2d Circuit: Palin v. NY Times – Could we use a dispositive motion between Rule 12b6 and Rule 56?

This defamation suit involves a gun-control editorial published by the NY Times, which argued that a “link to political incitement was clear” between an ad circulated by Sarah Palin’s PAC depicting a map of congressional districts with a crosshair over certain ‘targeted’ districts, and the shooting of Congresswoman Gabby Giffords’, whose district had been depicted. No link between the ad and the shooting has been demonstrated.

Palin sued for defamation. The Times moved to dismiss under 12b6. The district court held an evidentiary hearing, in which the sole witness was the author of the editorial, for the purpose of gauging the plausibility of the allegation that the Times acted with actual malice (which element would be necessary for a defamation claim, as Palin is a public figure). The disctrict court dismissed the complaint.

The district court did not convert the 12b6 motion into one for summary judgment, pursuant to Rule 56. However it did appear to rely on the hearing in denying the 12b6. Thus, it improperly relied on evidence outside the complaint. Denial of the cause reversed.

As the Second Circuit noted, Rule 12(d) provides the district court with a choice between Rules 12b6 and 56. There is no middle ground (although I think there should be – which is a discussion for another day). Key holding here:

11th Circuit: Defendant Did Some, But It Didn’t Do All Things It Could Have Done To Comply With Injunction

Plaintiff uses the GORILLA PLAYSETS mark for outdoor play-sets. Defendant sold GORILLA GYM indoor exercise equipment, such as a pull-up bar, however it included accessories for children (such as ‘trapezes’). Plaintiff sues and defendant was enjoined from selling infringing play-sets. The injunction did not set out time-frames for compliance. Defendant, alleging that it was sitting on three months of inventory, moved for a phase-out period for existing stock, but the motion was denied (defendant also argued that it couldn’t satisfy the monetary award unless it moved this merch).

Several weeks later, a few infringing products were shipped, probably to trap-buyers, and plaintiff moved for contempt.

Defendant argued that it had made a good faith effort at compliance. District Court disagreed and this appeal followed.

11th Circuit: Because defendant itself was responsible for the problematic sales (and couldn’t blame the sales on agents), it would had to show that it had made ‘in good faith all reasonable efforts to comply.’ The court noted that defendant:

“…attempted – mostly successfully – to remove the words “Gorilla Gym” from its Amazon page and its web presence more broadly, built a new website, directed [its fulfillment entity] to repackage the goods it possessed, and rebranded the products under [other marks].”

However:

“[Defendant] took over two weeks to direct [its fulfillment and shipping entity] to remove the products from the infringing packaging and place the products into plain boxes and [defendant] did not make any efforts to verify compliance with ‘a new system’ until after [defendant] was notified that [infringing products] were still be shipped…It took [defendant] seven weeks after the injunction to direct [its shipper] to stop shipping orders’

Accordingly, the court determined that a reasonable person could find a clear and convincing violation and that defendant did not meet its burden to show an inability to comply – Defendant had made some efforts to comply but not all reasonable efforts to comply.

Ed. note: The court notes that defendant certainly didn’t ignore the injunction. This is a pretty harsh result, all things considered.

Amazon Complaint Details Affiliate Marketing Scheme (and Names Domain Names)

Alleged bad guys send emails that display Amazon trademarks and offer victims Amazon gift cards or other rewards if they fill out a survey about their Amazon shopping habits. The victims do not receive an Amazon gift card, but they are provided an opportunity to purchase male enhancement pills, or CBD oil.

Paragraphs 19 through 60 of the complaint (below) provides a click-by-click account of the scheme.

The complaint exhaustively lists the emails and domain names involved, perhaps in the hope that these will now become searchable:

amazon.perks@fondationaccess.com, amazon.survey@fasionsitejerseys.com, amazon@mtzautowreckin.com, amazon@diableimmortal.com, amazon@frnchest.com, amazon@merilledgeinvestment.com, amazonprimereward.status@frnchest.com, prime.bonus@bellasfoward.com, prime@gossiping.bq275.com, prime@latimer.ok301.com.info, primemember@decipherer.p1923.com, primemembersbonus@icontecs.com, prime@hysterectomy.keerog4.com, DedicatedNOW, Inc., kerrog4.com, bq275.com, pl923.com, BitAccel, LLC., 2934trk.com, ballerclick.com, besttre.com, loadzucchetto.com, kutcloud.com, clicktrackr.com, toltrack.com, OVH US LLC, and Choopa LLC.

2d Circuit: Copyright Complaint Cannot Be Based On Mere Suspicion

Plaintiff photographer pled that Scholastic had exceeded its license. Plaintiff didn’t provide particulars as to the infringement, arguing that any information supporting such an allegation was within Scholastic’s control. Second Circuit has ‘some sympathy’ for plaintiff’s position, but will not relax 12(b)(6) standards.

2d Circuit: Rich v Fox – Parents of Seth Rich Properly Pled Intentional Infliction of Emotional Distress

10th Circuit; Summary Judgment as to Dissimilarity Reversed by 10th Circuit

Plaintiff, top, sells apparel. Defendant sells vapib accessories but apparently also ‘promotional apparel’ (!?!). District court had dismissed on summary judgment, finding the logos are too dissimilar. 10th circuit reverses. A jury could find similarity because AFFLICTION is commercially and conceptually strong. The Fleur de Lises (fleur de lii?) are pointing in different directions but are still fleur de lises. The words are in different fonts but they’re both in a circle. And a lower degree of similarity is required if the goods are closely related. (ed. note: plaintiff is asserting initial interest confusion and post-sale confusion but not purchase confusion. perhaps a higher degree of similarity is warranted instead).

Protecting [redacted]’s Good Name

Mini-Mall Landlord Knew Or Should Have Known That $15 and $20 Ray-Bans Were Counterfeit

Luxottica sues landlord of indoor flea market for contributory infringement, after landlord fails to stop on-going sale of counterfeit Ray-Bans and Oakleys. $1.9 million judgment upheld by 11th Circuit. Held:

(1) A defendant is liable for contributory TM infringement if defendant (1) intentionally induced the direct infringer; or (2) supplied a product to the direct infringer whom it knows or should have known is directly infringing;

(2) A landlord can be said to be ‘supplying a product’ under this analysis;

(3) 11th Circuit joins consensus of circuit courts that ‘willful blindness’ is a form of constructive knowledge;

(4) 11th Circuit holds that there can be constructive knowledge of specific infringing acts. – The 11th Circuit distinguishes a landlord from eBay in Tiffany v, eBay – While the 2d Circuit held that it could not be said that eBay should have known which of its millions of listings were counterfeit, here, the landlord of a mini-mall should have known (after there had already been a police raid),that among its 130 or so tenants, some were counterfeiters – the volume of tenants was not so high, and no expertise is needed to know that $15 and $20 Ray Bans are counterfeits.

Query: note the comparison of number of listings in eBay (who could perform a search), to number of tenants in a mall, and not the number of products that those tenants sell.

Luxottica Group, Oakley v. Airport Mini Mall, LLC, 15-cv-01422-AT:

100 domain names with the prefix RockN?

Complaint denied and reverse domain name hijacking in UDRP re RockNCrystals.com https://bit.ly/2kCwB3v

Traeger Pellet v Traeger – Transfer of Rights of Publicity

New post on trademark/right of publicity: Think of the Name https://t.co/iWQlm1GziB pic.twitter.com/GusC1cpwu1

— Her Mavenship (@pchestek) September 16, 2019