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Tyson tattoo trouble

Originally posted 2011-05-25 15:33:55. Republished by Blog Post Promoter

Matthew David Brozik

Guest blogger Matthew David Brozik

That was close! The release of The Hangover Part II was in danger of being enjoined by a federal judge… but, for better or worse, the Honorable Catherine D. Perry of the U.S. District Court for the Eastern District of Missouri on Tuesday denied the request for a preliminary injunction made by the tattoo artist who in 2003 gave Mike Tyson his… let’s say impressive facial ink.

The tattoo artist, S. Victor Whitmill, has sued Warner Brothers Entertainment, the studio responsible (if that’s the word we want) for The Hangover Part II (and the original The Hangover) for copyright infringement. Specifically, Mr. Whitmill claims that reproduction of the tattoo (that he gave Mike Tyson) on the face of the character in the new movie played by Ed Helms (and also use of Helms’s likeness, with tattoo, on promotional merchandise) infringes upon his, Mr. Whitmill’s, exclusive rights in the work (the tattoo). Mr. Whitmill moved the court to enjoin the release of the movie, scheduled to open nationwide on May 26, the biggest movie-opening weekend of the year.

Nota bene: Unfortunately, while the short form order denying Mr. Whitmill’s motion is available through PACER, the transcript of the bench order is not (as of this writing)… so I’m gleaning some things from the New York Times article that appeared yesterday.

These are the facts one needs to know to understand what’s going on here:

  1. “Iron” Mike Tyson was a boxer, and an especially successful one. In 2003, he got a really cool, really big tattoo on his face. It looks like this.
  2. The Hangover is a movie about three men who have a really, really weird night, followed by a really, really weird day.
  3. One of the characters in The Hangover is a milquetoast dentist. His name is Stu, and he is played by Ed Helms.
  4. Mike Tyson appears in The Hangover, playing himself.
  5. In The Hangover Part II, from what one can see in the trailers and other publicity material, Stu gets a tattoo exactly like the one that Mike Tyson has. Check it out.

The immediately interesting thing about the denial of the motion is that, at least according to the Times summary, Judge Perry—despite finding that Whitmill was likely to succeed in his claim on the merits, because there really can be no question that (a) Whitmill owns the copyright in the tattoo, and (b) Warner Bros. copied it without his permission or the benefit of an exception to Whitmill’s exclusive rights—found that the public interest (one of the factors to be considered on a motion for preliminary injunction) in letting the movie be released outweighed the harm to Mr. Whitmill that might result from denying him the injunction.

As reported by the Times:

“The public interest does favor protecting the thousands of other business people in the country as well as Warner Brothers, and not causing those nonparties to lose money, and I think it would be significant, and I think it would be disruptive,” Judge Perry said from the bench, rather than issuing a written ruling.

“I think that tilts the public interest in favor of Warner Brothers on this because all over the country people would be losing money if I were to enjoin this movie.”

If this writer may offer an opinion: What? Really? Can the release of a movie ever be in the public interest? It’s a movie. I love movies, but… it’s a movie!

Now, Judge Perry does seem to have told everyone involved that, at the end of the day, Whitmill is going to recover from Warner Bros. “Although the intangibles he’s losing can’t be completely known or quantified, there is some amount of money that will come close,” she said.

By the way :  Previous posts about IP rights in tattoos here include one about NBA star Rasheed Wallace’s tat; another post was somewhat further afield but implicated the tattoo version of the Prince symbol-thing.

A note about those intangibles, since Judge Perry mentioned them: Whitmill is claiming not just copyright infringement, but also libel (although that might not be what he means, exactly), because the person from whom the character Stu gets his Tyson tattoo in Part II is a shady character, and Whitmill argues that he might be harmed in his reputation if moviegoers assume that the tattoo artist in the movie shares a personality with the real tattoo artist. This is not a compelling argument, probably… but it is something that might have persuaded Judge Perry to enjoin the film if she had been on the fence. Garden-variety copyright infringement, so to speak, can often be compensated for with just money… whereas harm to one’s reputation often can not be.

But back to the tattoo. Read More…

Of Macaques and Men: [obligatory monkey pun subtitle here]

Have you heard the one about the monkey who stole the wildlife photographer’s camera and took a picture of herself? And then Wikipedia posted the photo, without asking anyone’s permission to do so, claiming that the photograph is in the public domain, while the photographer—the man, not the monkey—objects, claiming ownership because, among other things, the monkey used his camera.

MDB

Man or monkey?

You hadn’t heard? Well, now you’re up to speed. But notwithstanding the grin on the macaque’s mug in the embattled photo, this isn’t a joke. British shutterbug David Slater has made several requests that Wikimedia, the not-for-profit entity that runs Wikipedia, remove the photograph from its Wikimedia Commons repository of images. Each request has been met with a refusal and a reiteration of Wikimedia’s position on the matter that Slater is not the author or copyright owner of the photo.

No relation.

No relation.

Wikimedia’s stated rationale is that “as the work of a nonhuman animal, [the photograph] has no human author in whom copyright is vested.” And therefore the photo was in the public domain ab initio. At least one lawyer agrees with Wikipedia. According to a Law360 article, Brad Newberg, a partner at Reed Smith LLP, opined: “Everything regarding copyright is about who put the creative elements into the end work, not who supplied the camera.” Newberg said that Slater would only own the copyright if he manipulated the photo in postproduction, according to the Law360 piece. (“However, Newberg said, everything he’s heard about the photo suggests the basic premise that the monkey took a selfie and then Slater shared it with the world without creative post-manipulation.”)

This author is of the opinion that some legal professionals don’t know enough about photography. Sure, even professional photographers manipulate their work after the fact, but the more work one does before pressing the shutter button, the less one has to do in the darkroom or on the computer. And, judging from the quality of the photo in question, Slater (and presumably not the macaque) did a lot of work beforehand, because it is a terrific picture.

And yet Slater gets no credit for that, legally speaking. Something isn’t right here.

“I’ve told [Wikimedia] it’s not public domain,” Slater has said. “They’ve got no right to say that it’s public domain. A monkey pressed the button, but I did all the setting up.” Yet Wikimedia and at least one lawyer would have it that the monkey is the author—but being nonhuman can not be the copyright owner, and so there is no owner.

Read More…

Digital Analogy: Behind the scenes of Aereo

MDB

MDB: Walks like a duck.

 

“In a case with far-reaching implications for the entertainment and technology business, the United States Supreme Court ruled on Wednesday that Aereo, a television streaming service, had violated copyright laws by capturing broadcast signals on miniature antennas and delivering them to subscribers for a fee. …

Justice Stephen G. Breyer, writing for the majority, said the service was ‘not simply an equipment provider,’ but acted like a cable system in that it transmitted copyrighted content.” – The New York Times

 

Stephen BreyerBreyer, J.: We must decide whether the respondent infringes the exclusive rights of copyright owners by selling subscribers a technologically complex service that allows them to watch television programs over the Internet at about the same time as those programs are broadcast over the air.

I am of the opinion that, viewed in terms of Congress’ regulatory objectives, the behind-the-scenes technological differences do not distinguish the respondent’s system from cable systems, which need to get permission to broadcast copyrighted content. Even though cable systems depend in large part upon the use of cables—whereas the respondent does not—the respondent’s set-up is essentially the same.

U.S. Supreme Court Justices Pose For Group PhotoSotomayor, J.: Aren’t cables just bundles of wires, though? I believe that they are. And we heard testimony that the respondent’s physical set-up—the machines in a warehouse in Brooklyn—does use components that themselves have wires. It would seem to me, then, that the respondent effective admitted that its system depends on cables, and therefore the conclusion that the respondent’s system is a cable system is not at all a hasty one.

And I graduated with honors from Princeton, albeit with a degree in History. But it’s not as if this is a complicated technological question that requires any specialized knowledge to answer.

Justice RobertsRoberts, C.J.: I agree with my colleagues that the respondent’s electrical contrivance is basically a machine built to infringe upon the exclusive rights of copyright owners, but I take issue with the comparison of the respondent’s apparatus to a cable system. To my mind, the respondent’s appliance is most like an artificial satellite, and specifically Sputnik 1. As my brothers and sisters on the bench will recall, the so-called “Elementary Satellite” boasted four external radio antennas to broadcast radio pulses.

Similarly, the respondent houses thousands of dime-sized antennas, each of which receives a television broadcast, which a transcoder then translates into data that can be transmitted over the Internet. We can not risk another so-called “Space Race.”

Justice KennedyKennedy, J.: Judge Roberts, I remember Sputnik. I knew Sputnik. Sputnik was a friend of mine. Judge Roberts, the respondent’s system is no Sputnik. The respondent’s system is more like——

Roberts, C.J.: That was really uncalled for, Judge Kennedy.

Kennedy, J.: You are the one that was making the comparison, Judge Roberts. Frankly, I think that the respondent’s system and the Soviet Union’s polished metal sphere—the one whose launch ushered in an age of new political, military, technological, and scientific developments—are so far apart in their objectives that I’ve completely lost my train of thought. No, wait! I remember: The respondent’s system is like a steam locomotive, and railroads were very good for America. I vote to acquit.

Justice KaganKagan, J.: There’s an old saying: “If it looks like a duck, swims like a duck, and quacks like a duck, then it probably is a duck.” I have given the respondent’s system, as it was described and explained to us in detail by lawyers for both sides during oral argument, and as the records of the Patent Office illustrate it, and I have reached the conclusion that what we’re talking about here is a duck.

But I mean that literally. The respondent’s system is an actual duck, in that it is a waterbird with a broad blunt bill, short legs, webbed feet, and a waddling gait. Interestingly, ducks themselves are often confused with several types of unrelated water birds with similar forms, such as loons, grebes, gallinules, and coots.

Breyer, J.: I have been called a “coot,” a term that I understand means “a foolish or eccentric person, typically an old man.” Read More…

Justice served cold

Originally posted 2010-06-08 15:23:50. Republished by Blog Post Promoter

When I was in law school, my trademark law seminar instructor was a practicing lawyer who has his share of war stories, some involving actual weapons. He had accompanied federal customs officers on warehouse raids to identify and confiscate bootleg goods bearing marks that belonged to or infringed on marks belonging to his firm’s clients. It sounded pretty damned cool.

Some ten years later I confiscated my first counterfeit item. Not from a warehouse but from a garage, for the item was a truck. An ice cream truck. A counterfeit Mister Softee ice cream truck.

My firm was local counsel to Mister Softee in New York City, where there is a great number of knockoff refreshment-peddling vehicles on the streets giving the false impression that they are true Mister Softee trucks selling genuine Mister Softee (or Mister Softee-approved) ice cream products. Mister Softee’s general counsel in Philadelphia would commence suit in federal court (often the Southern or Eastern District of New York) asserting, inter alia, trademark and trade dress infringement (under the Lanham Act) and unfair competition under both federal and state laws; more often than not, the defendant would default in the action. Because the Lanham Act allows recovery of attorney’s fees in counterfeiting actions, which would typically be awarded with the default judgment, Mister Softee would use the money judgment to seize the defendant’s sole asset: the truck with the outright counterfeit (or otherwise sufficiently deceptive) markings. (Not every judge allowed this, though. A motion for a seizure order is necessary, and some judges refused to allow seizure of a truck worth thousands to satisfy a judgment of only hundreds.)

So it was that in late October 2008 I traveled to the Bronx, where I met up with the two U.S. Marshals assigned to this seizure. I’d arranged with one of them, a lovely, petite but fit young woman all of 24 years old, to meet them at a corner near the garage at 10 a.m. (I’d asked her to bring me a bulletproof vest, but she said she didn’t have an extra. So I asked if I could wear hers and she told me that she might just shoot me herself.) I got to the rendezvous point a bit early, and while I waited to meet the Marshals, there was a domestic disturbance in the street in front of the garage—a 9:45 a.m. knife fight, in fact—that brought to the scene six marked NYPD cruisers, several unmarked police cars, and an ambulance. Inauspicious, I thought.

Soon enough the Marshals arrived, and the actual seizure of the truck went off relatively without a hitch (excepting the one on the tow truck… and that I had to front $300 in cash to pay the tow truck driver.) The offending truck owner was there (called to the scene by the garage owner). He had, he claimed, no idea what was happening. I believed him. I tried to explain, without giving him any legal advice, what had led to the seizure, procedurally. He still didn’t understand. He argued that he had come to the United States from Cuba to make a living. Why was he being mistreated here? This isn’t Cuba! I had no counterargument to that. Read More…

If not NOW, watch which?

Originally posted 2013-04-16 11:48:23. Republished by Blog Post Promoter

Matthew David Brozik

If not MDB, who?

On April 15, a company called E. Gluck Corporation filed with the United States District Court for the Southern District an uncomplicated, eight-page complaint alleging infringement upon a registered trademark it owns by another company, one Strickland Fuller Partnership. The plaintiff company “creates, designs, and has manufactured for sale watches.”

“The trademarks owned by plaintiff include the NOW trademark at issue herein.”

Yes, the trademark owned by the plaintiff, “extensively advertised and promoted” by the plaintiff, and now allegedly being used in violation of the law by the defendant in connection with the sale of other watches (albeit in the phrase Now is the time, “with the NOW portion… highlighted”) is the word NOW.

Allegedly, since 1986, E. Gluck Corporation has “continuously marketed and sold millions of watches under its NOW trademark… nationwide to the public through thousands of retailers and on the [I]nternet.” The NOW mark is registered with the USPTO in connection with watches. The registration is incontestable, constituting prima facie evidence of the plaintiff’s ownership of the mark and its exclusive right to use the mark in connection with the sale of watches.

Indubitably, the USPTO would not (have) register(ed) the word WATCH* for use with watches. Or TIME.** Next on that list should be NOW. (After that might be WHEN.)

NOW-Watch_0F17433E

How is the word “now” not generic when used in connection with the sale of watches—items whose primary function and purpose is to tell you what now is? That is, when is now? That is, it is always now, but when, specifically, is now? In terms of time? What time is it (now)? Look at your watch.

Even if NOW is not a generic term in connection with the sale of timepieces—devices designed to keep track of now—the phrase “now is the time” is so banal, so bland, and so… well, generic itself as to hardly rise (or sink) to the level of infringement of the word NOW (it seems to this writer, anyway). Now is always the time, after all. No?

UPDATE: Per PACER, the case was stipulated dismissed in October 2013.  No terms reported.

_____

*Although there is, of course, SWATCH.

**Likewise, TIMEX.

“DUMB STARBUCKS”: Grasping at laws.

Dumb StarbucksYour blawger, he is conflicted. Part of me does not want to give the—ahem—geniuses behind the DUMB STARBUCKS stunt any more press, but the rest of me feels that you, our readers, deserve to know at least my opinion, which is that there is no way in Hades that the aforementioned—ahem—geniuses will be able to survive any attempt by the real Starbucks to shut down their pretend art installation masquerading (poorly) as social commentary that is really just a pop-up cafe blatant ripping off the latter’s registered trademarks. There, I said it.

If you haven’t already heard: A “parody” [see here for a sort of primer from the LOC archives -- RDC] coffee shop sprung up in Los Feliz, California (of course), called DUMB STARBUCKS. According to the Los Angeles Times, “Walking into the… unit, which over the weekend drew long lines while offering free joe, is like entering a real Starbucks, except that almost every label and circular logo inside also features the word ‘dumb.’”

I. MDB.

Caffeinated and conflicted.

A sign at the store, printed on stationary topped with the DUMB STARBUCKS logo, offered answers to “frequently asked questions.” If this isn’t a prank that ends soon, then this flyer will be Exhibit 1 of the plaintiff in the trademark infringement lawsuit that Starbucks brings, because the statements made on the FAQ sheet damn the dumb undeniably.

Is this a Starbucks? No. Dumb Starbucks is not affiliated in any way with Starbucks Corporation. We are simply using their name and logo for marketing purposes.

Um, okay. So you admit right out of the gate that you are marketing something—coffee products, obviously, in direct competition with the company whose registered trademarks you also admit you are using, without permission (that’s implied).

How is that legal? Short answer – parody law.

Putting aside for the nonce that there really is no such animal as “parody law,” that’s an interesting short answer. The FAQ elaborates: By adding the word ‘dumb’, we are technically “making fun” of Starbucks, which allows us to use their trademarks under a law known as ‘fair use’. Fair use is a doctrine that permits use of copyrighted material in a parodical work without permission from the rights holder. It’s the same law that allows Weird Al Yankovic to use the music from Michael Jackson’s “Beat It” in his parody song “Eat It.”

I hardly know where to begin.

If you’re admitting that you’re “technically” making fun of something, then you’re never going to convince a judge or jury or me that you were genuinely attempting to make any real fun. Rather, you’re admittedly trying to exploit a doctrine that you sometimes call a law, which you evidently do not understand at all. Indeed, you’re referring to a copyright law doctrine, but you’re infringing on trademarks. (Sure, those trademarks are protected as well by copyright, but this isn’t a copyright matter.) And, worst of all (not really), you’ve drug Weird Al into this, when everyone knows that Weird Al does not invoke the doctrine of fair use to avoid getting permission to record his parody songs. Weird Al always, always gets permission.

So this is a real business? Yes it is.

Good to know. Because your revenues are going to be turned over to Starbucks Corporation soon.

Are you saying Starbucks is dumb? Not at all. In fact, we love Starbucks and look up to them…

Make it stop. It hurts. It hurts! You just… you just admitted that… I can’t continue. This is just too dumb. Fortunately, Starbucks Corporation is “aware” of this—ahem—hilarious parody and is “looking into it.”

Oh, also, as of yesterday, the establishment reportedly did not appear to have a business license. But that’s probably also okay under parody law.

 

Inside s©oop.

The other day, I received an email from a Registration Specialist, Literary Division at the U.S. Copyright Office. She’d written to ask me to submit again/separately the graphics incorporated in a literary work I’d applied (entirely electronically, mind you) to have registered. When I’d sent her the graphics files, she then asked me to confirm that I owned the copyright in each, because if I didn’t, then my single-author application wouldn’t be accurate, and I might have to disclaim something.

This guy.

I had created all of the graphics but one, which one I’d commissioned from a freelancer. I told the Registration Specialist as much, and she reminded me that it might be a work for hire, at which point I confessed to being a lawyer who has forgotten more about copyright law than most people will ever know… and yet who has never been quite able to wrap his head fully around the concept of a work made for hire. In any event, we agreed that the commissioned illustration is a work made for hire, and the Reg. Spec. told me, “The registration is complete.  You should receive the Certificate of Registration by mail in 3-4 weeks.”

Our correspondence didn’t end there, however, as I wanted to pick her brain a bit about what her job entails. (I’m not naming her because I didn’t ask her for permission to excerpt our exchange, and also because her name, while a nice enough name, is not relevant to this post.) About works for hire, she wrote (edited slightly by your blawger):

[T]he law explicitly states that to have a work made for hire, you must have a written agreement stating as much. We get a lot of “Well, my neighbor drew this for me as a favor,” and it can be difficult to explain the legal requirement in a way that makes sense. I think most people don’t realize copyright is a right granted by law (the Constitution, even!) and [therefore] has rules and requirements attached to it.

About the position generally:

The job certainly has a lot of variety. Every day I view between 40 and 50 cases submitted by people from all over. For every J.K. Rowling there are five individuals submitting their unpublished material. We have one guy in California who just sends in pages and pages of his “ideas” scratched out on notebook paper.

Because a lot of people don’t understand the “idea/expression” dichotomy, either, it would seem. I didn’t ask—or, I haven’t yet asked—what she does when she gets pages of ideas, but I might still. I’ll let you know. Also, I imagine that there are more than five people submitting unpublished material for every J.K. Rowling….

Now you can go Holmes again!

Watson and Holmes

Which one is Brozik? Is Coleman really that old?

“Knock, knock.”

 “Who’s there?”

  “Watson.”

   “Watson who?”

    “Not much. But there is this decision from the U.S. District Court for the Northern District of Illinois…”

It would be tempting, to be sure, to try to embellish a discussion of the recent Sherlock Holmes decision with Holmesian flourishes, but this blawger isn’t going to do that—even though the decision has recognized his—and yours, for that matter—freedom to use the “characters, character traits, and other story elements from Sir Arthur Conan Doyle’s Sherlock Holmes stories”—or at least those published before 1923. That said, a simple recitation of the relevant facts is in order—a method Holmes himself might have employed—in a bulleted list (and Holmes would have been able to tell you whether I am left- or right-handed just by examining these bullets!):

  • Sir Arthur Conan Doyle wrote four novels and fifty-six short stories featuring the fictional characters Sherlock Holmes and his friend and chronicler Dr. John H. Watson.
  • The first story, “A Study in Scarlet,” was first published in 1887 (in the United States in 1890). Forty-five further stories and the four novels were published in the U.S. before January 1, 1923. All of these works are in the public domain.
  • The remaining ten stories, published after 1922, are still protected by copyright, owned by a company whose principals are relatives of Conan Doyle.
  • The plaintiff of Leslie S. Klinger v. Conan Doyle Estate, Ltd. is, among other things, an anthologist of new Sherlock Holmes stories. He co-edited an anthology of such works published by Random House, which had entered into a licensing agreement with Conan Doyle Estate, Ltd. to use the characters of Holmes and Watson, notwithstanding Klinger’s belief that no license was required by law. More recently, however, when Klinger sought to have a second anthology published by a different house—and Conan Doyle Estate, Ltd. again demanded that a licensing agreement be entered into (and threatened to pressure retailers not to sell the new book absent such a license)—the second publisher balked, prompting Klinger to sue Conan Doyle Estate, Ltd.
  • Klinger sued in the United States District Court for the Northern District of Illinois for a determination of the “copyright status of a list of specific characters, character traits, dialogue, settings, artifacts, and other story elements in the [Sherlock Holmes canon; the ‘Canon’].” After some procedural missteps—including a failure of Conan Doyle Estate, Ltd. to appear!—Klinger was permitted to move for summary judgment (which the Estate was permitted to oppose, despite its default). Read More…

On context at the intersection of mass tort litigation and intellectual property.

There isn’t much of an intersection of mass tort litigation and intellectual property law, but here’s a tidbit that falls squarely into that slim territory:

In August of 2010, Johnson & Johnson subsidiary DePuy Orthopaedics recalled a replacement hip device—the embattled metal-on-metal ASR—for a variety of reasons. Predictably, lawsuits followed, leading to the formation of a federal multidistrict litigation matter in the United States District Court for the Northern District of Ohio. Last month, a possible settlement arrangement was presented to the court. Before the court will consider the proposal, however, the plan is to be voted upon by the victims themselves. If a sufficient number of victims vote to approve the deal, then it will advance to the bench for review.

Meanwhile, on November 22, Judge Katz, who is presiding over the MDL, issued an order that raised at least one of this blawger’s eyebrows. “The vast majority of plaintiff lawyers who have participated in this MDL and in the cooperating jurisdictions have done so in good faith,” Judge Katz wrote. “This Court appreciates the efforts of those lawyers who zealously represented the interests of their clients in this case and who participated in this MDL and in the cooperating state court jurisdictions.”

Unfortunately, there have been a number of potentially misleading websites and website postings regarding this case and this settlement. *** Because of these websites, it is difficult to actually find the official website for this settlement which is www.usasrhipsettlement.com. Please be advised that any other website that purports to be a DePuy ASR settlement website is not authorized. Only DePuy itself can rightfully use its name in any website address in this context.

This Court takes very seriously the ability of the ASR patients and their counsel to obtain accurate information regarding this settlement and make informed decisions free of deceptive advertising or other misinformation from third parties. (See ABA Model Rules of Professional Conduct, Rules 4.2, 7.1, and 7.3). *** This Order is entered to protect ASR patients and their counsel from misinformation.

All for avoiding misdirection.

All for avoiding misdirection.

“Only DePuy itself can rightfully use its name in any website address in this context.” Did you see that?

Now, I’m all for the protection of victims against misinformation or misdirection, the efficient conducting of court business, and other wholesome things… but Judge Katz’s decree gives me pause. Read More…

Fight for your right to parody. Or don’t.

GoldieBlox logoSometimes, just when a copyright dispute is getting very interesting, the parties go and do the unthinkable: They resolve their differences like reasonable people, and then there’s nothing left to do but imagine how things might have played out. And here we are.

Recently, in a very short period of time—less than two weeks—these things happened, in fairly rapid succession:

  • A company called GoldieBlox—established in 2012 to help introduce girls to the field of engineering—produced and released an advertisement for its products.
  • The GoldieBlox spot got noticed—because it was twelve kinds of awesome—but one of the ways in which it was awesome is the parody of the song “Girls,” recorded and released in 1987 by the Beastie Boys, used as the soundtrack.
  • GoldieBlox was contacted by counsel for the Beastie Boys. Said counsel reportedly notified GoldieBlox that because the Beastie Boys and writer/producer Rick Rubin, as copyright holders
    of the original song, had not given—and did not now give—permission for a version of the song to be recorded and used, GoldieBlox was therefore infringing the exclusive intellectual property rights of the Beasties/Rubin, and that unless such infringement ceased and GoldieBlox desisted… well, you know the rest.

beastie_boys_logo2

  • GoldieBlox sued the Beastie Boys and Rubin—with admirable alacrity—for a declaratory judgment… and the Internets went nuts, in part because many laypersons do not understand what declaratory judgment is (remember the Robin Thicke/Marvin Gaye story from a few months ago?), and in part because many people thought they’d read or heard that the Beastie Boys had sued GoldieBlox.
  • Then Beastie Ad Rock tweeted: “You guys..Don’t get it twisted. We did not threaten to sue Goldiblox..THEY’RE SUING US.” Which was accurate, if a tad disingenuous. A distinction without a difference, one might say.
  • And then GoldieBlox did something seemingly—see below—very classy: The company posted an open letter to the surviving Beastie Boys stating, among other things, that the company was unaware before hearing from the Beasties’ counsel that the late Adam Yauch had “requested in his will that the Beastie Boys songs never be used in advertising” and for that reason, even though “we believe our parody video falls under fair use, we would like to respect his wishes and yours,” GoldieBlox had already removed the song from its video. (Of course, the unredacted version can still be found with no effort at all, but it would be irresponsible for this blawg to point you to anywhere specific.)

Licensed to ill in NY and NJ.

I write “seemingly,” because one might argue that GoldieBlox has already gotten everything it had hoped to from its song parody, and therefore removing it now is merely… er, lip service. Indeed, some have suggested that GoldieBlox’s entire goal from the start was simply to get press, and that proactively suing the Beastie Boys was just a part of the plan—except that to bring a legitimate suit for declaratory judgment one needs to allege a real controversy, and there would have been none if the Beasties’ lawyers had not threatened legal action. And it’s not as if you can force someone else’s lawyer to threaten you with litigation. The most you can do is use their intellectual property without permission in a video that goes viral and… wait just a minute…!)

This will probably be the end of the matter. Read More…

Grande, Venti, De Novo. (Starbucks VI)

Drinks a lot of coffee. A Lot.

Drinks a lot of coffee. A Lot.

Last week, while one giant was vindicated after years of litigation—even if its name was spelled “Goggle” on page 2 of Judge Chin’s decision—another was dealt a decisive, possibly final blow in federal court. In what I believe will be called “Starbucks VI,” which constitutes the third appellate decision in Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., the United States Court of Appeals for the Second Circuit affirmed the decision of the United States District Court for the Southern District of New York (“Starbucks V”) concluding that Starbucks failed to prove that the defendant’s use of the marks MISTER CHARBUCKS and CHARBUCKS BLEND is likely to dilute Starbucks’s famous marks including, of course, STARBUCKS.

Here are the salient points from what will be—unless Starbucks appeals to the Supreme Court—the last word in the matter [For some previous words, start here -- RDC]

starbucks-logo

Just one of at least 56 marks…

Way back in 2005, a bench trial was held in the Southern District to determine whether Wolfe’s Borough Coffee, a New Hampshire corporation doing business as “Black Bear Micro Roastery,” was infringing on some of the more than 56 registered trademarks of Starbucks Corp.—including the mark STARBUCKS and those that incorporate that mark—by using marks that include the word “Charbucks.” Even before Black Bear began using its CHARBUCKS marks, the Starbucks marks had become famous. And if we’re talking about famous marks, then of course we’re going to talk about dilution.

Indeed, dilution is all the Second Circuit addressed in its most recent decision, because Starbucks’s claims of trademark infringement in violation of 15 U.S.C. § 1114(1), unfair competition in violation of 15 U.S.C. § 1125(a), trademark dilution in violation of NY Gen. Bus. Law § 360-l, deceptive acts and business practices and false advertising in violation of NY GBL §§ 349 & 350, and unfair competition in violation of New York common law were all dismissed previously. In other words, Starbucks kept losing grounds. Er, ground.

At the trial, “two matters of significance to [the last] appeal occurred,” according to the Second Circuit. One of those is that Starbucks introduced the testimony of a “scientist in the field of consumer research and polling.” Warren J. Mitofsky explained the results of a telephone survey he had conducted of “six hundred participants, designed to be representative of the United States population.”

 The survey asked, “What is the first thing that comes to your mind when you hear the name ‘Charbucks,’ spelled C-H-A-R-B-U-C-K-S?” 30.5 percent of participants answered “Starbucks.” Nine percent answered “coffee.” (Other common responses included “barbecue” or “charcoal”; “restaurant” or “grill”; “meat,” “steak,” or “hamburger”; and “money.”)  When the participants were asked “Can you name a company or store that might offer a product called ‘Charbucks’?,” 3.1 percent responded “Starbucks,” and another 1.3 percent responded “coffee house.” But more popular responses to the second question included: “grocery store”; “discount store”; “restaurant”; “department store”; and “hardware store” or “home improvement store.”

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“Happy Birthday”: Second verse, same as the first.

While I wasn’t looking, the lead plaintiff in the class action to have the song “Happy Birthday to You” declared to be in the public domain (1) in late July, voluntarily dismissed the action brought in the Southern District of New York, and (2) in late June, filed a class action in the Central District of California, which has been consolidated with other cases… but it appears that the allegations and claims as we knew them are all intact, just relocated. It would appear as well that the plaintiffs filed a Second Amended Consolidated Complaint along the way, because it is parts of this Second Amended Consolidated Complaint that are the subjects (objects?) of a recent motion to dismiss made by the defendants, Warner/Chappell Music, Inc. and Summy-Burchard, Inc.

Wasn't looking.

Wasn’t looking.

On August 30, the defendants moved to dismiss the plaintiffs’ federal claims (Claims One and Two, of seven, seek the declaratory judgment and other relief that would follow from the entry of declaratory judgment) to the extent that they are time-barred by § 507(b) of the Copyright Act, a three-year statute of limitation. The defendants also moved for dismissal of the plaintiffs’ other five claims, all based in state law, as being preëmpted, insufficiently pleaded, time-barred, etc.

The court—Hon. George H. King, Chief U.S. District Judge, presiding—ruled as follows:

  • Some of the plaintiffs’ federal law claims—that is, the claims of some of the plaintiffs—are time-barred, being older than three years. The plaintiffs argued for a four-year limitation period, inasmuch as the bar expressly provided in the Copyright Act doesn’t, or shouldn’t, apply to declamatory judgment actions, and the federal Declaratory Judgment Act does not have its own statute of limitations, so the court should borrow a limitation period from an analogous California statute… which argument the court found unpersuasive. So Claims One and Two were dismissed as to certain plaintiffs, with leave to amend their pleadings to allege delayed accrual or tolling. But the Second Amended Consolidated Complaint remained undismissed generally.
  • And, giving effect to something the parties themselves had agreed upon at a conference, the court ordered that Claim One—for declaratory judgment—would be bifurcated through summary judgment. The other six claims—the one federal claim for post-declaration relief and the five state-law-based claims—are stayed until further order of the court.

I would love to be able to end this post by writing, “We’ll be watching this case closely as it continues…” or some such, but the truth is that I’ll probably get distracted and won’t even know about a resolution for a month after one is reached, and I’ll still be sending Warner/Chappell royalty checks every time I sing “Happy Birthday to You” even when the song is in the public domain….