Have Lunch With Me in White Plains Wednesday April 4 To Discuss The New gTLDs

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This Appears To Be A Real Product

From here.


2d Circuit: LV v LY re Whether To Stay Civil Counterfeiting Case Pending Criminal Proceeding

What should a court consider when asked to stay a civil proceeding when defendants are facing a criminal proceeding as well (considering that admissions in the civil proceeding could prejudice their ability to defend the criminal proceeding:

1) the extent to which the issues in the criminal case overlap with those presented in the civil case; 2) the status of the case, including whether the defendants have been indicted; 3) the private interests of the plaintiffs in proceeding expeditiously weighed against the prejudice to plaintiffs caused by the delay; 4) the private interests of an burden on the defendants; 5) the interests of the courts; and 6) the public interest.

Noting that this test is not a ‘mechanical device’ but a ‘rough guide and ‘checklist,’ the Second Circuit affirms the lower court’s decision to not stay in a counterfeiting case.

Decision 2d Cir Lv v Ly


Japanese Trademark Law Revision from Shiga International

From Shiga International Patent Office:

Shiga Japan Revision


CMG v Estate of Marilyn Monroe

CMG and Estate of Marilyn Monroe continue their dispute over the rights to her rights of publicity, to the extent they exist.

Background here. Two comments about the complaint. There’s a typo in paragraph 21, and if CMG had to list 8 famous celebrities it represents, I’m surprised Tommy John makes the list.

Cmg v Estate of Monroe


EDNY: 'Self-serving' Testimony Not Sufficient For Summary Judgment

All defendants except remaining defendant settle with or are voluntarily dismissed by Nike. All testify that remaining defendant is the ‘orchestrator of the counterfeit shoe importation.’

“Defendant. . . has not come forward with facts to dispute their testimony. Technically, he has not met his obligation to do so under the summary judgment rule. Yet, the history of this case provides a slight basis for arguing that these witnesses and former defendants have an incentive to fabricate their testimony in order to avoid their own liability. Such credibility determinations should be made by the jury.”

Nike v Kau Summary Judgement


How Much Does a BMI Logger Make, Do You Think?

BMI logger goes to the restaurant that had ignored phone calls and letters from BMI, takes notes as to the BMI songs he heard, swears out an affidavit, destroys his notes (as a matter of routine) nine months later. Affidavit is admissible.

BMI asks for $3k in damages per song, defendant asks for $2k, judge awards $2.5k.

The owner of defendant is the sort of person who is normally not worried by mail he doesn’t open.

BMI v Haibo


Another Fish Sticks Story? Fraser v Gorton's re SEAFOOD TEMPTATIONS

I’m not sure precisely what the deal is here. There is an allegation of trademark infringement by the owners of SEAFOOD TEMPTATIONS against Gorton’s, for using SHRIMP TEMPTATIONS. However a lot of lawyers and a federal judge (“in her non-judicial capacity” (sic)) are identified as defendants as well (see paras 1.13 to 1.20).

I see that these parties have tangled before, over fish sticks.

Seafood Temptations


OWN YOUR POWER Found To Be Forgettable

Plaintiffs own a registration for OWN YOUR POWER for motivational services. The October 2010 issue of O Magazine displayed a photo of Oprah with the headline phrase “Own Your Power” and some other commands, such as ‘Unlock Your Inner Superstar’ and “Tap Into Your Strength.” On September 16, 2010, the magazine promoted an “Own Your Power event.” The event was promoted by the other tentacles of the Oprah Empire (the tv show, the website, twitter, etc.). Plaintiff sues for tm infringement.

Held: The use of the headline was non-trademark use, describing the contents of both the magazine and the subsequent event. Interesting discussion at footnote 3 implying that the phrase was not intended by O Magazine to function as a trademark as it was not a memorable slogan (such as ‘Gatorade is Thirst Aid’).

Sdny Decision Own Your Power


9th Circuit: Damages in False Advertising Case

Defendant is a booking service for skydiving services but falsely represented that it owned and operated skydiving facilities. District Court awarded $10 million comprised of actual damages, disgorgement of profits and damages enhancement. On appeal, damages enhancement was found to be punitive, and was reversed.

Skydive Skyride Damages