The Answer We Filed On Behalf of Sun Cedar in Car-Freshner v Sun Cedar

Car-Fresher sells Little Trees car fresheners. Sun Cedar is a Kansas not-for-profit founded to provide jobs for the at-risk population. It sells, among other things, cedar tree-shaped cedar wood ornaments.


FEC PAC-naming Restriction Ruled Unconstitutional

The Federal Election Committee prohibits political committees that are not authorized by a candidate, to use that candidate’s name in the titles of their websites and social media pages. a PAC named Pursuing America’s Greatness, challenged the prohibition arguing that the name prohibition was unconstitutional, as it was a content-based restriction.

Held: As a content-based regulation, the prohibition did not consider whether more narrow means could be used to prevent voter confusion, such as disclaimers.

43(b)log notes that this argument possibly be applied to trademark infringement as well


Gucci’s RICO Claim Against Alibaba Defendants Dismissed – SDNY

Alibaba successfully dismisses Gucci’s claim that Alibaba participated in a conspiracy with counterfeiters to sell counterfeit goods on Alibaba. That the merchants may have resulted in an ‘online retail cluster’ that benefited each other from some sort of network effect, did not rise to a ‘hub and spokes’ RICO conspiracy.


Text of Memo re Statute of Limitations – Copyright Ownership

Wilson v Perrell: Memo of law in support of motion to dismiss copyright ownership claim. The statute of limitations for copyright infringement is rolling; the statute of limitations for a dispute over copyright ownership is three years.


Text of Zuma Press v Getty Images Complaint (SDNY)

Press agency Zuma alleges that photo stock company Getty Images ‘carelessly’ licenses 47k photos that belong to Zuma.


Some of the Fantastic People With Whom I Work


914INC., Westchester’s business magazine, saluted Leason Ellis for general excellence as a small business. Pictured below are Mel Garner (the go-to grey hair around here), Dr. Susie Cheng, one of the scary smart people here who do pharma and biologics patents, Karin Segall, with whom I have intense conversations about coexistence agreements and the doctrine of foreign equivalents, and a bearded man claiming to be David Leason. Scroll down to read the blurb.


Text of Trump University Decision – Plaintiff Defeats Trump’s MSJ

Plaintiff may bring Rico and Fraud claims. Trump seems to need to thread a needle. He has to argue that he is insufficiently involved with Trump University to avoid RICO liability but sufficiently involved to support the claims in the marketing materials (i.e. ‘handpicked instructors’).

What do people understand ‘University’ to mean when enrolling in this sort of ‘school’?


9th Cir: Injunction’s Function Is To Enjoin, Not Undo – .DelMonte TLD


There are two Del Montes, Del Monte Foods and Fresh Del Monte Produce. (some background here and here) I tend to use the DEL MONTE trademark as a cautionary tale in drafting coexistence agreements. To oversimplify: there was an agreement to split use of the DELMONTE trademark by the two companies between fresh produce and prepared/refrigerated produce. Then along came chilled fruit in a cup: fresh or prepared? Too many trademark suits between the DelMontes to link to here. The other source of contention: new forms of media that allows for only one owner: does either side have a better ‘right’ to the TLD .DelMonte?

Here, the Ninth Circuit rules that once ICANN awarded the TLD to one of the DelMontes, ICANN cannot be enjoined from awarding the TLD. Where the activities sought to be enjoined have already occurred, the appellate courts cannot undo what has already been done.


Good Lord, Colbert the cousin is a parody of Colbert the reporter who is a satire of . . . ?

Here goes. Stephen Colbert, when he was on The Daily Show on Comedy Central, performed under the name STEPHEN COLBERT but he played a character that satirized TV reporters. Colbert described the character as a “well-intentioned, poorly informed, high-status idiot.” Colbert went on to host THE COLBERT REPORT playing a similar character to the one he played on The Daily Show.

Colbert went on to host The Late Show on another network and it was reported that the ‘character,’ the satirical TV reporter, remained the property of Comedy Central. Colbert performs on The Late Show as himself (or least he doesn’t assume the persona of a satirical TV reporter).

Last Week, Colbert the host brought back Colbert the reporter to do one of Colbert the reporter’s ‘signature’ (should I say ‘trademark’?) bits, The Word:

OK, yesterday, Colbert the host reported that The Comedy Channel had protested the use of Colbert the reporter, claiming copyright in the character.

This is plausible, as
characters can be copyrightable. Apparently a car can be a copyrightable character (see the Batmobile case below). It makes the head swim as to what the character of Colbert the reporter consists of, given that the name STEPHEN COLBERT and Stephen Colbert’s appearance would seem not be part of that character. Interestingly, the part of the reporter character that would seem to belong to Comedy Central would be the mannerisms and behavior that satirize Bill O’Reilly. Plus a single raised eyebrow.

To take this one step further. Colbert the host threw the gauntlet down. He reported the dispute, and introduced Stephen Colbert, the twin cousin of Stephen Colbert the reporter (pause and enjoy the twin cousin joke).

Colbert the twin cousin of Colbert the reporter, also has a raised single eyebrow. And Colbert the host did a segment named The Werd, which, in his words, is ‘word’ but with an ‘e.’

Colbert the twin cousin appears to be a parody of a satire of Colbert the reporter.

Here is the recent Sherlock Holmes case:

Here is the Batmobile case:


Text of Ninth Circuit Decision in CRAZY HORSE re Assignability of Coexistence Agt

Original registrant enters into coexistence agreement with third party, undertaking not to protest certain uses of CRAZY HORSE trademark. Plaintiff enters into contract with third party assigned to it. Original registrant assigns rights to Defendant. Defendant protests Plaintiff’s use.

Held: Coexistence agreement and assignment to Plaintiff held enforceable. Defendant is barred from protesting Plaintiff’s use.