First, a refresher on preemption in copyright. Preemption, of course, refers to that status wherein a given legal subject matter — or more specifically, a category of legal claim — is preempted by the federal government, which is said to “occupy the field” entirely.
That means you can’t prosecute a copyright claim, strictly speaking, in state court. It has to be done in federal court, as explained by the Government:
The federal preemption provision, codified at 17 U.S.C. § 301(a), states that: On and after January 1, 1978, all legal or equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106 in works of authorship that are fixed in a tangible medium of expression and come within the subject matter of copyright as specified by sections 102 and 103, whether created before or after that date and whether published or unpublished, are governed exclusively by this title. Thereafter, no person is entitled to any such right or equivalent right in any such work under the common law or statutes of any State. . . . “
Section 301 in effect establishes a two-pronged test to be applied in preemption cases.” Crow v. Wainwright, 720 F.2d 1224, 1225 (11th Cir. 1983), cert. denied, 469 U.S. 819 (1984). Under this preemption test, the states are precluded from enforcing penalties for copyright violations if the intellectual property at issue falls within the “subject matter of copyright” as defined by federal law and if the claimed property rights are “equivalent to” the exclusive rights provided by federal copyright law. Id. at 1225-26. Adopting this standard, the Eleventh Circuit has held that section 301 now precludes state criminal prosecutions for acts of copyright infringement. Id.
That’s a lot of preemption. That’s not to say, however, that a defendant can take advantage of preemption to remove any claim to federal court where the underlying subject matter could be the subject of a copyright but where the claim is not. For example, while the right of publicity may be implicated by the unauthorized use of a photograph, if the actual claim is not for copyright infringement but for infringing the plaintiff’s right of publicity, it stays in federal court. And there’s always the notorious “hot news exception” of New York, which is beyond the scope of this post, and even of this one.
Still and all, it is a lot of preemption — but, in terms of intellectual property, preemption is pretty much for copyrights and patents. So a person could look at this scheme and figure, okay, I get it: There’s a federal copyright statute, and there’s preemption. Patent? Statute, check; preemption, check. Right of publicity? No statute, no preemption! This is simple! No. It’s not like that. Trademark is different: There is a statute. But there is not necessarily preemption. Not at all! Read More…
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.
In rem actions over domain names are powerful tools. A trademark owner can undertake these actions when it identifies an infringing domain name but cannot locate the owner of that domain name. In a sense, the domain name itself is the defendant. . . .
An “impostor” registered mediavestw.com, and “tricked” at least one of plaintiff’s business partners into signing up for advertising services. Plaintiff owns a trademark for MEDIAVEST and operates a website at mediavestww.com. Plaintiff filed an in rem action and sought a temporary restraining order (TRO). . . .
The court found that the TRO would serve the public interest because such interest favors elimination of consumer confusion. (Consider whether there really was any consumer harm that took place here if the alleged fraud was on a business-to-business level. Compare the findings in this case with the finding of no consumer nexus in the recent Reit v. Yelp case.)
The court found that plaintiff had made such a strong showing of the likelihood of success that it did not require plaintiff to post a bond. It ordered the domain name transferred into the court’s control immediately. Behold the power of in rem actions.
Oh, when the defendant is this naughty, Evan, a question such as “was it really consumer confusion”? — perhaps we could ask, instead, “Was there really LIKELIHOOD OF CONFUSION given the sophistication of consumers?”–is, as we say in yeshiva, “not really a question.”
You’ve got a copycat domain name, a competing business and, for heaven’s sake, the Golden Ring itself — actual confusion? Don’t give me questions! And as Evan says, it’s for cases such as this one where the wrongfulness of the act is, not surprisingly, matched by the ethereality of the defendant that Congress gave us the in rem action. Powerful stuff!
A “New York judge ruled that Mattel ha[s] no jurisdiction in Canada and that [the] owner [of BarbiesShop.com], Barbie Anderson Whalley, can keep the name of her store and website” — so says CTVNews, a media outlet serving the largest and most backward U.S. State.
If reported correctly (there have been questions about the the way things are done in that frosty part of the U.S.), this decision is outrageous. If this so-called jurist can, with the stroke of an ice-coated pen, declare that Mattell doesn’t have “jurisdiction” over Canada, the next thing you know some damned activist judge will say the U.S. doesn’t either.
William Lozito at Name Wire writes about a counterfeiting double-cross, or is it triple-cross or something more?, that is so byzantine in its fruity dimensions that only the wretched Zionist Entity could have hatched it. So, what happens when Jew oranges infiltrate the Islamic Republic of Iran’s citrus bins, formerly believed impregnable against the Elders of Zion and their nefarious schemes?:
[T]he seemingly innocent appearance of “Jaffa Sweetie Israel-PO” oranges was enough to make one Iranian official declare that “rogue elements” were trying to “disgrace the ruling government.”
As it turns out, those “rogue elements” were unscrupulous Chinese middlemen, who illegally used the “Jaffa Sweetie” brand name on their counterfeit fruit.
The problem was exacerbated by the fact that “President Ahmadinejad inadvertently distributed the fruit during a two day goodwill visit to the town of Salam in southern Iran.”
The Chinese and Iranian investigators have counter-claimed that they actually bought the real thing in Israel and simply forgot to remove the stickers before sending them on to Iran. One then must wonder if it is the brand naming of the oranges or the oranges themselves that is the actual problem?
The Iranians claim they want no part of “Zionist” oranges, but if the Chinese investigators are correct, then they have been eating them via China, branded as Jaffa or something else, for some time.
Well this much is clear: Of all the wicked Jews controlling the world these days, it’s the Chinese ones who are the worst, you know?
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?
There really is still such a thing as personal jurisdiction — and its absence — even in the Internet age, reports Evan Brown:
Last year Facebook made us wonder if it had gone off its meds when it filed a trademark infringement lawsuit against Illinois-based Teachbook.com. More than one commentator thought Facebook was being overzealous in its efforts to claim exclusivity in the term “book” for social networking services.
However one countenances the action, the court has shut the cover on the first chapter. The U.S. District Court for the Northern District of California (where Facebook is located) held that it lacked personal jurisdiction over the Illinois defendant. So it dismissed the case.
There is a Constitution out there, still!
Also: kudos to Evan for demonstrating the proper use of the word “however” as the first word in a sentence. (Same thing like I said about the Constitution!)
October 29, 2012 | Comments Off on The latest on Internet-based jurisdiction – UPDATED, 2012!
As a practical matter, most jurisdictional analysis in the Internet context focuses on specific jurisdiction. A “Web presence” in New York has not been considered enough, standing alone, to establish broad, general personal jurisdiction; such jurisdiction typically requires a substantial presence, such as an office in New York, New York employees or agents, the systematic solicitation of business in New York, or the presence of bank accounts or other property in the state.
New York is, in fact, a “solicitation plus” state: even the systematic solicitation of business in New York, without more, will not justify a finding of corporate “presence” sufficient to establish general jurisdiction over a non-resident. Thus, even if a defendant solicits business in New York and transmits those goods to computers in New York through an interactive Web site (the “active” side of the Citigroup [decision’s] sliding scale) that activity may not be enough to establish general personal jurisdiction without additional activities of substance within the state.
Specific jurisdiction, however, is another matter. As noted in Citigroup, if a non-resident supplies goods or services into New York over the Internet, and that transaction becomes the basis for an action, that “single transaction” has typically been seen as enough to satisfy the requirements for specific jurisdiction . . .
The article is good.
UPDATE: The article was good — and it was completely current when I first posted this in 2008. It’s been a long time, especially in Internet years, since then. For the latest on the topic, you’ll want to look at treatments such as these:
An April 2012 article by two Appellate Division justices in New York (!), Thomas A. Dickerson and Jeffrey A. Cohen, presented to their colleagues in the New York judiciary at a judicial seminar, called “Jurisdiction on the Internet 2012,” and
Overlawyered follows the continued adventures of media avenger attorney Jack Thompson who is acheiving cult-like notoriety among the very segments he seeks to protect:
Jack Thompson, the Florida lawyer with a seldom-rivaled knack for keeping this site supplied with material (Oct. 20, etc., etc.), has fired off a cease-and-desist letter to the publisher of Mortal Kombat: Armageddon demanding that it stop publication of the game because participants can use it to create characters based on him. A Slashdot posting explains that Thompson’s “image is not actually a selectable character in the game,” but John Scalzo at the Gaming Target website (scroll down) has published instructions on how to use the game’s build-a-fighter mode to create a character based on Thompson, widely loathed among hobbyists because of his courtroom assaults on popular games (among the character’s features: “puffed out self-important look… Banshee Scream. …no victory pose because, let’s face it, he’s never won”).
Ouch. Even plaintiff’s lawyers (of which I am frequently one) have their limits in terms of the alleged absolute value of publicity, or in this case the right of publicity. Perhaps this would be a good sample of that limit: Read More…
October 6, 2010 | Comments Off on Steal your plate
The Jews take a worldwide day off from eating, and what happens when they sit down and pick up their forks and knives to dig in? Their enemies want to take their food away and get fees, too!
MBA Legal intern Andie Schwartz sends along this item from Mike Masnick at TechDirt about what happens when intellectual property rights are so abused by people who should know better, that those who know less — and whose intent is something less than benign — come to think of it as a way to just plain get your way when you don’t like how things are turning out for you:
Another day, another ridiculous intellectual property lawsuit. Along the same lines as various regions in France declaring that only they can sell “Champagne” or Greece being the only one allowed to offer “feta,” a group in Lebanon is claiming that various popular middle eastern foods such as hummus, falafel, tabouleh and baba gannouj are property of Lebanon and Lebanon alone. In fact, the group is planning to sue Israel for “stealing” its food. They’re actually claiming that this could be a violation of a “food copyright” (something that doesn’t actually exist). Specifically, the group says that since Israel sells such foods, it’s taking “tens of millions of dollars” away from Lebanon, where those foods should be bought. This, folks, is what happens when you build up a society around the idea of “owning” infinite goods.
We mostly agree with him, even if his last sentence is a little incoherent. Masnick seems to be in love with the naive concept of “infinite goods,” and his misapprehensions are examined fruitfully here. Besides, no one has ever tried to “build a society” around the ownership of abstract rights — even intellectual property rights, unless you count INTA or the RIAA as a “society.” And if anyone ever did so, that society would not be the Republic of Lebanon.
If Masnick cut the hyperbole and just said, as he does at the beginning, that we are developing a worldwide culture that thanks of IP as a generic problem-solver for commercial, cultural or personal disappointment — why, he’d be right on.
And the fact is the Jews did “steal” falafel. But they also stole pizza, too, which a million Israeli children think was invented by Ben Gurion. (They also stole “Flatbush,” but that’s a topic for a different blog.) Yet for some reason, Sicily has managed to attract its share of tourist dollars without inventing new tortes torts on which to slather its grievances against the you-know-whos.
Either way, pass the falafel — we’re still pretty hungry …
UPDATE: Marty Schwimmer digs in a tad more analytically:
The Lebanese entity is likely thinking about appellations of origin (Champagne sparkling wine, Feta cheese, Parma ham) which are conventional methods of protecting a geographic name associated with a food but can’t be used to protect the generic name. “Lebanon” is (was?) potentially protectable for cedars of Lebanon.
UPDATE and preface: Almost everyone who has written on the “jurisdiction” issue decided in Reed Elsevier, Inc. v. Muchnick, 130 S.Ct. 1237, in which the Supreme Court ruled that while a copyright registration was a statutory prerequisite to initiation of a copyright infringement lawsuit, it was not a “jurisdictional prerequisite,” has noted that the ruling would have little practical effect on litigation. (Herearesomefineblogs that have addressed the case, which I should have done here, too. Then again, they did it quite well.)
This post is about a case where this distinction would have made a difference, at least in theory.
I blogged about the legal issue that arose concerning a last-minute “suggestion of lack of jurisdiction,” effectively an attempt to dismiss a copyright claim for lack of subject matter jurisdiction, on the eve of trial. It was originally posted during the pendency of LOC® readers’ favorite case. The motion was based on the then-pertinent concept that absent the allegation of a copyright registration or even an application for one at the time the complaint was filed, and absent as well any amended or supplemented complaint that alleged the same, the court lacked subject matter jurisdiction. Hence dismissal was proper, indeed required, at any time pursuant to Fed. R. Civ. P. 12(h)(3).
LIKELIHOOD OF CONFUSION® has recently run up against the following issue in litigation and welcomes views from the house. We think we’re on the right side of it, but there’s no question some courts have waved it away, though not usually with a lot of analytical rigor:
It is known to be a common practice for plaintiffs to file copyright claims for unregistered works, file an expedited application for registration and amend the complaint to recite or incorporate the registration before anyone calls them on it. Frequently this is not too offensive because the copyright claim is one of a number of otherwise unproblematic counts. Some courts affirmatively bless this practice; others even sua sponte “deem” a complaint amended or supplemented if somehow the record reflects the subsequent registration. But others are not so lackadaisical about operating as time machines.
Because the Copyright Act (17 USCS § 411) explicitly requires that a copyright holder own a registration to “institute” a claim for infringement — because it is a jurisdictional requisite ][UPDATE: Not quite; see above] — there is an increasingly authoritative body of authority that even where an amendment to the pleadings may be appropriate under the usual (liberal) standard, amendment may not create jurisdiction retroactively. This appears to run contrary to earlier trends among the cases that allowed a retroactive cure in the spirit of the axiom that amendment of pleadings is to be permitted liberally.
Courts are increasingly questioning whether that kind of time travel works. In Harris v. Garner, 216 F.3d 970 (11th Cir. 2000), a case involving a statutory predicate for immigration appeals, the Eleventh Circuit held, very stridently — and over the objections of an equally assertive dissent — that where a statutory requirement for jurisdiction is not met at the time of filing, even if it is met until later an amended complaint cannot create jurisdiction retroactively. The Circuit Court discussed the application of the rule to an earlier copyright decision that suggested otherwise, and in dictum, rejected that analysis.
“When Plaintiffs initiated this action the Court,” the District of New Jersey ruled earlier this year, “was without subject matter jurisdiction to hear Plaintiffs’ copyright claims.” There was no registration. Continued the court:
As such, 28 U.S.C. § 1653, which provides ‘that ‘[d]efective allegations of jurisdiction may be amended, upon terms, in the trial or appellate courts,’ does not apply to help Plaintiffs here. Section 1653 ‘addresses only incorrect statements about jurisdiction that actually exists, and not defects in the jurisdictional facts themselves.’
Wellness Publ. v. Barefoot, 2008 U.S. Dist. LEXIS 1514 at *32 (D.N.J. Jan. 8, 2008), citing Newman-Green, Inc. v. Alfonzo-Larrain, 490 U.S. 826 (1989). Also this year, in Walton v. United States, 80 Fed. Cl. 251, 264 (Fed. Cl. 2008), the Federal Circuit permitted retention of jurisdiction where an amended / supplemented complaint had been filed, but did not allow relation back to the original date of the complaint. The court wrote, “it appears that binding Federal Circuit case law has not departed from the established rule that jurisdiction is determined on the basis of the facts that exist at the time the complaint was filed.”
All things considered, it would seem to be a good idea for a copyright plaintiff under such circumstances to amend as early as possible and avoid objections of prejudice or undue delay — factors that can militate even against the routine grant of motions to amend. Liberality is one thing, but jurisdiction is bigger that than that, and in contrast a lack of subject matter jurisdiction can be raised substantively at any time, even on appeal. It cannot be waived; it’s constitutional; it’s existential: Federal Rule 12(h)(3) provides, “Whenever it appears by suggestion of the parties or otherwise that the court lacks jurisdiction of the subject matter, the court shall dismiss the action.”
UDPDATE continued: The District of Arizona disagreed with our argument, as set out in the transcript appended to the embedded PDF, which starts with our “suggestion of lack of jurisdiction,” below. That denial was one issue we were prepared to pursue as a cross-appeal in the Designer Skin case. That appeal never happened due to a global settlement with indoor tanning lotion monopolist and gelded litigation bully New Sunshine LLC.
And now it turns out now to be a non-issue, because while dismissal on this ground would have been available under Rule 12(b)(6), that Rule does not have the broad, and arguably constitutional, power of the Rule 12(h)(3)’s “Whenever,” which our client needed to call on because of the unusual procedural aspects of this litigation.
UPDATE: The U.S. Supreme Court negates this entire post, ruling that while a copyright registration is indeed a prerequisite to initiating a lawsuit to enforce a copyright, this is a statutory requirement and not, technically, a “jurisdictional” requirement. See the box at the top.
May 18, 2010 | Comments Off on Humdinger of a copyright case
The First Circuit has struggled for years with a case involving the well-known Hummel figurines, drawings of which were created by Sister Berta Hummel in Germany in 1931. The most recent decision hopefully will put an end to what in my opinion has been meritless litigation pursued in one form or another for 40 years by a lawyer who went from representing one party to becoming a party himself, Cambridge Literary Properties, Ltd. v.W. Goebel Porzellanfabrik G.m.b.H & Co., KG, 2007 WL 4340860 (1s Cir. Dec. 13, 2007). The most recent decision raises important questions about the intersection of federal /state jurisdiction, state law actions for an accounting between co-authors, and the Copyright Act’s statute of limitations. The existence of a 10 page impassioned dissent describing the majority’s approach as “unprecedented and potentially pernicious” gives some flavor to the case.
Patry thinks the majority came out right, actually. This is one IP lawyers should have some familiarity with.
The question of whether consumers are likely to be confused is the signal inquiry that determines if a trademark infringement claim is valid. This blog is about trademark law, copyright law, free speech (mostly as it relates to the Internet) and legal issues related to blogging.
As for me, I'm a partner and commercial litigator at Archer & Greiner PC* with offices in New York and New Jersey (but active nationwide) and, some say, "IP maven"* with a special interest in copyright and trademark infringement involving the Internet--including advising clients how to avoid them.
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