Implied Threat on Facebook Insufficient to Support Stalking Conviction

FacebookLast month, the Massachusetts Supreme Judicial Court (SJC) held that a Facebook profile may constitute a “threat” within the meaning of the Massachusetts stalking statute. However, a profile that is merely “vaguely ominous or disturbing,” as was the case in Commonwealth v. Walters, is insufficient to support a conviction.


In 2006, Michael Walters and his girlfriend bought a house together in Seekonk, Massachusetts, just over the Rhode Island border. In 2007, the couple split up, but kept living in the same house. Walters began a pattern of harassment against… More

First Circuit Clarifies Rights of Co-Author of Joint Derivative Work to Make Further Derivatives

CaptureIn a squabble between two psychologists over rights to books about “explosive” children, the First Circuit weighed in this summer with an opinion holding that a work of authorship under the Copyright Act can be simultaneously both a “joint work” and a “derivative work.”  The case is Greene v. Ablon, 794 F.3d 133 (1st Cir. 2015).

The plaintiff, Dr. Ross Greene, pioneered a method for treating children with “explosive” behaviors, known as the Collaborative Problem Solving (“CPS”) approach.  Dr. Greene worked for many years at Massachusetts General Hospital, where he… More

Are You Sure This Isn’t About Copyright? Chicken Sandwiches, Monkey Selfies and the Boundaries of Copyright Law

CaptureLast week, a wild crested macaque named Naruto (but really People for the Ethical Treatment of Animals) filed a copyright infringement lawsuit against photographer David John Slater in the Northern District of California. The suit alleges that Slater infringed Naruto’s copyright in the famous “monkey selfies” (taken by Naruto with Slater’s camera). The complaint requests that the Court order Slater to disgorge any profits he has realized from the distribution of the images and establish a trust, administered by PETA, to “be used solely for the benefit of Naruto, his… More

Copyright Strategies for Start-Up Companies

GyroAs a leader of a start-up company, you are probably aware of the importance of protecting your company’s innovative products, services and technologies through patent filings.  If you are savvy, you are also aware of the importance of having a trademark and branding strategy as well (see our guide entitled “Trademark Strategies for Start-Up Companies”).  Most start-up companies overlook copyright issues, however, and this can create problems down the road.  In this article, we identify the most common traps that we see start-up companies fall into, and provide recommendations for how… More

Of Slants, Skins and Signs: The Coming First Amendment Showdown

adsfAre we heading for a constitutional showdown over Section 2(a) of the Lanham Act?  Will the Supreme Court strike down this prohibition on disparaging marks as an abridgement of First Amendment rights?  It is certainly beginning to look like a distinct possibility. Two developments lead me to this conclusion.

Disparaging Marks and Spending Power

The first development arises from two trademark cases that are now on appeal, In re Tam and Pro-Football v. Blackhorse.  In In re Tam, a panel of the Federal Circuit affirmed the decision of the… More

Marshmallow Justice: 10 Tales of Legal Fluff and Other Stuff

FluffJust about one hundred years ago, Archibald Query of Somerville, Massachusetts invented the first commercial marshmallow cream, which he pedaled door-to-door in Union Square.  Around 1917, he sold the recipe for $500 to two candy makers in Lynn who had just returned from World War I, and their company (Durkee-Mower) still makes Marshmallow Fluff today. In 2006, Union Square boosters began celebrating Query’s achievement with the Fluff Festival, a day of activities literally and figuratively stuffed with marshmallows. In honor of the 10th annual Fluff Festival, which takes place… More

Ninth Circuit “Dancing Baby” Copyright Decision: A Quick Read for the Busy Practitioner

Dancing BabyEarlier this week, the Ninth Circuit affirmed the Northern District of California’s denial of cross motions for summary judgment in Lenz v. Universal Music. In an opinion by Judge Richard Tallman, the Court held that the defense of fair use must be considered by a copyright owner prior to the filing of a takedown notice under the Digital Millennium Copyright Act (DMCA).  Here is our summary of the opinion:

What’s the case about?

Universal assigned a legal assistant to monitor YouTube for copyright infringement. The legal assistant… More

USPTO Pilot Program Offers Relief to Proprietors of “Evolving” Goods and Services

Imagine, for a moment, a successful software company, Agave, that owns the trademark PHOTOCHOPS for a popular image-editing program.  Being a diligent trademark owner, Agave registered the trademark PHOTOCHOPS in 2005, right when the original PHOTOCHOPS launched, in connection with “downloadable computer programs for creating and manipulating graphic images on a computer” in International Class 9.  Over the years, the PHOTOCHOPS platform slowly shifts from downloadable software to a pure software-as-a-service (SaaS) platform, where the software is hosted entirely server-side.  In 2010, Agave is able to file a Section 8 declaration of continued use, because it is still permitting existing… More

I Think That I Shall Never See, Trademark Injunctions If Confusion Is Unlikely

TreeIn its recent decision in Arborjet, Inc. v. Rainbow Treecare Scientific Advancements, Inc., a case involving claims for breach of contract and trademark infringement, the U.S. Court of Appeals for the First Circuit affirmed a preliminary injunction based upon the contract claims, but vacated the portion of the order requiring trademark attribution. In an opinion authored by retired Supreme Court Justice David Souter, sitting by designation and writing for a three-judge panel, the First Circuit held that the District Court had no basis upon which to include trademark relief in the… More

Defamation and the Common Interest Privilege in the Construction Industry

Construction guyConstruction projects often involve a complex array of contractors, subcontractors, banks, bonding agents, architects, engineers and so on.  With that many parties depending on each other to complete a project, negative statements about the quality and integrity of other peoples’ work often arise. Such statements, if false, may give rise to defamation claims. However, even a false statement may be protected from liability by a “common interest” privilege. Two recent Massachusetts cases address what kinds of statements qualify for common interest privilege protection in matters related to the construction industry.


Pushing the Envelope on Initial Interest Confusion Claims — Multi Time Machine, Inc. v.

tConsider this:  You are shopping online and you type in the name of a brand of wristwatch.  Perhaps you wanted to purchase that exact brand of watch, or perhaps you were looking for a selection of watches that included the brand but also watches similar to it.  You click onto a retailer and type in the brand, and you receive “results” for your search.  In the list of results there appears other watch brands, but not the one that you requested.  As you review the results page, nothing on it explicitly… More

Trademark Strategies for Start-Up Companies

GyroMost innovative start-up companies appreciate that a sound patent strategy is critical to success in the marketplace, and in making the company attractive to investors and future acquirers. But they overlook the importance of having a trademark strategy right out of the gate. Trademarks are an essential part of any successful company’s branding strategy. In addition, there are a number of reasons why an early investment in trademark strategy can have big payoffs — and avoid big headaches — down the road.

A trademark is a word, design or other designation that… More

Statute Criminalizing Election Campaign Lies Found to Violate First Amendment and Article 16

CaptureOn August 6, 2015, the Massachusetts Supreme Judicial Court (SJC) in Commonwealth v. Lucas struck down Massachusetts General Laws, Chapter 56, § 42 (Section 42), which criminalized the utterance or publication of “any false statement in relation to” a candidate for public office or a ballot question. Violations of the statute were punishable by a thousand dollar fine or up to six months imprisonment. Justice Robert J. Cordy, writing for a unanimous court, held that Section 42, which had been around since 1946, violated both the First Amendment and… More

The Case of the Missing Designated Agent: Omitting Subsidiaries From Your DMCA Filing May Be Costly

HollywoodMany of our fine readers are by now well acquainted with the Digital Millennium Copyright Act (DMCA), the late-‘90s era addition to the Copyright Act intended to address an increasingly digital copyright landscape.  The DMCA includes treaty compliance updates, anti-circumvention provisions and, most important for present purposes, the Online Copyright Infringement Liability Limitation Act (OCILLA), 17 U.S.C. § 512, section (c) of which provides a safe harbor for internet “service providers” that host content uploaded by their users.  Because Section 512 is perhaps the most frequently discussed portion… More

Harry Potter Lawsuits And Where To Find Them


On July 31, 2015, Harry Potter author J.K. Rowling celebrates her 50th birthday, according to muggle sources. The enormous success of Rowling’s literary creation and its associated multimedia empire has spawned countless jealousies, countless imitators, countless parodists and countless pirates. The franchise has kept dozens if not hundreds of lawyers busy with precedent-setting copyright cases, trademark disputes, First Amendment battles over religious expression, and even the occasional breaking and entering. Indeed, it appears that Ms. Rowling and her works pop up in court more than any author since… More