We previously reported on the dispute between the National Association for the Advancement of Colored People (NAACP) and the conservative activist Ryan Bomberger. Bomberger had repeatedly referred to the NAACP in online articles not by its actual name, but by the name “National Association for the Abortion of Colored People.” Bomberger characterized this alternative moniker as a parodic critique of what he perceived to be the NAACP’s pro-choice politics. The NAACP, on the other hand, saw Bomberger’s articles as likely to cause confusion among consumers. With the parties at an… More
Most of our readers are now familiar with ICANN’s new generic top-level domain (gTLD) program, which saw over 1,900 applications from various entities seeking to operate new top-level domain name registries. Most of these applications were for true gTLDs such as .web, .law, .book, and .family. But about a third of the applications, referred to as “.Brand TLDs,” consisted of trademarks (many famous and well-known marks), including .canon, .fiat, .youtube, and .pfizer. Each applicant paid several hundred thousand dollars per application (including ICANN’s $185,000 application fee!) and, if awarded the… More
Earlier this week, the Second Circuit issued its ruling in the HathiTrust case, a potential precursor to the long-awaited resolution of the more prominent, and related, Google Books case. The decision upholds the district court’s finding that the non-profit defendant is protected by the fair use doctrine, but leaves room for a potentially different outcome in the Google Books matter. As we have reported, the Google Books project aims to scan and digitize all the world’s books and make them full-text searchable. As part of the “Library Project” arm of… More
Sunday (June 15) marks the 799th birthday of the Magna Carta (sometimes spelled Magna Charta), which famously limited the powers of the English monarch vis-à-vis his feudal barons. Although often credited as a singular influence on the U.S. Constitution, and therefore on American law, it also gave rise to one of our favorite pre-internet copyright memes, courtesy of Ninth Circuit Judge Alex Kozinksi in Effects Associates v. Cohen.
It is no secret that college textbooks are expensive, and the average student has little recourse when a professor assigns specific books and editions. Stuck between a rock and a hard place, over the years students have concocted several creative ways to avoid these high prices. Examples include checking out textbooks from libraries for a semester at a time; purchasing books at retail price, photocopying every page, and returning the books for a full refund; and of course swapping textbooks with other students. Some of these methods are… More
On May 16, 2014, in Mitre Sports v. HBO, the Southern District of New York allowed a defamation claim brought by a UK company against HBO to proceed to trial. In doing so, the Court ruled that Mitre Sports International, one of the world’s top sporting goods suppliers, was not a public figure.
The United States Patent and Trademark Office is soliciting comments on its draft version of the “Service Mark Specimens” examination guide. The topics covered by the guide include the elements of an acceptable service mark specimen, grounds for refusal, and common issues arising in the examination of specimens for technology-related services. Comments are due by July 16, 2014. More information is available here.
The 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
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
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
Two weeks ago, in Vazquez v. Buhl, the Appeals Court of Connecticut affirmed dismissal of a defamation claim against CNBC for hyperlinking to an online report by journalist Teri Buhl. The Court held that, although CNBC allegedly “amplified,” “endorsed” and “adopted” the offending report, it was not a “content provider” under the Communications Decency Act (CDA).
The Sex and Money Scandal Rocking Hedge Fund Land
In 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
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
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:
- What’s the case about?
In its recent decision in Sussman-Automatic v. Spa World, the Eastern District of New York dismissed a plaintiff’s trademark infringement claims, while allowing its claims for false advertising based on the same conduct to survive. The decision explores the boundaries between a false advertising “bait-and-switch” scheme and the “initial interest confusion” theory in Lanham Act cases.
The Mr. Steam Bait-and-Switch
The plaintiff, Sussman-Automatic (“Mr. Steam”), is the maker of the “Mr. Steam” brand of shower and spa products. According to the complaint, Spa World ran a website which advertised the… More