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Frivolous copyright claims don’t automatically merit fee awards

Originally posted 2006-06-19 12:49:37. Republished by Blog Post Promoter

The New York Law Journal reports that my old friend Southern District Judge Denise Cote has turned down Fox Entertainment Group’s attempt to recoup almost $280,000 in attorney’s fees (pursuant to the copyright statute) it spent staving off a copyright suit that Fox had demonstrated was frivolous (it involved an allegation that a Fox TV program was a “ripoff” of another program). Judge Cote has an interesting take on the issue:

Although both sides agreed that the U.S. action should be dismissed with prejudice, Fox moved for an award of attorney’s fees, arguing that Ninox sued even though it knew that “The Complex: Malibu” was not substantially similar to “Dream House.”

“A compensatory fee award in these circumstances also encourages the defense of future meritless actions,” attorneys for Fox wrote in a letter to Judge Cote. “Like the gambler who raises the stakes in poker while holding no face cards, a litigant who loses this type of bet should bear the expenses incurred by the adversary in calling the bluff.”

Most IP litigators, especially those of us, ahem, “involved” in the defense side, recognize those cases that, once their merits, or outcome, are resolved, still chug along, powered solely by the gleam in someone’s eyes (woe to the ‘s attorney who puts it there!) that there could be an attorney’s fee award at the end of the rainbow. Judge Cote isn’t going to encourage that.

I’m not sure I get the next part, however. Judge Cote also writes,

“[A]lthough Ninox’s copyright claim is frivolous under the prevailing law, because this litigation would have applied copyright principles to a relatively new field of intellectual property, format licensing, as a matter of discretion, the Court will refrain from awarding attorney’s fees.”

Which is odd, because that sounds like whatever finding of frivolousness was made — the Court calls the claims “frivolous and objectively unreasonable” — is pretty much being taken back and defrivolized by that last quoted bit. What is it, exactly, that judges want?

UPDATE: The decision is here. A chilling excerpt from the lawyering point of view: Read More…

Almost Kind of a Replica

Originally posted 2005-09-10 22:23:12. Republished by Blog Post Promoter

I get so much spam that I couldn’t even dream of not using a service to filter it. I use Spam Arrest, which is quite good and always getting better. Most of the spam I get is so bad, so — really — disgusting, that I am reluctant to scan the “unverified” emails, whose titles alone are overwhelmingly obscene. But, alas, sometimes it’s necessary.

Here’s a keeper. Like you, a large percentage of the spam I get is for “replica watches.” Counterfeits, that is. I used to do a lot of work suing these guys, but I suppose that irony is lost on the bots that sound out these emails.

But this one is a keeper. The reference line reads: Re: Injoy [sic] your Cartier that looks 98% REAL!

Looks 98% real! Interesting defense. “Judge, how can they be counterfeit? We stopped at 98% verisimilitude just to make sure no one was confused!”

Punk sprung

Originally posted 2007-04-06 16:05:46. Republished by Blog Post Promoter

Remember the insufferable Josh Wolf? He’s back on the streets, the enemy of police and the people they protect and yet another martyr for the self-absorbed press everywhere. Perhaps, if we’re fortunate, there’s a haircut out here for him. The Washington Post reports:

A San Francisco blogger who spent nearly eight months in jail for refusing to testify about an anarchists’ demonstration was released yesterday after turning over a videotape of the protest and posting it on his Web site.

Josh Wolf, 24, also answered two questions from prosecutors, after striking a deal that ends the longest contempt-of-court term ever served by someone in the U.S. media.

“I’m completely satisfied with the resolution,” Wolf said by phone from California one hour after being released. “There’s a very large problem with forcing a reporter to act as an investigator for a government prosecution. . . . It’s absolutely a victory.”

Since the video captured no violent incidents, he said, “it wasn’t worth being a martyr for no purpose.”

Yeah, that’s for sure. Did you know witnesses to a crime — like the splitting open of a cop’s head, which was what happened here — who have evidence, are transformed into “investigators for a government prosecution” if they are asked to just turn it over? No matter how inconsequential their information? After all, as the Post says, “A viewing of the video leaves unclear why Wolf fought so hard to protect it.” How about self-absorption and contempt for the society that enables him to live indefinitely — and just ending now, rent-free for half a year — as a punk slacker?

Check out his site (click at the graphic above) — he got every bouquet the journalism cult, demanding its special exemptions from participation in the society that enriches them, could throw him while cooling his heels in the joint. I don’t question whether he was acting as a “journalist” at the time — I continue to agree that journalism is something you do, not something you get get to be by virtue of some credential. But I think if you have evidence of a crime, regardless of whatever you were doing when you got it, yes, you give it to the cops. Not according to the subversive media’s view of citizenship circa 2007, however — and once again, we are reminded of why no one likes or trusts the professional media any more. The good news: With God’s help, Josh Wolf’s 15 minutes is over. Hat tip to Evan Brown.

Sloppiness is its own reward — for the other side’s lawyers

Originally posted 2006-07-19 15:57:05. Republished by Blog Post Promoter

We said a while ago that the RIAA and its ilk looked out of control. Now Walter Olson reports that now the RIAA might have to pay attorneys’ fees for going overboard in one of its “sue the phone book” copyright blunderbuss suits. That’s not a good sign.

Overlawyered, but in a Good Way?

Originally posted 2005-07-29 09:25:23. Republished by Blog Post Promoter

Hello, Walter Olson?!

The excellent IP Litigation blog reports on this story about a copyright lawsuit:

Apparently, Compaq published an instruction booklet containing 7 phrases and 4 illustrations “similar” to photographs and phrases in a 100 page book published by the copyright owners. The jury agreed with Compaq that this was de minimis and “fair use” and hence not copyright infringement. However, because the copyright owners apparently engaged in scorched earth litigation tactics while ignoring their own discovery obligations, the court ordered them to pay Compaq’s attorneys’ fees in the amount of $2.7 million. (Ouch!)

Okay, so why is that “overlawyered in a good way”? Because the good guys won, the bad guys have to pay, and the fine law firm (can anyone tell me who?) that represented Compaq made a fine feeSharkbite.jpg and it didn’t cost Compaq anything — right?

Well. I don’t know whether interest was a component of that attorneys’ fee award (it usually isn’t). I don’t know if the losing party can afford to pay Compaq’s fees. I do know that if a jury was able to come to this conclusion, where was the judge? Was there really no summary judgment available here? How nice for Compaq that it can afford to let $2.7 million ride for a zero-percent return over the course of X years. But what if this suit had been brought against your business?

New law of trademark dilution

Originally posted 2006-10-06 16:15:10. Republished by Blog Post Promoter

My old friends at Kaye Scholer (link fixed!) give you the skinny on the new Trademark Dilution Act.  Bottom line:  Good for big companies.  Not so good for defendants. 

SUPER HERO® my foot

Originally posted 2006-03-27 16:08:22. Republished by Blog Post Promoter

UPDATE: Our NPR interview on this topic was on NPR’s “All Things Considered” just before 6 tonight.

We blogged on this topic last week. Today the LA Times weighs in, writing, confusingly:

TICKETS TO THE California Science Center’s latest exhibit, “Marvel Super Heroes Science Exhibition,” sell for $6.75 and up. But there’s one lesson the exhibition offers free of charge to anyone who wanders by the museum, and it’s not about science.

The lesson is in the giant sign looming over the center’s entrance archway: “Marvel ® Super Heroes(TM) Science Exhibition.” The “TM” stands for trademark, signifying that Marvel is claiming exclusive rights to use the term “super hero” as a marketing term for, well, superheroes. The company and its largest competitor, DC Comics, jointly obtained the trademark from the federal Patent and Trademark Office in 1981.

The government’s action means that any company wishing to market a comic book, graphic novel or related item with any variation of “super hero” in the name or title must get permission from Marvel and DC. Dan Taylor, the Costa Mesa-based creator of the “Super Hero Happy Hour” comic, learned about this absurdity two years ago when he was contacted by lawyers for Marvel and DC, prompting him to rename his series to the more pedestrian “Hero Happy Hour.”

What government action? What happened in 1981? (See below — someone else found the answer.) Nor does a claim of a valid registration make any sense in light of the claim in the editorial that the sign says:

Marvel ® Super Heroes(TM) Science Exhibition

If SUPER HEROES were a bona fide registered mark, it should say “Marvel ® Super Heroes ®,” not “Super Heroes(TM).” “TM” signifies the assertion of common-law trademark rights — not a registered mark and, as a practical matter, that a mark was either refused registration or that legal counsel advised against seeking registration (because the refusal would harm a future common law claim).The editorial argues that SUPER HEROES is a generic term not entitled to any trademark protection, which is correct. Genericness is the only way to defend against a registered and incontestible trademark, which presumably one registered in 1981 would be.

Even if it were true that two competing companies could own a trademark jointly in an area where they compete — thereby violating the axiom that trademarks indicate a single source of a good or service with which they are used — they seem to be succesfully avoiding the issue of their absurd joint registration, even as their giant signs claim only a “TM” common-law mark.

I guess that’s some super-heroic PR / legal spin job by the comic book fiends, but why journalists aren’t “getting this” — or why I [couldn't] for the life of me find the source that does indicate a registration — leaves me pretty confused at the very unlikelihood of it all.

UPDATE: Attorney Robert J. Sinnema points me to registration number 1179067:


He adds:

If you look at the owner/assignment information it appears to show joint ownership between DC and Marvel. (I’m with you, though–I don’t know how the mark can be a valid indicator of source.)

And why the plural? Believe me, there’s a reason for everything, including the companies’ continued non-use of the ®. They simply don’t want to draw attention to preposterous joint ownership (again — by competitors!) of the registration of a generic term. Ah, but utilizing the joint assignment — when a joint application would never have passed muster — is diabolically clever. It’s still not an enforceable trademark, however — registration, assignment or not.

UPDATE: Via (and according to) aTypical Joe, I have discovered my inner (trademark – protected) self! Read More…


Originally posted 2007-01-14 11:52:24. Republished by Blog Post Promoter

“Cisco lost rights to iPhone trademark last year, experts say” – on Could explain a lot.

Does Macy’s tell Gimbel’s?

Originally posted 2006-07-05 19:27:20. Republished by Blog Post Promoter

Okay, so that dates me a tad. Well, does Pepsi tell Coke — that Coke employees are trying to sell Coca-Cola secrets to them?

Of course they do:

Three people were charged by federal prosecutors on Wednesday with stealing confidential information, including a sample of a new drink, from The Coca-Cola Co. and trying to sell it to rival PepsiCo Inc.

The suspects include a Coke executive’s administrative assistant, Joya Williams, who is accused of rifling through corporate files and stuffing documents and a new Coca-Cola product into a personal bag. … They are expected to appear before a federal magistrate judge on Thursday in Atlanta, where Coca-Cola is based.

Pepsi spokesman Dave DeCecco said his company did what any responsible company would do in cooperating with Coke and the investigation.

“Competition can sometimes be fierce, but also must be fair and legal,” DeCecco said. “We’re pleased the authorities and the FBI have identified the people responsible for this.”

Pepsi did the right thing. Anyone who understands how real corporations and the law work, as opposed to the tinfoil hat crowd, knows that it would be patently unthinkable for Pepsi — an established company with everything to lose if caught engaged in outright pilfering of its competitor’s proprietary information — to have done otherwise.

Meanwhile, some very greedy, unethical people are in a world of trouble. The real thing.

TRADEMARK NOTE:  Per the Wikipedia article about Gimbel’s linked to above:

The “Gimbel’s” trademark is currently owned by siblings Mark and Beth Gimbel; Mark Gimbel is owner of the Smiling Cow and Gimbel’s Country Store in Boothbay Harbor, Maine. They acquired the trademark in 1999 after Gimbel’s department stores went out of business and the trademark was abandoned

High class blawging

Originally posted 2006-12-19 23:30:18. Republished by Blog Post Promoter


Blawg Review #88 is a lot snazzier, jazzier and just plain classier than usual.

Anti-Sedition Acts begin their attack on the Internet

Originally posted 2006-01-16 23:17:14. Republished by Blog Post Promoter

Different River reports on the biggest threat to free speech ever — the McCain-Feingold Act and its state law copycats.  Is there any chance that the new and improved Supreme Court will save us from this not so petty tyranny?  Or will the present controversies over “money in the political process” (see here for a contrarian view, by the way) make things even worse?

Linux Redux

Originally posted 2005-09-22 13:22:17. Republished by Blog Post Promoter

Philip Albert writes In Defense of the Linux Trademark.

(See here for the other side.)