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Please plead me

Originally posted 2015-09-01 16:00:09. Republished by Blog Post Promoter

Flowers and Tower, Lower Manhattan

No federal court for you.

Everyone knows about copyright preemption.  How about trademarks?  Pamela Chestak has a great post that explains why yes one, and no the other.

First, a refresher on preemption in copyright.  Preemption, of course, refers to that status wherein a given legal subject matter — or more specifically, a category of legal claim — is preempted by the federal government, which is said to “occupy the field” entirely.  

That means you can’t prosecute a copyright claim, strictly speaking, in state court.  It has to be done in federal court, as explained by the Government:

The federal preemption provision, codified at 17 U.S.C. §  301(a), states that: On and after January 1, 1978, all legal or equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106 in works of authorship that are fixed in a tangible medium of expression and come within the subject matter of copyright as specified by sections 102 and 103, whether created before or after that date and whether published or unpublished, are governed exclusively by this title. Thereafter, no person is entitled to any such right or equivalent right in any such work under the common law or statutes of any State. . . . “

Section 301 in effect establishes a two-pronged test to be applied in preemption cases.” Crow v. Wainwright, 720 F.2d 1224, 1225 (11th Cir. 1983), cert. denied, 469 U.S. 819 (1984). Under this preemption test, the states are precluded from enforcing penalties for copyright violations if the intellectual property at issue falls within the “subject matter of copyright” as defined by federal law and if the claimed property rights are “equivalent to” the exclusive rights provided by federal copyright law. Id. at 1225-26. Adopting this standard, the Eleventh Circuit has held that section 301 now precludes state criminal prosecutions for acts of copyright infringement. Id.

That’s a lot of preemption. That’s not to say, however, that a defendant can take advantage of preemption to remove any claim to federal court where the underlying subject matter could be the subject of a copyright but where the claim is not.  For example, while the right of publicity may be implicated by the unauthorized use of a photograph, if the actual claim is not for copyright infringement but for infringing the plaintiff’s right of publicity, it stays in federal court.  And there’s always the notorious “hot news exception” of New York, which is beyond the scope of this post, and even of this one.

Still and all, it is a lot of preemption — but, in terms of intellectual property, preemption is pretty much for copyrights and patents.   So a person could look at this scheme and figure, okay, I get it:  There’s a federal copyright statute, and there’s preemption.  Patent?  Statute, check; preemption, check.  Right of publicity?  No statute, no preemption!   This is simple! No. It’s not like that.  Trademark is different: There is a statute.  But there is not necessarily preemption.   Not at all!   Read More…

Fashionably litigious

Originally posted 2010-05-26 12:48:33. Republished by Blog Post Promoter

Miss Trials is was a new blog, or sub-blog or something (I can’t make heads or tails of the navigation) on a site called Halogen Life.  It’s was written by Kelly Taylor — “a reformed politico, fashion writer and aspiring lead counsel for a major house of style.”

That’s her aspiration, yet she’s blogging?  Good luck with that!  Well, the blog is gone, actually.  But anyway, Kelly says said (the link is dead) that litigation is threatening to really rock the fashion business:

Not everyone in fashion supports a legal overhaul — designer Rick Owens has said he takes copycatting as a compliment. The industry, in part, thrives on knocking off garments. Unique, commercially successful designs do not come cheap. Top fashion designers can pull in millions a year for their work. One way lower market retailers keep costs down is by hiring cheaper design talent to simply translate the latest runway looks into marketable ready-to-wear pieces. Meryl Streep as Vogue editrix Anna Wintour — I mean — fictional Runway magazine editor Miranda Priestly in The Devil Wears Prada broke it down best when she tracked the origin of her assistant’s frumpy sweater from Oscar de la Renta gowns to a Casual Corner clearance bin. Frequently, the inspiration is vague, like mimicking a trendy silhouette or color. The problems arise when the line between inspiration and duplication blur.

Artistic integrity isn’t the only factor in play — exclusivity is a crucial part of the luxury industry. Sartorial snobbery is rampant in many knock-off allegations. Some designers have gone so far as to say that they don’t want plebeians affording their highly-publicized pieces — they’re to be donned by the elite of the world, not, as Versace’s CEO put it, “young girls who can put the designer handbag of their dreams on their arm with less than 300 Euros.”

Is copying a piece down to the smallest detail morally wrong? Absolutely. Should those companies be sued? Probably. But the ramifications of opening the door to a litany of design infringement suits could put a serious damper on mass-market clothing chains. Taking high fashion trends and making them affordable and accessible is nothing new in the apparel industry. Nothing can prevent designers from taking to court to defend their work, but the industry as a whole might want to be wary about eating its young.

Arguing for long-term perspective as a damper on litigation? Good luck with that, too!  Hat tip to @walterolson.

He’s the genuine item, all right

Originally posted 2009-02-04 14:00:37. Republished by Blog Post Promoter

He’s already the most sincere, if not the swiftest, trademark counterfeiting defendant* of 2009, and though it’s only early February it may be hard to top Poynette, Wisconsin’s Vincent Konicek for a certain kind of earnestness and, well, um, some other sort of special quality that you just can’t … replicate:



Rolex … filed a federal lawsuit in Madison Wednesday against Vincent Konicek, accusing him of infringing on the company’s trademarks by selling knockoff Rolexes over the Internet. . . .

It also accused Konicek of violating the federal “cybersquatting” law by using the Rolex name in his Web site, “,” in order to profit from the company’s name.

Konicek said Wednesday that he started selling the fake Rolexes after a trip to China, where they were being sold on the street for $10. Konicek sells his own Chinese-made Rolexes for $99.

The lawsuit states that Rolex found out about the site in October and wrote to Konicek. He faxed back a letter five days later, saying that when they finish “suing all of the following merchants listed on Google search pages, call me and let me know you are going after me next.”

He attached two pages of a Google search that used the terms “Rolex replica.” Rolex concluded that Konicek is “fully aware” that what he is doing is illegal and willful, the lawsuit states.

But Konicek didn’t sound all that certain.

“I didn’t know I was going to run into copyright infringement,” he said. “I guess I’ll have to talk to an attorney and see what I can do.

Well, don’t be hasty or anything, Vincent.  Copyright, trademark, replica, counterfeit, legal, schmegal, whatever.  Talk to an attorney when you have a chance, for sure.  But certainly don’t hesitate to talk to any reporters first.

*Disclosure: Plaintiff here is a some-time LOC client, though not so much in Wisconsin. Lately.

Response of Simon Shiao Tam to the Government’s Request for Certiorari in Lee v. Tam

The new fuzzy logic of copyright damages

What’s all this about the Supreme Court and copyright damages?

So we got that part over with.  Now, I have written a bit about the first-sale aspects of prior iterations of the Kirtsaeng case, and a bit about copyright damages, myself.  Now, however, thanks to the Supreme Court, it’s two great tastes in one candy bar!  So here’s part of what Rajit Kapur of Banner & Witcoff has to say (footnotes omitted):

KapurRajit-53433-4414_CYesterday, the U.S. Supreme Court ruled in Kirtsaeng v. John Wiley & Sons, Inc., No. 15-375, that it is appropriate for a court to give substantial weight to the reasonableness of a losing party’s position when deciding whether to award attorney’s fees in a case brought under the Copyright Act as long as “all other relevant factors” are taken into account. In delivering this opinion for a unanimous Court, Justice Kagan essentially adopted a more flexible and expansive version of the approach advocated for by Wiley (the copyright owner), which primarily turned on whether a losing party’s arguments were objectively reasonable. . .

After Kirtsaeng lost at trial, the case ultimately reached the Supreme Court, which ruled in a 6-3 decision that Kirtsaeng’s actions did not constitute copyright infringement because Wiley’s exclusive rights in the textbooks that Kirtsaeng obtained abroad were exhausted under the “first sale” doctrine. In the three years that have passed since the Supreme Court’s previous ruling, the case has returned to the district court, where Kirtsaeng is now seeking an award of attorney’s fees from Wiley.

Under U.S. copyright laws, a “court may […] award a reasonable attorney’s fee to the prevailing party as part of the costs.” The Supreme Court previously addressed this section of the copyright laws in Fogerty v. Fantasy Inc., 510 U.S. 517, 29 USPQ2d 1881 (1994). In Fogerty, the Court held that “[p]revailing plaintiffs and prevailing defendants are to be treated alike, but attorney’s fees are to be awarded to prevailing parties only as a matter of the court’s discretion.” The Court also discussed in Fogerty several “nonexclusive” factors that “may be used to guide courts’ discretion” in deciding whether to award attorney’s fees, “so long as such factors are faithful to the purposes of the Copyright Act and are applied to prevailing plaintiffs and defendants in an evenhanded manner.”

In the proceedings below, both the district court and the Second Circuit denied Kirtsaeng’s bid for attorney’s fees. In doing so, they followed Second Circuit precedent that places “substantial weight” on the “objective reasonableness” factor — which asks whether the non-prevailing party’s claims were “objectively reasonable” — relative to the other factors discussed in Fogerty.

Read More…

What the hey is going on Section 230, you guys?

Prof. Eric Goldman

What’s gonna be, Eric?

That’s my version of the less family-friendly-titled, but extremely important, question asked by Eric Goldman in this post, which I excerpt, to wit:

It’s been a tough year for Section 230. In one case after another, I’ve had to “explain away” Section 230 losses:

* Doe #14 v. ModelMayhem. The 9th Circuit embraced a dubious “failure to warn” exception to Section 230.
* E-Ventures v. Google. “Bad faith” allegation overcomes Section 230(c)(2) motion to dismiss.
* Adblade v. RevContent. Allowing a lawsuit to proceed that would potentially hold an ad network liable for third party ads.
* Tanisha v. Chandra. “Conspiracy” allegations overcome Section 230 dismissal.
* Diamond Ranch Academy v. Filer. Summaries of third party content isn’t protected by Section 230.
* Maxfield v. Maxfield. Email-forwarding screenshotted tweets isn’t protected by Section 230.
* Vision Security v. Xcentric. Section 230 denied because Ripoff Report isn’t a “neutral publisher” (sorry, I can never write that term without pointing out it’s an oxymoron).
* J.S. v. Village Voice. Section 230 dismissal denied when plaintiff alleges the defendant “did more than simply maintain neutral policies prohibiting or limiting certain content.”
* General Steel v. Chumley. Section 230 denied if defendants selectively edited content to create a desired meaning (a variation on the oxymornon of neutral publishers).
* Xcentric v. Smith. Allegations that content was created by someone acting like an agent defeats Section 230.
* AdvanFort v. Maritime Executive. How content is bylined might affect Section 230.
* Song Fi v. Google. No Section 230(c)(2) defense for removing video as “objectionable content” if Google’s underlying concern was view count inflation.

(Whew, collecting these defense losses into a single post was exhausting!)

Remind of this, and the time professors have to put stuff like it together, next time I grumble about the academy. Thank you, Eric!  He goes on to discuss Cross v. Facebook, CIV 537384 (Cal. Superior Ct. May 31, 2016) (complaint) in which the following awfulness goes forth: Read More…

DMCA – Dumb Management of Copyright Accusations?

Originally posted 2012-05-30 14:31:31. Republished by Blog Post Promoter

Fleet week! 26

 Not every big stick makes sense in every context.

Idiotic DMCA takedown notices:  They’re all the rage.  Tim Bukher links to this item from Mike Masnick, riffing on some of the “best of” DMCA takedown notices published by Google and initially combed through for brickheadedness by TorrentFreak.  Meanwhile, Jonathan Bailey anoints “DMCA Overreactor Extraordinaire.”

Follow that?

Tim notes that this may be the by-product of “automated” or otherwise outsourced-to-non-lawyers IP enforcement programs or firms.

That’s giving lawyers a lot of credit for non-dumbness, wouldn’t you say?

INTA’s magic kingdom

This year’s annual meeting of the International Trademark Association was held in sunny Orlando, Florida, which in many respects is a very appropriate place for an association of trademarks to meet.  Orlando, of course, is the world’s epicenter of theme parks.  And the theme of themes is joyful, real-time, three-dimensional interaction with “intellectual property,” which for present purpose mostly means stuff born of copyright but transmogrified through the wonderful process of “branding” into trademarks.

Such undead creatures, of course, once so transformed can live forever as long as they justify their existence by bringing forth gold.  If so, they will be nurtured, grown and tended forever, and any threat to their health, or to their sustenance, will be brutally interdicted.  (Only in the event of a horrible accident of mutation — where, as a result of some regressive, non-adaptive feature, because of which their continued existence threatens the survival of the entire colony, will one of these creatures not only be allowed to die but, in fact — well, it is better not to speak of such things at all….) Read More…

The color purple

Originally posted 2015-06-19 15:13:46. Republished by Blog Post Promoter

Cadbury-PurpleCadbury is purple in the face over not being able to secure the wordlwide exclusive rights to the use of the color purple in association with the sale of chocolate — even as against an Australian company that’s been using the two together for almost a century:

Cadbury tells me it is “vigorously appealing” against a judgment over the use of purple. In a case that it has pursued for five years, Cadbury has tried and failed to stop Darrell Lea, an Australian chocolate manufacturer, from using the colour.

Despite the fact that Darrell Lea was established in 1927 and has been using purple for most of its existence, Cadbury insists that it has no right to the colour. Cadbury has registered one shade of purple in relation to block chocolate in tablet form in Britain but it has not been as successful elsewhere.

Purple, actually, may be the oldest legally-protected “trademark” color, of sorts. The color was, at certain times during ancient times and antiquity, permitted to be worn only by the nobility. To which, in the chocolate sense, Cadbury may or may not have a claim. I do like the stuff, and perhaps it is among the elite in the chocolate hierarchy. Certainly compared to virtually anything else the English make it is uniquely edible — but regal?

UPDATE:  Cadbury’s claim melts in its hands, not just in our mouths.

UPDATE II:  Settled, dismissed, whatever. It’s all over but the calories!  Via @IPThinkTank.

UPDATE III: Yes.  But no.  I mean yes.

Nominative fair use: The Second Circuit names names

Thurgood Marshall US Courthouse

Second Circuit

Nominative fair — the “unauthorized” use of a trademark as a trademark specifically to invoke the trademark, as opposed to its “non-trademark” use to describe the alleged infringer’s goods or services use — has now come East, courtesy of the Second Circuit Court of Appeals in International Information Systems Security Certification Consortium Inc. v. Security University LLC. 

Let’s call this bumbling, cumbersome caption by the short title, “Security University.”

The opinion (link here) (hat tip to Law360) is an important one for a couple of reasons, of which the ruling on nominative fair use is certainly the more important one.  As Bill Donahue’s Law360 piece explains:

The ruling came in a clash between a small IT security company called Security University LLC and the International Information Systems Security Certification Consortium Inc. over whether company misused the organization’s “Certified Information Systems Security Professional” certification mark in advertising its services.

In particular — get this — the defendant was going around calling one of its trainers a “Master” of this particular techie domain, and just wouldn’t stop:

ISC2 objects to some of 1 SU’s advertisements, run between 2010 and 2012, which, ISC2 argues, misleadingly suggested that SU’s instructor, Clement Dupuis, had attained some higher level of certification as a “Master CISSP” or “CISSP Master.” . . .

SU began using the term “Master” 1 in May 2010. On June 9, 2010, ISC2’s counsel wrote to Schneider asking that she cease using the phrase “Master CISSP” in SU’s advertisements. On June 13, 2010, Schneider emailed Marc Thompson, an employee of a third party entity that oversees seminars on ISC2’s behalf, stating that “SU will continue to use the word Master. Master Clement Dupuis is a Male Teacher [and] thus he is a Master according to the dictionary.”

“He is a Master according to the dictionary.”  

This was the point, as we have learned, at which it should have been clear that if this case were to be litigated, someone’s story was really, really going to stink up the place. Read More…