16
Jul/14

Join Us To Celebrate The San Francisco 49er’s Lawsuit ($10 cover, 2 drink minimum)


49ers logo

This is interesting for a bunch of reasons. The San Francisco Forty-Niners sue a nightclub near its stadium, that promotes events that refer to the Niners or its players. See Exhibits Q, R and S in the second document below for ads the club distributes to promote, for example, birthday parties ‘in honor of’ specific Niner players, with photos of the player wearing his Niner uniform. Of particular interest is the Niners’ invocation of its unusual 3-D trademark registrations in its uniforms (see Exhibit J through M).

One fact that isn’t clear (to me) from the pleading is whether the nightclub had the consent of the player whose birthday it was allegedly celebrating. And its not clear if the players showed up for their party.

There was a recent case that stands for the proposition that you can’t end-run a false endorsement cause by claiming that you were exercising your First Amendment rights by ‘foisting’ some kinds words on the celebrity (Michael Jordan prevailed against a drugstore that ‘congratulated’ him on being inducted into the Hall of Fame (in a full-page ad that featured all sort of MJ indicia)). So if the players didn’t authorize, there may be an action there as well.

p.s. There’s also a straight-forward copyright claim, as the nightclub appears to have used Niner photographs without authorization.

49ers v motif.pdf

49er exhibits.pdf



15
Jul/14

Forum non conveniens in C.D. Cal


Discussion in CD Cal of multi-factor test for forum non conveniens. New Jersey and Swiss plaintiffs, Virginia defendant, no indispensable non-party witnesses in CD Cal, so transfer to ED Va. Raffi Zerounian, John Welch and I represented defendant Belmora.

bayer v belmora cd cal order to transfer.pdf



14
Jul/14

Guest Post: New Ways of Providing IP Legal Services


Annette Freeman is a K2 Ip Network Attorney, principal of Freeman IP, and a long-time friend of the Trademark Blog:

There’s a lot of talk around these days about new ways of structuring legal and attorney firms. Dr George Beaton calls the paradigm “Old Law/New Law” and argues that major changes are on the way.

Meanwhile, as the debate rages in the blogosphere, many have been quietly getting on with new ways of doing business. A variety of different concerns might spark the desire to try something new. Attorneys and lawyers might hear their clients asking for better charging models with more predictability or transparency. Quality staff may want to use technology to work remotely more often. Perhaps expensive office suites in the center of the city with marble foyers and high-end art on the walls are, these days, sending the wrong message to cost-conscious clients.

Many firms have responded to this by relocating to the periphery of major cities, retaining good communication links but reducing overheads – New York-based boutique Leason Ellis is a prime example of how successful this can be in driving down costs while both retaining and attracting clients. (Ed note: I told you she was a friend).

But there are also subtler drivers there can encourage alternative approaches. It seems that clients don’t only want reasonable and transparent costs. They also value access to the right professional, someone who fits their needs and who won’t delegate their work ‘down the hall’. Professionals get a lot more job satisfaction from building close relationships with their clients, taking time to learn about the business they’ll be assisting, and building team-work and trust. And not everyone wants to slog away their entire career to become managing partner.

Of course, clients and professionals have always wanted these things. Finally some innovative new firms are trying out different models to see if they can deliver better outcomes. Certainly, the availability of fast, streamlined technology has brought new models within the bounds of possibility and there are now a number of successful examples in place around the world.

In Australia and South-East Asia, there’s AdventBalance, founded by ex-large law firm partners. It advertises “a refreshingly different approach to law”. Its lawyers work on projects, anywhere from a day to a year, often at the client’s premises.

London’s McCarthy Denning says it is “redefining the business of law”. They talk about vastly reduced overheads and no chargeable hours targets. Their lawyers work from home, at the client’s premises, or at one of their hot-desking centers. These models are backed up by central office support usually providing such things as telephone reception, messaging, postal services and meeting rooms.

Also based in London, Keystone Law talks about a “fresh new approach” and “a liberating experience”, a highly successful approach developed over ten years, that now involves 120 lawyers who receive support from a central London office, with support staff and administrative functions, and meeting rooms where required.

These firms have their finger on the pulse. In line with evolving community expectations, the UK has just brought in changes to employment legislation, granting a statutory right to request flexible working to all employees after 26 weeks’ employment (whether or not they have children), with such requests to be dealt with “in a reasonable manner” by the employer. ‘Flexible working’ in this context may take various forms, including job sharing, part-time working, or working from home.

In the sphere of patent and trade mark services, London-based K2 IP Ltd (with whom I’m affiliated) has brought together a group of twenty five geographically-spread IP attorneys and consultants, with an IP management infrastructure – including record-keeping, accounting, paralegal, marketing and office functions – provided by the London firm Keltie LLP. With UK and EU attorneys and consultants spread throughout England and Scotland, as well as in Miami, Nice in France, and Sydney, Australia, it’s a model that’s popular with the professionals. But it also brings together senior attorneys who have ‘done their time’ in the big companies and firms, and now want to build more meaningful client relationships.

Keith Turner, Chief Executive of K2 IP, says that these types of models have definite benefits for clients, too, but can also happily co-exist alongside other more traditional approaches. “A client may really want to work with a particular highly-experienced individual, but may be wary of entrusting a major project or portfolio to a one-person firm. With K2 IP, the client gets the expertise they want, plus back-office support and access to other specialists in the K2 attorney line-up.”

At the heart of all these new firms is some form of legal framework to allow a group of independent professionals to effectively work together as a team to service clients. The most successful firms also utilize a simple revenue sharing formula to encourage collaborative working and client referrals to ensure the best person does the work for the client.

These brand new firms sprouting up everywhere are taking the concept to a whole new level. If they can deliver happy clients and happy professionals, we’ll be seeing a lot more of them.



10
Jul/14

False Advertising Cause Maintained in Our “Trademark Scammer” Case


This is a lawsuit my firm filed against a company that we allege is a ‘trademark scammer.’ Defendants moved to dismiss. The Court maintained our false advertising claim. 43(b)log comments here.

leason ellis v pta.pdf



5
Jul/14

North Korea is Best Korea


Last night I took the family to see ’22 Jump Street’ (“Mindless fun” says The Trademark Blog. “Could have been a lot worse”) and we saw the trailer (above) for “The Interview,” a Seth Rogen/James Franco comedy scheduled for release this fall. The movie appears to be about an attempt to assassinate Kim Jong-un, the leader of North Korea.

Apparently, North Korea isn’t into the whole ‘bro-mance’ genre and has threatened ‘stern’ and ‘merciless’ retaliation.

Now, the plot device of an attempt to assassinate a recognizable individual seems to be quite common. Personally, I recommend (the original) “The Day of the Jackal“, about an attempt to assassinate Charles de Gaulle.

On the other hand, nations may get touchy about statements that can be perceived as advocating the assassination of their head of state.

The movie hasn’t been released so we don’t know what it says precisely. So we will have to wait and see.

There’s no such thing as bad publicity.



25
Jun/14

Federation of Telegu Associations of Southern California v Telegu Association of Southern California


telugu1

Federation of Telegu Associations of Southern California sue Telegu Association of Southenr California. Telegu is a language with the third highest number of native speakers in India, thirteenth worldwide.

telugu v telugu.pdf



25
Jun/14

Text of ABC v AEREO


6 to 3 (Scalia, Alito and Thomas dissent).

abc v aereo.pdf



19
Jun/14

3 Things To Think About WRT Yesterday’s REDSKINS Decision


Things to think about with regard to yesterday’s TTAB decision cancelling the REDSKINS registrations:

1. The TTAB proceeding is not the main event.

The interplay between First Amendment protections and other laws leads to, uh, uneven results. A federal court can enjoin use of the mark WASHINGTON LOUIS VUITTONS, as infringing speech can be regulated. A court could possibly enjoin the use of WASHINGTON LET’S KILL ALL THE REDSKINS, to the extent it constitutes a true threat to commit harm, can be regulated. But a federal court can’t enjoin the use of merely offensive speech, such as WASHINGTON REDSKINS.

So Blackhorse v Pro-Football, like Harjo before it, cannot be aimed at the center of the target. It may be procedurally interesting, and symbolically significant, but it doesn’t affect use of the mark. So don’t get all that worked up about this decision.

2. The cancellation of the registrations would be a factor, but not a determinative one

First, if every novel issue in this proceeding gets appealed, we will not see finality of the cancellation for years.

Second, it is uncertain how a federal court would enforce the remaining common law rights. Of course certain Lanham Act rights would no longer be available (certain counterfeiting remedies, for example).

Also, some licensees require licensors to maintain registered rights. So interpreting those clauses will be fun, here.

An interesting aspect here (if the registrations are ultimately cancelled) is the increasing importance of registrations, when asking intermediaries to enforce tademark rights. You need a registration when utilizing the various dispute resolution policies of a Google, Amazon, eBay, ICANN, etc.

So cancellation of the regs would be an expensive nuisance.

3. How this dispute ultimately resolved

Unless the owner of the team has a vision on the road to Damascus, this ends when the NFL says to him: ‘enough’. When does that happen? Bear in mind that certain NFL revenue streams are shared equally by the teams so certain reductions in those streams are shared equally. So this ends when it costs the NFL enough money to outweigh whatever point it thinks its making by ‘standing firm.’. When you email Bob Raskopf at Quinn Emmanuel ([email protected]) and say:

Bob:

I know you’re doing your job, so this isn’t directed at you personally. Please pass this information along to your client:

When I see that goods or services are ‘the official’ whatever of the NFL, I don’t buy them.

I told my kids they can’t buy NFL licensed merchandise (and besides, Tim Duncan and the Spurs are better role models).

When we watch NFL games, we DVR them and skip through the commercials.

So without speaking here to Washington’s owners beliefs in his position, he should include this in his calculus.

Thanks,

Your name here

[NY Jets fan throw in a P.S. here about their annoyance with the Jets passing over Manziel in the draft]



17
Jun/14

Text of ‘Sherlock Holmes’ Decision


klinger v conan doyle.pdf



11
Jun/14

I Mean, You Could Do A Blog On Nothing But E-cig/Vape Cases


hana modz v daily vape steals.pdf