Sleeve Face


4th Circuit: Can State Courts Decide What Might Be Lanham Act Claims?

Defendant sues plaintiff in Virginia state court for defamation and ‘common law’ trademark infringement. It is contested whether a Lanham Act claim was made. Plaintiff brings DJ action in fed. court, fed, court remands back to state court. 4th Circuit concedes that there is jurisdiction in fed court but jurisdiction here under the DJ Act is an ‘authorization and not a command,’ and that the district court did not abuse its discretion by abstaining to exercise jurisdiction over this case. Read the dissent. Background on the dispute can be obtained by searching Dozier Riley defamation.
Decsion 4th Circuit Dozier Abstention


Small Dispute: BATTLE FOAM v FOAM CORPS For Storing Miniatures

battle foam.JPG
No market sector too small for a trademark dispute. BATTLE FOAM v FOAM CORPS for laser cut foam for storing and carrying miniature toy figures. Trade secret theft alleged as well.
Complaint Battle Foam v Foam Corps


We're Looking For A Mid-Level TM/(c) Litigation Associate

Experience the romance of trademark and copyright litigation directly at the source, the 11th floor of the Chrysler Building. High-profile, cutting edge IP litigation practice, good-looking partners, etc. We’re looking for a litigation associate, 4 to 6 years experience in trademark and copyright and neighboring rights civil litigation. Sorry to be strict but we are serious about these specs: ‘litigation associate’ doesn’t mean ‘wants to get out of prosecution’, 4 to 6 years doesn’t mean ‘graduated law school last year’, ‘trademark and copyright’ doesn’t mean ‘bored of this one breach of contract case.’
Encyclopedic knowledge of popular culture a plus; claims of having read the TM Blog since 2002 subject to verification
Send your resume with a 2 paragraph cover email highlighting what you don’t want us to miss, to mschwimmer at symbol mosesandsinger dot com. No need to be funny or clever in the email, just to the point. Phone calls will disqualify.


DMCA 'Interference' With Copyright Is Not Copyright Infringement

Actors’ Equity Association apparently polices YouTube on behalf of its actor members. Plaintiff uploaded a video and AEA sent a DMCA notice, erroneously believing that the uploading was without authorization of an AEA member. In fact plaintiff owned copyright in the work. Plaintiff sues AEA on copyright grounds. Held: AEA may have interefered with plaintiff’s ‘performance’ right but that in itself not copyright infringement, as AEA did not make an unauthorized copy of the work. The court then notes sua sponte that this is not a ‘false DMCA’ counterclaim as AEA did not knowingly make a misrepresentation in its DMCA. At best it behaved negligently.
Decision Actors Equity Dmca

Filed under: DMCA


IsItFake.Org (Website Re Identifying Counterfeits)

New website for identifying counterfeits: IsItFake.Org.


"Google, Viacom Don't Hold Back In Dueling Motions"

WSJ Law Blog: “Google, Viacom Don’t Hold Back in Dueling Motions“:

We find pretty amusing this notion that a bunch of Viacom employees secretly uploaded hordes of their own copyrighted videos to YouTube in order to bolster their copyright lawsuit against YouTube’s parent company, Google.
We have no idea if it’s true, of course, but the allegation is out there, as of Thursday.
In dueling summary-judgment motions unveiled Thursday in the long-running, heated battle between Google and YouTube, some new intriguing allegations were revealed. Among them, that Viacom that Google’s YouTube unit had sought to exploit copyrighted works for profit, and, yes, that Viacom itself had secretly uploaded copyrighted clips it later demanded Youtube remove.

Ed note: In and of itself, a copyright owner may upload some of its own copyrighted content to a site not for sinister reasons but to test how easy it is to post such content, and to test the website’s response to a complaint. We don’t know what the circumstances were here, with certainty.


What Didn't Happen at the ICANN Meeting This Past Week?

ICANN didn’t accelarate the deadlines for applying for new TLDs. There still isn’t a set deadline. There probably won’t be a deadline set prior to the next open meeting in June. Stay tuned. More here.



Applicant sells KHORAN wine – KHORAN apparently is the Armenian word for ALTAR. Examiner doesn’t reject of descriptiveness but on Section 2(a) disparagement – as the Koran prohibits alcohol, Muslims will be disparaged by registration of the mark. TTABlog summarizes and links to the Board decision upholding the refusal.
A couple of initial observations: (1) the mark has allegedly been in use in the US since 2000. The record doesn’t indicate one way or another whether there has been objections to the mark. Once this case gets reported, it will be too late to obtain ‘sincere’ evidence on this point; (2) this was a (rare) augmented board of 5 panelists; (3) the Board’s “there is no proper way to spell a foreign word/what about the radio” analysis is well-settled practice, however I suspect that in this instance, Muslims may interpret KHORAN WINE differently than KORAN WINE as to whether they are being targeted (I don’t have $250,000 to test this point).
Finally, the elephant in the room: within seconds of reading what this case was about, I was reminded of the Danish cartoons, and Theo van Gogh.


5 Possible Reasons Why Lindsay Lohan Filed That Talking-Baby Lawsuit

5 Possible Reasons Why Lindsay Lohan Filed That Talking-Baby Lawsuit. I’m going with numbers 1 (she believes she can win); and (4) she gets publicity (note how we’re talking about her). Also add number (6): people will be less likely to use her persona without authorization.