Text of Goldman v Breitbart (Tom Brady Embedded Tweet Case)

Ok. Plaintiff took a photo, on the street, of Tom Brady and Celtic GM Danny Ainge. Plaintiff uploads it to Snapchat and it goes viral. People tweet the photo and various defendant news organizations embed the tweets in an article about Brady and the Celtics. Defendants, citing the server test as articulated in Perfect 10, argue that they are not violating the exclusive display right of the copyright owner. The court characterizes defendants’ argument as “the physical location and/or possession of an allegedly infringing image determines liability under the display right. Although the Brady photo is displayed ‘seamlessly’ on their webpages (ed. note. – really? seems that the tweet is graphically recognizable as a tweet – isn’t the border of the tweet a seam?), Defendants are simply providing instructions for the user to navigate to a third-party server on which the photo resides.

Held: The server test from Perfect 10 is probably wrong. Noting the small commercial establishment exemption form the display right, the Court states: …that these establishments require an exemption, despite the fact that to turn on the radio or TV is not to make or store a copy, is strong evidence that a copy need not be made in order to display an image.”

If the server test is correct, user volition would seem to take this case out of that test. In Perfect 10, the user had to click on the link to get to the original image. Here, Defendants were effectively displaying the image to their readers.


This Is An Example Of A Tweet Embedded On A Webpage


Mini Dawn Donut Doctrine?

mini donut

DONUT and DOUGHNUT are not homonyms, homophones, homographs or heteronyms. They are alternate spellings.

Plaintiff has been using MINI DONUT FACTORY for a chain of stores in Illinois since 2008. It now has a federal registration. Defendant opened a donut store in Tampa under the name MINI DOUGHNUT FACTORY. Defendant, apparently a domainer turned donut purveyor, obtained the domain name MiniDonutFactory.com which it redirects to MiniDoughnut Factory.com. Plaintiff uses MiniDonutFactories.com.


Champion Goes After Gangstas

champion chapo

champiuon gansta


Ninth Circuit: Eat Right Foods v Whole Foods: To What Extent Can Acquiescence Defense Be Evaluated At Summary Judgment

Justia summary:

The Ninth Circuit vacated the district court’s grant of summary judgment for Whole Foods in a trademark infringement action. The panel held that the district court impermissibly resolved disputed questions of material fact in favor of the moving party regarding Whole Foods’ affirmative defenses of laches and acquiescence. Therefore, the panel vacated the district court’s reasonableness finding and remanded for further proceedings. On remand, the district court should reevaluate the evidence in the light most favorable to the non-moving party—i.e., as if ERF delayed filing suit because it was trying to settle its claims against Whole Foods. If the district court determined on remand that ERF delayed unreasonably in filing suit and this delay prejudiced Whole Foods, it must consider the extent and reasonableness of Whole Foods’ reliance on ERF’s affirmative representations before it reaches a finding on acquiescence.


The Oldest Registered Trademarks In The World

Polish attorney Mikolaj Lech, inspired by our article from 2002 on the subject, has sent us his video and links to his blog post on the oldest trademarks in the world.

He concludes that PILSNER BIER is the oldest registration in the world, dating from 1859!:

pilsner bier label

Thank you Mikolaj!


SDNY Asked To Explore Functionality of Sex Toys In Trade Dress Case

cotr plug

Plaintiff has sold the b-Vibe Rimming Plug device since the summer of 2017. It alleges that its plug, the remote control, the charger and the case are all “uniquely designed” and it claims trade dress therein (See exhibit A below). Defendant has offered for sale the XR Rimmer since January 8. Plaintiff alleges that defendant’s products infringes its trade dress in the plug, charger, remote and case (See exhibit B). Plaintiff has field for design patent protection as well.

Two points. Plaintiff refers to a beaded pattern in para. 29, which pattern seems to be copied by defendant, but not displayed in Exhibit 1.

Second – para. 38 reads “Alternative constructions perform the same adult toy product function as COTR’s trade dress. How would you edit that sentence?

Wikipedia on sex toys.


MJX Asset Manangement v MJX for Exchange Traded Cannabis Stock Fund


mjx asset managnement


Plaintiff MJX Asset Management manages ‘structured investment funds.’ Defendant ETFMG created an exchanged traded fund (ETF) specializing in stocks in the cannabis business, sold under the ticker symbol MJX and promoted at www.mjxetf.com.


Graspability of Knobs Considered In Sixth Circuit Trade Dress (Leapers v Sun Optics)

Leapers manufactures adjustable rifle scopes. A terminated manufacturing partner continued to make scopes similar in appearance to those of Leapers. Leapers sued, alleging infringement of its trade dress in the knurling (or texturing) of the knobs in its scopes. The exhibit to its complaint showing many side-by-sides is reproduced below. This is one of its scopes:

leapers scope

This is one of defendant’s scopes:

sun opitcs scope

Leapers has filed for a federal trademark registration. This is the drawing of the applied-for mark:

lepaers tm drawing

The description of the mark in the application is:

The mark consists of a three-dimensional design configuration that is applied to all relevant cylindrical adjustment surfaces (i.e. the knobs and bells) of an archery or rifle scope or sight. The design is marked by scalloped knurling that is: (1) uniform and proportional in the width of the elevations and depressions on the cylindrical adjustments; and (2) straight, unbroken and running parallel to the cylindrical adjustment surfaces. Only the scalloped design on the cylindrical adjustment surfaces, depicted in solid lines, constitutes the mark; the rest of the product design depicted in broken lines is not part of the mark and serves only to show the position of the mark on the scope or sight.

The application is suspended during the pendency of this suit.

The District Court dismissed at summary judgment, holding that plaintiff would not be able to show that the knurling design was non-functional.

The Sixth Circuit has reversed. A jury could reasonably conclude that the knurling is purely ornamental because plaintiff had introduced testimonies that plaintiff was unaware of any functional benefit to this particular knurling design, and had chosen this pattern for ornamental reasons.

Plaintiff had also shown that its competitors apply knurling that was more effective at making the knobs’ adjustment surfaces more graspable (page 9).

The Sixth Circuit held that the District Court’s discussion of knurling was over-broad, and had erroneously held that any pattern of knurling that provides graspability, must be functional. Pages 11-12

Discovery is resumed, and Plaintiff will now have to show non-functionality, secondary meaning, and the likelihood of confusion.


Delta Sues CheapFlightsFares.com for ‘Impersonation’

Delta sues discount flight aggregator CheapFlightsFares.com, alleging that defendant impersonates Delta (see para 44 of complaint).