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Ms. Streisand call your office tweet

When will we ever learn?  The story here is about a lawsuit by lawyer Moira Bernstein, who complains, on behalf of a purported class, that by listing her plain-vanilla attorney name and address and regular old directory information on while festooning her unremarkable data with competing profiles, she’s been wronged.  Actionably.

Streisand EffectJ. Michael Keyes from Dorsey & Whitney, the guy who clocked those clowns in the Southern District of Florida on behalf of Angry Birds and who blogs at (and a Friend of Simon), has been watching the Avvo-suing-lawyer business for a while.  “Avvo has been sued at least twice before over its lawyer rating system–and it prevailed both times. In one of those cases the court ordered the plaintiff to pay fees to Avvo,” he points out.

Courts are loathe to silence the rating of professionals and reduce the flow of information to consumers of legal services, Michael notes, and he’s right — not only regarding professionals, of course, as we demonstrated here, for example, in our own unique way — in fact, the claim linked to there, reported as Boarding Sch. Review, LLC v. Delta Career Educ. Corp., 108 U.S.P.Q.2d 1785 (S.D.N.Y. 2013) is almost identical to the one being made by Bernstein in Illinois, although it is not based on the right of publicity; it is still every bit as silly.

“It’s hard to see how a lawyer’s right of publicity–the right to control the commercial use of one’s name, image, or likeness–could trump the right of the public to have access to this information,” Michael says.  Obviously, it can’t, even if Avvo’s ratings are a little goofy.  Hey, it’s a free country! Read More…

That offensive Internet

Originally posted 2014-10-26 19:37:41. Republished by Blog Post Promoter

My  one-year-off college classmate, former document review colleague, oddly cheerful ultra-left-wing nut and bona fide genius (yeah, I know!) Brian Leiter has a short post full of useful resources about one of my favorite topics, “The Offensive Internet: Speech, Privacy, and Reputation”.

Read it while you can!

Holy copyright baloney, Batman!

Batmobile 1966

This Batmobile?

It’s not as if I’ve got a problem with DC Comics or something, but, well, here you go.  They’re just being like that!  And I’m just catching up with the fin-fendered fun.  First, per the Autoblog, on September 22, 2015:

Judges in the 9th US Circuit Court of Appeals upheld an earlier ruling about the copyright ramifications of selling replicas of the Batmobile. According to an Associated Press report in the Detroit News, the unique appearance of the Caped Crusader’s car was found to make it a character in the story and therefore couldn’t be copied without permission from DC Comics.

The legal battle between Mark Towle and DC Comics goes back years. Towle’s business, Gotham Garage, offered replicas of the 1966 Batmobile from the Adam West TV series and the 1989 film version. They were priced around $90,000, according to AP. The original sold for $4.62 million at auction in 2013.

LA Larry Zerner

LA Larry Zerner

Towle’s lawyer argued that the Batmobiles were simply cars and couldn’t be protected by copyright. In the earlier finding against Towle, the US District Court judge disagreed and defined the Dark Knight’s ride as more than just a vehicle but as a character in Batman’s tales.

Can it be?  Now, per my friend Larry Zerner, who doesn’t think so — well, no; he would agree, in fact, that it can, and that it is, but that it shouldn’t.  Here’s what he says, in a post dated January 23rd of 2016: Read More…

Arnold Palmer and the Perfect Brand

Originally posted 2013-11-11 10:39:03. Republished by Blog Post Promoter

This post is based in part on part of my contribution on trademark law and the right of publicity in the New York State Bar Association publication, In the Arena.  As with other posts on the blog where I have recycled revisited such material, it may sound a little bit less like a LIKELIHOOD OF CONFUSION® blog post and a little bit more book-like.  In this case, however, the post is a significant expansion upon what appeared in the book.

As seen in the Benny Goodman case in the TTAB, celebrity, brand power and trademark rights may outlive a celebrity’s peak performing years, but will bear fruit only as long as the roots of the “brand” itself—the image, sensibility or other association the celebrity name elicits—remains alive.  How does a brand stay alive after the celebrity’s career (much less his life) are over?

BG in Hi FiFor insight into the answer, consider the management of the BENNY GOODMAN trademark, where one significant basis for the TTAB’s ruling against the seemingly bona fide applicant was the finding that a corporate successor in interest was actively exploiting the late King of Swing’s fame.

In contrast, the custodian of the intellectual property rights bequeathed by Goodman’s contemporary and colleague, the great band leader Glenn Miller, managed to completely squander those rights. Miller died tragically in 1944, and decades of internecine squabbles among his heirs followed. Finally, in 2006 the Ninth Circuit essentially declared the “Glenn Miller” and “Glenn Miller Orchestra” trademarks dead as well, affirming the district court’s ruling that decades of inaction by the plaintiff, despite knowledge of the defendant’s infringement, amounted to a fatal case of laches.

Glenn MillerThe lessons of these cases for advising celebrities are obvious: Lawyers must ensure that a star’s brand does not die with him — or with his playing career. An athlete’s planning for post-career continuation of the brand should begin early. Few athletic careers extend past age 40, and most end far earlier. Absent proper brand management, a sports star’s trademark rights may wither and die well before he does.

This need not be the case. Endorsement power can live and grow well past the active playing life of a professional athlete. There is no better example than the extraordinary post-play branding career of golfing legend Arnold Palmer, who unlike Miller and Goodman didn’t lead the perfect band but arguably developed, and exploited, the perfect brand. Read More…

Couture in Court

Originally posted 2012-02-29 23:27:24. Republished by Blog Post Promoter

Fabulous filings for fashionistas — and those who just want to look like them!

The Oatmeal thing, and stupid law

Originally posted 2012-07-02 17:00:08. Republished by Blog Post Promoter

Sometimes an objectively big story implicating this blog’s “beat” completely escapes me.  That’s what happened with the story involving The Oatmeal, a web comic, and  something called FunnyJunk. It sounds awfully stupid.

I think there’s a point where it’s just not worth trying to catch up.  I don’t think a lot of important law is going to  come out of this dispute anyway, because we all know that hard cases make bad law.  Stupid cases often make good law, on the other hand, and there is a lot of stupid floating around on this one.

Instead, in a stunning bait-and-switch, I will mention two cases which, unlike the one I did win, I didn’t win, involving real legal issues, so no one can say I didn’t tell you so.

You may remember Ascentive v. Opinion Corp., which came out pretty good for my clients, — the Eastern District of New York said that the stupid lawsuit brought by the plaintiff was not likely to succeed, and therefore it could not have a preliminary injunction.  Well, in two other related cases, we attempted to get judges to make the not-so-vast leap of faith that a case that is not likely to succeed should, really, probably just go away.

Both times, the judges said, well, where there’s a will (i.e., a will to make unsubstantiated false claims with no real good faith basis), there’s a way; plaintiffs don’t look like winners here but we have to let them have their “day in court” — meaning that, in an American Rule (no fee shifting, ever) world, we have to let them try to bankrupt the smaller company via litigation.  Well, those are the rules, I guess.

This happened in New York State Supreme Court, and once in federal court in Philadelphia.  Both links in the previous sentence leave it to the redoubtable Professor Goldman to address both decisions.   His take on both outcomes, and the trend they represent:

Judge Buckwalter’s [Eastern District of Pennsylvania] opinion is solidly constructed in the sense that it fairly applies existing law to the alleged facts. As taxpayers, we got our money’s worth from this opinion. Nevertheless, it’s clear Judge Buckwalter and other judges lack []adequate doctrinal tools to kill doomed cases early. In the end, this case is really about Amerigas trying to shut down negative reviews of its business. . . . I could imagine other judges finding more doctrinal flexibilities to address the realpolitik of this situation. I can’t blame Judge Buckwalter for failing to do so, but the result is unfortunate nevertheless.

In other words, even a smart judge can’t help it if the law is not so bright when it comes to what is, essentially, trademark bullying — a business model that remains soundly intact for the time being.

Now, go eat your oatmeal, like this guy did:

Florida: A nice place to visit, but…

Originally posted 2014-06-25 01:28:18. Republished by Blog Post Promoter

Internet Solutions operates recruiting and Internet advertising businesses, including one called VeriResume. Tabatha Marshall runs a blog and website at that monitors “phishing,” including dubious job pitches. One section of the blog focused on VeriResume, and the various users posted comments criticizing VeriResume. As the Citizens Media Law Project explains:

One user, who claimed to be a company employee, alleged that the company engages in a “bait-and-switch” routine after applicants submit their information, according to documents attached to the complaint. In an update to her original post, Marshall summarized these user’s comments and expounded on the situation. . . .

[ISC sued.] Internet Solutions’s complaint includes claims for defamation, false light invasion of privacy, and injurious falsehood (trade libel). It alleges that Marshall has “author[ed], post[ed], and publish[ed]” statements claiming that Internet Solutions engages in “phishing,” “scams,” and other criminal and fraudulent conduct. It requests compensatory and punitive damages, and an injunction requiring Marshall to remove the allegedly defamatory posts and prohibiting her from making future defamatory statements about the company.

On April 8th of last year, the court dismissed the complaint on the ground that it lacked personal jurisdiction over Marshall. Internet Solutions then appealed the dismissal to the 11th Circuit and the 11th Circuit certified a question to the Florida Supreme Court as follows: “Does posting allegedly defamatory stories and comments about a company with its principal place of business in Florida on a non-commercial website owned and operated by a nonresident with no other connections to Florida constitute a commission of a tortious act within Florida for purposes of Fla. Stat. section 48.193(1)(b)?”

This is the friend of the court brief filed (conditionally) by the Media Bloggers Association, urging the Florida Supreme Court to respond in the negative. The summary of our argument is as follows (from the brief):

Amicus curiae files this brief to urge this Court not to extend the Florida long-arm statute to reach what is in effect any non-commercial Internet website in the world, regardless of its connection to this State. Such a wide-ranging assertion of jurisdiction for defamation by long-arm jurisdiction would violate the First Amendment of the United States Constitution’s guarantee of free speech by chilling protected journalism and commentary on the Internet. A finding that content or comment on a blog such as Ms. Marshall’s, which is for all meaningful purposes located in another state, constitutes “a tortious act within Florida” would be contrary to case law and would offend the constitutional policy, based on principles of due process, underlying personal jurisdiction. Amicus also urges the Court to decline to extend the Florida long-arm statute because of the conflict such an extension would create with 47 U.S.C. §230, which immunizes website operators from liability arising from the defamatory postings of others.

The brief is short and may be worth scanning if only to find the delicious–but entirely legally germane–punchline right before the Conclusion!

Major work on this filing was done by MBA intern Andie Schwartz and major thanks are due, of course, to Kevin Wimberly of Orlando’s Beusse Wolter Sanks Mora & Maire, P.A., which acted as pro bono local counsel.

(And guess who dragged us into this!)

Cross-posted on the MBA Legal blog.

Keep it Underneath Their Robes, Please

Originally posted 2005-05-03 19:00:56. Republished by Blog Post Promoter

Underneath logoI recommended the Underneath Their Robes blog a little while ago. It is clever and well written, and the concept is brilliant.

But I have to say I am having second thought about the whole, albeit inevitable thing — it’s bad (clever, yes, but bad) enough treating the Demigods of Article III like rock stars, but extending that treatment to judicial clerks is really a bit unseemly, isn’t it?

It’s not as if they’re not all going to be federal judges themselves down the line, anyway!

Joint trademark “ownership”: Tea for two?

Yogi Tea

Yogi tea trademark.

It’s been almost ten years ago since the March 2006 blog post, which got a bit of play as it turned out, in which I expressed a sentiment that seemed incomprehensible to me at the time and a decade later I will admit I understand all too well:  The idea that both Marvel and DC could, as they were, both claim to be own the putative trademark SUPER-HERO.

I wrote this:

DC and Marvel — the only two companies that financially could fight over this with the other of them — are “jointly” claiming rights in the term SUPER-HERO. Adding ™ to super-hero is a naked bid to steal “super-hero” from us and claim it for their own. . . . ,” continues [Boing Boing], concluding:

Here’s a proposal: from now on, let’s never use the term “super-hero” to describe a Marvel character. Let’s call them “underwear perverts” — as Warren Ellis is wont to — or vigilantes, or mutants. Let’s reserve the term “super-hero” exclusively to describe the heroes of comics published by companies that aren’t crooked word-thieves.

(Via Slashdot.)  Well, that’s one approach. Here’s another one: I’ll represent pro bono any company harassed by this claim, if you can get me to where you are as necessary (and provide local counsel if needed).

By the way: They each have a registered trademark incorporating the term SUPER-HERO: MARVEL SUPER-HEROES and LEGION OF SUPER-HEROES, respectively. Does that mean they both have the trademark SUPER HERO? Actually — it means the exact opposite! In fact, if these two “competing” companies are trying to establish some sort of joint right in this term, it could be that rare case of trademark misuse so often pleaded and so never found by the courts…
Read More…

Best of 2006: Trademark City

Originally posted 2015-01-19 19:30:38. Republished by Blog Post Promoter

Trademark City

The Strategic Name Development blog reports that the naming rights to the New York Mets’ new baseball stadium have been sold to Citigroup. The stadium will be called “CitiField” and the privilege of that garish plug will cost Citigroup $20 million a year, or the cost of a grade-A free agent. The blog post has a great rundown on alternative “Citi” names that were considered, as well as a roundup of back-page and other learned reactions.



CitiGroup is itself a metropolis of trademark issues. The CitiGroup Center, which is right out the window of my office (over my shoulder in the picture above left), is a landmark building, i.e., a de facto trademark for the company on the New York skyline, of which it is one of the leading and tallest lights. In the picture below, taken from the east, you can see how its distinctive angles tower jauntily over the lovable rust-colored “lipstick”-shaped [former] LIKELIHOOD OF CONFUSION Building at 885 Third Avenue (below). But of course, buildings can’t really be trademarks, can they? If they can be, the CitiGroup Center is. Read More…