Category Archives: Uncategorized

A History Of Massachusetts Anti-SLAPP Legislation As A Vehicle For Protecting First Amendment Petitioning Activity From Retaliatory Defamation Claims

Before the passage of anti-SLAPP legislation, citizens engaged in First Amendment petitioning activity often found themselves the targets of retaliatory lawsuits.  For example, a group of neighbors might speak out at a local zoning commission hearing to block approval for a new building development, only to find themselves defending against a costly lawsuit brought by the developer for, among other things, defamation or commercial disparagement.

This December will mark the 20th anniversary of the Massachusetts anti-SLAPP statute, Chapter 231, Section 59H of the Massachusetts General Laws.  The statute seeks to discourage retaliatory defamation lawsuits and similar claims by providing petitioners the… More

Boston Copyright Round Table on Policy, Creativity and Innovation

CommerceThe Department of Commerce is holding a round table at Harvard Law School on June 25, 2014 to discuss the  Internet Policy Task Force’s Green Paper on Copyright Policy, Creativity and Innovation in the Digital Economy, released on July 31, 2013.  The Boston topics will include 1) the legal framework for the creation of remixes; (2) the relevance and scope of the first sale doctrine in the digital environment; and (3) the appropriate calibration of statutory damages in the contexts of individual file sharers and secondary liability for large-scale infringement…. More

When Judges Met Jazz: The First Decade Of Jazz Law

In honor of African American Music Appreciation Month, sometimes known as Black Music Month, we recall the first judicial decisions in which jazz music was the subject of a legal dispute. Although jazz originated in the late nineteenth century in the Southern United States, the word “jazz” appears to have been applied to music for the first time between 1912 and 1915.  Before the decade was out, jazz music was producing legions of listeners, late night dance crowds and plenty of middle class angst. By the 1920’s, controversies concerning the genre had wended their way through the lower… More

Flummoxed By FLANAX: TTAB Cancels Trademark Registration Based On Misrepresentation As To Source Despite No Use In U.S. By Petitioner

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In an interesting precedential decision, the Trademark Trial and Appeal Board (TTAB) canceled a registration for FLANAX despite the fact that the petitioner, Bayer Consumer Care AG, did not use FLANAX in the United States, but only in Mexico.  The case illustrates that the “misrepresentation as to source” provision of the Lanham Act can be a useful tool in egregious cases, and can be asserted even when a registration is no longer vulnerable to cancellation based on likelihood of confusion grounds under Section 2(d) because of the passage… More

Raging Bull Majority Decision: Supreme Court Nixes Laches As Defense To Copyright Damages

deNiroIn Petrella v. MGM, the U.S. Supreme Court was confronted with the question of whether laches is available as a defense to copyright infringement.  We have previously written about the case here and here. Yesterday, May 19, 2014, Justice Ginsberg, delivering the opinion of the majority, held that laches was not available as a defense to copyright damages, but was available as a bar to equitable relief in extraordinary circumstances. The dissent, authored by Justice Breyer, was joined by Chief Justice Roberts and Justice Kennedy.

The Legal Backdrop

The case… More

An INTA Hong Kong Debrief

After a week at the International Trademark Association Annual (INTA) Annual Meeting in Hong Kong, and another spent exploring the city and its surrounds, it’s nice to be heading back to the comparatively quaint major city we call home.  But as I fly through Siberian airspace, over the North Pole, and through Canada en route to Beantown, I have a few parting thoughts.

The Gateway to Everything

As the Gateway to Asia, Hong Kong is an international center of industry and commerce – a fact reflected in the spotless windows of its record number of skyscrapers, which every… More

Federal Circuit Copyright Decision in Oracle v. Google: A Quick Read for the Busy Practitioner

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In its recent opinion in Oracle v. Google, the Federal Circuit reversed the Northern District of California and reinstated a jury’s infringement verdict against Google. The opinion is long and complex, and much ink has already been spilled by its critics. As a service to those of you sitting on the sidelines of this particular debate, here is our summary version of the case:

  1. What’s the case about?

Oracle owns copyrights in software related to Java, a computer platform that allows a programmer to write one… More

Milk Dud? False Advertising Lawsuit Against Makers of Muscle Milk Illustrates Interplay Between Lanham Act, FTC and FDA

MM1In a lawsuit recently filed in the Southern District of Florida, Global Beverage Enterprises, Inc. (“Global”), the manufacturer of specialty carbonated beverages like Mr. Q. Cumber Sparkling Cucumber Beverage, brought Lanham Act claims against CytoSport, Inc., alleging false advertising of CytoSport’s popular Muscle Milk line of beverages.  The basis of the claim is that the Muscle Milk beverages contain no milk and, therefore, the product name is false and misleading.  If the case sounds vaguely familiar, it might be because this is not the first time Muscle Milk products have… More

Settlement in False Advertising Class Action Leaves First Amendment Questions Unanswered

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On April 30, 2014, the plaintiffs in Bezdek v. Vibram, a class action in the District of Massachusetts, filed for court approval of a class wide settlement. The case had been brought against Vibram, the Italian manufacturer of “five finger” minimalist footwear, by consumers who alleged that the company committed false advertising when promoting health benefits of its product for which there was allegedly no scientific support. Last year, Judge Douglas Woodlock denied Vibram’s motion to dismiss, and settlement negotiations followed.

Under the settlement terms, Vibram will pay a total… More

Does The First Amendment Allow Journalists To Lie To Their Subjects? U.S. Senator Accuses Documentary Film Makers Of Fraud

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On April 1, 2014, West Virginia Senator Joe Manchin issued a press release accusing Adroit Films of fraud. Manchin had agreed to be interviewed by the media company for a documentary about the Upper Big Branch mine disaster, which caused the death of 29 miners in 2010. However, Manchin reports that when the documentary was released on March 31, 2014, he was horrified to find that it was nothing more than a propagandistic defense of Don Blankenship, the CEO of Massey Energy, who is under… More

Copyright Claims Based on Submission of Prior Art to Patent Office Finally Dismissed: Were They The “Weakest Infringement Claims of All Time”?

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In April 2012, we reported on four copyright lawsuits filed by the American Institute of Physics (AIP) and John Wiley & Sons. Ltd, the publishers of a range of scientific literature.  These suits alleged that four law firms in Illinois, Kansas, Minnesota and Texas had infringed the AIP’s copyrights by submitting certain scientific articles to the Patent and Trademark Office (PTO) as “prior art.” In other words, these law firms essentially were being sued for doing what patent… More

District Court Allows Claims to Proceed Against Ripoffreport.com For Copyright Infringement And “Unfair or Deceptive” Acts In Connection With Allegedly False Online Review

RippoffWe previously reported on the unique cyber dilemma faced by Richard Goren, a Massachusetts attorney.  Back in 2012, a disgruntled former client of Goren’s logged onto the consumer review site, Ripoff Report (http://www.Ripoff Report/), and posted an outlandish – and apparently false – review of Goren’s business.  The review referred to Goren  as “Psycho-Richard” and accused him of, among other things, fraud, child abuse, domestic violence, drug addiction and “problems coping… More

Liability Insurer May Have to Cover Knockoff Jewelry Site for Allegedly Violating Reese Witherspoon’s Right of Publicity

kateHave you always wanted to own “The One Ring to Rule Them All” of Lord of the Rings fame?  Do you dream of an engagement ring just like Kate Middleton’s?  Your dreams can come true with a visit to Emitations.com, a website that sells costume jewelry, including imitations of celebrity baubles.  There you can search for “Middleton” and find several versions of the famous royal sapphire-and-diamond band, next to pictures of the Duchess herself wearing the real thing.  But… if you long for your very own… More

Skippy v. Skippy: The Great Peanut Butter Trademark Wars

According to the National Peanut Board, March is not only National Peanut Month, but it contains National Peanut Butter Lover’s Day and National Peanut Cluster Day. That makes March a good time to remember one of the longest running battles in trademark law history, a dispute that began when the second Roosevelt was President and ended when the second Bush was President. It was all about peanut butter.

Crosby’s Skippy

In 1923, Percy L. Crosby created a comic strip for Life Magazine called Skippy, featuring a feisty urban-dwelling youngster who liked to paint fences. Although now a… More

Third Circuit Attempts to Untangle Defamation and False Light Invasion of Privacy

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In Graboff v. American Academy of Orthopedic Surgeons, the Eastern District of Pennsylvania found that the defendant’s statement was not defamatory but was a false light invasion of privacy (“false light”). The defendant appealed on the grounds that such a ruling was inconsistent as a matter of law. On February 20, 2014, the Third Circuit finally weighed in on the matter.

Pop Quiz: Defamation v. False Light

But before we get to the result, a pop quiz on defamation and false light: Apart from their distinct historical origins… More

Commercial Disparagement An Increasing Concern In The Age Of Social Media

tweetsCompanies are turning to social media with increasing frequency to directly communicate with customers and potential customers.  T-Mobile USA is no exception. Not only did the company release an astonishingly snarky press release in January, complete with fake quotations attributed to AT&T, but both T-Mobile and its CEO, John Legere, have recently taken to Twitter to comment on the services of their competitors.  These comments, variously described in the media as “trash talk,” “mocking,” and “antics,” include such statements as “there are the same number… More

“Facebook Said I Could” Defense Fails to Justify Digital Millennium “Trademark” Notice

Crossfit picCrossFit, Inc., the fitness training company, licenses its trademarked name and goodwill to over eight thousand affiliates worldwide at $3,000 per year per affiliate. When non-affiliate Jenni Alvies began posting on Facebook about fitness under the name “Crossfit Mamas” (including selling exercise apparel bearing the same name), CrossFit felt Alvies was infringing its mark.

So CrossFit did what anyone would do in this day and age. A CrossFit paralegal reviewed Facebook’s infringement policy and then sent Facebook a takedown notice pursuant to the Digital Millennium… More

Crimes of the Heart: A Trademark Valentine To Betty Boop

Boop4Betty Boop, the cartoon character created by Max Fleischer in 1930, has always been associated with the trappings of Valentine’s Day. She is frequently depicted on merchandise alongside symbols of love, especially the heart shape. But in 2011, the 9th Circuit Court of Appeals arguably killed Betty Boop’s trademark with that very shape. Why would 9th Circuit do such a thing? The answer is found in the doctrine of aesthetic functionality.

What is aesthetic functionality?

Aesthetic functionality derives from the doctrine of utilitarian functionality, which provides that a product… More

Fixation by Legal Fiction: Did the Second Circuit’s Fair Use Ruling For Bloomberg Leave Open A Pandora’s Box for Copyright Law?

Swatch imageAbout ten years ago, I saw an attorney argue a hopeless criminal appeal. He began his remarks with: “Your Honors, I know I’m going to lose this case, but how I lose it is very important.”

Bloomberg News may feel the same way about its recent win in the Second Circuit. The Court ruled that Bloomberg’s unauthorized distribution of the recording of a Swatch Group investor conference call was fair use. However, the Second Circuit refused on technical grounds to review a… More

Jury’s Verdict in Madden Football Copyright Case Overturned

MaddenWe previously reported on Robin Antonick’s copyright claim against Electronic Arts, Inc. (“EA”) over the software for the Apple II John Madden Football game. Antonick didn’t have a copy of his original source code at the time of trial, so instead he had an expert take whatever binary code had survived and use that data to create a visual presentation of the kind of football play formations the original source code would create.

Based on this visual presentation, last summer a jury found that the Apple… More

Martin Luther King, Jr. and “Publication” under the 1909 Copyright Act

Last year marked the 50th anniversary of Martin Luther King, Jr.’s “I have a dream” speech, delivered during the March on Washington on August 28, 1963.  It also marked the 50th anniversary of the first of many copyright lawsuits over that speech.

King v. Mister Maestro, Inc.

AlbumJust after the speech was delivered, two record companies — including “Mister Maestro, Inc.” — began selling unauthorized recordings of it.  Dr. King was not philosophically opposed to his speeches being recorded and sold — in fact he had already… More

A Tough Assignment: The Use of Copyright Law to Squelch, and Preserve, Negative Online Reviews of Doctors and Lawyers

There are few things more terrifying to a doctor, lawyer or other professional than a bad online review.  Online reviews are frequently uncivil, often indelible and in some cases outright false. Meanwhile, Section 230 of the Communications Decency Act often provides immunity from defamation suits to internet companies who host this content, thus providing little incentive to guard against publishing false reviews.

So how do professionals protect themselves from false reviews?  Well, what if they owned the copyright to those reviews?  This creative strategy is the subject of some interesting pending litigation.

The Case of the Disappearing Dentist

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A Turkey of a Trademark: Why you can’t have “Baked Tam” for Thanksgiving

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In Charles Dickens’ A Christmas Carol, Ebenezer Scrooge’s transformation from miser to profligate is marked by his purchase of a turkey for the Cratchit family.  Turkey used to be a luxury food, in most households suitable only for special occasions.  In the 1930’s, Americans ate an average of only 1.7 pounds of turkey each year (compared to about 20 pounds today). After World War II, turkey farming became industrialized and its output cheaper. By the 1970’s, a cholesterol-conscious country began replacing traditional red meats with turkey burgers, turkey… More

Rolling with the Punches: A Blow-by-Blow Account of the Supreme Court’s Copyright Laches Case

At some point, a legal claim is just so old and stale that it’s unfair to allow the plaintiff to bring it. The statute of limitations and the doctrine of laches are two different solutions to this same problem.  The former puts specific time limits on certain types of claims. On the other hand, the equitable doctrine of laches (from the old French “laschesse,” meaning “slackness”) eschews the one-size-fits-all approach and allows a judge to use common sense and fairness to determine whether a plaintiff’s delay was unreasonable given the particular circumstances of each case.

But what happens if the… More

The Madrid Protocol: Passage to India Now Open

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We previously reported that India was scheduled to become the 90th member of the Madrid Protocol Concerning the International Registration of Trademarks (the “Protocol”).  We noted that this was a gratifying prospect, since India’s National Trademark Office is notoriously overburdened and slow-moving.  Under the Protocol, a country is typically required to examine a registration request within 12-18 months.  If the country does not raise any objections within this period, the mark is deemed registered in its territory.  In other words, the Protocol provides an incentive for timely examination,… More

“Be fruitful and multiply . . . but not in those words”: How much good faith is required when giving birth to a DMCA takedown notice?

FingerSection 512 of the Digital Millennium Copyright Act (DMCA) provides copyright owners with the ability to demand that Internet Service Providers (ISPs) remove unauthorized copies from the internet.  This can be a powerful tool. Risk-averse ISPs, unwilling to expose themselves to liability for copyright infringement, often comply with such notices without regard for their merit. Thus, even when a takedown notice is patently frivolous, the accused copyright infringer is often faced with a choice between curtailing her own speech or having her website shut down by an overcautious ISP.

Is… More

FiberCore Case Illustrates Ownership and Transferability of “Shop Rights” to Patented Inventions

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 An employer may have rights in a patent on its employee’s invention in three situations:

(1)  if there is an express agreement to assign or license the patent to the employer,

(2)  if the employee was “hired to invent” and the employer can show an implied contract to assign the patent rights in the invention, or

(3)  if there was no express or implied agreement but the employee used the employer’s facilities to conceive of the invention.  In this last case, the employer will have a “shop right,”… More

WINTER . . . I MEAN PRINTER . . . IS COMING: Game of Thrones Alleges Copyright Infringement by 3D Printer IPhone Dock

The inner twelve-year old boy in me doesn’t know which is cooler: the throne made entirely from swords for HBO’s Game of Thrones series, or the fact that 3D printer technology can now replicate that throne in my home at the touch of a button. It’s an interesting time to be a twelve-year old boy.  It may be an even more interesting time to be an intellectual property lawyer because, like the imminent clash in Game of Thrones between the Seven Kingdoms and the evil forces beyond… More

Hopper Copyright Litigation Takes Center Stage at the Consumer Electronics Show

Dish Networks’ Hopper device has spurred a considerable amount of legal controversy. Recently, that controversy made its way into the official award ceremony of the Consumer Electronics Show.

Dish released its Hopper DVR in May 2012.  The Hopper’s “Primetime Anytime” feature automatically records the entire primetime lineups of CBS, ABC, FOX, and NBC.  During playback, the “Auto Hop” feature automatically skips commercials.  A few weeks after the announcement, CBS, Fox, and NBC sued Dish in the Central District of California alleging that the Hopper infringes… More

Will the Supreme Court Review Copyright Damages in Music Downloading Case?

Like Joel Tenenbaum, who has been discussed in prior entries in this blog, Jammie Thomas-Rasset has conducted a long-running battle with the recording industry over how much damages she should pay for her downloading activity.  Like Mr. Tenenbaum, she argues that large statutory damages are unfair against individual “consumer” downloaders who contributed only minimally to the industry’s damages.  She has had a district court judge on her side throughout her odyssey, but was shot down by three successive juries and eventually by the Eighth Circuit.  Most recently,… More

YouTube Not Required to Remove “Innocence of Muslims” Video in Response to Actress’s Takedown Notice

Last week a California federal judge declined to enter a preliminary injunction sought by actress Cindy Lee Garcia, which would have required YouTube to remove the 14-minute anti-Islamic film “Innocence of Muslims” that has sparked deadly protests around the globe in recent months.  Garcia’s complaint for direct and secondary copyright infringement against YouTube and its parent company, Google, alleges that she was fraudulently induced to appear in the “vile and reprehensible” film, and that her originally innocuous lines were dubbed over without her knowledge or consent.

Two days… More

SORT OF THE RINGS: Will Trademark Fair Use Protect Age of the Hobbits?

In August of this year, Warner Brothers finally announced the release of Age of the Hobbits, Peter Jackson’s long-awaited follow-up to his Lord of the Rings trilogy, based on J.R.R. Tolkien’s famous fantasy novels. Age of the Hobbits tells the tale of a clever group of diminutive Indonesian tribesmen who convince Chinese actress Bai Ling to save them from a hoard of cannibals mounted on flying Komodo dragons.

Wait a second. Does that sound right? Actually, the Warner Brothers film is called More