Well, yes, I do have fun

Yes, it looks like a lot of fun, doesn’t it?

Sometimes it is.  I recognize that I am very fortunate in that regard, considering how seldom it is (fun) for many of my colleagues.  Which, I’m pretty sure, is very seldom.

I always want to recall the time an older colleague and sometimes-mentor said to me, as we sat as co-counsel in the well before a jury trial in federal court, “Can you believe we get to do this for a living?”

I say I want to recall this because that trial was an unmitigated disaster.  (Frankly it was his disaster, not mine, artistically speaking.  But a flame-out all the same.)  That week in Brooklyn was not one of the fun times at all.  But at least the judge got to finish his charming book about himself.

Anyway, I did end up getting involved in something unusually fun, but at the same time deathly serious, recently.  And actually — because this blog is a law blog and deals with freedom of expression, as well as the way courts handle those things — it is also a topical thing, especially given my old “media bloggers” persona:

The filing, in which we represent investigative reporters Sharyl Attkisson, Steve Emerson, and Edwin Black, is discussed here too.  And the PLO’s brief in opposition is here.

We will be filing a reply on Monday, and will update then.

NFL punts in “Big game”

Originally posted 2007-05-25 13:34:06. Republished by Blog Post Promoter

The NFL is a lot of things, but I never thought it was stupid. It turns out that it isn’t. The Sports Blognfl.jpg reports:

Remember that stupid effort by the NFL to trademark the phrase “Big Game,” even though everyone knows the phrase has, for more than a century, been used referring to the Cal-Stanford rivalry?

Well, the NFL has dropped its bid.



Admit it:

Originally posted 2007-05-05 23:34:26. Republished by Blog Post Promoter

You have nothing better to do. If you did, you wouldn’t be reading blogs. So, please take my blog reader survey!

Eiffel Tower “copyright”: I didn’t

Just saying:  If you thought I fell for that spin last week that went along the lines of “it’s against the law to take a picture of the Eiffel Tower at night” — well, no, I didn’t.

Let’s first get things first here, first.

A good summary of the case being claimed is this:

Although the Eiffel Tower was built in 1889, placing it in the public domain by virtue of its age, the light show was added to the tower later and is subject to copyright laws. As such, it’s technically illegal to share pictures of the tower’s light show on Facebook, Instagram, Flickr, and other platforms, even if it’s your own, original photo. The same rules apply for other famous landmarks in Italy, Belgium, and France. The Atomium in Belgium, for example, is also protected under copyright.

That is pretty consistent with what the folks over at the “Tour Eiffel” (as they call it in Canadian) say as well.

But okay, that — the claim of right — was really not first things, then, right?  First things was, if you read very closely, that the article above refers to places with names like “Italy, Belgium and France.”  I don’t know what the law is in Italy, Belgium or France, or even how copyright in these faraway lands differs from regular American copyright.  (Evidently, this Tour Eiffel is actually located in one of these foreign countries.)  But based on how I’m seeing this story treated, it appears to be comparable enough to what we know about regular (American, that is) copyright that, being Americans, we can blow right past that and start poking around at this story.

This is, first of all, not so much news.  Here’s a post from that very fine poker of the pokable, Mike Masnick at TechDirt that is almost ten years old (February 2005):

Is The Eiffel Tower Copyrighted?

from the wait-a-minute… dept

Well, here’s the latest in a series of bizarre stories about intellectual property concepts gone ridiculous. Apparently, the city of Paris retook possession of the Eiffel Tower in 2003 and decided that they’d had enough of its likeness being in the public domain. So, what do you do? You change the lighting on it, copyright the new light display and voila, all nighttime photos of the Eiffel Tower are now illegal without a license. This serves what beneficial purpose exactly? It’s hard to see how a photograph of a building that can be seen for miles around could be copyrighted in any way or what that could possibly serve any legitimate intellectual property purpose. It certainly sounds too bizarre to be true.

And it pretty much is.  But I am saving the punchline for a minute. Read More…

Tattoo Me ®

Originally posted 2006-01-09 21:20:36. Republished by Blog Post Promoter

Eric Goldman has an interesting piece about an issue that has actually come up in my practice: Trademarks and tattoos, and specifically the concept of people selling “space” on their bodies to act as “human billboards.” “People appear willing to brand just about any part of their body for the right price,” he says. He also notes, however, that — just as you’d think — that price isn’t usually forthcoming.

We hold these truths to be self evident©

Originally posted 2013-07-05 17:46:35. Republished by Blog Post Promoter

Declaration of IndependenceIs there a lot of talk about intellectual property in the Declaration of Independence?

Not a lot.  It was a not a burning issue in 1776.

But I did find some passages that I thought were worth considering in light of trademark and copyright practice here in the middle of the third century of American independence, at least when juxtaposed against some quotable quotes on the topic:

DECLARATION OF INDEPENDENCE:  When in the Course of human events, it becomes necessary for one people to dissolve the political bands which have connected them with another . . . A decent respect to the opinions of mankind requires that they should declare the causes which impel them to the separation.

BIG IP:  The . . . Second Circuit . . . concluded that the Lanham Act cannot be read to afford protection to a foreign mark under the “famous marks” doctrine. . . .  Professor McCarthy calls the decision a “great embarrassment” for the United States.

Ouch.  How about this?

DECLARATION OF INDEPENDENCE:  We hold these truths to be self-evident . . .

LIKELIHOOD OF CONFUSION STANDARD:  “Look, this is a subjective test, so you can’t be wrong. Just disqualified for a judgeship.”

It’s good to be the king!  Let’s try copyright:

DECLARATION OF INDEPENDENCE:  The history of the present King of Great Britain is a history of repeated injuries and usurpations, all having in direct object the establishment of an absolute Tyranny over these States. 

COPYRIGHT PREEMPTION:  Conversion under state law is the exercise of control over property ‘without authorization,’ and the court says that this element is ‘conceptually indistinguishable from an unauthorized taking in the copyright context.’ The court finds that a trespass to chattels cause of action is similar to a conversion claim, and both of these claims are preempted [by the Copyright Act].

Well, that’s a highly technical issue, isn’t it? It’s not like the chief executive is  being undemocratic about the IP laws, is it?

DECLARATION OF INDEPENDENCE:  He has forbidden his Governors to pass Laws of immediate and pressing importance, unless suspended in their operation till his Assent should be obtained; and when so suspended, he has utterly neglected to attend to them.  . . .  [T]aking away our Charters, abolishing our most valuable Laws, and altering fundamentally the Forms of our Governments

THE ADMINISTRATION:  It certainly appears that the US Justice Department and ICE don’t think they need any new law to go after people in foreign countries over claims of criminal copyright infringement. . . After all, Megaupload was one of the key examples used for why[SOPA / PIPA] was needed. As lots of folks are currently digesting, the Justice Department, along with ICE, have shut down the site and arrested many of the principals . . . [for] criminal copyright infringement.

Just kidding.  None of this is tyrannical, really — except to the little people whose lives and businesses are ruined by it.  You got to break a few eggs to make an omelet, though, right?

Frankly, independence has worked out very well for us.  Just… be careful!



Ten years of The TTABlog®

John Welch of the TTABlog

Ver veist besser fun John?

Unsurprisingly, you have to strain just to pick up this nugget in a TTABlog® post from last Friday about the latest exciting edition of the Trademark Reporter:

Tomorrow is the 10th anniversary of the birth of The TTABlog. . .

Ten years ago I was (figuratively) rubbing elbows with Leo Stoller (remember him?), the subject of my first blog post. Now I’m in a much better place. So was all that blogging worthwhile? No doubt about it.

And that’s it, huh?


Not just because LIKELIHOOD OF CONFUSION® will be marking its tenth anniversary in a couple of months and intends to be a lot less discreet and dignified about it. And not just because John makes the point, without further detail, that it was all worth it; I, of course, provide lots of detail on that notion (though he may have entirely different considerations in mind).

No, the reason this seemingly incidental point is entitled to attention is the obvious one:

The TTABlog® is a great blog.  It has been one for ten years — an outstanding accomplishment.  Shame on me, by the way, for missing the 10th anniversary of the Trademark Blog; on the other hand, that was two years ago, far past the statute of lamentations.

Above: The Trademark Law Firm Too Frightening to Conceive

The trademark law firm that’s too frightening to conceive

But back to our current decennial.  The fact is, while ten years is a great run for a great blog, it is  far longer than that (he wouldn’t want me to say) that John Welch been a great trademark lawyer.

And he has been a great guy since, obviously, forever.  I will always be grateful for his and Marty Schwimmer’s invitation into the, um, pantheon-kind-of-thing in connection with the INTA Meet the Bloggers events; for John’s steady and dependable counsel on PTO and TTAB matters on the drop of a dime and often for even less recompense than that; for his unerring judgment in reviewing legal treatises; and for talking to me at INTA events so it looks like I have a friend there among all the muckety-mucks.

Which, in fact, I do!  Thanks for being one of them, John, and happy tenth anniversary to the TTABlog®!

Ghost Rider vs. Free Riders?

Originally posted 2013-06-13 12:28:18. Republished by Blog Post Promoter

Ghost_RiderNews from the Second Circuit Court of Appeals:

The man who might have created the Marvel Comics superhero/anti-hero Ghost Rider… well, might in fact have created Ghost Rider, and might not have transferred all of his rights in the character forever. In both are true, then Marvel might have infringed upon his copyright many times over, but most significantly recently when it produced the awful, awful Ghost Rider movie of 2007 and the sequel that this writer didn’t even bother to see because the first one was so bad.

On appeal from a summary judgment granted to the defendants (for all relevant intents and purposes, Marvel Comics) by the United States District Court for the Southern District of New York (by way of the Southern District of Illinois), the Second Circuit reversed the dismissal of plaintiff erstwhile freelance comic book writer Gary Friedrich’s amended complaint alleging infringement on the grounds that Friedrich had, in 1978, assigned to Marvel the renewal term rights he held in Ghost Rider (the character) by way of a form work-for-hire agreement. “The facts,” the Second Circuit notes, with admirable succinctness, “are heavily disputed.”

But what the appellate court took particular issue with is the language of the one-page form purported work-for-hire agreement that Marvel asked Friedrich to sign in 1978, when the current Copyright Act took effect and, among other things, provided specific rules about works made for hire. Marvel, apparently desiring and intending to get its ducks (including Howard) in a row, had its freelancers execute brief, standard contracts purportedly providing that all work would be owned by Marvel. But the language of the agreement—indeed, the “critical sentence defining the ‘Work’ covered,” notes the Second Circuit, “is ungrammatical and awkwardly phrased.” Well, what do you expect, Your Honors? These guys write comic books! You know… for kids!

Make mine Marvel.

Make mine Marvel.

Mindful that the purpose of the renewal term allowed by the Copyright Act for works still in their initial term of protection on January 1, 1978, is “to provide authors a second opportunity to obtain remuneration for their works” and “to renegotiate the terms of the grant once the value of the work has been tested,” there was no way the Second Circuit was going to let stand the decision that Friedrich had re-granted his rights (whetever they might be) to Marvel in an ungrammatical and ambiguous document. In any event, summary judgment was not appropriate, because of those pesky issues of fact. Indeed, “[t]he district court concluded that genuine disputes of material fact surrounded the authorship of the work, but it nonetheless granted Marvel’s motion [for summary judgment] and denied Friedrich’s.”

Because that’s another thing: When reconsidering the dismissal of the plaintiff’s complaint, the Second Circuit assumed as true all of the facts as alleged by Friedrich. But there was also Friedrich’s own motion for summary judgment, which the district court had of course denied and which the appellate court had as well to reconsider, to do which it had to then look at the alleged facts in the light most favorable to Marvel. And these include allegations that Friedrich actually had very little if anything to do with the creation of Ghost Rider—one of the sillier “heroes” in the Marvel pantheon, really. At least both Spider-Man and Captain America make cameo appearances in the decision. Now those guys are heroes.


UPDATE:  Analysis from Pamela Chestak.

Smocking it out

Originally posted 2007-05-21 18:21:57. Republished by Blog Post Promoter

Ben Manevitz updates us on the Diane van Furstenburg “you stole my smock” litigation.

Ben’s take: “As a litigator, I’m going to give everyone involved in any litigation the secret! the best piece of advice ever! Ready? Here: Shut Up!”

Easy advice to give, but darn it, I like to say “smock”!  Smock, smock, smock, smock, smock, smock.

Small business lawsuits are bad for small business

Originally posted 2012-10-18 13:27:56. Republished by Blog Post Promoter

A nice infographic!

Courting Disaster: Small Business Lawsuits Infographic
Via: BOLT Insurance

“Criticizing A Trademark Is Not Trademark Infringement”

Originally posted 2007-09-29 21:25:32. Republished by Blog Post Promoter

It’s free speech. This is a big step forward:

In a recent example of just how bizarre [trademark overreaching] has become, there was apparently a dispute over the trademark of the word “Freecycle” that’s been used by groups who promote reusing stuff that would otherwise be thrown out. There was an attempt to [register a] trademark [utilizing] the term, but not everyone was happy about it. One guy put up a website protesting the idea to [register] the term, and he got sued for trademark violations in using the mark in his criticism. Clearly, that’s way beyond the consumer protection purposes of trademark — but a district court actually agreed with the trademark holders, saying that the guy violated trademark law in “disparaging” the trademark. Luckily, the [9]th Circuit appeals court has now overturned the ruling, noting that there is little to no chance of confusion here over the mark. More importantly, the court pointed out that there is no such law against “disparaging” a trademark. That’s a good thing, too, or pretty much all criticism would be outlawed.

Thank you, Ninth Circuit. What’s astonishing, depressing and pathetic is that the mark owners won at the trial level. That’s the level at which small- and medium-sized business and individuals get slaughtered every day.

More here on this story.

Mourning Sonny

Originally posted 2009-01-01 16:58:41. Republished by Blog Post Promoter

Posted on November 17th, 2008:

No, not that Sonny. No, rather this: If America’s most famous variety-show-star-turned-congressman hadn’t slammed into that tree on that fatal day of downhill skiing, we’d probably never have the Sonny Bono Copyright Term Extension Act of 1998. That’s reason to mourn him right there.

Fair enough — if he’d sat in the lodge and drank cocoa instead we would probably still have the law, but at least its embarrassing content would not be matched with a preposterous name. But given that it is what it is, ten years later, what is it? Gigi Sohn says well:

How can you measure the number of new works and new wealth that were not created because of the extended terms? Or the number of new orphan works created? But since it has been shown that about 98% of copyrighted works lose their value between year 55 and year 75 of protection, we know who has profited from the law – large, multinational media companies like Disney, Fox and NBC-Universal, who maintain a vise-like grip on works that should have belonged to the public years ago. Suffice it to say that the Sonny Bono Act was nothing more than corporate welfare for big copyright holders. . . .

Ok, I got that off my chest. Now let me say something positive about both the DMCA and the Sonny Bono Act. The simultaneous passage of these two copyright strengthening bills, despite the strenuous objections of libraries, arts and cultural organizations, consumer electronics companies, and cyberliberties groups clearly hit a nerve, and became the impetus behind the copyright reform movement. . .

[W]hile we’ve stopped many bad things from happening, we have not yet been able to get any law or policy adopted that would bring some balance (or sanity) back to copyright law.

Read it! Hat tip to Denise Howell, via Twitter.

Comment here.