21
Dec/17

Text of LegalForce v LegalZoom Complaint re Unauthorized Practice of Law re Trademark Filing / Doc Prep Services


legalforce

legalzoom trademarks

LegalForce RAPC is a law firm that is a large filer of trademark applications. It is wholly owned by Raj Abhyanker. LegalForce Inc. is a corporation that offers the TRADEMARKIA search service. LegalZoom offers automated legal document preparation services, including trademark application and preparation and filing. It provides access to an ‘independent network of attorneys’ but it is not a law firm. What LegalZoom is, precisely, is part of the issue in this lawsuit.

LegalForce has sued Legalzoom for antitrust, unfair competition, and related state claims. The gist is that Legalzoom is providing legal services without authorization to do so.

The complaint, below, is 81 pages. Specifics as to what services LegalZoom performs in relation to trademark begins around page 18. In paragraph 51, LegalForce alleges that it placed two ‘trap filings’ with LegalZoom. LegalZoom allegedly provided legal advice ‘by selecting classification and modifying the good and services descriptions’ from LegalZoom’s online form. Furthermore, LegalZoom “provided legal advice as to which trademarks found in the search report may conflict with” the trademarks in question (para. 52, page 19).

Interestingly, LegalForce alleges in para 53 (page 19) that LegalZoom ‘surreptitiously’ does not document such modifications of the customer’s online form, presumably to avoid providing such advice in writing.

Paragraph 54 provides the blow-by-blow of the ‘trap’ filings.

In addition to all this, Paragraph 57 alleges that “LegalZoom does not refund $50 of the collected $275 government fee collected through its website if the non-lawyer staff at LegalZoom determine that the trademark qualifies as a TEAS Plus application with the lower filing fee of $225. (page 26-27). (note – if true – that sounds like a very straightforward class action suit).

ABAJournal coverage here.

Law360 coverage here.



18
Dec/17

Bill Lee, Non-Trademark Use, and Bonus Video of Eephus Pitch


bill lee sports illustrated

sporting times bill lee

Bill Lee was a left-handed pitcher, most notably for the Red Sox during the 70’s, at a time when left-handers were the target of unthinking prejudice. As a fellow-left-hander, I always had a soft spot for him after his quote that left-handers are the only one in the their right minds (brain hemisphere dominance joke).

Also – Bill Lee threw an eephus pitch which he referred to as his Leephus pitch. This history of the eephus refers to Lee but does not explain the name. (See video of greatest eephus pitches below)

In any event, Bill Lee was ‘colorful,’ which was a euphemism in those days for ‘takes drugs.’ He was known as the Spaceman and posed for Sports Illustrated wearing a spacesuit (See above).

Defendant released a biopic about Lee last year. The ‘he’s becoming famous montage’ depicts a recreation of the spacesuit photo on the cover of a fictitious magazine named SPORTING TIMES (See above). The cover appears for nine seconds in the movie and for two seconds in the trailer.

Owner of SPORTING TIMES registration protested, and defendant removed some but not all usages. Owner sues. Defendant moves to dismiss.

Held: Use of a name to denote a cover in a movie is not trademark use. To my mind there is a little muddiness in the decision in that the court states both that it is not plausible that the audience will perceive the name as a source of origin (which is a prerequisite for the confusion analysis), and that it is not plausible that the audience will perceive the name as indicating affiliation with the source of the film, which in my view, is the confusion analysis itself). Both conclusions seem true.

Also – as an alternative theory, use of the name passes the “Fred and Ginger” artistic relevance test so the use is protected First Amendment speech.

Apparently, Bill Lee lives in Vermont and ran for political office using the slogan “So Far Left, We’re Right.”



12
Dec/17

Online Service Providers: Register Your DMCA Agent By December 31 or Lose Your Safe Harbor


natucket shipwreck

Pictured above: OSP Losing DMCA Safe Harbor Protection Off Nantucket, William Bradford, ca. 1860, courtesy Met Museum of Art.

At the end of last year, the U.S. Copyright Office implemented a new online registration system for DMCA agent designations which replaces paper designations with online registration. At the end of this year, agent designations made under the old system will no longer be valid.

This affects online service providers, which includes any company that allows users to post or store material on the company’s systems, such as customer comments and reviews. Under the DMCA, online service providers may avoid liability for copyright infringement if they follow the DMCA’s safe harbor provisions.

Accordingly, all online service providers seeking to retain the benefits of the safe harbor protections of the DMCA must make new agent designations by December 31, 2017.

You can create a registered agent account here on the Copyright Office site.

If we can help, please reach out to one of our attorneys.



5
Dec/17

Amicus Brief by Walter Dellinger in Masterpiece Cakeshop


Amicus Brief by Walter Dellinger, signed by among others, Floyd Abrams and Kathleen Sullivan, in favor of the couple.

Background here.



27
Oct/17

Whether a Requirement to Bake a Wedding Cake Should be Viewed as a ‘Speech Compulsion’ – amicus brief in Masterpiece Cakeshop (Gay wedding cake case)


Amicus brief by Professors Eugene Volokh and Dale Carpenter in Masterpiece Cakeshop (the gay wedding cake case). Question presented:

Whether a requirement to bake a wedding cake should be viewed as a “speech compulsion” akin to a requirement to write, sing, paint, or photograph.



17
Oct/17

Recent Trademark-Related Tweets




16
Oct/17

Text of SDNY Decision in GRINCH Parody Suit


whos-holiday-artwork-1

I apologize for being a little tardy in my blogging. From September: SDNY holds that WHO’S HOLIDAY, a play picking up the story of Cindy-Lou Who from “The Grinch Who Stole Christmas, as an unhappy adult living in a trailer, is a lawful parody.

Favorite passage:

fahoo fores dahoo dores



16
Oct/17

Guinness Book of World Records v Scholastic: Is The Cover of a Book ‘Packaging’ or ‘Product’ for Trade Dress Purposes?


guiness scholastic covers

This should be interesting. Guinness Book of World Records sues Scholastic alleging trade dress infringement of its covers (See covers above).

Guinness argues that the cover ‘is in essence the “packaging” of GWR’s product . . . thus, GWR is not required to demonstrate the existence of secondary meaning.’ (see pages 5-6). The memo of law (below) provides no citation on that one. Packaging trade dress can be inherently distinctive while product configurations must show secondary meaning to be protectable.



3
Oct/17

Ticketmaster v Ticket Bots: Bots Chew Gum and Keep Talking During Performances


mst3k2

Ticketmaster v Prestige Entertainment, et. al., CD Cal, complaint filed yesterday:

Ticketmaster sells tickets online using its website and mobile apps. Its terms of use prohibits bots (software scripts designed to run tasks ‘at a far higher rate than would be possible for a human alone.’ It uses various methods to prohibit the use of bots, such as CAPTCHA. Defendants are alleged to ‘have been using bots to access and navigate through Ticketmaster’s website and mobile app, and through such unlawful use, improperly produce tickets for the purpose of reselling them at a substantial profit.” (para 5).

Defendants were alleged to have purchased thirty to forty percent of all tickets available through Ticketmaster for Hamilton and a majority of all Ticketmaster tickets for the recent Mayweather fight. Id.

Defendants had recently agreed with the NY AG to stop using bots. Id.

By being able to complete transactions more quickly than humans, and by buying tickets in excess of contractual ticket limits, bots deprive humans of the opportunity top purchase tickets. Bots circumvent copy protection systems. Bots make unauthorized copies of pages from the site and app. Bots make the Ticketmaster site run more slowly. Bots intentionally interfere with contract. Bots induce fraud. Bots drink too much beer, then talk loudly about how spoiled the players are.



28
Sep/17

Text of Complaint in The Honest Company v Honest Herbal


Honest-Comapny

The Honest Company, founded by Jessica Alba, sues re use of HONEST HERBAL for various products.