Carta de Error! Copyright Takedown Notice To iTunes May Give Rise to Misrepresentation Liability

carta de errorSection 512(f) of the Digital Millennium Copyright Act makes parties who issue copyright takedown notices liable for any “knowing” misrepresentations in those notices. However, the Ninth Circuit in Rossi v. Motion Picture Ass’n of America, and other courts, have interpreted the term “knowing” narrowly, causing many to wonder if Section 512(f) has much practical application.

In a recent article for the ABA’s Landslide Magazine, I argued that, irrespective of Rossi, there are still several fact patterns that create a serious risk of liability under Section 512(f),… More

Supreme Court’s B&B Hardware ruling creates the potential for court deference to the TTAB — but will it happen?

sdf

Did  TTAB proceedings — until now considered a relatively obscure branch of IP litigation, conducted before an administrative body of which most attorneys are blissfully unaware — just assume greater importance?  That seems to be the general reaction to the U.S. Supreme Court’s holding in B&B Hardware v. Hargis Industries last month.

B&B Hardware took an unusually aggressive approach to its trademark dispute with Hargis, which centered on the likelihood of confusion between B&B’s SEALTIGHT mark and Hargis’ SEALTITE.  B&B brought a TTAB opposition proceeding and won, preventing SEALTITE… More

Three’s Company But Two’s a Crowd: Theatrical Parodies of Copyrighted Works

3c

In our Oscar litigation post a few weeks ago, we made a passing reference to MGM v. Showcase Atlanta Coop. Prods., Inc., 479 F.Supp. 351 (N.D. Ga. 1979). In that case, the Northern District Court of Georgia held that the play Scarlett Fever was not a protected parody of Gone with the Wind, but rather an unlicensed derivative remake. When we researched this topic, we were somewhat surprised to discover almost no other published opinions exploring the line between theatrical parodies (which are fair use) and mere theatrical… More

No Purchase Necessary: Six Tips for Making Sure Your Online Prize Promotion is not an Illegal Lottery

sdThe Federal Trade Commission’s recent $9.5 million judgment against sweepstakes operator Crystal Ewing is a stark reminder that prize promotions remain fertile ground for regulatory scrutiny both on the state and federal level.  Marketers have grown ever more reliant on sweepstakes, contests, and giveaways since Ewing first came to the FTC’s attention nearly a decade ago—thanks in large part to our obsession with mobile devices and social media, and the opportunities they present for instant engagement with masses of digitally-savvy consumers.  Despite the technological advances, however, the basic legal principles… More

The Next New gTLD Just .Sucks for Brand Owners

.sucks

Hot on the trails of .porn and .adult, a new gTLD enters the fray next week — one that’s already giving PR departments heartburn.  The .sucks domain launches for sunrise registrations on March 30, 2015, and with it yet another potentially costly headache for brand owners.

What Is .Sucks?

The .sucks gTLD is similar to .xxx, .porn, and .adult, in that companies are rightfully concerned that their names and trademarks may be associated with domains and websites that could harm those brands or otherwise generate ill will.  Unlike those… More

Seeing Double Trademarks on St. Patrick’s Day? It’s Probably the Guinness

3St. Patrick’s Day is upon us, which in Boston means loads of Kelly green, a famously-litigated parade, and a huge spike in the consumption of Guinness.  The iconic dark stout travels in equally recognizable containers, each emblazoned with a Gaelic harp modeled on the famous 14th-century “Brian Boru’s” harp, currently preserved in Dublin’s Trinity College.

Such harps have been a part of Irish heraldry for over seven hundred years, so when the Dublin-based Guinness Company designed its first bottle label in 1862, using a harp must have been… More

Default Is In Our Stars: Allegedly Overreaching Copyright Claimants Fail to Show

Taking legal action to enforce a copyright is often an expensive proposition so, before you go down that road, you better make sure you own the copyright in question. But what if you have already initiated copyright infringement proceedings and later lose confidence in your claim of ownership – how do you extract yourself?  Well, here’s one option that seems to be increasingly popular (but which we don’t recommend): just don’t show up. Recently, default judgments issued for just that reason in two cases we’ve been following.

The Disappearing Dentist

dentistWe… More

.PORN and .ADULT Join .XXX to Form Unsexy Threesome for Brand Owners

Porn

Yesterday marked the sunrise launch of the .porn and .adult generic top-level domains (gTLDs), which join .xxx in the top-level domain name space as gTLDs targeted mainly at online purveyors of adult entertainment.  As with .xxx, the introduction of these adult-themed gTLDs presents yet another annoyance for trademark owners already fatigued by the weekly onslaught of gTLDs introduced over the past couple of years pursuant to ICANN’s expansion of the domain name spaceAlso as with .xxx, brand owners have some opportunities to defensively register .adult… More

Don’t Mess with Texas Trademarks

DMWTAs a native Texan, I always feel a bit nostalgic and homesick around early March.  Not only is bluebonnet season (read: spring) around the corner (if only that were true here in Boston!), but March 2 marks Texas Independence Day – the date on which, in 1836, Texas declared its independence from Mexico.  Although the Republic of Texas lasted only ten years, its fiercely independent spirit seems to live on in the tenacity with which the Lone Star State asserts trademark rights in Texas’s unique brand.  In… More

UDRP Panel Tells Snapchat to Check Itself Regarding Snapchatcheck.com

snapchat

By now you’ve probably heard of Snapchat.  But if you are not among its growing core base of users between 13 and 23 years of age (probably a good deal younger than you, constant reader) there’s a good chance you are not a Snapchat user. Snapchat is, as they said once upon a time, all the rage with the kids.  It’s a social messaging mobile app that allows users to send photos and videos — “Snaps” —  to groups of friends, which can be viewed on… More

And the Lawsuit Goes to . . . An Oscar-Time Guide to “Best Picture” Intellectual Property Litigation

OscarThe film that wins the Best Picture Oscar this year is certain to attract more viewers and more box office receipts than it had before receiving the award. But Best Picture winners also tend to attract more lawsuits, including intellectual property claims. Plaintiffs show up out of nowhere claiming to be the true authors of the underlying work, infringing defendants come out of the woodwork to unlawfully grab a little bit of the success for themselves, and so on. Sometimes the lawsuits are just as worthy of attention as the films… More

AdCode 2.0: Better Business Bureau Updates Advertising Code to Keep Up With Technology

The Better Business Bureau announced last Thursday that it has amended its Code of Advertising to address the new and evolving ways in which advertisers reach consumers through technology.  The Better Business Bureau is the administrative parent of the advertising industry’s self-regulatory bodies, including the National Advertising Division.

As advertisers market to consumers who spend more time looking at smart phones and computer screens than television screens and magazines (the traditional media of mass-market advertising), the methods of advertising have changed.  The basic tenets of advertising law still apply—i.e., claims must be truthful, not misleading, and substantiated—but… More

Celebrity Trademark Watch: Can Taylor Swift Shake Off Accusations of Trademark Greed?

TSWHad enough of Taylor Swift yet?  For those of you who hate to love her, you might consider Swiftamine, because she is not going anywhere anytime soon.  If anything, her media foot print continues to grow.  And while one expects round-the-clock coverage of the pop music megastar on E! Entertainment Television and the like, she is now showing up on the intellectual property blogs, too.

Back in October, Ms. Swift filed sixteen intent-to-use applications to register the mark THIS SICK BEAT, which, to those in the know, is a lyric… More

Holy Overreach, Batman! Fictional Software Trademark Row Rejected by Supreme Court

BatmanWhen Fortres Grand Corporation saw sales of its software program drop, it blamed – wait for it – Batman.

Fortres’ software, called “Clean Slate,” erases user changes to public computers upon reboot, thus returning the computer to its original configuration, i.e., giving it a clean slate.  Fortres’ complaint against Batman is that, in the weakest installment (IMHO) of Christopher Nolan’s otherwise-awesome Batman trilogy, The Dark Knight Rises, Catwoman seeks out an elusive (entirely fictional) hacking software, also called “Clean Slate,” in order to delete her criminal record from every database… More

Tacky Victory: Hana Bank allowed to use three different trademarks to gain priority over Hana Financial

thumbtacks-mdthumbtacks-md

In a unanimous ruling, the Supreme Court upheld the Ninth Circuit Hana Financial v. Hana Bank and ruled that the question of “tacking” — whether a party’s prior version of its trademark is so closely similar to the current one that the prior period of use should be added, thus giving an earlier priority date  — is for juries, not judges, to decide.  The logic of the opinion is fairly simple:  since the similarity of the prior mark is… More