When Can You Be Sued For Introducing Copyrighted Works At Trial? Almost Never, But Plaintiffs Keep Trying

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 criminal trials, or to punish the parties who introduced… More

Ninth Circuit Allows Delinquent Corporation To Sue And Own Trademarks

DartsIn 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

IP Protection For Novelty T-Shirts: Copyright Or Trademark?

gymboree

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.

Copyright Claim

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.

Trademark Claim

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.

Highlights of Congressional Hearings on Copyright Remedies: Statutory Damages, Small Claims and Felonious Streaming

1On 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

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