How Not To Market Your Business Online (Even If It Works): Claims Against Fake Review Sites And Stolen Obituary Photos Survive Motion To Dismiss

1Despite 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

How The White Tower Burgers Trademark White-Washed, Washed Out, Then Washed Up

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 More

Wizard of Oz Celebrates 75th Anniversary & Victory in Copyright and Trademark Dispute Over Film Characters

adfsdfThis 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

The Trademark “Chaff” Quandary: PTO Report On Post-Registration Proof of Use

Mag GlassAs 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.

Many… More

Are “Concurrent Damages” A Good Idea For Copyright Law?

Money bagsAbout a year ago, we wrote about the final chapter in the copyright saga of Joel Tenenbaum, the Boston University student who was found liable for copyright infringement by a District of Massachusetts jury, based on his admitted sharing of about 30 songs via online peer-to-peer networks. Because the jury found that his infringement was willful, it awarded the plaintiffs a whopping $675,000 in statutory damages, or about $22,500 for each violation.  By contrast, the retail value of the music Tenenbaum shared was reportedly about $450.

Tenenbaum’s… More

Highlights of Congressional Hearings on Copyright Moral Rights, Termination Rights, Resale Royalty, And Copyright Term

Pic1On July 15, 2014, the Judiciary Committee of the United States House of Representatives, through its Subcommittee on Courts, Intellectual Property and the Internet, held hearings regarding a number of copyright issues, including moral rights, termination rights, resale royalty and copyright term. Despite the eclectic nature of the hearing, all of the issues discussed fell under the general category of what Chairman Howard Coble (R-NC) described as the “rights of the creator, often referred to as the little guy.”

Representative John Conyers (D-Mich.) stated that, at the moment, the… More

Copyright Office: Aereo Likely Not A Cable Company

IMage for AereoWe previously reported on the Supreme Court’s recent decision on June 25, 2014 that Aereo, Inc.’s internet television service infringed the copyright of the programs being transmitted by the service. In holding that Aereo was doing more than simply providing antenna access to its customers, Justice Breyer identified “Aereo’s overwhelming likeness to the cable companies” that are subject to regulation under the 1976 Copyright Act. Following the opinion, Aereo suspended its service temporarily, but saw in Justice Breyer’s language a potential silver lining in an otherwise grim… More

“Big Chocolate” Gets Injunction Against Whack-A-Mole Senator; Trademark “Services” Include Political Activities

1Last week, Judge William Quarles of the District of Maryland issued an injunction preventing Maryland Republican State Senator Steve Hershey from using his own campaign literature. The case was brought by the Hershey Chocolate Company, which alleged that the Senator’s campaign poster and other materials infringed the famous confectioner’s trade dress. The lawsuit must have come as no surprise to Senator Hershey because, prior to this, the parties had been playing trademark whack-a-mole for about a dozen years.

Big Chocolate Whack-a-Mole

In 2002, Mr. Hershey ran for County Commissioner, using… More

Copyright As An Online Reputation Management Tool: A Round Hole For A Square Peg

So, how is copyright law doing as an online reputation management tool?

Capture1We have written many times recently about the use of copyright law to do what defamation law can’t: take stuff down from the internet.  A politician in California claimed copyright in her campaign photo in order to have a satirical blog deleted. Dental patients have been asked to sign away their copyrights to hypothetical future online reviews so the dentists can take down the ones they don’t like. And most notably, in Garcia v. Google, the… More

Westlaw and Lexis Finally Agree: Providing Copyrighted Legal Briefs To Customers Is Fair Use

weleEvery attorney in the United States understands that West Publishing Corp. (“Westlaw”) and the LexisNexis Group (“Lexis”) are perennial rivals in the electronic legal research field. As such, they don’t agree on much, but there are some important exceptions.  Earlier this month, one of those exceptions came to a pleasing conclusion for both companies, when Judge Jed Rakoff of the Southern District of New York issued his long-promised opinion in White v. West Publishing Corp.

The case was brought by Edward White, an Oklahoma-based IP attorney. Some of White’s… More

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 opportunity… More

Do Municipal Seals Enjoy Any Trademark Protection? Recent Cases Take Differing Views

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Late last year, in a matter of first impression, the Federal Circuit affirmed the Trademark Trial and Appeal Board and held that the city of Houston could not register its official municipal seal with the United States Patent and Trademark Office (USPTO). The basis for this decision was 15 U.S.C. § 1052(b), which forbids trademark registration for the “flag or coat of arms or other insignia of . . . any State or municipality.”

The city of Houston had argued that the statute’s purpose was to prevent public confusion as to… More

“Oh right. . . THAT thing!” Designated Agent Required Prior To DMCA Copyright Infringement Safe Harbor

Capture3The recent case of Oppenheimer v. Allvoices is, if nothing else, a cautionary tale for everyone who wants to start the next big social networking site or provide any internet service with user-generated content. The moral is that the Digital Millennium Copyright Act (DMCA) is not self-executing; there are a few hoops you have to jump through before you can take advantage of the DMCA safe harbor. One of them is selecting and registering a designated agent.

What is a DMCA Designated Agent?

Under the DMCA, an online service provider… More

When “Slacker” Was A Dirty Word: Defamation And Draft Dodging During World War I

This summer marks the 100th anniversary of the outbreak of World War I.  The Archduke Ferdinand was assassinated on June 28, 1914 and, by the end of August 1914, Germany, Russia, France and the United Kingdom had joined the war. The United States entered the fray on April 6, 1917, by declaring war on Germany. This was when the word “slacker” suddenly became defamatory.

The Slacker Lists

The U.S. armed services actively solicited volunteers with an astonishingly inventive array of recruitment posters, but it wasn’t enough. On May 18, 1917, the Selective Service Act authorized the raising of… More

Supreme Court Fires Shot Across The Bow Of NSA Metadata Collection

photo-3 Recent revelations concerning the activities of the National Security Agency (“NSA”) include reports that the NSA and other government agencies have – in secret – routinely collected in bulk the “metadata” associated with millions of telephone users within the United States. While metadata does not include the actual words spoken in a telephone call or written in the body of an email, it often includes transactional data that, in the aggregate, reveals sensitive personal information. Whether and to what extent metadata deserves protection from government surveillance… More