ICANN has announced its ‘contention sets,’ – applications for new TLDs that have identical strings (for example, the 12 .APP applications) and two near-identical sets (.HOTEIS and .HOTELS, and .UNICOM and .UNICORN). Background here.
This turned out to be a pretty interesting decision. The ‘case in chief’ is sort of straightforward. The rapper Pitbull released a song ‘Give Me Everything’ which has the lyric ‘So, I’m tiptoein’, to keep flowin’/I got it locked up like Lindsay Lohan.’ Lindsay Lohan sues under NY Civil Rights Law Sections 50 and 51 (which prohibit the name, portrait, picture or voice to be used for advertising purposes without consent). Defendants prevail at the 12(b)(6) stage three ways: (1) First Amendment; (2) Use in a song’s lyrics is not ‘advertising’; and (3) If the song were deemed to be advertising, a mention in one line in a 104 line song is incidental and fleeting use (see pages 9 to 12 of the decision). Quite a weak claim but no sanctions because there wasn’t a lot of law on this fact pattern (p. 16).
Here’s where it gets interesting.
Lohan’s attorney’s papers were:
“rife with irrelevant discussion, . . . did not meaningfully address a single case cited by the
[defendants] in support of their motion to dismiss, cited a case without disclosing it had been
reversed, and essentially ignored every argument made by the [defendants].” . . . According to defendants, the reason that the Opposition
did not address the salient points raised in their motion to dismiss was because it was actually
taken “nearly entirely and verbatim” from a legal memorandum plaintiff filed in an entirely
different case. (Id. at 16 (emphasis omitted) (noting that approximately 14 or 15 pages of the
Opposition were copied from a prior legal brief).) Plaintiff does not dispute this assertion. (footnote 6)
Lohan’s attorney was sanctioned $750 for the plagiarism. However footnote 13 is also of interest:
The Court also notes, parenthetically, that it is underwhelmed by the nature of
defendants’ counsel’s conduct upon learning of plaintiff’s counsel’s plagiarism. Defendants’
counsel recognized the existence and extent of the plagiarism as early as March 9, 2012 … However, even though defendants’ counsel corresponded with plaintiff’s counsel on that date and again on March 12, 2012, they made no mention of these issues … Defendants’ counsel certainly had the option of raising the issue with plaintiff’s counsel, thereby affording plaintiff’s counsel the opportunity to withdraw the Opposition and request leave from the Court to amend the opposition papers. Instead, the first time defendants’ counsel raised the issue was when they filed the fully-briefed motion to dismiss and highlighted the plagiarism as part of the reply papers.
So here’s the question for discussion. To what extent are you your adversarial counsel’s keeper?
Apparently an Italian apparel firm owns US registration 3232057 for the mark JESUS. Hat Tip NP.
JUSTIA Summary: Eastland is the proprietor of the rap duo Phifty-50, which, according to its web site, has to its credit one album (2003) and a T-shirt. Eastland has registered “PHIFTY-50” as a trademark. It also claims a trademark in “50/50” and contends that Lionsgate and Summit infringed its rights by using “50/50” as the title of a motion picture that opened in 2011. The district court dismissed, finding the movie’s title descriptive because the film concerns a 50% chance of the main character surviving cancer. The Seventh Circuit affirmed, stating that the complaint fails at the threshold: it does not allege that the use of “50/50” as a title has caused any confusion about the film’s source, and any such allegation would be too implausible to support costly litigation. The phrase 50/50 or a sound-alike variant has been in use as the title of intellectual property for a long time. If there is any prospect of intellectual property in the phrase 50/50, Eastland is a very junior user and in no position to complain about the 2011 film.
I’ve been seeing a fair amount of criticism of the holding that the Batmobile is a copyrightable character. Still, a good decision to work through.
A seemingly less controversial holding might have been to treat the Batmobile as a protectable aspect of the Batman character. See New Line Cinema v Russ Berrie, 161 F. Supp. 2d 293 (SDNY 2001) (protection extended to fictional character Freddy Krueger’s glove)
The title might be obscure. Go Google ‘Robin’s Holy Sayings’ or something like that.
See page 5 of complaint for Yamaha ads targeting Beats.
Jon Wyness of MW Trademarks on Haribo v Lindt Sprunglion a Regional Court of Cologne decision holding that Lindt’s three dimensional gold foil wrapped chocolate bears infringed Haribo’s German registration for the word mark GOLDBAREN (gold bear), for gummy bears.