Lady Gaga is performing at Madison Square Garden in NY on July 6,7 and 9 and February 21 and 22. Her trademark representatives beliieve that bootleg merchandise will be sold at these shows, and have filed a ‘John Doe trademark complaint.’ John Doe actions are interesting as they represent an exception to the law’s antipathy to the events depicted in the movie ‘Minority Report’ in which Tom Cruise works for the Precrime Department.
To plagiarize myself:
. . . the law permits the filing of a case against describable but presently unknown persons for anticipated describable future infringement, of a type where a law enforcement officer can make an on-the-scene determination that something is very likely an infringement.
A policy rationale for a John Doe seizure is that without on-the-spot seizure, the TM owner will suffer irreparable harm, as immediately following the event, the defendant and their proceeds will vanish, thus making an after-the-fact lawsuit purposeless. John Doe seizures are granted usually in connection with short-lived events such as sporting championships or concerts, where unincorporated, premise-less entities possessing small inventories (also known as kids holding duffel bags of shirts) are likely to offer counterfeit merchandise. The seizure order should contain sufficient specificity such that a marshal can make a determination whether a shirt constitutes a counterfeit, with a high degree of accuracy (for example, does the shirt bear the registered logo of the band, or not?). A court may blue-pencil plaintiff’s requested parameters of the seizure with regard to what constitutes plaintiff’s marks, vicinity and timing of permitted seizures. Bear in mind that if the seizure turns out to be unlawful, the vendor should be able to seek compensation from the plaintiff.
Complaint Lady Gaga John Doe
Important Decision: Gucci Pleads Good Contributory Infringement Action Against Credit-Card Processors
This is an important SDNY decision. Gucci sued companies that process credit card transactions for ‘replica’ websites. On 12(B)(6) motion, Court holds:
Gucci can proceed with its action against Defendants if it can show that they (1) intentionally induced the website to infringe through the sale of counterfeit goods or (2) knowingly supplied services to websites and had sufficient control over infringing activity to merit liability.
Gucci fails to allege inducement but sufficiently pleads ‘knowledge’ or ‘willful blindness.’ Interesting fact: one credit card processor conducted reviews of ‘charge-backs’, instances where the customer demands a refund. Some customers demanded refunds because the goods were counterfeit (see page 19 of decision).
The idea of going against credit card processors has been previously explored under California state unfair competition law.
Decision Gucci v Frontline (Credit Card)
A new one for the Coulrophobia archives:
ThingGeek: Officially our best-ever cease and desist. Pork Board sells c&d to ‘unicorn meat’ vendor for using the slogan ‘the white meat.’
In ThinkGeek’s press release, it notes that the product was released April1. It has also been reported that unicorns are mythical.
Sotheby’s has a real estate brokerage operation in addition to its famous auction house.
Complaint Sotheby Moving
In anticipation of next week’s meeting in Brussels, ICANN has released a fourth draft of the Applicant Guidebook that describes the process of applying for new generic top level domains.
It has also released “An Economic Framemark for the Analysis of the Expansion of Generic Top-Level Domain Names” which concludes that either good and/or bad things could result from new gTLDs.
Economic Analysis of New Gtlds 16jun10 En
Defendant recording studio, Reckless Music, LLC, attempted to defend itself against copyright infringement by arguing that the studio engineer who copied plaintiff’s software without authorization, was an independent contractor. It was found liable on a vicarious liability theory but costs and fees were not awarded agaisnt it because its defense was not unreasonable, under Fogerty.
Decision Wave v Reckless Award of Fees
In a copyright action involving works uploaded to the Internet, does New York jursidiction lie over an out-of-state defendant with no contacts with New York, if, inter alia, the defendant is alleged to have committed a tortious act outside the State that caused, and reasonably should have been expected by the putative defendant to cause, injury to a person or property within the State.
Finding conflicting authorities on the issue, the Second Circuit certified the question for review by the NY Court of Appeals. Penguin Group v American Buddha.
Decison Ny 2d – Personal Jurisdiction