27
Feb/11

Niketown


Detail from display in Niketown in Manhattan.



18
Feb/11

Swatch v Bloomberg: Copyright in a Conference Call


From the complaint: Plaintiff Swatch, a Swiss publicly traded company, hosted a conference call for securities analysts. The call was transmitted and recorded by a conference call service. Participants were instructed not to record the call for publication or broadcast. Bloomberg News was not invited or authorized to participate in the call. Bloomberg recorded the call, created a transcript which it made available to others.

Things to ponder: the Work is defined as the sound recording of the call.  What did Bloomberg (allegedly) copy and when did it copy it?

Also note: The Work was allegedly created outside the U.S.

Complaint Swatch



14
Feb/11

KENNEDY FRIED CHICKEN


The NY Times ran an article today on KENNEDY FRIED CHICKEN . There was an original KENNEDY FRIED CHICKEN in Brooklyn and it spend its early years being sued by KENTUCKY FRIED CHICKEN, That dispute ended when KFC became KFC. While the owner of the original Kennedy’s now owns federal trademark registration 2994240, the name has ‘spawned 100’s of imitators.’   The site KENNEDY FRIED CHICKEN appears to be an unaffiliated directory of all such stores by that name.  According to the article, the name ‘has become to oily drumsticks what the ubiquitous Ray’s name once was to New York pizza.’ uh oh.

p.s. Searching KENNEDY FRIED CHICKEN in Google image is worth a few moments of your time.

p.p.s. photo above (c) J Welch dba TTablog



10
Feb/11

Marvel Seeks To Strike Jury Demand in Kirby Family Suit


Memo to strike jury demand in Kirby family lawsuit with Marvel over termination of grants of copyright rights. “Claims for a declaration as to future ownership rights such as the parties seek here are quintessentially equitable in nature and not triable to a jury.”

Memo to Strike Jury Demand



9
Feb/11

The New Dilution Similarity Standard Is Very Different – Levi Strauss v Abercrombie


Are these pocket stitching designs ‘identical or near identical – essentially the same and not just similar’? 

Or do they merely possess a degree of similarity such that the top design impairs the distinctiveness of the lower design?

If you asked the first question, and answered no, then you were the District Court, and you dismissed Levi’s dilution claim against Abercrombie & Fith. 

If you asked the second question, and answered that you don’t know, then you were the Ninth Circuit noting that the standard of similarity plaintiff needs to show under the Trademark Dilution Revision Act is different than the standard under the original Federal Trademark Dilution Act, reversing the decision in favor of Abercrombie and remanding the case.

And if you don’t like the new standard because it’s a bit tautological, don’t blame the Ninth Circuit, blame Congress.

Decision 9th Cir Levis Abercrombie Dilution



9
Feb/11

But They're Luxury Rubber Bands


Odd. Defendant allegedly sells Chanel fragrances without the outer packaging, without cellophane wrapping, with the laser-etched batch code scratched off, in an unmarked cardboard lining held together by rubber bands or clear adhesive tape. That doesn’t seem like the best way to sell Chanel.

Complaint Chanel Ok Perfume



9
Feb/11

This Is How We Do Summary Judgement For Music Copyright


The Game, featuring Fifty Cent, released “How We Do” in 2005. Plaintiffs registered copyright for their song ‘Elevator” in 2002. Both songs are described as contemporary hip hop songs. Both songs’ choruses contain the phrase “this is how we do” four times, interspersed with other lines, set to a similar rhythm.

A copyright plaintiff must establish that defendant had access to plaintiff’s work, and that the works are substantially similar. On summary judgement, a claim of access must be supported with ‘significant affirmative and probative evidence’ showing that the ‘alleged infringer had a reasonable possibility – not simply a bare possibility – of hearing the prior work; access cannot be based on mere speculation or conjecture.’ “Access through third parties connected to both a plaintiff and a defendant may be sufficient to prove a defendant’s access to a plaintiff’s work.”

Here, one of the plaintiff’s knew a producer who knew the defendant writers. He ‘probably’ played and delivered copies of his song to the producer (producer was a customer at the Sam Ash store where plaintiff worked). The producer and the writers gave declarations that the producer didn’t ‘transmit’ the song to them (but apparently the declarations weren’t emphatic enough). Court held that material facts were in dispute as to access.

As to whether probative similarity could be used to establish access, the dueling music experts’ disagreements as to the uniqueness of the chorus were sufficient to defeat summary judgment for both sides.

As to substantial similarity, the ‘this is how we do’ phrase was prominent enough in both songs, such that a jury could conclude that the songs are substantially similar.

As to defendant’s allegations of independent creation, whether that in fact was the case ‘involves factual issues that are not susceptible of summary judgment.’

Parties’ motions for summary judgment denied.

decision lessem the game this is how we



8
Feb/11

Nike v Already LLC – Unilateral Covenant Not to Sue As A Way Out


A defendant’s counterclaims can act as a bear trap for plaintiff, keeping it in a case that it wishes to unilaterally drop.

Plaintiff sues defendant alleging trademark infringement of a registration described as a ‘design’ or ‘configuration’ mark. Defendant files answers and counterclaims seeking declaratory judgement cancelling registration. During discovery, plaintiff delivers uni-lateral covenant not to sue, stating that because defendant’s actions ‘no longer infringe or dilute at a level sufficient to warrant’ continued litigation, plaintiff ‘unconditionally and irrevocably’ covenants not to sue defendant on claims arising from defendant’s current and/or previous footwear product designs or ‘colorable imitations’ thereof. Plaintiff then moved to dismiss its action and the counterclaims. Defendants consented to dismissal of plaintiff’s claims but opposed dismissal of its counterclaims, seeking cancellation of the registration. It argued the registration remained a sword over its head, and that it could still run afoul of that registration in the future.

However, the Court noted that the covenant applied to future sales of defendant’s shoes and colorable imitations thereof. There was no evidence that defendant was working on ‘new or updated’ products, and it was hard to envision such products that could infringe the registered mark and not be covered by the covenant.

Decision Nike Soulja DJ Counterclaims



7
Feb/11

Defamation As A Counterclaim


Yahoo! alleges that defendant committed trademark infringement by sending fake ltotery spam.  Defendant brings counterclaim alleging that (1) he didn’t commit infringement; (2) therefore he is being defamed.  Yahoo! moves to dismiss counterclaim.  Court notes in decisding Yahoo’s motion to dismiss it must treat non-moving party’s factual allegations as true, not its legal conclusions.  Even if defendant didn’t commit trademark infringement, pertinent statements made in a course of a legal proceeding have an absolute privilege against defamation.

Decision Yahoo Lottery



7
Feb/11

Use-based Applications for SARAH PALIN and BRISTOL PALIN


Sarah Palin had applications filed for SARAH PALIN and BRISTOL PALIN.  The office actions are below.  You can look at the specimen of use for BRISTOL PALIN here: bristol palin specimen (it consists of the words BRISTOL PALIN on a piece of paper.  Some people think this person should be the one to select Supreme Court justices.

Bristol Palin Office Action

Sarah Palin Office Action