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Mooning off into the sunset

Originally posted 2010-10-12 18:56:07. Republished by Blog Post Promoter

Marlboro Man

A real man's fake cowboy

The lawsuit by the Naked Cowboy against candymaker Mars has been settled. Terms are undisclosed, the filing of a stipulation of dismissal with prejudice a sorry fig leaf over this tawdry affair.

UPDATE:  This Naked Cowboy is seems to be the black-hat kind:  He went and sued some little lady called the Naked Cowgirl.  But according to this thorough treatment by someone’s trademark attorney (with all due respect, not, contrary to his suggestion, mine*), she’s ready, able and willing to shoot back.

*Maybe he should be though, for it says here that among his other unique offerings, he addresses the number-one concern of trademark clients (scroll down):   Respecting the planet, dammit!  “Nearly 100% of our trademark search and trademark registration services consume no paper products whatsoever.”  How does he do it?!  “We accomplish such a feat by communicating with both you and the Trademark Office electronically and over the telephone whenever we can.”
I’d like to see that, let me tell you.  Man. Nearly 100%!!
Anyway, it’s all good. Anyone who goes through the trouble of slamming Legal Zoom in a special dedicated section of his blog can’t be all … green.

Jews for Jesus* v. free speech: update

Originally posted 2012-12-04 12:56:40. Republished by Blog Post Promoter

The troublesome “Jews for Jesus” blog is still around, after some people had the impression that perhaps Jews for Jesus, Inc. had been succesful in shutting it down. The J4J Whistleblower is still feeling kind of conspiratorial, writing:

Take your time to read through my previous blogs and the points raised. In one of my earlier blogs I pointed out that it takes time to sort through everything to realize what is going on. My previous post to this one looks at the actual text of Jews for Jesus’ lawsuit and points out what they really want. You’ll find this is in line with Susan Perlman’s comment that Jews for Jesus believes it has a right to how their organization will be represented on the internet. That explains why they are only using this blog as a stepping stone to have Google remove any blog with the name “jewsforjesus” in it. An astute observer on a legal blog pointed out that the likely target is

Harrumph. I couldn’t find that astute observer — Whistleblower is quite stingy with the hyperlinks for a blogger — but if that were true, it would be another blow inflicted on free speech by Jews for Jesus with the help of the courts. Quite ironic considering that this group has actually extended free speech protection in a number of decisions, including one in the U.S. Supreme Court, where its own speech was threatened.

But that sort of irony is already old and tired, isn’t it? It must be, because this story is being fairly well ignored — as the Jews for Jesus v. Brodsky case was — by the usual suspects in the free speech department whose ox, for some reason, doesn’t ever appear to be gored when Jews for Jesus is doing the goring. In 1998, Steve Brodsky’s requests for amicus submissions in the Third Circuit were blown off by both the New Jersey ACLU and the Electronic Freedom Foundation, without any real explanation, for example. Here too the EFF has been silent about this case, as have been the “copyfighters” at I don’t know why now, as I didn’t know why, then. Maybe if Steve Brodsky or the Whistleblower published pornography or scandalous charactures of Dick Cheney or were uploading music files the self-appointed guardians of free speech would have something to say about what’s going on here.

Yes, the old irony is old news. I guess it’s just as well, anyway, because in the area of free speech, now we have the all new irony!

Or is irony just not the right word for plain old cynicism? Well… don’t ask me!

*(Sour grapes warning! But if you can stand the taste, come on in; the dishing’s fine!)

UPDATE: Thanks to Dean for the link. I think that one may criticize my analysis above by suggesting that because of my own personal interest in this case, I am also guilty of the “whose ox is being gored?” syndrome. This may be true, but then I do not claim a comprehensive bailiwick, as the would-be guardians of free speech on the Internet do. I am just one lawyer who has had a few clients with interest in these matters. But I will acknowledge that the experience of representing Steve Brodsky against Jews for Jesus, Inc. and The National Debate against the New York Times has affected my own views, which formerly were biased in favor of trademark and copyright holders — that, and getting beaten up on daily basis for several months on the CYBERIA-L list, largely at the hands of Mike Godwin! So you know — we grow, we learn…

The heart wants what it wants

Originally posted 2011-08-24 12:55:22. Republished by Blog Post Promoter

The New York Law Journal (subscription required) reports:

Manhattan Supreme Court Justice Bernard J. Fried has ruled that under the terms of a January 2003 settlement agreement, [Woody Allen’s former producer] may develop television-and-airplane versions of Mr. Allen’s “Bullets Over Broadway,” “Mighty Aphrodite,” “Everyone Says I Love You,” “Deconstructing Harry,” “Celebrity” and “Sweet and Lowdown.”

The dispute over the final cuts of the modified films is the latest fallout of a May 2001 lawsuit Mr. Allen filed against [the producer] Ms. Doumanian, her personal and professional partner Jacqui Safra and their production company, Sweetland Films.

[A settlement] agreement [betweeen the two sides] was . . . at issue in the current dispute, over the final cut of the television-and-airplane versions of six films Mr. Allen made with Ms. Doumanian’s backing.

According to Justice Fried’s decision…, the 2003 settlement stipulated that if Mr. Allen and Ms. Doumanian could not agree on the cuts that would allow his oft-profane films to satisfy TV standards, either party could submit the matter to the Commercial Division of the Manhattan Supreme Court for resolution.

Now it has. Luckily for the plucky, morally deranged Alan Koenigsberg, no one wants to see any of the films named above, nor will anyone notice if any or all of them are diced and sliced for the back of an airplane seat. The decision in Moses Productions., Inc. v Sweetland Films, B.V. has been published here (the link provided by the Law Journal was broken never was repaired).

Mr. Allen’s . . . attorneys, Michael Zweig and Chris Carbone of Loeb & Loeb, called upon a single expert witness, Time Magazine film critic Richard Schickel.

Mr. Schickel testified that Ms. Doumanian’s methodology for satisfying television standards — primarily, dubbing over offending language — would damage the films’ “comprehensibility, entertainment value and artistic integrity,” according to the decision.

By cutting scenes and camouflaging offending language, Mr. Allen argued, the producers would trick audiences into believing they were watching an unedited film. He preferred explicit changes, such as bleeping offending language and blurring offending images.

The defense, in contrast, presented two expert witnesses, both of whom specialize in adapting films for television broadcast. Their testimony focused on the eventual salability of the modified movies. . . .

After watching the original versions of all six films at issue, Justice Fried ruled in favor of Ms. Doumanian.

“Based on the undisputed hearing testimony that networks rarely or [n]ever air films with bleeping or muting, however, and the parties’ apparent agreement that shooting alternate coverage for the films is no longer feasible, it appears that word replacement is the only way to modify the content in order to comply with the parties’ agreement to create one version of each of the films that complies with generally accepted network television censorship and/or standards and practices requirements,” Justice Fried concluded.

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…

Update on Lady Voldemort

Originally posted 2011-09-09 10:52:08. Republished by Blog Post Promoter

We first wrote about her lawsuit against a fansite operator here. Sam Bayard has the latest. 

Piggy Lady Rowling

Originally posted 2007-11-01 17:01:29. Republished by Blog Post Promoter

Dudley_eatingBill Patry is on the mark regarding the Harry Potter magnate’s lawsuit against Steve Vander Ark, a fellow who dared publish a print version of a popular Harry Potter compendium. First, a quote from Rowling, the Patry’s commentary:

I hope one day to write the definitive Harry Potter encyclopedia, which will include all the material that never made it into the novels, and …I will give the royalties from this book to charity. I cannot, therefore, approve of ‘companion books’ or ‘encyclopedias’ that seek to preempt my definitive Potter reference book for their authors’ own personal gain.

She doesn’t add, no doubt because it is not the case, that the profits will go to charity, only her royalties. Such a shame, such a misguided monopolistic effort to wring every nickel possible out of a franchise that has brought untold wealth to Ms. Rowling and her licensees. Does she really think that any fan would not buy her Lexicon even if they already had Mr. Vander Ark’s?

Patry then analyzes one entry, about the accio spell, and concludes, “I haven’t spent a lot of time on the site and so don’t know if there is other material that might be infringing, but I don’t see how a list of spells with this type of commentary is anything other than fair use.”

Me, neither. Writes a good children’s book, but in the penumbras and emanations she’s quite the moral poseur, is Lady Rowling. I wonder what “house” of Hogwarts she belongs in?

What’s A Library, and What Is Google Going to do to It?

Originally posted 2005-08-19 16:32:51. Republished by Blog Post Promoter

Discussed with intelligence and insight at the Derivate Work blog.

The Parody Bomb Goes Off

Originally posted 2014-06-17 16:41:05. Republished by Blog Post Promoter

When it rains, it pours. Via Andrew Sullivan (and reported here too) a report that Volkswagen is going to sue— in the UK — the pair who made that tasteless mock commercial circulating around the Internet in which a suicide bomber detonates himself but the explosion is contained by the well-built Volkswagen. I don’t know anything about UK law on parodies, and I am not sure whether this would be a trademark suit for use (or dilution?) of the Volkswagen trademarks (which would probably lose here) or a copyright suit based on some similar commercial which I have not seen (which theoretically could win here). (See our discussion on what does and does not qualify as a parody here.)

If you’re Volkswagen, you may have to sue first and ask questions later. There are times when, as long as there is a colorable claim (i.e., the markholder does not believe the complaint violates legal ethics or Federal Rule 11 as frivolous) — even though it’s not a likely winner, you’ve got to file to protect the brand and make a public statement where there’s the risk of public outrage. The lawsuit is a way to distance yourself from the use of the mark.

That’s when it’s not frivolous. And it’s when we’re talking about a morally outrageous use of the mark, as opposed to a commercially or politically, religiously, philosophically competitive use — or one where you just plain resent that your property is part of the picture and you weren’t cut in on the profits.

Slippery slopes? That’s why lawyers are paid to exercise judgment.

UPDATE:  Hm.  Maybe the whole story was a dud:

After a week of prevarication [sic], the car giant has decided to go ahead and sue the people behind the advert on the grounds that it was damaging its reputation around the world and falsely linked the VW with terrorism.

“We are taking legal action but because it’s early stages we cannot comment further,” a Volkswagen spokesman said.

But the company privately admitted that it cannot locate Lee and Dan, the London based advertising creative partnership who dreamed up the film, which has been seen around the world via the internet.

“We are prepared to pursue the two individuals but need to locate them to ensure the success of our legal claim,” the company said in a private memo, details of which have been obtained by

See Dick Win. Pay, Defendant, Pay.

Originally posted 2010-04-23 00:50:23. Republished by Blog Post Promoter

most-dj-sallyBy now you must have heard about the dustup involving Yiddish with Dick and Jane. The irony for me is that not long after I was learning to read English with the original Dick and Jane at P.S. 225, I was learning Yiddish from an essentially identical book for little secular Yiddishists (it turned out handy later at the Chaim Berlin yeshiva, but I digress) with “Motl” and “Gitl” standing in for Dick and Jane.

In any event, and after discussing this case with my friend, IP lawyer Ben Manevitz, this case seems to be pretty much out of the “fool’s parody” playbook — “fool’s” as in “fool’s gold.” It looks like a parody, but it isn’t. The case to look at here is the Cat Not in the Hat case out of the (here it comes) Ninth Circuit (getting one right). Here the Circuit Court followed the rule set out a few years earlier in the “Pretty Woman Parody” case and applied it to a book, written in the style and format of Dr. Seuss’s The Cat in the Hat, to tell the story about the O.J. Simpson murders in which Simpson is “the cat not in the hat.” (Tastefulness was not a basis of the decision.) The court correctly distinguished between a real parody, whose target is the plaintiff’s work, and what I am calling a “fool’s parody,” which merely utilizes (or as Ben says nicely, “leverages”) the extant work as a way to parody some other thing.

Now it’s possible that the target of the parody here is the gentile world, of which Dick and Jane are supposedly emblematic. (Of course many argued they weren’t even emblematic of that.) The problem with such an argument is that it’s too broad of an exception. No, that Spot won’t hunt.

UPDATE: I stumbled on some terrific and contrary commentary on how to read the Cat Not in the Hat and Pretty Woman cases from, guess who, Marty Schwimmer, here wearing his Blawg Channels hat. Under his interpretation, the “broader commentary” would in fact fly, to which I say he has thereby crafted an exception that swallows the rule. As I said to some friends recently, I remain pretty right-wing on copyright — despite being bloodied (and significantly enlightened) online years ago by the crew at the CYBERIA-L — but on trademark I’m a freethinker…

An opinion to Di for

Originally posted 2013-06-27 11:41:55. Republished by Blog Post Promoter

I do a lot of bellyaching around here about how there are never any consequences for filing frivolous trademark and copyright lawsuits. What’s the worst thing that can happen to a well-heeled plaintiff that wants to use the expense of defending, even meritoriously, against a “federal case” as a way to effectuate a “business message” (namely, you’re out of business, because we say so)? Usually, nothing. Not just usually. Really pretty much a lot usually.

"Do you have Princess Di in the can?"

Not this time.  This is a little dense if you’re not used to reading judicial opinions, but the payoff is worthwhile.  Emphasis is mine:

The Franklin Mint Company and its principals, Stewart and Lynda Resnick, (collectively, Franklin Mint) appeal from a judgment dismissing their malicious prosecution action against the law firm Manatt Phelps & Phillips LLP and attorney Mark S. Lee (collectively, Manatt). Manatt represented the executors of the estate of Diana, Princess of Wales and the trustees of The Diana, Princess of Wales Memorial Fund (collectively, the Fund) in a lawsuit filed against Franklin Mint alleging claims related to Franklin Mint’s use of Princess Diana‟s name and image in connection with merchandise Franklin Mint advertised and sold. . . .

We conclude that, based on the record before us, no reasonable attorney could find tenable the false advertising claim as it was alleged and litigated in the underlying action. Therefore, we hold there was no probable cause to prosecute that claim. We also hold there was no probable cause to prosecute the trademark dilution claim because no reasonable attorney could conclude that the claim could satisfy two fundamental, long-standing principles of trademark law. First, to be protectable as a trademark, a word, phrase, name, or symbol must be used in commerce to identify goods or services and their source. Although Manatt contends that Princess Diana used her name in connection with her appearances at charitable events, that use does not demonstrate trademark use. Second, a trademark that is descriptive — such as a personal name — must acquire secondary meaning to be protectable in a trademark dilution action. In other words, the primary meaning of the mark (i.e., the descriptive meaning) must in the minds of the public be subordinate to its meaning as the source of goods or services. Because “Diana, Princess of Wales” has such an extraordinarily strong primary meaning as descriptive of Princess Diana as a person, the contention that it had acquired secondary meaning at the time of the underlying lawsuit was, as the district court in the underlying lawsuit observed, “absurd.” (Cairns v. Franklin Mint Co. (C.D. Cal. 2000) 107 F.Supp.2d 1212, 1222 (Cairns III).) Therefore, we conclude that the trademark dilution claim was untenable.

Now this is really interesting on several levels.  One is the obvious one I’ve already alluded to–a court calling attorneys out and saying, “Stop the baloney.  You knew what you were doing here was fallacious, but you just kept doing it.  If malice and damages are proved, that’s actionable.”  It’s astonishing to read that.  Don’t even ask what has happened, in my own experience in the vaunted federal courts facing just such claims, that leaves me so dumbstruck reading this.

But then there’s the substantive legal stuff.  Diana, Princess of Wales, not a “trademark”?  Just because she’s mostly really a person (no longer a living one, granted, but you get the idea)?  But what about all those other celebrity trademark names? Read More…