October is Pro Bono Month in many states, including Massachusetts, New York, Michigan, New Hampshire, Maine, Rhode Island, Indiana, Tennessee, and Alabama. The ABA has created an annual weeklong National Pro Bono Celebration, which this year is October 19-25. Recognizing the countless lawyers who devote their time and efforts to representing people of limited means, and urging all lawyers to do more, these pronouncements remind us that every attorney has an ethical responsibility to make sure that our system of justice is open to all persons, regardless of income. In… More
The National Advertising Division is holding its annual conference this week in New York, and Foley Hoag is in attendance for what many consider to be the leading conference of its kind. Day One saw an impressive line-up of panelists and speakers, beginning with an address by Federal Trade Commission Chairwoman Edith Ramirez, who outlined areas of particular focus over the coming year: weight loss claims, cognitive benefit claims, and celebrity-hyped claims, among others.
The speakers have addressed a number of hot topics that will likely dominate the false advertising landscape… More
Last week, Judge Alvin Hellerstein of the Southern District of New York issued his opinion Fox News v. TVEyes. Fox News claimed that TVEyes’ media monitoring service was copyright infringement. TVEyes argued that it was fair use. Here is our summary version of the case:
What is TVEyes?
TVEyes is a media-monitoring service that records content from over 1,400 TV and radio news outlets, and uses speech-to-text technology to create a searchable database of transcripts of that content. TVEyes subscribers include corporations, the U.S. military, the media, the White House… More
This past Friday, the keynote speaker at the Boston Bar Association’s Annual meeting was Adam Liptak, Supreme Court Correspondent for the New York Times. Mr. Liptak focused his remarks on the First Amendment views of his predecessor, journalist Anthony Lewis, the author of Gideon’s Trumpet and in many ways the father of modern legal journalism. Mr. Liptak’s remarks were of particular interest to the Massachusetts audience, who also knew Mr. Lewis as a resident of Cambridge and long-time partner of former Supreme Judicial Court Chief Justice, Margaret Marshall. We summarize some of Mr. Lipak’s… More
Last month, the Missouri Court of Appeals, Western District, held that a public university was not required to turn over copies of certain course materials, including course syllabi, in response to a public records request. The syllabi were the type of document that is normally subject to disclosure under Missouri’s “Sunshine Law” (Chapter 610 of the Revised Statutes of Missouri), which allows members of the public to gain access to government records. However, there was one problem: copyright.
The Sunshine Law Request
In 2012, the National Council on Teacher Quality… More
In July 2014, Judge Barbara Jaffe of the New York Supreme Court dismissed the defamation claims in Kramer v. Skyhorse Publications. Kenny Kramer, the real life inspiration for the beloved eponymous Seinfeld character, had sued comedian Fred Stoller and his publisher because Stoller had written that a guide on the “Kramer Reality Tour” was shouting the catch phrase “not that there’s anything wrong with that” at passersby in Greenwich Village, “like some sort of deranged cheerleader.” According to Kramer, by reporting his tour experience in… More
Last week, the U.S. Copyright Office announced the release of a public draft of the third edition of the Compendium of U.S. Copyright Office Practices, the administrative manual for the Register of Copyrights. A significant achievement spanning over 1200 pages, this is the first major revision in decades. Unlike prior editions, which served primarily as an internal guide to Copyright Office staff, this edition was drafted with an eye towards also serving “as a guidebook for authors, copyright licensees, practitioners, scholars, the courts and members of the… More
Professor Nimmer once identified the “weakest infringement claims of all time” as those involving attempts by copyright holders to prevent their copyrighted work from being used as evidence against them in court. “It seems inconceivable,” Professor Nimmer wrote, “that any court would hold such reproduction to constitute infringement either by the government or by the individual parties responsible for offering the work in evidence.” But this scholarly warning has not prevented many plaintiffs from trying — and failing — to use copyright law to keep evidence out of civil and… More
In Southern California Darts Association v. Zaffina, the Ninth Circuit held that a corporation, whose charter had been suspended by the state of California in 1977, had standing in 2012 to sue and to own trademarks as an unincorporated association.
The corporation in question, the Southern California Darts Association (“SCDA”), has organized and promoted darts tournaments at pubs since 1963. SCDA was originally organized as a California corporation, but at some point it stopped paying its corporate franchise tax and, in 1977, it was suspended by the state. Despite the… More
No matter how sophisticated we are on the outside, on the inside everyone has a favorite novelty t-shirt buried deep in the recesses of their juvenile subconscious. Mine is one that says “Welcome to Philadelphia. Now Go Home,” which so perfectly captures both the convivial pride and bewildering hostility of the city that raised me.
Many five-year olds these days have a different favorite t-shirt, sold by Gymboree subsidiary Crazy8, which features the pun: “Lettuce Turnip the Beet.” One problem though: artist Elektra Gorski had been selling t-shirts containing the same phrase for several years before the Gymboree line came out. Early this year, Gorski brought suit in the Northern District of California, alleging that Gymboree had violated both her copyright and trademark rights. Gymboree filed a motion to dismiss, and Judge Lucy Koh issued an order on July 16, 2014.
Gorski had alleged that her t-shirt and the Gymboree t-shirt are substantially similar with respect to “the overall arrangement, shapes, typefaces, sizes and placement of the design elements.” However, the Court held that any such similarities merely concerned the arrangement of the short phrase “Lettuce Turnip the Beet.” Since a short phrase is not copyrightable, “no matter how distinctively arranged,” Gorski had not alleged the copying of any protectable element. Therefore, the Court dismissed the copyright count. Judge Koh granted Gorski leave to amend her complaint to allege substantial similarity with respect to any protectable elements of the design, although she gave no hint as to what those protectable elements might be.
As to Gorski’s trademark claim, Gymboree argued that its use of the phrase “Lettuce Turnip the Beet” was a nominative fair use. Under the nominative fair use doctrine, a defendant is permitted to use the plaintiff’s mark to describe the plaintiff’s product, provided the defendant is not implying the endorsement of the plaintiff or creating confusion as to product source. So, for example, you can use the VOLKSWAGEN mark to let the public know that you fix Volkswagens. Similarly, even though BOSTON MARATHON is a registered trademark, the owner of that mark cannot prevent a television station from using the term “Boston Marathon” when it reports on the Boston Marathon. In other words, trademark law is concerned with preventing confusion as to the source of products, not with the censorship or monopolization of discussion about those products.
Gymboree’s theory was that the phrase “Lettuce Turnip the Beet,” was not a mark identifying the source of a product, but was itself the product. In other words, Gorski was not really selling a t-shirt; she was selling a pun. Therefore, as in the Boston Marathon example, Gymboree’s use of the term was simply a descriptive and non-source identifying reference to the pun (i.e., to the product) which could not possibly cause any confusion.
Are you buying that? Judge Koh didn’t. The Court stated that it could not find as a matter of law that no endorsement or sponsorship was implied by Gymboree’s use of Gorski’s phrase. The Court also noted that it was unaware of any prior case in which a Rule 12(b)(6) motion to dismiss was allowed based on a nominative fair use defense, even a strong one.
The parties have now entered the discovery phase. Barring settlement, the matter is scheduled for dispositive motion practice in June 2015, and trial in December 2015.
On July 24, 2014, the Judiciary Committee of the United States House of Representatives, through its Subcommittee on Courts, Intellectual Property and the Internet, held hearings on the subject of copyright remedies. Most of the discussion focused on the efficacy of statutory damages, which provide for awards between $750 and $30,000 per infringed work (with adjustments up to $150,000 per work for willful infringement). There was also discussion of the Copyright Office’s recent proposal for a small claims tribunal. The proposed tribunal would enable individual… More
Despite celebrity endorsements from the likes of Dennis Miller and Alan Thicke, all that glitters isn’t gold when it comes to the marketing of precious metal investments. In March 2014, American Bullion, Inc., which is in the business of encouraging individuals to convert their retirement savings to gold and silver, brought suit against its competitor, Regal Assets, LLC, in the Central District of California, alleging a host of unsavory internet marketing practices. Last month, the Court ruled that American Bullion had indeed stated valid claims for, among other things, false advertising… More
If you happen to be in the Boston area this August, and you are sick of the Freedom Trail, here’s an idea for a little trademark trail. Start in Cambridge at Moody’s Falafel Palace and head downtown past Kneeland Street to the waterfront. Then hop on a Harbor Island ferry and get off at Spectacle Island, where a piece of a vintage White Tower Hamburger plate recently washed up on the beach.
The Rise of the Castle
Upton Sinclair’s 1906 novel, The Jungle, discouraged many Americans from eating ground beef, but the owners of
This August will mark the 75th anniversary of the release of the classic film The Wizard of Oz. As Warner Bros. celebrates the iconic status acquired by the film and its characters during the past seven-plus decades, the studio will likely also be rejoicing over a recent victory concerning the intellectual property rights in images of the characters from the film.
In the early 2000’s, Dave Grossman Creations, Inc. (DGCI) and others began acquiring restored versions of old posters and lobby cards (smaller versions of the posters) from The Wizard… More
As any IP lawyer will readily admit, trademark practice before the United States Patent & Trademark Office (PTO) comes with its fair share of annoyances: inconsistent treatment of similar applications, unreasonably stringent identification requirements, and so forth. Another difficulty lies in what appears to be a large number of registrations subsisting on the federal register, past their initial maintenance filings, despite a high likelihood that such marks are no longer used, or have never been used, in connection with some or all of their identified goods and services.