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“I don’t even own a TV”—Aereo (Part Two)

Originally posted 2014-10-26 19:37:31. Republished by Blog Post Promoter

aereo-logoFamiliarity of the reader with Part One is presumed.

As I read the Second Circuit decision, I was pleased—for reasons I can’t quite, and won’t bother trying to, articulate—that the appellate court was affirming the denial of a preliminary injunction in part, at least, because the granting of the injunction would probably have “severely harm[ed] Aereo, likely ending its business.”

Yet I was at the same time bothered by something I couldn’t quite put my finger on, until I did, and it was nothing other than the acknowledgment by the Second Circuit (immediately preceding the one just quoted) that “the [district] court concluded that the Plaintiffs had demonstrated a likelihood that they would suffer irreparable harm in the absence of a preliminary injunction.” Which means, of course, that right now—and since March 14, 2012, when Aereo began providing its service to subscribers… and through tomorrow, and the day after, and the day after that… until such time as the plaintiffs prevail in the two lawsuits pending in the Southern District of New York (and are awarded a permanent injunction), an eventuality Judge Nathan has deemed unlikely as a matter of law, which ruling the Second Circuit has affirmed… the plaintiffs, every broadcast network in New York City, are being irreparably harmed.

How, exactly? The appellate decision doesn’t discuss the harms to the plaintiffs, because it doesn’t need to. The Second Circuit agreed that the plaintiffs “are not likely to prevail on the merits,” so its discussion of the harms claimed by each side of the dispute are minimal. “Plaintiffs do argue that any harm suffered by Aereo should be disregarded in the balance of hardships analysis because Aereo’s business is illegal,” the Second Circuit decision reads, “…[b]ut this argument hinges on the conclusion that Aereo’s business infringes the Plaintiff’s copyrights,” which the court concluded it does not, at least “on the limited question before us… whether Aereo’s transmission of unique copies of recorded programs to the Aereo users who directed that they be created are public performances.” So we must seek our answer elsewhere. Perhaps in the district court opinion.

But before we look there, let’s think about this like regular folks. Regular folks don’t read court opinions. Regular folks ask whether something feels right or wrong. And this feels at once both right and wrong.

Imagine that you live in New York City. As a NYC resident, when you’re not at a Yankees game or ice skating at Rockefeller Center or having lunch with, say, Michael Bloomberg at Ray’s Famous Original Ray’s Pizza, you might watch some broadcast television, which you don’t pay for, since you have an antenna attached to your top-of-the-line widescreen HD set in your 350-square-foot studio apartment that you share with a roommate and a cat. But when you get home from your pizza date your roommate and his girlfriend and her friend are using the TV to play video games (only ironically, though)… but you’re not out of luck, since you’re an Aereo subscriber! So you take your iPad to your freecycled futon in your corner of the room and you log in and request that the new episode of whatever show everybody likes that’s playing right now be streamed to your Internet-capable device.

Where’s the harm in that? Read More…

Where Were You When “Happy Birthday to You” Was Found to Be in the Public Domain?

You can wish MDB a HBD on 3/12. Every year.

FYI, You can wish MDB a HBD on 3/12. Every year.

Newly discovered evidence [according to a court filing] “proves conclusively that Happy Birthday has been in the public domain since no later than 1922.” At stake is the more than $5,000 per day—or $2 million per year—that singers, stage directors, filmmakers and advertisers currently shell out to use the [song]. – The Washington Post

My entire extended family and I—some six dozen of us, spanning four generations—were at a Joe’s Crab Shack celebrating Nana’s big 1-0-0. The wait staff was midway through a verse of the restaurant’s proprietary alternative ‘Joyful Anniversary of Your Being Born’ melody when one of the busboys—a second-year law student, I think I’d heard him mention—glanced at his phone. He must have gotten word of the court decision just then, because he signalled to the rest of the servers’ ensemble and as one they transitioned to the previously-verboten tune. It took a moment for the other relatives and me to catch on to what was happening, but when we did we joined in. More than one voice cracked—with emotion, for this was a truly momentous occasion. As it turned out, Nana herself entered the Great Public Domain in the Sky the following month—by which I mean she died—but she died with her faith in the American legal system restored, even if she never forgave Chester A. Arthur.”

– Randall W., Atlanta

“I was at home, swimming in an enormous pile of money—the royalties I’ve earned from selling eBooks of public domain works on No wonder the Warner Music Group wanted to keep the most recognized song in the English language out of there. The public domain is a festering goldmine.”

– Molly M., Raleigh-Durham Read More…

No safe harbor for this shark.

Matthew David Brozik

One groovy shark.

Originally posted 2013-04-29 12:04:55. Republished by Blog Post Promoter

Generally, one doesn’t expect to find copyright decisions of note in state courts, but every so often one will crop up. One really doesn’t expect to find interesting decisions on state-court motions to dismiss a party’s fourteenth affirmative defense… and yet here we are, reading with great interest the April 23, 2013, decision of the New York State Supreme Court, Appellate Division, First Department in UMG Recordings, Inc. v. Escape Media Group, Inc.

Defendant Escape Media Group owns and runs an online music streaming service called Grooveshark, where users can upload audio files, usually songs, to an archive maintained on Escape’s servers; other users can search the servers and stream the files to computers and other devices. The setup is designed to be on the up-and-up, though; it isn’t 1999 Napster. Escape “has taken some measures to ensure that Grooveshark does not trample on the rights of those who own copyrights in the works stored on its servers,” reads the First Department decision. “For example, it is a party to license agreements with several large-scale owners and licensees of sound recordings. In addition, it requires each user, before he or she uploads a work to Grooveshark servers, to confirm ownership of the recording’s copyright or license, or some other authorization to share it.”

Alas! Read More…

got what, now?

GotmilkIf you’re reading this, then the settlement check has cleared. But you’ll never believe who paid whom for what!

My friend—whom I will call Bryan (not his real name)—has just wrapped up, with my personal and professional help, some odd dealings with the California Milk Processor Board. Yes, the “got milk?” people.

Yes, because Bryan was parodying the “got milk” registered trademark (without “permission”).

Yes, to promote a band.

Yes, that band is Neutral Milk Hotel (which might or might not have been styled by a CIA band-name-generating computer algorithm).

Bryan—aware that he’s one of many dedicated/long-suffering fans of the American indie rock band, which was active from 1989 to 1999—thought that there might be likeminded persons willing to shell out a few bucks for a T-shirt reading got neutral milk? (in the “got milk?” typeface), despite that the band has been on hiatus for well more than a decade. And Bryan was correct: after having some shirts made (at his own cost), he did sell a few. Bryan also registered the URL “” Somehow, it came to the attention of the Board (the cease and desist letter reads, in pertinent part, “It has come to our attention”) that Bryan had registered “”—but it did not appear to the Board (or its counsel) that Bryan “has rights or legitimate interests” in the domain name. Read More…

Ghost Rider vs. Free Riders?

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.

A Mickey Mouse confession.

Horse thief.

Horse thief.

Has it really been fifteen years since the Copyright Term Extension Act was signed into law? (It has. President Clinton signed the bill on October 27, 1998.) Time flies when you’re protected by copyright law, I suppose. And what the CTEA did, of course, is extend the period of copyright (for many works) for another two decades. (For the details and a discussion of the opposition to the law, read this piece from the Washington Post.)

The CTEA is popularly known as the “Sonny Bono Act” (in memory of the musician-turned-Congressman who had died tragically earlier in 1998)… and derisively as the “Mickey Mouse Protection Act,” because if not for the CTEA, “Steamboat Willie,” the first Mickey Mouse cartoon, would have entered the public domain in 2003. According to some, this would have allowed anyone to use the character in new works, but that hardly seems correct, being that (1) the depiction of Mickey Mouse is a registered trademark of the Walt Disney Company, and (2) there is no 2. If the 1928 short film were to enter the public domain, there would likely be very little harm done to Disney. Many much wiser legal scholars than I have addressed this topic, however, so instead I’m going to tell you about my personal connection to Mickey Mouse:

Not my grandfather's work.

Not my grandfather’s work.

Years ago, my late paternal grandfather had a business that sold souvenir items to gift shops in New York City. My grandfather, as I understand it, bought in bulk various and sundry (cheap) novelty items, like plates, mugs, key chains, oversized pencils, piggy banks, etc., on which he would then have printed or otherwise applied graphics to make them New York City souvenirs. Usually, the graphic was some form of the I♥NY (a trademark of the State of New York).

And sometimes it included a depiction of none other than Mickey Mouse.

Yes, my grandfather received a cease-and-desist letter from counsel for Disney. I couldn’t tell you if my grandfather ceased or desisted applying Mickey Mouse graphics on the souvenirs that he sold to gift shops. He probably did. That is, he certainly did when he eventually gave up the business and moved to Florida.

So there’s my confession: I come from a family of trademark infringers. One, anyway. I hope you’ll still be able to respect me. It feels good to get that off my chest, anyway.

Tell Yes artist: “No. No. Fifty million times no.”

Avatar lawsuit - Comparison with Yes album covers 2If the federal copyright complaint that you file on behalf of your client includes an assertion that “[the d]efendants… knew or should have known that they were violating [the p]laintiff’s rights,” then you probably want to be sure that you’re not bringing an ill-conceived lawsuit, because what copyright law does cover in this country—and what it doesn’t—is something a lawyer should know.

Avatar lawsuit - Comparison with Yes album covers 1The lawsuit brought this week by the world-famous English visual artist Roger Dean against the world-famous moviemaker James Cameron alleging, principally, infringement of Dean’s original works by Cameron’s Avatar is making me angry. (It’s here.) And it’s not at all because I think either Cameron or Avatar is untouchable. In fact, I thought Avatar was nothing special, and I haven’t really liked a Cameron film since Aliens (although his work as special effects director for Piranha Part Two: The Spawning is exemplary).

Hasn't seen Titanic.

Hasn’t seen Titanic.

No, I just think that Dean’s lawsuit is gold-digging of the worst kind. The “critically-acclaimed and highly lucrative” Avatar has—according to the complaint, anyway—to date grossed $2 billion… and Dean wants $50 million of it.

The only thing standing in Dean’s way, however, is that his own complaint hints at his (and his lawyers’) misapprehension of American copyright law. Read More…

Caveat Animator (guest post by Brozik)

[A woman] has filed a lawsuit claiming that Disney’s animated film about [a princess, her magical sister, and their talking snowman] took elements from her 2010 autobiography…. Court documents [include] a list of 18 “Frozen” elements that [the woman] claims were plagiarized directly from her book. These include both stories having two sisters, a village, betrayal, open doors/gates, and a “moon setting.” – CNN Money


(Actually still licensed.)

I’m afraid that this woman is going to lose her lawsuit. I say this as not just an attorney once admitted to practice law in two states and before four federal district courts and the U.S. Supreme Court, but also someone who has sued Disney five times for the same thing, to wit: blatant mining of my personal experiences for material to use in their wildly successful movies without asking my permission or compensating me in any way. To date, I have yet to win a lawsuit, or to have my professional license reinstated, but as long as Disney keeps using my life as inspiration for its animation, I will keep demanding satisfaction—and injunctive relief—in court.

It’s partially my own fault, I’ve been told. In or about 1988, when I finished writing Book One of my memoirs—A Tearjerking Volume of Startling Brilliance—I mailed a photocopy of the unpublished manuscript to Disney’s then-president Jeffrey Katzenberg, although I confess that I don’t remember why. But imagine my surprise when I first saw The Little Mermaid in 1989. On the very first page of my work, I mention that I am a Pisces (the Fish), that for religious reasons I don’t eat crabs, and that I like to sing in the shower (that is, under water)!

It was immediately obvious to me that I was singlehandedly responsible for the start of what would become known as the “Disney Renaissance.” According to one source, The Little Mermaid had total international box office earnings of $211 million, of which I got not a penny. Instead, I had to shell out some of my own money to seek justice, which I also did not get. Read More…

Tyson tattoo trouble

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.


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: 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

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…