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Who Owns First?


Not even warming the bench

There is no end to the number of jokes one might make in a post about a decision concerning the classic Abbott & Costello comedy routine “Who’s on First”—and indeed I’m champing at the bit to make ’em—but the import of the ruling is just too great to be flip about, in this copyright comic’s opinion. Because if I’m reading the Second Circuit correctly, and I think I am, then the court thinks that the beloved shtick is no longer protected by copyright. In other words—although the court did not say so explicitly in 62 pages—the routine is in the public domain.

In TCA Television Corp. v. McCollum, decided October 11, 2016, the United States Court of Appeals for the Second Circuit found that the trial court—the U.S. District Court for the Southern District of New York—had gotten the right answer, but for exactly the wrong reason. The trial court had rejected the argument that “Who’s on First” isn’t protected by copyright (or, more accurately, that the plaintiffs had failed to plead a valid copyright interest) but was persuaded by the argument that the defendants’ use of a portion of the routine verbatim is fair use. It’s exactly the opposite, wrote the Second Circuit. (Indeed, the Second Circuit showed admirable restraint itself under the circumstances. This is perhaps the principal reason why your humble commentator is not a federal appellate judge.)

So let’s meet the players, some of whose numbers have been “retired”: Read More…

Covering your assets.

Originally posted 2013-09-24 16:02:50. Republished by Blog Post Promoter

Over the weekend, all the nerdiest news outlets reported that Volpin Props—a company that makes props and replicas “mostly videogame related,” according to the outfit’s Facebook page, “but anything goes!”)—received a cease-and-desist letter from Couristan, Inc., a rug and carpeting concern… for possibly the nerdiest/coolest reason imaginable (under the circumstances): Volpin had made for two attendees of the recent DragonCon—held at the Atlanta Marriott Marquis, a hotel with a wide variety of some very, very busy carpeting—custom camouflage outfits in the same pattern as one of the busier carpets at the venue. See a terrific photo here  (reproduced below).

This probably would have been fine. That is, making custom carpet-camouflage costumes for a couple of conventioneers likely would not have gotten Volpin on Couristan’s radar. Or maybe it would have garnered Volpin praise from the carpeter. But Volpin didn’t just make the costumes; it reportedly put the fabric up for sale at, a site that sells fabrics, wallpapers, decals, gift wrap, etc. And that got Couristan’s attention—and Volpin got a C&D letter.

Volpin Props - carpetBecause of course. And I mean that: Assuming that Couristan holds the copyright to the carpet pattern—and, man, what a pattern it is!—then Volpin can’t sell a fabric with that same pattern, else it infringe on Couristan’s intellectual property rights. And, to Volpin’s credit, the company’s principal—Harrison Krix, himself of Atlanta—has asked (on Facebook, where much of the public commentary has been posted) that people “not send Courtisan [sic] Inc or Marriott any nasty messages concerning this. I’m in complete agreement with their decision.”

(If you have three or four hours free, you might read the nearly 500 comments on Volpin’s Facebook posts about carpet-flage-gate. Then check out photos of all the carpeting at the Atlanta Marriott Marquis.)


What the –? (ABC v. DEF.)

Originally posted 2013-04-05 10:03:35. Republished by Blog Post Promoter

mdbheadshotfinal Here’s what we knew, and when we knew it: On March 19, 2013, a federal lawsuit was commenced in the United States District Court for the Southern District of New York and assigned to the Honorable Alison J. Nathan. Even before the judge assignment, however, the case was ordered sealed by Hon. Kimba Wood. The following day, a SEALED DOCUMENT was “placed in the vault,” according to the docket, and a conference was held (in camera, one presumes). Between March 28 and April 2, then, three more SEALED DOCUMENTS were placed in the vault. Intrigue abounded. The caption of the case? ABC v. DEF. We kid you not.

At that point, one could only imagine what the case was about (though it was evidently about trademark law, inasmuch as it was designated an “840” case on PACER). We were reminded of the old joke, “Why was 6 afraid of 7? Because 7 8 9!

On April 2, however, by stipulation and order, the seal on the matter was released and the file “returned to the public portion of the Clerk’s office.” So now we know, from reading the April 3 preliminary injunction signed by Judge Nathan, that “ABC” is really Michael Kors, L.L.C., and “DEF” is really… well, a small slew of defendants, including one corporation, two business entities of unclear constitution, five John Does, and twelve URLs.

abc-v-defThe preliminary injunction refers to a “Summons, Complaint, Temporary Restraining Order and all supporting papers,” which were served upon “Defendant” [sic]… but none of those documents is available online (so they must be still in the vault, or at least not yet scanned). Still, the evident meat of the matter is that the defendants were selling online counterfeit goods bearing one or more of the registered marks owned by the plaintiff. Which is, you know, unlawful.

Somewhat oddly, although the single document available for public consumption is styled “Preliminary Injunction,” it provides that the defendants (and their agents, servants, employees, officers, and all persons in active concert and participation with them… in other words, the usual suspects/gang of idiots) are “permanently enjoined” from doing all sorts of unlawful things (that is, those things they were doing to irk Michael Kors, L.L.C. a/k/a ABC). To protect the DEF… endants (oh! I get it now! Ha!), MK had to post a $25,000 bond, which the preliminary order continued. (Counsel for MK proposed having that bond “released,” but Judge Nathan decided that just the opposite was appropriate. It was worth a shot, though, probably.) On the other hand, all of the assets of each identified defendant was frozen, which will no doubt be helpful to MK if and when it is awarded monetary damages.

That’s all for now, kids. ABC ya next time.

Zediva: The world’s longest extension cord

Originally posted 2012-04-09 16:28:21. Republished by Blog Post Promoter

mdbheadshotfinalThe AP reports that a small California (of course) company thinks it has a brilliant idea, a way to out-Netflix Netflix: Zediva Inc. is going to make available for viewing on subscribers’ Internet devices new movies as soon as they are available on DVD. This is a big deal, because Netflix, for instance, does not do this. Netflix will begin sending physical DVDs of a new movie as soon as the movie comes out on DVD… but the instant viewing option comes later, largely because movie studios want it that way, believing that the ability of consumers to view films instantly at home cuts into DVD sales.

Zediva’s doing something right. But is it wrong?

So just how will Zediva be able to transmit, say, “Yogi Bear” on its March 22, 2012, DVD release date?  Here’s how: Zediva will buy a copy of Yogi Bear on DVD, then play it on a DVD player at its Silicon Valley (of course) headquarters, and send the feed to your home. It’s the equivalent of running a very long cable from Zediva’s DVD player to your television set. Right? Movie studios and lawyers who care about these things say no, it is not. While Zediva asserts that what it is doing (or planning to do imminently) is the equivalent of what Netflix does when it mails out DVDs to subscribers (a scheme permitted by the so-called “first-sale doctrine,” which has allowed libraries to lend books to patrons for hundreds of years), several commentators have already countered that it is more akin to Netflix’s other service, that of streaming.  And a streaming arrangement requires licensing, because streaming isn’t lending a physical copy.  (Some commentators are arguing that streaming somehow inherently infringes on a copyright holder’s exclusive public performance right; I don’t agree.)

I’m going to take a potentially unpopular position here (even though I am by no means required to): I think Zediva’s idea is legal, if not particularly smart. The potential for a system that might well be legitimate to devolve into something entirely outside the law, however, is just too great.  That is, for Zediva to do what it says it will, it must own a separate physical copy of a DVD of a given movie for each subscriber who wants to watch it (at the same time). That means if 100 different subscribers want to watch “Yogi Bear” at the same time, in different locations, then Zediva needs to put 100 different DVDs into 100 different DVD players.  Zediva simply may not cut corners and, for instance, rip the content of a DVD and then send a subscriber or two or a hundred the digital information… just until it can run out and pick up some extra copies of Yogi Bear.  And, of course, Zediva may not rip the content of one DVD and then burn the content onto another hundred DVDs to be in compliance with its own (arguably legal) model. Is Zediva smarter than the average start-up? Maybe. If Zediva keeps its nose clean, it just might have something here. Eh, Boo Boo?

UPDATE:  Zediva:  The lawsuit.

UPDATE II:  Zediva loses; is lost.  But you know this ain’t over!

The Second Circuit’s Jaw Drops…

My jaw dropped, too.

My jaw dropped, too.

When a court observes that “the logos employed in Plaintiff’s and Defendant’s marks are jaw-droppingly similar—nearly identical not only in conception but also… in the great majority of the fine details of execution,” you don’t want to be the Defendant referred to.

Granted, by the time that the United States Court of the Appeals for the Second Circuit commented on the logos at issue in Guthrie Healthcare Systems v. ContextMedia, Inc., defendant ContextMedia (CMI) had already lost after trial in the Southern District of New York. On appeal, the Second Circuit upheld the finding that CMI’s mark infringed upon Guthrie’s mark, and then found that the limited permanent injunctive relief granted by the trial court was too limited—“based on an incorrect standard and [not sufficient] to give the Plaintiff and the public adequate protection from likely confusion.”

Likewise, as the defendant, you don’t want to read this in that same opinion: “[W]hile Defendant is not a ‘bad faith’ infringer, nor is it an entirely innocent infringer.” That’s just salt in the wound.

There’s not much, if anything, that’s novel about the matter of Guthrie v. ContextMedia, decided June 13, 2016. The opinion of the appellate court is mostly an appropriately detailed application of the Polaroid factors (to conclude that the trial court properly found infringement) followed by a review of the scope of an injunction as relief… which review leads to the conclusion that the trial court was in error in limiting the injunction to those geographic locations in the real world (that is, not online) where the plaintiff maintains a physical “service area.” But among the expected analyses and citations to the usual precedents, the opinion does offer up some gems of commentary, some subtle, some not so much.

Guthrie Healthcare System is a Pennsylvania non-profit corporation composed of three separate entities that operate primarily in the “Twin Tiers” region of New York and Pennsylvania—a region this commentator had never heard of before reading the opinion and of the existence of which he is still not convinced. In any event, Guthrie has “32 medical facilities, including three hospitals and 29 clinics, as well as a number of specialized heathcare facilities such as a cardiac center and a cancer center.” It also has a “multi-disciplinary medical group practice that includes more than 280 physicians and 130 mid-level providers.” Significantly, Guthrie “refuses to endorse third-party products or services or to host advertisements, in order to accommodate research funders’ sensitivities, preserve its eligibility for clinical trials, and avoid the fact or appearance of conflict of interest, bias, or partiality.” In short, Guthrie is an impressive organization, seemingly admired by the appellate court.


Guthrie’s logo. (Ignore the text.)

CMI was “founded in 2006, has offices in Chicago and New York City, and employs 42 people.” It serves approximately 2,600 physician practices, operating in all 50 states. Its business is to “deliver health-related content to physician practices… install[ing] digital screens in waiting areas, examination rooms, and infusion rooms… which play short videos and clips about health and wellness to patients.” In a perfect world, this plaintiff and this defendant could easily live harmoniously. Read More…

Will New York State Go With (the) Flo (& Eddie)?

More of a Grass Roots fan.

More of a Grass Roots fan.

Every once in a great while comes along an intellectual property law decision so significant that blawgers fall over themselves and each other in the scramble to write something pithy about it. The April 13, 2016, decision from the Second Circuit in Flo & Eddie, Inc. v. Sirius XM Radio, Inc. is not such a case. Rather, it is a decision worth writing about because of the handful of opportunities it presents to make puns involving song titles and lyrics.

That’s not to say that the decision isn’t important on its own merits. Indeed, as the brief opinion begins, “This case presents a significant and unresolved issue of New York copyright law.” On the other hand, the issue is not resolved by the decision. Because it is that important! You’ll see.

The plaintiff-appellee is a California corporation that “asserts that it owns the recordings of ‘The Turtles,’ a well-known rock band with a string of hits in the 1960s.” The California corporation is “controlled by two of the band’s founding members, [and] acquired the rights to The Turtles’ recordings in 1971 and continues to market the recordings in a variety of ways, including by licensing the rights….” Let’s unpack this before we go any further. Read More…

Now you can go Holmes again!

Originally posted 2014-01-03 09:48:52. Republished by Blog Post Promoter

Watson and Holmes

Which one is Brozik? Is Coleman really that old?

“Knock, knock.”

 “Who’s there?”


   “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.

Read More…

Costco neko wo kamu

Originally posted 2013-03-15 09:57:30. Republished by Blog Post Promoter

mdbheadshotfinalIf Tiffany was miffed at Costco before, it’s positively infuriated now.

You will recall that on February 14[, 2013] the high-end jeweler Tiffany & Co. sued the decidedly-not-high-end warehouse club Costco, alleging that the latter was describing certain diamond rings as “Tiffany” rings in at least one of its locations, thus infringing upon the trademark rights of the former. For a refresher, see here.

What struck this writer as interesting about the otherwise not especially remarkable matter is the barely-concealed disdain for the defendant and its merchandise-for-the masses business model permeating the federal court complaint of the elite plaintiffs. Tiffany made an effort at civility in its initial filing… but now the kid gloves are off. Costco has asserted a counterclaim—and that counterclaim has already gotten Tiffany’s goat.

tiffany_130216_wgThe gist of Costco’s counterclaim is that notwithstanding the registrations held by Tiffany & Co. for various trademarks that include the name Tiffany for use with regard to jewelry products, the term “Tiffany” is generic for a type (or set of types; it’s not quite clear)  of diamond ring setting, such that anyone must be permitted to use the term (inasmuch as anyone may sell a diamond ring with that certain kind of setting). Costco’s Answer and Counterclaim reads, in pertinent, unrepentant part:

Costco asks the court to order that the Plaintiffs [Tiffany and Company and Tiffany (NJ) LLC] be prohibited and enjoined from ever again asserting false claims of right to exclude use of Tiffany as a generic term for a style or type of ring setting. *** Costco seeks a judgment declaring invalid, and ordering modified or partially cancelled, federal trademark registrations which the Plaintiffs have put forward as purportedly evidencing or supporting false claims of right to prevent Costco and other retailers from using the word Tiffany to indicate that a ring has a Tiffany setting, i.e., a setting comprising multiple slender prongs extending upward from a base to hold a single gemstone….

There’s a Japanese proverb—kyuuso neko o kamu: A cornered rat will bite the cat. Tiffany put Costco in the corner, and now Costco is attempting to bite off part of Tiffany’s trademark portfolio. Tiffany might come to find that it would have been better off letting sleeping dogs… er, you know what? Enough with the animal metaphors. Tiffany could regret suing Costco, if Costco’s possibly-desperate defense holds water.

Tiffany replied a couple of days ago, March 14, to Costco’s answer and counterclaim, filed on March 8th. Tiffany asserts in its answer to Costco’s counterclaim that Costco’s signage did not indicate that the offending rings sold in Costco warehouses (not manufactured by Tiffany) had “Tiffany settings” but rather appeared to describe each ring as a “TIFFANY… DIAMOND RING.” A good point—but now there are two issues. Read More…

Darth Vader versus the United States of America! (Okay, not really.)

Originally posted 2012-08-06 17:28:23. Republished by Blog Post Promoter

This post discusses what by all rights should be the most exciting case ever heard by any court anywhere. One of the plaintiffs is Darth Vader, and the defendant is none other than the most powerful entity in this solar system, the United States of America…! Okay, no, that isn’t quite true. Neither part of it. One of the plaintiffs is Hayden Christensen, the actor who played Anakin Skywalker (and, for about three minutes, Darth Vader) in two of the Star Wars prequels… and the defendant is the USA network (or, rather, Universal Television Network, Inc., of which USA Network is a division). In fact, in complete contradiction to what I touted at the outset, Forest Park Pictures v. Universal Television Network, Inc. is possibly the least sexy copyright decision of all time. It barely has any copyright law in it! So I’m challenging myself to find something interesting about the 23-page June 26, 2012, decision of the United States Court of Appeals for the Second Circuit—as I write about it. At issue was whether the plaintiffs’ breach-of-contract action was preempted by the Copyright Act. If you’re still awake, let’s begin.

Circuit Judge John M. Walker, Jr. framed the lone legal issue thus: “This dispute over the concept for a television show presents the question of the extent to which the Copyright Act… preempts contract claims involving copyrightable property.” The United States District Court for the Southern District of New York had granted the defendant’s motion to dismiss on preemption grounds. If the Second Circuit disagreed with the District Court… well, then the case wouldn’t even be a copyright case! Oh, the suspense…


In 2005, Forest Park Pictures—the production company owned by brothers Hayden and Tove Christensen—“formulated the concept of a television show” (in Hollywoodspeak) styled “Housecall,” the main character of which was to be a doctor who, “after being expelled from the medical community for treating patients who could not pay, moved to Malibu, California, and became a ‘concierge’ doctor to the rich and famous.” The brothers Christensen created a written “series treatment” for the concept, “including character biographies, themes, and storylines.” They mailed this written material to an employee of USA Network, then requested a meeting between a representative of Forest Park Pictures and a representative of USA Network. And, since one does not lightly deny the requests of a Sith lord, a meeting was arranged. Or it might have been because the concept was a good one, as it turns out. Read More…

PLEASE TAKE NOTICE: BOSTON* just got real (Boston 3)

Originally posted 2013-06-26 14:54:53. Republished by Blog Post Promoter

*Preliminary note: I know that the band BOSTON is not a party to Ahern v. Scholz, but all the same I like thinking of this case as the BOSTON case, because it involves BOSTON songs, and I like typing BOSTON in all caps, so I hope you’ll forgive me this impertinence/indulgence.

What was until this week a simple federal copyright action is now being brought to the attention of the Attorney General of the United States (who might or might not have other things on his mind just now). Plaintiffs Ahern and Next Decade Entertainment have given notice to Eric Holder of the presence of a constitutional question raised in the pleadings of the suit. (For a refresher of the allegations, see this post and then this post.)

mdbheadshotfinalIn turn, the United States District Court for the Southern District of New York has issued an order certifying the matter to the AG. “In the parties’ Joint Pretrial Statement, filed with this Court on June 7, 2013,” the order reads,

the plaintiffs… asserted that, should the Court interpret Section 203 of the Copyright Act to allow termination of certain grants of copyrights, such application of the statute would constitute an unconstitutional taking of private property under the Fifth Amendment to the United States Constitution.

Whoa. That’s heavy. And that’s the sort of thing that 28 U.S.C. 2403(a) and F.R.C.P. Rule 5.1. mandates be brought to the attention of the AG.

The constitutional question as framed by Ahern:

Whether an author of musical compositions, written in whole or in part after January 1, 1978, whose copyright ownership had been transferred by him to a third party pursuant to a grant in the form of a five-year agreement entered into in 1975 encompassing all songs written by the author through 1980 [“Gap Works”], can invoke the termination of copyright assignment provisions of Section 203 of the Copyright Act….

Permitting Gap Works to qualify for the provisions of [S]ection 203… would result in [the plaintiffs]’ copyright ownership… being reduced from the fifty-six years set forth in Section 304… the law in existence at the time the 1975 [agreement] was executed… to only thirty-five years. Such a reduction… constitutes a violation of the Fifth Amendment to the United States Constitution in that it is an unlawful taking of private property without compensation to promote a public purpose (i.e., the public policy decision to afford composers the opportunity to reclaim their copyrights).

So now, if we’re lucky, we’ll get to read what Mr. Holder has to say about all this.