Tag Archives: Fair Use

Never trust a hippie?

Woodstock_posterFor years I’ve been kvetching here about the phenomenon of municipal overreach on intellectual property claims, whether it’s catchphrases with no particular geographic association; transit line symbols that do convey meaning but when licensed don’t convey meaningful claims of endorsement or affiliation; skyline features that belong to no one; or municipal seals that the Lanham Act simply says ain’t trademarks.

So when I saw this headline — “Can a town’s name be a trademark?” — I got ready to roll up my sleeves again.  But… no.  This is even more interesting:

Town Board members do not expect to use not-for-profit radio station WIOF as background filler between public access television programs until a trademark dispute is settled that has commercial station WDST claiming foul over use of the town’s name.

Supervisor Jeremy Wilber during a telephone interview Wednesday said the use of “Woodstock 104” by WIOF is being protested by WDST as an infringement on the “Radio Woodstock” and “Woodstock Radio” identifiers. . . .

WDST General Manager Richard Fusco on Friday said station officials have no objections to use of WIOF for the public access channel but believe use of “Woodstock 104” will confuse listeners.

“We’re are not looking in any way, shape or form not have her do it or in any way interfere with what (WIOF Chief Executive Officer Randi Steele) is doing, or in any way want to squelch her project,” he said. “We just saying do whatever you want to do, just don’t infringe on our trademark.”

Radio Woodstock®

Radio Woodstock®

Information provided by WDST shows the station trademarked [sic] the phrases “Radio Woodstock” in 1994 and “Woodstock Radio” in 2002.

Fusco said station officials are hopeful that a court case can be avoided and said there are many options for WIOF to identify itself with Woodstock without use of the town’s name in a tag line or slogan.

“She is perfectly able to say ‘this is hippie radio’ or ‘tie dyed radio’ or what ever name she wants to call it ‘from Woodstock, New York,’” he said. “The geographic location is what she is legally able to use. But associating it as the name of the entity…is an infringement on the trademark.”

Steele contends WDST management is being predatory in efforts to have the phrase discontinued.

“When we submitted the paperwork to the state that was in order to call our radio division ‘Woodstock 104,’” she said.

“You cannot trademark the name of the town,” Steele said. “That’s restraint of trade.”

What we have here is a veritable trademark law festival!  Unlike the Woodstock one, however, this is neither Aquarian, three days long (enough of that!), nor muddy.  But for sure, it’s at least as much fun, and no penicillin will be required afterwards.

Read More…

Best of 2009: The DMCA and the search engine

DMCA 1998Posted on August 6, 2009.

Traverse Legal:

Mary Roach has a great post at CircleID on an area that we have talked about extensively, namely, copyright takedowns under the Digital Millennium Copyright Act.  Mary’s post covers the more specific strategy of sending takedown notices to search engine providers, such as Google, Yahoo, and MSN, to effectively reduce access to stolen creative materials.

10 Years of LIKELIHOOD OF CONFUSION®

10 Years of LIKELIHOOD OF CONFUSION®

That’s worth checking out.  How does it work?  As Mary writes,

[R]ather than identifying the infringing copyrighted material itself, rights owners must instead identify the search result or directory page which links to a webpage containing the infringing material. For example, this would require providing the keyword or keyword phrase used in a search or directory query, plus the URL(s) which point to the infringing websites in the DMCA complaint.

You can just imagine the bells going off in my head when I read that formulation.

Read More…

Best of 2006: Who owns the copyright in scans of public domain works?

Originally posted 2006-05-07 11:39:56. Republished by Blog Post Promoter

First posted on May 7, 2006.

I love Plan59.com. If you’re my age or a little older, almost any click on this smartly designed and comprehensive website can recreate a certain feeling that comes with recalling a much more secure, confident and simple America — kind of like the grown up version of Dick and Jane.

Rockwell copy copy copy

Great metaphor. Probably not great fair use.

I would use the graphics from Plan59.com every day if I could, but I don’t have their permission. On the other hand… whose graphics are they, really? They put it this way:

PLEASE NOTE: The images on this site are embedded with an invisible digital watermark and IPTC metadata. Are you free to scan and market images out of that nifty 1936 Hupmobile brochure you got at the flea market? Yes, if it was published without a copyright, or if the copyright has expired. Is it okay to use the images we’ve made from the same catalog? Ahem, cough. We own the scans we’ve made—they represent a considerable investment in equipment, source materials and labor over the past five years. Every jpeg and gif on this site is copyrighted and marked as belonging to us. Please, no borrowing without getting permission.

10 Years of Bloggy Ok-Ness

10 Years of Bloggy Ok-Ness

Hmm. What they’re saying is that the Hupmobile image is in the public domain, but that they have made a new, derivative work from it by virtue of their “considerable investment in equipment, source materials and labor.” Well, that sounds fair. If they thought they couldn’t protect their work, they probably wouldn’t have gone through the trouble. But does it comport with copyright law?

Read More…

War Is Peace; Freedom is Slavery; Ignorance is Strength

Originally posted 2007-03-28 19:08:24. Republished by Blog Post Promoter

And free speech is a form of negotiable intellectual property, right?

Maybe I can give up the blog. There is no percentage in clever commentary when the claimants provide the self-parody.  Credit to Instapundit.

SCOTUS: Likelihood of Confusion Bows to Fair Use

Originally posted 2005-01-03 20:35:00. Republished by Blog Post Promoter

(HEADLINE UPDATED) Tilt of the chapeau to law student Joe Gratz’s blog for reporting this decision from the U.S. Supreme Court that came down a month ago today. Here’s Joe’s summary and an excerpt from KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc.:

The Supreme Court held, unsurprisingly and unanimously, that the affirmative defense of trademark fair use does not place a burden on the defendant to prove that his use was not only descriptive, but also unlikely to cause consumer confusion.

Now I’m not sure I agree with Joe’s comment on his blog that Justice Souter said it all so well; I prefer this pithier summary from the official syllabus: “Nor would it make sense to provide an affirmative defense of no confusion plus good faith, when merely rebutting the plaintiff’s case on confusion would entitle the defendant to judgment, good faith or not.”

By the way, want to guess which Circuit Court the Supreme overturned?

Major League Baseball steals from customers

Originally posted 2007-11-07 22:14:24. Republished by Blog Post Promoter

“If You Purchased MLB Game Downloads Before 2006, Your Discs/Files Are Now Useless; MLB Has Stolen Your $$$ And Claims “No Refunds”

Compelling blog post title, no?

So typical of the bloated steroid brains running that business. Yes, guys, you’ll always be able to do just whatever you want to fans, because your product is in unceasingly great demand. Just ask the record companies.

Billed hat tip to TechMeme.

Online use of trademarks and copyrights by “unauthorized distributors”

Originally posted 2007-10-06 20:57:56. Republished by Blog Post Promoter

LIKELIHOOD OF CONFUSION does not generally comment about active cases in which we are directly involved. But a very important and detailed (61 pages!) summary judgment decision came down in the U.S. District Court for the Eastern District of New York last week, in the case of S & L Vitamins, Inc. v. Australian Gold, Inc., 2:05-cv-1217 in which I represent the plaintiff. And while we will not comment on the decision, for obvious reasons, any reader of this blog involved in trademarks and the Internet will want to read it. So here it is. Credit to David Nieporent, co-author on the plaintiff’s brief!

UPDATE: Cogent commentary from Eric Goldman and Matthew Sag; now comes Rebecca Tushnet.

U.S. District of Arizona: “No automatic injunction upon a finding of copyright infringement”

Originally posted 2008-09-05 17:38:37. Republished by Blog Post Promoter

Not that the plaintiffs in the Designer Skin case didn’t get an injunction:  They did (here it is); a narrow one utilizing proposed language by defendants explicitly permitting S&L to use its own photographs of Designer Skin merchandise on its website (see the prior post).  But the Court ruled that they were not entitled to it merely by virtue of proving copyright infringement.  Here’s an excerpt from the opinion, discussing the point:

The parties dispute the law governing the issuance of a permanent injunction in a copyright-infringement case. Relying on MAI Sys. Corp. v. Peak Computer, Inc., 991 F.2d 511, 520 (9th Cir. 1993), Designer Skin argues that “a permanent injunction [should] be granted in a copyright infringement case when liability has been established and there is a threat of continuing violations.”  Conversely, S & L Vitamins argues that the MAI rule has been overruled by the recent Supreme Court opinion in eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006), and that the traditional four-factor test reaffirmed by eBay applies.

MAI’s general rule may accurately describe the result of applying the four-factor test to a copyright-infringement case in which liability has been established and there is a threat of continuing violations. Nevertheless, as Judge Wilson persuasively demonstrated in Metro-Goldwyn-Mayer Studios, Inc. v. Grokster, Ltd., 518 F. Supp. 2d 1197, 1209-10 (C.D. Cal. 2007), this general rule, as a rule, is clearly inconsistent with the Supreme Court’s decision in eBay. Thus, for the reasons given by Judge White in Grokster, Designer Skin’s reliance on this pre-eBay rule is unavailing, and the Court will apply the traditional four-factor test. . . .

This is an important holding, making the District of Arizona among the handful of earliest courts to apply the rule of eBay to copyright infringement.  After the jump, you can see how the court did apply it to one particular factor of interest, the need for a plaintiff seeking an injunction to prove irreparable harm.  The court agreed with S&L that past infringement does not lead to a presumption of future infringement. Unfortunately, to our client’s (nominal) detriment, and despite our argument that, seeing as how Designer Skin enunciated no coherent description of harm it suffered by the infringement — and that, in fact, it probably benefited from it — an injunction should not issue, the court found that there was irreparable harm, for reasons best expressed in its own words. Read More…

Fat lady sings: Findings of Facts and Conclusions of Law in Designer Skin v S & L Vitamins

Originally posted 2008-09-05 17:01:27. Republished by Blog Post Promoter

The District of Arizona ruled today in a case we defended through trial and have reported on here extensively.  The decision is here; the minute entry on the electronic docket reads as follows:

FINDINGS OF FACT AND CONCLUSIONS OF LAW – that S & L Vitamins has infringed Designer Skin’s copyrights in the electronic renderings of the 42 products styled [by various brand names] and that Designer Skin is entitled to a permanent injunction enjoining S & L Vitamins from any such future infringement of these copyrights;

FURTHER ORDERED that S & L Vitamins has not infringed Designer Skin’s copyrights in the electronic renderings of the 12 products styled [by various brand names];

FURTHER ORDERED that each party shall bear its own costs in this matter.

Signed by Judge James A Teilborg

No attorneys’ fees for either side.  The injunction reads as follows (per the minute entry); prefatory language is omitted and emphasis is added:

FINAL JUDGMENT AND PERMANENT INJUNCTION in favor of Designer Skin, LLC against S&L Vitamins, Inc. . . . S & L Vitamins . . . are hereby immediately and permanently ENJOINED from publicly displaying, using, copying, or otherwise infringing Designer Skin’s copyrights in these electronic renderings for any purpose whatsoever. Nothing herein, however, shall be construed to enjoin S & L Vitamins from taking, using, or displaying original photographs of the physical Products themselves in connection with S & L Vitamins’ sale of the Products on the internet.

Signed by Judge James A Teilborg

Interested persons may wish to ponder how, and to what extent, the Court addressed the issues framed by the counsel for the respective parties, including identification of what indeed are “Designer Skin’s copyrights in [its] electronic renderings,” by considering the proposed findings and facts and conclusions of law submitted by the plaintiffs, and by the defendants, respectively.

For practitioners interested in the law of injunctions, the most interesting part of the decision concerns the court’s application of the rule in eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006) that there is no automatic entitlement to an injunction upon a finding of infringement to a copyright infringement case.  We have made a separate post addressing that part of the decision.

S&L’s website is here, by the way.  Buy Designer Skin lotion from S&L!  It’s the way both sides pay their lawyers!

Unilateral copyright law

Originally posted 2006-10-23 23:37:37. Republished by Blog Post Promoter

Eugene Volokh joins the pile-on regarding a website that claims to exempt its contents from the liberating effects of the fair use doctrine.  The North Country Gazette, a publication whose editorial fare contains a remarkably high percentage of Terry Schiavo-oriented stories, takes the position that due to this fiat, we cannot excerpt the likes of:

An intoxicated Granville man has been charged with felony criminal mischief for throwing a portable urinal against the wall in a treatment room at the Glens Falls Hospital, destroying sterile equipment.

No, that doesn’t sound right.

But couldn’t the website, if they’d phrased it differently — as a contractual agreement, i.e., a condition precedent to use of the website — theoretically make such a stipulation stick?  Maybe, possibly.  But this heavy-handed approach seems assured to do only one thing:  Generate links to the website.  Which it has.

He’s got the key

Originally posted 2009-12-01 17:06:25. Republished by Blog Post Promoter

Worthy of inclusion

Worthy of inclusion

Eric Goldman, author of one of the bona-fide-deserving, regularly updatedABA-Blawg-100-listed and actually fairly indispensable Technology & Marketing Law Blog updates us on a beat I’ve written on a whole bunch but given up hope on following comprehensively.  It is, however, a topic that anyone involved in trademark use on the Internet must stay on top of:  Keyword advertising litigation.

Here’s the latest, a report on a case called Morningware, Inc. v. Hearthware Home Products, Inc., 2009 WL 3878251 (N.D. Ill. Nov. 16, 2009), which involves a fairly novel question of what happens when one advertiser uses the phrase “Why buy an imitation?” in the small copy space Google ads allow you, along with the brand name of the competitor — suggesting the competitor is imitating the advertiser.

Eric walks you through the opinion, which he acknowledges is unremarkable in many respects.  But these observations are the ones I was particularly motivated to cut and paste here:

The advertiser also argued for a 12(b)(6) motion to dismiss on lack of consumer confusion grounds. While I understand the advertiser’s hope, I think it’s hard to convince a judge that the trademark owner failed to allege sufficient confusion in the complaint. This is especially true when plaintiffs invoke the stupid “initial interest confusion” doctrine, which has no doctrinal contours and therefore is simply impossible for defendants to refute at the motion-to-dismiss stage (obligatory cite to my anti-initial interest confusion rant from 2005). Citing to the abysmal 2002 Promatek case, the court says the plaintiff alleged enough initial interest confusion to survive the 12(b)(6).

Thanks, as ever, on that point Eric!  (Obligatory cite to my anti-initial interest confusion rant from 2003 here.)   Actually there were two points — I just get excited whenever he starts talking about initial interest confusion.  The first point is a good one, too:  Judges really don’t like to dismiss a trademark infringement complaint on 12(b)(6) grounds.*  Really good judges do, but they unfortunately are not in abundance in as many times and places as would be wished.

This paragraph is worth repeating too, as a summation of “what’s going on” this area of litigation:

I keep getting calls from reporters operating under the misimpression that trademark owner-vs.-search engine keyword advertising lawsuits are more common than trademark owner-vs.-keyword advertiser lawsuits. While the lawsuits against search engines certainly get way more press coverage, in reality they are relatively rare. I don’t have an exact count of pending lawsuits, but only 10 immediately come to my mind (9 against Google and the AA v. Yahoo case). In contrast, trademark owner-vs.-advertiser lawsuits are so numerous that I don’t blog on every complaint I see, and most trademark owners are wise enough to leave the search engines out of their litigation.

There you have it.   Reporters, keep calling Eric Goldman — he knows these things!  That’s why I ask him for free answers, too.RDC BIG BEARD

Defendants, on the other hand — “who you gonna call”?


*  The awfulness of this fact on legal, policy and justice grounds cannot be contained in this post, but is essentially the topic of about one fifth of the LIKELIHOOD OF CONFUSION® blog.

Righthaven – Media Bloggers Association files amicus brief

Originally posted 2011-02-24 10:20:41. Republished by Blog Post Promoter

I’ve written a little bit about the Righthaven lawsuits before.  Now, as reported in the Las Vegas Sun, on behalf of the Media Bloggers Association I’ve helped write something that could matter, namely this amicus brief, the laboring oar of which was manned by Marc Randazza and J. Malcolm DeVoy out of Randazza’s shop:

The focus is on the propriety and scope of copyright statutory damages in the situation.

UPDATE:  They opposed; we replied.