14
Dec/09

MISS USA v MISS ASIA USA


miss asia usa.jpg
There’s really a well-developed jurisprudence with regard to beauty pageant names. Here, MISS USA fails to enjoin MISS ASIA USA.
Decision Miss Universe Miss Asian Usa



14
Dec/09

Don't Sing-a-long: Capitol v Vimeo re 'Lip Dub' Videos


Lip Dub – Flagpole Sitta by Harvey Danger from amandalynferri on Vimeo.

Vimeo is a video-sharing site (owned by InterActive Corp). It apparently hosts many videos consisting of ‘lip dubs,’ like the one above actually performed by the Vimeo staff. Plaintiff record labels allege that Vimeo is no ‘so-called video sharing service’ as it induces such infringing works.
The video above appears to reproduce a copyrighted work in its entirety (I have no way of knowing if the creator of the video received authorization). IO Group v Veoh and UMG v Veoh discuss video-sharing service liability. Plainitff will attempt to show how Vimeo’s behavior takes it out of the Veoh cases analysis.
Should I worry that my son is filming his friends and himself singing to songs, and then uploading them to YouTube, where they are viewed in the ten’s of ones? If the labels go after him, my son can’t afford me. I will have to turn to the EFF.
Complaint Capitol v Vimeo



14
Dec/09

Damages Denied On Counterfeit Default: Pointer On Proving The Obvious


This is why lawyers are neurotic.
Chanel and Vuittton sue an alleged counterfeitor on trademark, copyright and patent. Defendant defaults. A supporting paper for the default motion is reproduced below. It is a long catalog of the plantiffs’ extensive trademarks, copyrights and patents, and reproductions of the infringing items. Take a look, and see if you find the problem.
Time’s up. Bearing in mind that in a default, pleadings as to liabilitywill be deemed admitted, but allegations as to damages must be proven with certainty, the Court denied Vuitton damages on copyright and patent (trademark damages and an injunction were awarded). In affirming the magistrate’s report and recommendations denying copyright and patent damages,, the Court finds:

Judge Orenstein was properly frustrated by plaintiff’s failure to provide a clear indication in their pleadings, motion for default judgment, and additional submissions as to which of plaintiff’s copyrights defendant specifically violated. Instead, the plaintiffs placed the burden on the court to determine which bags and images from various website printouts correlated to which registered copyrights, a burden the Magistrate Judge properly declined to shoulder. The Magistrate Judge was thus unable to establish the amount of damages with reasonable certainty.

Plaintiffs apparently attempted to remedy this failure, when, responding to the Magistrate’s report, they submitted a chart, but the Court found the chart to be merely ‘a summary of evidence already submitted’ and refused to receive it.
Practice pointer: The blindingly obvious is never readily apparent, especially to a court that has much less time to spend on something than you do. Connect ALL the dots.
Motion for Default Chanel Vuitoon
Decision Chanel Default Pleading Copyright

Filed under: Pleading


11
Dec/09

Seemingly Impossible Motion to Dismiss Re Genericness Allegation Against Registered Mark


Plaintiff owns registrations for, among other marks, FRAGRANCENET and FRAGRANCENET.COM. Defendant moves to dismiss based on genericness. The only record here is the pleadings. A registered trademark is entitled to a (rebuttable) presumption that it functions as a trademark. This seems to me to be an impossible 12(b)(6) grounds for dismissal, unless the motion to dismiss is combined with something else that builds a record, such as a motion for a preliminary injunction. The Court notes:

In fact, at oral argument, both sides state that, based upon their research (which is consistent with the Court’s independent research), they were aware of no case ever in this Circuit where a court has, at the motion to dismiss stage, lacking an evidentiary record, dismissed a trademark claim on the grounds that a registered product or service name . . .was generic as a matter of law.”

Well, the motion still delayed the case 6 months.
Decision Fragrance Net Generic MTD



8
Dec/09

It's Certainly Not Contaminated By Cheese


Wall Street Journal article: English Village Tries to Milk a Connection to Its Cheesy Past:

STILTON, England — This small hamlet shares its name with a famous curd. But under European Union law, it’s illegal to make Stilton cheese in Stilton.
The bar on producing Stilton cheese here is a curious consequence of EU efforts to protect revered local foods by limiting the geographical area where they can be made.


Discussion of Monty Python Cheese Shop sketch
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7
Dec/09

Burberry Awarded $4 Million in Statutory Damages


Burberry obtains judgement of $4 million in statutory damages, based on $1 million per type of counterfeit good, against ‘serial’ counterfeiter.
Decision Burberry Statutory Damages



3
Dec/09

Google Public DNS: Discuss Amongst Yourselves


Google announced today that it will be offering a service named Google Public DNS, a ‘public domain name resolver.’ I asked the IPC list today whether this was a good, bad or neutral thing from an IP perspective and we all had fun speculating. Here’s a SEO blog discussion of things that could happen.



2
Dec/09

Howard Stern Conducts Hearing In KAMELFLAGE/CAMELFLAGE Dispute


camel.jpg
Plaintiff and Defendant dispute as to who used KAMELFLAGE or CAMELFLAGE first for underwear.
Below is an exhibit from the complaint purporting to be a summary of a segment from the Howard Stern Show in which plaintiff and defendant called in and disputed patent and trademark priority. Listeners purporting to be lawyers called in as well. On the whole, a different sort of trademark discussion than that found on the INTA Listserv.
Drafting question: if you were plaintiff, would you have explained the pun?
Camelflage Howard Stern
Complaint Camelflage Kamelflage

Filed under: Priority


30
Nov/09

ESCAPE FROM ALCATRAZ Triathalon v ALCATRAZ Triathalon


The background of the ESCAPE FROM ALCATRAZ Triathalon seems to be complex, according to the Wikipedia entry at least. Here, defendant triathalon director split from plaintiff triathalon promoter, to organize another triathalon taking place on Alacatraz and calling it the ALCATRAZ TRIATHALON. Plaintiff sues based on its registered rights in ESCAPE FROM ALCATRAZ.
Complaint Escape From Alcatraz



30
Nov/09

"Case Study" of Design Within Reach's Move To "Knock-Offs" Plus Questions For Discussion


dwr credenza.jpg
Design Within Reach, a retailer of designer furniture, used to promote itself as ‘The source for licensed classics,’ selling modern classics such as the Barcelona Chair and Eames Chair. This earned it a certain following but also a non-following who referred to it as ‘Design Out Of Reach.” This FastCompany article details its current finanical troubles and its re-positioning away from licensed products to sell what some may refer to as knock-offs. The article contains interesting quotes by designers whose products have been ‘knocked-off’ by DNR, as well as by licensors (such as the Eames estate) that still do business with DNR but are having second thoughts. Bonus quote from Prof. McCarthy re trade dress protection of furniture, or lack thereof.
Things to think about:
1. Is it ironic that licensed versions of Modernism, a movement that, to the extent that it was inspired in part by the Bauhaus movement and thus had at least a stated objective of bringing ‘design’ to the ‘masses,’ are, for most part, unaffordable to the masses? Or is it some word other than ‘ironic’?
2. Is trade dress protection for the shape of Modern furniture more or less appropriate, given the simplicity of Modern design? Is there a public policy argument to be made against trade dress protection for the shape of furniture?
3. Does DWR’s prior relationship with the designers that it ‘knocks off’ influence your opinion of DWR?
4. Is there a Platonic chair that is intelligently designed and is affordable?
March 2009 blog post on trademark suit against DWR here.
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