
| The
Trademark Trial and Appeal Board reversed the examining attorney’s
refusal to register the marks BALASHI and BALASHI BEER on the grounds
that the marks were primarily geographically descriptive of beer.
In opposition to the refusal, the trademark applicant submitted, in
part, several maps that failed to identify Balashi, a geographic
location in Aruba, as a geographical place. Accordingly, the T.T.A.B.
found that Balashi was geographically insignificant because it was
difficult to find a map “identifying it as a place.” (at 15) In
reversing the refusal, the T.T.A.B. held that the examining attorney
did not establish that Balashi was generally known as a place name and
“that it is remote or obscure in its geographical significance, to
American beer consumers and thus has not shown a reasonable basis for
concluding that the marks ‘BALASHI BEER’ and ‘BALASHI’ are primarily
geographically descriptive of applicant’s goods.” (at 2) Some names of
actual places may not have geographical significance to American
customers because the places are minor, small or remote. Whether a
geographical location is remote or obscure “is determined from the
perspective of the average American consumer.” (at 8) Moreover,
determination of a goods/place or services/place association between a
mark and a geographic location by a potential purchaser “is not made in
the abstract, but rather in connection with the goods or services with
which the mark is used and from the perspective of the relevant
purchasing public for those goods or services.” (at 3) In re Brouwerij Nacional Balashi NV, Serial Nos. 78304942 and 78304953 (T.T.A.B. Aug. 2, 2006) |
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| Electro Source, LLC v. Brandess-Kalt-Aetna Group, Inc. | |
Practice Area | ||
The
Ninth Circuit reversed the district court’s finding on summary judgment
that a trademark holder had abandoned its trademark when the record
supported the inference that the trademark holder, a small, failing
business, continued to transport and sell goods under the mark in the
ordinary course of trade as part of a good faith effort to deplete its
inventory. The Lanham Act defines abandonment of a trademark as “(1)
discontinuance of trademark use and (2) intent not to resume such use.”
(15 U.S.C. § 1127). “A mark shall be deemed to be ‘abandoned’: (1) When its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Non-use for 3 consecutive years shall be prima facie evidence of abandonment. “Use” of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark.”(15 U.S.C. § 1127) The court noted that while a registrant cannot “overcome a presumption of abandonment arising from subsequent non-use by simply averring a subjective affirmative ‘intent not to abandon,’” if made in good faith, “[e]ven a single instance of use is sufficient against a claim of abandonment of a mark.” Electro Source, LLC v. Brandess-Kalt-Aetna Group, Inc., No. 04-55844 (9th Cir. filed Aug. 14, 2006) |
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