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Please plead me

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of copyright as specified by sections 102 and 103, whether created before or after that date and whether published or unpublished, are governed exclusively by this title.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…

It’s not all in the details

Originally posted 2012-08-17 10:14:15. Republished by Blog Post Promoter


How detailed do architectural drawings have to be to qualify for copyright protection?  Not all that detailed, the Second Circuit ruled on August 15th, in the case of Scholz Design, Inc. v. Sard Custom Homes, LLC (Docket No. 11-3298).  This is an opinion destined for law school casebooks, not necessarily because it’s groundbreaking (the court is at pains to insist that it’s not) but because, besides being clear, well-organized and mercifully succinct, it has all kinds of law-school-exam-type fact-pattern fun which the court lucidly separates out and resolves.


The architect, Scholz, had prepared the subject house plans and properly registered them in the Copyright Office back in 1988 and 1989, which predates the Architectural Works Copyright Protection Act (“AWCPA“).  Three years later, Scholz entered into an agreement with Sard Custom Homes (“Sard”) to build houses using Scholz’s plans, for which Scholz would be paid a royalty.  After the agreement terminated, Sard — and this is one from the What Could They Have Been Thinking? Department — “posted copies of Scholz’s copyrighted drawings of the [plans] on two different websites to advertise Sard’s ‘ability’ to build the homes.”  This was in and of itself prohibited by the contract between them.  Once the drawings were on the Internet, of course, Scholz’s ability to be compensated for their use was severely undermined.

The architect, Scholz, sued for copyright infringement and breach of contract in the District of Connecticut.  Defendants moved to dismiss on the grounds that the drawings

could not have been copyrighted as architectural works because, the copyrights having been granted in 1988 and 1989, they predate the AWCPA and that the conceptual nature of these depictions means that they are not protected by Scholz’s copyright because they contain insufficient detail from which a building could be constructed.  The district court agreed . . .  reason[ing]  that “copyright protection extends to the component images of architectural designs to the extent that those images allow a copier to construct the protected design,” and therefore “the copied images do not fulfill the intrinsic function of an architectural plan and thus the act of copying them does not violate any right protected by a copyright for architectural  technical drawings.”


The Circuit reversed, neatly summarizing its holding as follows:

Copyright protection of a pictorial work, whether depicting a house, or a flower, or a donkey, or an abstract design, does not depend on any degree of detail. The rights Scholz claims in this suit derive from the general copyright law and not from the AWCPA, which has no relevance to the suit. . . . Read More…

When you say BUD®


Of course he’s happy. The restaurant popped open that can special for him!

Disputes involving the great BUDWEISER trademark are even older than LIKELIHOOD OF CONFUSION® — the blog, not the secondary meaning thing.  You know that because even in 2006 I wrote — already sounding like a tired old man — how ubiquitous Anheuser Busch’s enforcement adventures were.

Here’s the latest one to come to notice, via John Welch, and it does have to make you pine for a cold frosty to read how this went:

The TTAB sustained an opposition to registration of the mark WINEBUD for “alcoholic beverages except beers; wines and still wines and sparkling wines; beverages containing wine, namely, sparkling fruit wine and still fruit wine; ready to drink alcoholic beverages except beers,” finding the mark likely to cause confusion with the famous mark BUD registered for beer. The Board deemed the marks to be highly similar, the involved goods to be related, and the channels of trade and classes of consumers overlapping. The goods are purchased by ordinary consumers who are unlikely to exercise care in their purchases. Survey evidence corroborated the Board’s conclusion. Anheuser-Busch, LLC v. Innvopak Systems Pty Ltd., Opposition No. 91194148 (August 17, 2015) [precedential]. . . .

The marks: Applicant argued that WINEBUD is a “fanciful compound noun formed from the nouns WINE and BUD, an analogy to horticultural words such as ‘rosebud.'” It contended that wine drinkers would perceive the latter half of its mark as connoting the bud of a vine, not as a reference to BUDWEISER the beer or the BUD family of marks. According to Applicant, BUD refers to BUDWEISER and BUDWEISER refers to someone or something from Budweis, and Budweis is the former name of Ceské Budejovice, which is a small Czech town.

The Board was not persuaded, observing that there was no evidence that consumers would associate the mark BUDWEISER with a geographical location. Likewise as to the mark BUD, which is the more relevant mark here, there was no evidence that consumers would make a geographical connection.

There’s a lot more in John’s post, as usual, including the important issue of the role of a senior trademark holder’s fame in an opposition proceeding, which, as the TTAB’s opinion notes, while “not enough to establish likely confusion . . . puts a heavy thumb on Opposer’s side of the scale.”


Heavy thumb indeed (he said, foreshadowingly).

So I want to just think, together with you — which is better than thinking alone — about a couple of aspects of this opposition proceeding. Read More…

MasterCard card. Card card. Card.

Originally posted 2008-12-17 12:21:30. Republished by Blog Post Promoter

Mastercard Card

A reader writes to New York Times Q&A guy Stuart Elliot with a question that’s on a lot minds:  What’s with this “Mastercard card” stuff you hear on the commercials?  There are, evidently, two answers, the second of which was LIKELIHOOD OF CONFUSION®’s guess and the first of which is… well, here, read it for yourself:

“Essentially, many times it’s because we’re driving consumers to use their physical payment card,” says Jon Schwartz, a spokesman for MasterCard Worldwide in Purchase, N.Y., “so we must distinguish between our brand and the MasterCard-branded credit or debit cards that consumers utilize to make purchases.”

You must, eh?  Well, in this humble marketing-and-branding-savvy-law-blogger’s opinion, you’re not.  We can barely follow what you’re talking about, and that’s because what you’re talking about, Jon — can we call you Jon?, thanks — is incoherent.  MasterCard may think consumers understand this distinction via a 30-second spot, but how can they when it doesn’t even make sense no matter how long you stare at it in black and white?

MasterCard, he says, wants us to distinguish between these two things:

  1. “our brand” and
  2. “the MasterCard-branded credit or debit cards that consumers utilize to make purchases”

Well, what is “your brand” besides “the MasterCard-branded credit or debit cards that consumers utilize to make purchases”?  Read More…

Birds gotta fly, fish gotta swim…

Originally posted 2008-07-29 12:12:10. Republished by Blog Post Promoter

Ponzi, schemer.


Liability insurers gotta deny coverage:

As the Trademark Blog reports, American Guarantee & Liability Insurance Co. is balking at the prospect of paying any part of the $305M judgment Adidas America, Inc., obtained against Payless Shoesource, Inc., earlier this year. The insurer filed suit on July 24 in the District of Kansas for a declaration that it is not liable under any of its policies.

Of course they did.  It is entirely rational for them to do so.  $305M is a lot of gelt.  You don’t get that from an insurance company unless a judge makes them give it to you, or they’re afraid a judge might may them give you more.  Ever.

And, as Michael Atkins points out at the link, they do appear to have prima facie grounds for non-coverage.  “Advertising injury” coverage is a funny thing.

So is coverage litigation, if you can get it.  Not so much funny (though all commercial litigation delivers its share of belly laughs!) as fun, fun, fun!  It is as close to the perfect assignment for a commercial litigator there is.  The money is really out there, both sides are massively incentivized, early settlement is essentially unthinkable, there are tons of legal and factual issues.  You can train a generation of associates on just one of these cases.

Just make sure you get someone who really knows how to read an insurance policy and draw up a coherent coverage chart.

Ah, to be in Kansas in the fall…

DMCA days

Originally posted 2008-07-21 13:30:08. Republished by Blog Post Promoter

Mike Masnick on a key question:  Whether copyright fair use, no matter how obvious, may be ignored by a would-be copyright owner when sending a DMCA takedown notice that but for the fair use defense is “reasonable”:

The DMCA has provisions for a copyright holder to assert ownership, at which point the service provider needs to takedown the content. Whoever posted the content can protest that the content was legally posted — which is exactly what happened in this case. However, the DMCA also says that filing a false DMCA notice opens one up to damages from those whose content was taken down. This was in an effort to discourage false DMCA notices. This provision was used last year against Viacom for its false takedowns on satirical clips of the Colbert Report.

The question then, is whether or not filing a takedown notice on content that is used in a way consistent with “fair use” is a misuse or not. Universal Music’s claim is that it is not reasonable for the copyright holder to take fair use into consideration before sending a takedown notice. At a first pass, it sounds like the judge agrees.

As ridiculous as this whole situation is, the judge and Universal Music may be correct under the existing law.

A corrollary:  Is fair use grounds for a DMCA recipient to disregard a DMCA takedown notice?  Hat tip to aggregator Tech Verdict.

UPDATE from Carolyn Wright.

Jonathan Rogers: Is YouTube “Monetizing Piracy”?

Originally posted 2012-06-11 19:57:19. Republished by Blog Post Promoter

I like this from Jonathan Rogers:

On the YouTube blog, the company posted an announcement about a deal struck with many music publishers. Now, when users upload videos with background music that is copyrighted music, instead of begin taken down, if it belongs to certain publishers, an ad will play, and at least some of the revenue sent to that publisher to pay for the royalties that should be paid. . . .

My problem with this is that it only further to cloud the layman YouTube user’s understand of proper copyright music use in videos. Google tried to educate users with a cute video. But you still see people upload full songs with nothing but a picture of the artist then post in the comments “COPYRIGHT NOTICE – I DONT OWN THIS MUSIC NOR CLAIM TO, DONT TAKE THIS DOWN OR SUE ME”. There is a terrible lack of understanding about what copyright protects with most users.

Okay, I don’t love it, I like it.  I like it because I have also written at length about the way copyright enforcement and policy feeds back into the public’s understanding of, and willingness to comply with (or, if you must, “buy into”) intellectual property laws, and why that matters.

In this case, however… “meh.”  I think YouTube had to come to an accommodation with music publishers on this knotty problem.  There’s a limit, especially in a bilateral context such as this one (holding the “publishers” as one “side”), to how much the parties can do to both come to an agreement and make this an effective “teaching moment.”

If you disagree, though, SUE ME!

Contributory trademark infringement liability: Give it to me short

Secondary Trademark Liability | Bloomberg BNA

Buy me!

Last week LIKELIHOOD OF CONFUSION® featured a guest post by Jane Coleman by way of the upcoming update to her book, Secondary Trademark Infringement.  It addressed the question of how the doctrine of contributory liability’s asserted distinction between service providers and product suppliers deals with trademark licenses.

You can just imagine what a wacky summer it’s been at the Coleman place with an issue like that to banter about!

Good enough. But no less exciting — I’d argue, frankly, that it’s more exciting! — is that at the website of the same name, which formerly offered, online and for free, the core of what became the Bloomberg BNA treatise, and then cruelly withdrew all that learning from the free-o-sphere when the book stuff got serious, there is now some consolation for the educated public:  A new overview of contributory liability in trademark, which, of course, is where most of the secondary liability action is anyway.

Thus you will want to bookmark “A Short History of Contributory Liability Doctrine.”

That’s not to say you shouldn’t still buy the book.  If you don’t, frankly, the joke’s on you.

But, in a pinch, that link will probably do the trick.

Rat on the stand

Originally posted 2007-12-28 15:46:47. Republished by Blog Post Promoter

Marty Schwimmer gets all the best stories!

Reply brief on en banc hearing in the Federal Circuit for The Slants

Previous related documents:

About Face

Originally posted 2009-02-18 10:41:19. Republished by Blog Post Promoter


The New York Times reports the latest on the Facebook “license” story:

After a wave of protests from its users, the Facebook social networking site said on Wednesday that it would withdraw changes to its so-called terms of service concerning the data supplied by the tens of millions of people who use it. . . .

Earlier this month, Facebook deleted a provision from its terms of service that said users could remove their content at any time, at which time the license would expire. It added new language that said Facebook would retain users’ content and licenses after an account was terminated. . . .

In a Facebook posting on Wednesday, Mr. Zuckerberg said: “A couple of weeks ago, we revised our terms of use hoping to clarify some parts for our users. Over the past couple of days, we received a lot of questions and comments about the changes and what they mean for people and their information. Based on this feedback, we have decided to return to our previous terms of use while we resolve the issues that people have raised.”

The posting said the decision to return to previous terms was “the right thing for now.”

That covers it, right?   I no longer have to worry that Facebook will leverage my worldwide fame for its nefarious purposes after I finally grow up and delete my account forever.

Okay, I wasn’t really worried about that.  Then again, being an adult I’m not someone who’s posted dozens of pictures of himself hoisting brewskies, tangled up in piles of flesh or whatever, and neither are my “friends.”

But this does seem to be a prevalent practice among people who may some day realize that they want to be adults, too (i.e., college students), or at least that they may want to get a job somewhere.  Is that what’s animating the outrage? Read More…

All that know-chow costs some scratch!

Originally posted 2008-05-07 11:06:58. Republished by Blog Post Promoter


Legal Blog Watch:

Pet food giant Purina is like a dog that won’t give up its bone — or in this case, its chow. Three years ago, Purina sent a cease-and-desist letter to Chow, Baby!, a Baltimore area pet supply shop and Web site owned by Robin McDonald, asserting that its use of the “Chow, Baby!” name was likely to cause confusion with Purina’s CHOW trademarks and would dilute the distinctive quality of those marks. McDonald’s lawyer advised her that it would cost thousands of dollars to fight for the name and that she might lose anyway. As a result, McDonald took down the Web site. But she retained the name, Chow, Baby! for her local store, figuring that Purina wouldn’t find out about it.

Now, McDonald is ready to re-launch an Internet presence. But this time, McDonald decided to steer clear of a dogfight with Purina, and instead, changed her company’s name to “Howl, Baby,” subsequently shortened to Howl.

Would it really have cost McDonald “thousands of dollars” to tussle with Purina, or was her lawyer barking up the wrong tree when he dispensed that advice?

For someone who reads legal blogs, Carolyn Elefant asks a surprising question! No, it doesn’t cost thousands of dollars of anyone’s billable time to write up the argument about why Purina is out of line on a blog, as Carol does admirably at the link, or even a letter responding to Purina’s C&D. (Via Overlawyered.)

But there is not much use in arguing the merits of a claim with lawyers in correspondence, which I try studiously to avoid. Some percentage of attorneys above 50% knows both sides of the argument before putting a threat to paper, and your tutoring is seldom going to move their corporate clients. (In the case of smaller businesses, an “educational” response may be worthwhile, because there by virtue of your letter your adversary’s client may have the first chance to hear the other side of the argument — even giving your adversary the benefit of the doubt!)

In any case companies such as Purina are not interested in discussing the matter. Brand management isn’t a seminar. Read More…