Buttner v RD Palmer, NDNY, November27, 2013: Plaintiff alleges copyright infringement, as well as unjust enrichment. Discussion of relationship between federal copyright act and NY state business torts, as well as discussion of punitive and statutory damages under the Copyright Act.
My colleagues Yuval Marcus and Cameron Reuber successfully represented Defendant Marshak before the Ninth Circuit, which reversed the grant of a preliminary injunction.
Defendant had sold US-manufactured BOSE home theater systems in the UK. Bose sued in the UK, the parties signed a world-wide settlement agreement. Defendant allegedly continued to sell in Australia. Bose sues in Boston. Defendant makes some (imho) not well-taken arguments against the enforceability of the agreement. Defendant also argues that the $50k per incident liquidated damage clause was unconscionable. 1st Circ: $50k is proportionate to the damages from an infringing sale of a $6500 product, when considering legal fees, etc.
Interesting question: defendant apparently purchased the items in the US, and shipped to Australia. Which country’s trademark laws should apply?
Short note on the extraterritorial effect of the Lanham Act here.
Plaintiff alleges that it uses the mark HANGINGOUT for a mobile video app. Google adopted GOOGLE HANGOUTS for a mobile video app at a later date. Drafting pointer: It’s advisable, when alleging trademark infringement, to have a straightforward allegation such as “Plaintiff uses the Mark in interstate commerce, and has made such use prior to Defendant.” This complaint doesn’t have such an allegation (or I missed it the three times I looked for one). The complaint does allege that plaintiff owns a pending use-based trademark application. The App Store does carry plaintiff’s app, and indicates that the app was listed prior to Google’s alleged adoption. The absence of a clear-cut allegation of trademark use raised questions as I read the complaint – don’t raise questions in your readers’ minds unnecessarily.
Here’s an interesting fact pattern. Who is the source of the jewelry pictured above? This jeweler. Jewelry companies purchase luxury clothes and ‘re-purpose’ the buttons (bearing the logo) into jewelry, and sell them on sites like this one. Val Colbert has brought a DJ action against Chanel.
Here is a post from Prof Goldman’s blog on the First Sale doctrine with several useful links.
The button designs might be copyrightable, too. If you’re so inclined, you can begin your reading with Lee v A.R.T.
Plaintiff sells amusement park rides. Above we see two of plaintiff’s rides, JUMP AROUND and the SAMBA BALLOON. Plaintiff accuses defendant of copying its trade dress (as well as advertising materials). Plaintiff has previously obtained an injunction against Defendant.
The Copyright Act has a three year statute of limitations, however it is determined on a ‘rolling’ basis for normal copyright claims. The Court may consider acts that occurred up to three years prior to the date of filing the complaint. However, a dispute over copyright ownership between the parties occurs only once – suit must be brought within three years of the repudiation of plaintiff’s ownership.