I Will Be Speaking on IP Protection of 3D Shapes at AIPLA Oct. 22 in DC

Page 10 of the brochure: “What type of IP Do I Need? How to Figure Out How Best to Protect 3D Creations

AIPLA October brochure.


POKEMON copyright suit – collect them all!

Copyright: Unauthorized use of POKEMON characters on apparel.  WD Wash.  A little tarnishment there as well (Jiggly Puff on the pipe).



Ashland, Inc. (VALVOLINE) v. Randolph, SD West Virginia 2015

Unauthorized distributor of VALVOLINE products somewhat slow in complying with court-ordered injunctive relief.  Bonus fact: testing labs can distinguish between VALVOLINE and non-VALVOLINE oil.

Ashland, Inc. v. Randolph, Dist. Court, SD West Virginia 2015 – Google Scholar.



Juan Pollo Franchising v. B&K Pollo, CD Cal.   After  bench trial, the Court notes:

Plaintiff Juan Pollo Franchising has not shown that it owns the Juan Pollo Marks. Plaintiff Juan Pollo Franchising is the corporation that Okura established in 2011; but this corporation as an entity is entirely separate from Albert Okura the individual or Juan Pollo Inc., the corporation Okura formed in 1984. At trial, Okura testified that either he or Juan Pollo Inc. are the registered owners of the Juan Pollo Marks and that those marks have never been assigned to anyone else. (Transcript at 26-27, 34, 45-46.) Plaintiff Juan Pollo Franchising has not provided evidence that the Juan Pollo Marks were ever assigned to it. As such, the only evidence presented at trial as to the ownership of the Juan Pollo marks tended to demonstrate that either Okura or Juan Pollo Inc. owns the marks in question.

Now, I was ready to write some sort of ‘practice pointer’ to the effect that when you’re swapping ownership around related entities, you really do have to attend to the paperwork – draft the assignment and record the assignment.

But then I looked at the registrations, and I see that Reg 4006025 for JUAN POLLO THE BEST TASTING CHICKEN and 26666886 for JUAN POLLO  were in fact assigned from Okura to Juan Pollo Franchising, Inc. in 2013.

There was post-trial briefing, so there may have been the opportunity to point out that Okura misspoke with regard to the existence of a recorded assignment.

So this is odd.

JUAN POLLO FRANCHISING, INC. v. B & K POLLO ENTERPRISES, INC., Dist. Court, CD California 2015 – Google Scholar.


DUTY FREE AMERICAS, INC. v. ESTEE LAUDER COMPANIES, INC., Court of Appeals, 11th Circuit 2015 – Google Scholar

11th Circuit recognizes contributory false advertising theory.

DUTY FREE AMERICAS, INC. v. ESTEE LAUDER COMPANIES, INC., Court of Appeals, 11th Circuit 2015 – Google Scholar.


Ted Talk on Clarity and Mystery on Coke


What Should I Do If I Receive A Demand Letter That Claims It Is “Confidential and Not For Publication”?

There is a ‘high-powered’ law firm named Lavely & Singer.  Its website quotes a NY Times article referring to it as the ‘Guard Dog to the Stars‘ and notes that the firm “shields celebrities from all kinds of annoyance, and is now a mainstay of Hollywood.”

Back in 2004, I noted in a blog post, discussing a demand letter the Lavely firm had sent on behalf of Gov. Schwarzenegger, that the letter concluded with:

“This is a confidential legal notice and may not be published in whole or in part . . . Any republishing or dissemination of same, including but not limited to the printing of the contents hereof on the Internet, shall constitute a copyright infringement and will subject the republishers to civil liability for such actions.”

I noted at the time that both of these assertions are incorrect.    The legal notice was not confidential, to the extent that even if the letter did contain information that had been confidential to the sender, the information was being disclosed in an uncontrolled manner (in that it was an unsolicited transmission not made pursuant to any agreement).

To the extent that the letter contained potentially copyrightable matter, the recipient retained fair use rights.

The Lavely & Singer firm clearly don’t read the Trademark Blog, or, more probably, began reading it regularly after 2004, so it hasn’t really changed its letters.  Here we see a letter it sent to Buzzfeed last November regarding Cosby allegations, concluding with: “This letter is a confidential legal communication and not for publication.”  Here, we see a letter the firm sent two days ago to Lipstick Alley regarding Jared Leto, with the same assertion of confidentiality.

As a practical matter, if you send a letter saying ‘don’t publish this,’ to a gossip site . . .

As a legal style question – what say you?  Granted, a law firm trying to protect its client from allegedly defamatory content is in a tight spot.  A lie gets halfway across the world before the truth has a chance to get its pants on.  Either Mark Twain or Churchill or somebody else said that, Google isn’t sure.  So one can understand the motivation to threatening the recipient of the letter with terror of all sorts.

But if I were to representing the recipient of the letter, my reaction to a letter that contained a ludicrous legal assertion would be:

“well, if you made that shit up, what else are you making up? and a judge would be curious on that point as well.”

Update: More coverage on the weighty Jared Leto issue.





BUBBLE GENIUS LLC v. Smith, CD Cal – Personal Jurisdiction

BUBBLE GENIUS LLC v. Smith, Dist. Court, CD California 2015 – Google Scholar: CD Cal declines to exercise personal jurisdiction over Queens, NY business that allegedly ships into California but has no other contacts.


Glick v. Townsend, Dist. Court, D. Montana 2015

Somewhat odd fact pattern from D Montana.  Allegations that plaintiff assisted defendant in a re-write of a novel (unpublished) and didn’t credit plaintiff with the creation of the book title.

Glick v. Townsend, Dist. Court, D. Montana 2015 – Google Scholar.


Doobie v Doobie Decimal

Courthouse News Service:    Doobie Brothers Corp. and Doobro Entertainment on Friday sued Roger McNamee and Jason Crosby, who perform under the name Doobie Decimal System, a classic-rock cover band.