Tag Archives: Civil Procedure

Pick your poison

Originally posted 2010-08-17 18:21:14. Republished by Blog Post Promoter

Licensing of Confusion

Licensing of Confusion

Is it infringement or a breach of contract?  Is it a license or an assignment?  Well, whatever it is, it’s a little complicated, and Pamela Chestek does a good job of following all that geometry on her Property, Intangible blog.

Not just a good job:  That blog post represents hard work — not just intellectually following the fact pattern, but painstakingly cutting and pasting “actualities” into the post.  Nice.  But it’s all worth it for a great blog post, isn’t it, Pamela?  Uh, right?

Either way, I liked this excerpt she pulled from the July 16, 2010 Southern District of New York opinion:

[This] is essentially a contract dispute between an exclusive licensee and licensor over the right to use the trademark[s] at issue. The dispute should be determined by the principles of contract law, as it is the contract that defines the parties’ relationship and provides mechanisms to redress alleged breaches thereto. The Lanham Act, in contrast, establishes marketplace rules governing the conduct of parties not otherwise limited. This is not a case of either the licensee or licensor attempting to protect a trademark from unscrupulous use in the marketplace by third parties. Rather, this case involves the alleged breach of a license agreement.

Is the Mother Court reading “unscrupulous” back into the Lanham Act?  That would be refreshing!

Blogger anonymity upheld against John Doe defamation claims

Originally posted 2006-05-28 09:59:40. Republished by Blog Post Promoter

The defendant-appellant, John Doe No.1, anonymously posted allegedly defamatory statements about the plaintiff-appellee, Cahill, on an internet blog. Cahill brought a defamation action. Seeking to serve process on Doe, Cahill sought to compel the disclosure of his identity from a third party that had the information. A Superior Court judge applied a good faith standard to test the plaintiff’s complaint and ordered the third party to disclose Doe’s identity. Doe appeals from the Superior Court’s order. Because the trial judge applied a standard insufficiently protective of Doe’s First Amendment right to speak anonymously, we reverse that judgment.

The decision in John Doe v. Cahill from the Delaware Supreme Court is here. This is the trend: Appellate courts are not permitting “John Doe” defamation actions to be their own justification. These rulings prevent plaintiffs to merely file a flimsy complaint and get quick discovery from ISP’s so plaintiffs can learn the identity of bloggers and others on the Internet who are virtually never actually committing legally actionable defamation — but who are critics the plaintiff would like identified.

Courts are not making it impossible for bona fide plaintiffs to get discovery to which they’re normally entitled. But igot-gouzenko-hoodedthey are requiring, in cases like these, that plaintiffs make a legal showing of their bona fides up front,which is eminently reasonable considering how meritless most defamation actions are.

It doesn’t do me, as a defendant, any good to win a motion to dismiss if the main thing you, as a plaintiff and the subject of my criticism, already have what you want — my identity — and are now free to get me fired, cut off from my suppliers, or shunned, as the case may be. It also removes some of the burden on defendants, who are usually financially worse off in these situations, from having to hire attorneys to quash subpoenas served on ISP’s, much less to make appearances on behalf of anonymous parties. This is a good trend.

UPDATE: More, similar news from California.

Likelihood of avoision

Originally posted 2009-09-24 21:34:18. Republished by Blog Post Promoter

I’m in pretty deep in a jury trial — no, not an IP case; more like an IT case, only one conducted under a tent and with three rings and thrills and chills for children of all ages — this week, so blogging’s been lighter than light. And regular LOC readers know what that tack means:  It’s ripoff time!

Tacks case?Today, let’s just cut and paste this genuinely litigation-y post from the redoubtable trademark-blogging wunderkind of the Left Coast, Michael Atkins:

This is first for STL: a tax case.

In Blistex Bracken v. City of Seattle, the City imposed a business and occupation (B & O) tax on the licensor of the BLISTEX, BLISTIK and BLIST-FZE trademarks it owns for lip balm and skin care products to Blistex, Inc., an Illinois corporation. Blistex Bracken (BBLP), a Washington limited partnership, objected to the City’s tax on the royalties it received from its licensee. The City assessed $80,406.28 in unpaid B & O taxes plus interest and penalties, for a total of $131,439.84.

BBLP paid the tax and filed an action for a refund in superior court. The court sided in favor of BBLP on summary judgment and ordered the City to pay the refund. The City appealed.

The question on appeal was whether a sufficient nexus existed between BBLP’s activities and the City to justify assessment of the tax under the Due Process Clause of Washington’s Constitution.

On Sept. 21, the Washington Court of Appeals noted that licensee Blistex, not licensor BBLP, develops, manufacturers, markets, licenses, and sells products using the trademarks, and generates the royalty income. The court found the record showed minimal activities that BBLP engaged in relating to owning, managing, and maintaining the trademarks. This led the court to conclude the City lacked the nexus it needed to collect the tax.

Oh, and… you were wondering about the post title?  Let’s avoid the whole tacky subject.  I myself barely passed it in law school.  And the IRS and its like … well, better not to say anything at all, right?

Jus good enough?

Originally posted 2010-06-04 13:13:32. Republished by Blog Post Promoter

Property, intangible:

“Jus tertii” – Wikipedia says Latin for “third party rights” – is a claim by a defendant that someone else has rights superior to the plaintiff’s that defeat the plaintiff’s claim.It’s generally a loser in a trademark case, because a trademark plaintiff need not have exclusive rights. . . .

There is an exception to the usual disfavor for a jus tertii defense, which is if the defendant can prove privity with the third party allowing it to claim some entitlement to the priority rights of the third party:

[I]f a third party permits a defendant to use a trademark as part of a contractual arrangement, the defendant can avoid liability for trademark infringement by invoking the superior trademark rights of the third party.

Pamela Chestek, now I can stand when you enter the room:  You’ve taught me something utterly, completely new I never knew before.

And you, readers, never knew there was such a thing I could admit that there was such a thing, did you?!

Where there’s smokes

Originally posted 2007-06-27 12:51:36. Republished by Blog Post Promoter

The Denver Post reports a very interesting, and for trademark plaintiffs very troubling, decision that the Supreme Court has refused to review. It has to do with one of the standard criteria for the granting of a preliminary injunction in any case:   A “balancing of the harms.” In short, a court has to balance the harm that would result in not granting a preliminary injunction against a defendant, where likelihood of success has already been demonstrated by the plaintiff, against the harm that would be imposed on the defendant if it did grant the injunction.

newport2.JPGCourts, frankly, frequently give this factor short shrift in trademark cases, and especially counterfeiting cases. Under long established precedent, as this article discusses, irreparable harm is usually presumed when a trademark is infringed, and courts and even litigants do not typically spill a lot of ink on this factor, though there are exceptions.

Here’s a big one: Where evidence of the sale of counterfeit goods — here, cigarettes — suggested such a low volume of sales that the court figured that the preliminary injunction was not warranted (links added):

After discovering the sale of the fake cigarettes, Lorillard sought a preliminary injunction early last year against I&G Liquors, to prevent future sales of counterfeit goods.But a district court refused to grant the injunction, and the 10th U.S. Circuit Court of Appeals, based in Denver, upheld the decision earlier this year.

The appeals court ruled that Lorillard failed to prove it would suffer great harm without the injunction, as required by law, and also found that as a small business, the retailer would suffer greater harm from the injunction.

The court noted that Engida said an injunction would force him to stop selling all Newport cigarettes due to the difficulty of detecting bogus packages.

NAM said in its brief that the appeals-court decision set a far stricter standard for obtaining preliminary injunctions than Congress intended.

Now, trial judges are given wide latitude on these issues, and although the Tenth Circuit opinion addressed the issues –

Lorillard argues I and G would not be harmed from being barred from selling counterfeit cigarettes, since doing so is illegal anyway. As I and G points out, however, the counterfeit packages are so similar to genuine packages that an injunction would probably require it to stop selling any Newport® cigarettes while the suit was pending, for fear that it would inadvertently violate the injunction. Further, the district court did not clearly err in taking account of I and G’s status as a small business. All of these factors indicate that an injunction would weigh much more heavily on I and G than the lack of one would affect Lorillard.

– the heart of it, really, is this sentence:   Read More…

Going Wayback… and it’s out of here!

Originally posted 2007-09-05 13:13:55. Republished by Blog Post Promoter

The TTABlog writes about a recent TTAB decision rejecting “Wayback Machine” data as evidence:

The Board observed that the “Wayback Machine” suffers from a serious evidentiary flaw: even Petitioner noted that the “Wayback Machine” shows “each date on which a website has undergone a significant change.” “What may be insignificant to the archivers for the ‘Wayback Machine’ may have significance from the standpoint of evidentiary value in a trademark proceeding.”

It’s not just that.  In a recent case, we considered the use of such material, and on due diligence were informed that even a given page in the Wayback Machine is not definitively made up only of HTML that was present on a given website on the date claimed.  We were given to understand that gaps are “filled” in later, or with earlier files, or that there can otherwise be mixing and matching.  In short, this is a phenomenal research tool — but hard to authenticate for purposes of retrospectively proving what was on a website, when.

UPDATE: Here’s some scholarly thinking on the topic.

Jenzabar: Blogs are sticks and stones; they hurt me.

Originally posted 2009-11-05 20:39:47. Republished by Blog Post Promoter

Jenzabar logoJenzabar, the educational software company Paul Levy and I mentioned last month (and which Overlawyered picked up) in connection with its “trademark as censorship tool” litigation, is back at it again — and not a little clumsily, for all its cleverness.  As Paul reports, the company’s lawyers are

now claiming that such blogging is illegal.  According to Jenzabar, a blog post nominating Jenzabar for the “Trademark Abusers Hall of Shame” will “create controversy” and “cause prejudice to Jenzabar,” and any lawyer who engages in such blogging is in violation of Massachusetts court rules.

Jenzabar has sued the Long Bow Group for placing Jenzabar’s name in the keyword meta tags for a web page about Jenzabar, which, Jenzabar claims, has unfairly placed this web page among the top search results when Internet users do a search for “Jenzabar.”  This placement, Jenzabar protests, allows university IT personnel who are trying to decide whether to buy Jenzabar’s software and services to learn adverse facts about Jenzabar which might, in turn, lead them to decide not to do business with Jenzabar.

Jenzabar is particularly exercised that my blog post cited a statement by Google back in September announcing that its search rankings have not employed keyword meta tags for many years.  This information, Jenzabar insists, is not admissible in court because Matt Cutts’ statements on the subject on the Google’s blog for webmasters, which Google calls “Official News,” is not an “official statement by Google.”  It appears to be Jenzabar’s position that blog posts about a lawsuit must comply with the rules of evidence.

Or something.  In fact, Jenzabar’s argument is a tad cleverer than Paul (wearing his advocacy hat, after all) is letting on — and, as we will see, more than a tad dumber.

For one thing, Janzabar’s kvetch is incorporated into a submission urging the court to exercise its discretion not to permit Paul to appear in the case pro hace vice — so there is no tort claim nor, for that matter, is it necessarily the case that the First Amendment trumps any old thing or is involved hardly at all.  When courts are given “discretion” to make decisions about case management, they are given a lot of leeway before they are considered to have “abused” that discretion.

The second clever thing is that Jenzabar is saying that the reason Paul should not be admitted in the case is that he’s been blogging about it, in violation of Massachusetts Rule of Professional Conduct 3.6, which prohibits extrajudicial statements, which are defined as, more or less, “inadmissible stuff.”  In other words:  Counselor, if you couldn’t get that into evidence, it shouldn’t go into the papers.

Most judges like rules such as these very much.  Hence, the cleverness.

The not-so-clever, however, comes in two parts, too.  First — and this is what Paul picked right up, naturally — the best they could do in terms of “inadmissible” was a fairly technical argument, and not necessarily a correct one, regarding what is actually an assertion so uncontroversial at this point that judges ought to (though seldom do) just take judicial notice of it already and move on in life:  Namely, the following:

Metatags are ignored by search engines, or are so severely discounted as to put their use firmly in the category of de minimis non curat lex.  (Of course, we all know that axiom’s not always applicable to trademark law, right?  But bear with me.) Read More…

About that SLAPP thing

Originally posted 2010-03-17 18:26:28. Republished by Blog Post Promoter


Patton Slap

What you really need, mister, is just --

A number of law bloggers have posted recently (as noted by Colin Samuels at the link referred to in my previous post) in support of a federal statute to deal with the problem of lawsuits known as “strategic lawsuits against public participation”–SLAPP suits.   Ken at Popehat explains, and does so very well (except for his recurring bad habit of using dirty words — made family-safe here! — for no @%*!  good reason):

Last week Marc Randazza touted Congressman Steve Cohen (D-TN)’s Citizen Participation Act, a federal anti-SLAPP statute. It’s been boosted elsewhere as well. Randazza is absolutely [neato] on First Amendment issues — he has more fun than should be legal eviscerating opponents of free speech. I was happy to hear his call to make March “National SLAPP month,” and remain happy even after Patrick explained to me that it doesn’t mean I actually get to hit anyone. But I’m not entirely with Marc on Rep. Cohen’s bill.
First things first: for those not in the know, an anti-SLAPP statute protects litigants from meritless and/or frivolous lawsuits attacking protected speech. The statutes differ substantially among the few jurisdictions that have them, but they all share the same core idea: when plaintiffs sue defendants for certain types of speech, defendants should be able to force the plaintiff to convince a judge that they have a case before they force defendants to incur ruinous litigation costs. Some anti-SLAPP statutes are vigorous and effective, like California’s. I’m very fond of California’s anti-SLAPP statute, under which a judge recently ordered a plaintiff to pay my client nearly $35,000 in attorney fees. Other states, however, have narrow, weak, or ineffective anti-SLAPP statutes — take Maryland, for instance. Many jurisdictions have no anti-SLAPP statutes at all. There’s no existing federal anti-SLAPP statute, though federal courts have sometimes applied state anti-SLAPP statutes to pendant state claims or state claims in diversity cases.

Ken is right:  There are some serious problems with anti-SLAPP laws.  I have been so under water that I haven’t had the chance to respond to the original email that went out urging that we post on this topic, and the movement sort of moved on without me (amazingly!).  But while so many of my clients have been wrongly harmed, or even destroyed, by what could definitely be described as SLAPP suits — which in theory this new law would “solve “– at least one of them has been beat up pretty good by misapplication of the California version of this law, too.   All of which goes to show just how “solutions” consisting of more law so often end up doing exactly the opposite of what they were meant to do.

In the one particular case where this happened, my client — the “famous” S & L Vitamins, here sued under another business name, “Body Source” — was the defendant in a case brought by California Tan, a maker of indoor tanning salon goop.  This was the first “tanning lotion case” in that series of litigations in which the tanning lotion companies threatened to file, or in this case did file, complaints that were rafts of specious intellectual property claims meant to stop S & L from competing with the companies’ “authorized” distributors, despite their legal right to do so (and despite the fact that it was these distributors who were selling them the stuff in the first place).

In other words, for those of you who are not regular readers and hence already sick of the topic, these cases were nothing more or less than a business strategy to financially break companies that had the temerity to sell merchandise online without permission of the manufacturer.  Eventually these companies ended up being owned by one big fat one now called, quite ironically for the Dark Lords of indoor self-immolation, New Sunshine LLC.  And eventually they found that judge who was willing to shut S & L Vitamins down under a unique theory of liability (i.e., aggravated filing of legal arguments the Court does not understand).  But in 2004, this process was just beginning.

Creative as ever, among our counterclaims in the “Cal-Tan” case was a charge that the plaintiff was — as ultimately all the tanning lotion companies under this umbrella did — using meritless trademark infringement actions, and the threat of them, as a form of unfair competition itself.  This is not, as demonstrated below, a novel proposition under the cases; and as a matter of common sense, it is pretty self-evident.

Plaintiff’s California Ãœber Alles response, however, was to go out and hire a specialty law firm that handles mainly SLAPP cases, substitute them into the case for the general counsel, and make a motion to dismiss, and for sanctions, under California’s SLAPP statute based on this counterclaim.

We fought vigorously.   Read More…

The litigation of art

Raymond J. Dowd of the Copyright Litigation BlogRaymond J. Dowd, author of the Copyright Litigation Blog (and much else!), sent along this note by email concerning  a case that would probably interest to mamy LIKELIHOOD OF CONFUSION® readers.  Because he is a man of discretion and high ethical standards, he is not blogging about it — but I can!  With his permission (okay, how high can his standards be if he takes my calls?) I’m reproducing the whole thing here verbatim, but have added a couple of links.

The Second Circuit has scheduled oral argument on December 8 at 10 a.m. at the U.S. Courthouse 9th Floor Ceremonial Courtroom at 500 Pearl Street in a case called Grosz v. Museum of Modern Art. My firm, together with co-counsel Rowland & Petroff, represents the heirs of George Grosz who are appealing a decision of the U.S. District Court for the Southern District of New York. My Dunnington partners Thomas V. Marino and Luke McGrath are counsel on the brief. David Rowland and Patricia Hertling of Rowland & Petroff are also on the brief. It is a major case and I will be arguing for the appellants before a three-judge panel. As in Bakalar v. Vavra the Grosz Heirs are supported by a serious and scholarly amicus brief supporting reversal written by Professors Edward McGlynn Gaffney of Valparaiso University School of Law and Jennifer Anglim Kreder of the Salmon P. Chase School of Law, Northern Kentucky University who are the nation’s leading legal experts in this area. The learned Amici are, in turn, a veritable “Who’s Who” in Holocaust scholarship, education, law and history and include the American Jewish Congress and the Commission for Art Recovery.

MoMA is represented by Charles S. Sims of Proskauer Rose LLP. Proskauer and Mr. Sims represented the Republic of Austria in Altmann v. Austria. Mr. Sims recently argued before the U.S. Supreme Court and obtained a reversal of a Second Circuit decision in Reed Elsevier v. Muchnick.

The facts as set forth below were confirmed by an expert report prepared by Dr. Jonathan Petropoulos, the world’s leading expert in Nazi art looting cases, which expert report was proferred in support of our requests to obtain discovery into MoMA’s documents relating to Alfred Flechtheim.   Read More…

Getting the timing right on copyright registrations

Originally posted 2009-09-10 21:42:19. Republished by Blog Post Promoter

Marty Schwimmer:

IDEA v PETA (SDNY August 298 2009): Plaintiff, no doubt aware that statutory damages are only available for post-registration copyright infringements that are not part of a continuing, ongoing series of infringing acts of the same kind as those engaged by defendant prior to the effective date of registration, alleged in its amended complaint that “Upon information and belief, PETA has commenced new infringements, and prepared and exploited new and materially different Infringing Materials since the effective date of registration of copyright in the Work…”

There were no factual allegations to support this conclusory assertion, and thus dismissed plaintiff’s claim for statutory damages and fees. Note that had plaintiff come up with some factual allegations pre-motion, it may have been granted leave to amend, but didn’t, so wasn’t.

My comment:  I had this issue in a case in the SDNY where we did an expedited copyright registration prior to filing… and it was BOUNCED for lack of originality! That doesn’t happen every day. Other side moved to dismiss; we opposed, natch, as set forth here.  Judge Rakoff agreed with us and denied the motion to dismiss.

Originally posted as a comment
by Ron_Coleman
on The Trademark Blog using DISQUS.

Not a good e-discovery strategy

Originally posted 2007-02-08 16:29:54. Republished by Blog Post Promoter

Lavi Soloway writes (hat tip to Above the Law) regarding the extremely un-white-shoe discrimination litigation in New York County between former Sullivan & Cromwell associate Aaron Charney and the law firm, including this astonishing bit:

Last Wednesday January 31 there was a secret settlement meeting at which Charney was offered an undisclosed sum in return for which he promised, among other things, to destroy the hard drive on his personal, home computer. The destruction of that hard drive moved to the center of the debate. Aaron Charney has been ordered to submit an affidavit to the court regarding the hard drive and the status of documents that were allegedly in his possession.

Judge Fried also ordered Aaron Charney to produce his personal, home hard drive at 9:30 a.m tomorrow morning, if, in fact, is has not been destroyed. Fried was particularly concerned that Charney seems to have destroyed the hard drive (which would presumably have contained emails he sent to him self from his Sullivan and Cromwell account with client documents and other firm related documents attached) AFTER being ordered by Judge Ramos at an earlier hearing not to do so. It appeared that Charney destroyed the hard drive becuase S&C asked him to do so as a condition of settlement.

This would be astonishing, indeed. You don’t even need the new, improved and annoying e-discovery rules in the federal courts, nor do you need to be a litigator, to know what a bad, bad idea that was.

Both parties may have a lot of explaining to do. Sweeter it does not get!

UPDATE: S&C promises plenty of explaining. They’ve got your explaining right here. ($5 Million?!)

Oh, won’t you stay?

Originally posted 2009-11-09 18:10:37. Republished by Blog Post Promoter

Say you will?

The judge politely declined, actually — per our suggestion.  Read all about the happy outcome, and other yeoman work from the self-promotion-with-dignity crowd, at JD Scoop. ;-)

UPDATE:  Second time’s a charm, maybe?  Not.