Some of the Fantastic People With Whom I Work


914INC., Westchester’s business magazine, saluted Leason Ellis for general excellence as a small business. Pictured below are Mel Garner (the go-to grey hair around here), Dr. Susie Cheng, one of the scary smart people here who do pharma and biologics patents, Karin Segall, with whom I have intense conversations about coexistence agreements and the doctrine of foreign equivalents, and a bearded man claiming to be David Leason. Scroll down to read the blurb.


Text of Trump University Decision – Plaintiff Defeats Trump’s MSJ

Plaintiff may bring Rico and Fraud claims. Trump seems to need to thread a needle. He has to argue that he is insufficiently involved with Trump University to avoid RICO liability but sufficiently involved to support the claims in the marketing materials (i.e. ‘handpicked instructors’).

What do people understand ‘University’ to mean when enrolling in this sort of ‘school’?


9th Cir: Injunction’s Function Is To Enjoin, Not Undo – .DelMonte TLD


There are two Del Montes, Del Monte Foods and Fresh Del Monte Produce. (some background here and here) I tend to use the DEL MONTE trademark as a cautionary tale in drafting coexistence agreements. To oversimplify: there was an agreement to split use of the DELMONTE trademark by the two companies between fresh produce and prepared/refrigerated produce. Then along came chilled fruit in a cup: fresh or prepared? Too many trademark suits between the DelMontes to link to here. The other source of contention: new forms of media that allows for only one owner: does either side have a better ‘right’ to the TLD .DelMonte?

Here, the Ninth Circuit rules that once ICANN awarded the TLD to one of the DelMontes, ICANN cannot be enjoined from awarding the TLD. Where the activities sought to be enjoined have already occurred, the appellate courts cannot undo what has already been done.


Good Lord, Colbert the cousin is a parody of Colbert the reporter who is a satire of . . . ?

Here goes. Stephen Colbert, when he was on The Daily Show on Comedy Central, performed under the name STEPHEN COLBERT but he played a character that satirized TV reporters. Colbert described the character as a “well-intentioned, poorly informed, high-status idiot.” Colbert went on to host THE COLBERT REPORT playing a similar character to the one he played on The Daily Show.

Colbert went on to host The Late Show on another network and it was reported that the ‘character,’ the satirical TV reporter, remained the property of Comedy Central. Colbert performs on The Late Show as himself (or least he doesn’t assume the persona of a satirical TV reporter).

Last Week, Colbert the host brought back Colbert the reporter to do one of Colbert the reporter’s ‘signature’ (should I say ‘trademark’?) bits, The Word:

OK, yesterday, Colbert the host reported that The Comedy Channel had protested the use of Colbert the reporter, claiming copyright in the character.

This is plausible, as
characters can be copyrightable. Apparently a car can be a copyrightable character (see the Batmobile case below). It makes the head swim as to what the character of Colbert the reporter consists of, given that the name STEPHEN COLBERT and Stephen Colbert’s appearance would seem not be part of that character. Interestingly, the part of the reporter character that would seem to belong to Comedy Central would be the mannerisms and behavior that satirize Bill O’Reilly. Plus a single raised eyebrow.

To take this one step further. Colbert the host threw the gauntlet down. He reported the dispute, and introduced Stephen Colbert, the twin cousin of Stephen Colbert the reporter (pause and enjoy the twin cousin joke).

Colbert the twin cousin of Colbert the reporter, also has a raised single eyebrow. And Colbert the host did a segment named The Werd, which, in his words, is ‘word’ but with an ‘e.’

Colbert the twin cousin appears to be a parody of a satire of Colbert the reporter.

Here is the recent Sherlock Holmes case:

Here is the Batmobile case:


Text of Ninth Circuit Decision in CRAZY HORSE re Assignability of Coexistence Agt

Original registrant enters into coexistence agreement with third party, undertaking not to protest certain uses of CRAZY HORSE trademark. Plaintiff enters into contract with third party assigned to it. Original registrant assigns rights to Defendant. Defendant protests Plaintiff’s use.

Held: Coexistence agreement and assignment to Plaintiff held enforceable. Defendant is barred from protesting Plaintiff’s use.


Amicus Brief in Star Athletica v Varsity Brands re Copyright Separability Test

From 43(b)log: Arguing that conceptual separability is simply a coda to physical separability, dealing with situations in which physical separation couldn’t be accomplished without destroying the useful article–regardless, there must be something other than the design of the article itself that can be identified as a protectable work. The existence of design patent also sheds important light on the limited role Congress intended copyright to play for useful articles.


Text of IRS Declaration ISO Order to Enforce Summons Covering Facebook Docs re IP Transfer

The IRS is seeking a court order to obtain documents from Facebook in connection with Facebook’s 2010 taxes. Facebook transferred certain rights in IP to a related company in Ireland. The standard for such transfers is discussed in paragraph 20 of the declaration below.

Bloomberg coverage here.


Bomhard IP on Brexit

short version: nothing to do immediately regarding existing EUTMs; might want to consider back-up UK filing for new EU TMs.


S Ct: Text of Kirtsaeng v John Wiley on Awarding Attorney’s Fees

Footnote two is a contender for funniest Supreme Court footnote this term.

Justia’s Summary:

Kirtsaeng bought low-cost foreign edition textbooks in Thailand and resold them to students in the U.S. In 2013 the Supreme Court held that Kirtsaeng could invoke the Copyright Act’s “first-sale doctrine,” 17 U.S.C. 109(a), as a defense to the publisher’s copyright infringement claim. Kirtsaeng then sought more than $2 million in attorney’s fees from the publisher under the Act’s fee-shifting provision. The Second Circuit affirmed denial of Kirtsaeng’s application, reasoning that Wiley had taken reasonable positions during litigation. A unanimous Supreme Court vacated. When deciding whether to award attorney’s fees under 17 U.S.C. 505, a court should give substantial weight to the objective reasonableness of the losing party’s position, while still taking into account all other relevant circumstances. Precedent has identified several non-exclusive​ factors for courts to consider, e.g., frivolousness, motivation, objective unreasonableness, and the need in particular circumstances to advance considerations of compensation and deterrence. Putting substantial weight on the reasonableness of a losing party’s position is consistent with the objectives of the Copyright Act, but courts must take into account a range of considerations beyond the reasonableness of litigating positions. Because the district court “may not have understood the full scope of its discretion,” the Court remanded for consideration of other relevant factors.


SDNY finds closure on functionality on closure and parties can now move on


43Blog commentary here.