The Trademark Blog

Marilyn Monroe's Ghost Spotted Drafting Legislation In Albany, New York?

Mon, 08 Feb 2010 16:32:05 -0500

Dead celebrities have lobbied NY state senators to introduce S06790, a bill to amend NY civil rights law to add a 70 year post-mortem right to prevent the use of the persona of a deceased personality. The ghost of Marilyn Monroe may have been among the lobbyists, because Section 12 of the bill seems to reverse the outcome of this case, that held that Marilyn Monroe's estate, and CMG, the estate's agent, couldn't enforce post-mortem rights in NY, if we ever got them, because you cannot devise what doesn't exist when the will is written.

Drawing of Marilyn Monroe ghost from here.

My Huffington Post Column On The WHO DAT Dispute

Fri, 05 Feb 2010 13:14:25 -0500

Trademark Nation: Who Dat Who Own Who Dat?

Pryor Representation Doesn't Create Conflict

Fri, 05 Feb 2010 09:48:07 -0500

Law Firm reprented Plaintiff in a prior trademark litigation. Plaintiff sues Defendant, one of Law Firm's other clients, and Law Firm is retained to represent Defendant. Plaintiff moves to disqualify Law Firm arguing that either (1) Law Firm concurrently represents Plaintiff as a result of the prior litigation; or (2) this suit is substantially related to the prior litigation and Law Firm obtained confidential information about Plaintiff relevant to the current litigation.

Held: 1. This is not a concurrent representation. Law Firm's retainer agreement with Plaintiff had clearly limited the engagement to that litigation (practice pointer: your retainer agreements should be labeled as UNBUNDLED SPECIFIC RETAINERs and specifically defie the engagement). Even in the absence of a 'dis-engagement letter,' the representation had ended because the matter had settled. Despite the fact that the bad guy in the prior litigation could theoretically breach the settlement agreement in the future; and that LAW FIRM was identified as an agent for notice of breach; and that Law Firm had done de minimis work for Plaintiff other than the prior litigation; this simply wasn't an on-going representation.

2. This matter was not substantially related to the prior representation (different trademark).

3. Law Firm had not access to confidential information that was relevant to this proceeding. Law Firm's 'alleged insgiht into its former client's general litgation thinking is not similarity' for purposes of this analysus. There was some dispute as to how much Plaintiff had previously disclosed to Law Firm. Plaintiff's witness' testimony was not well-received.

Decision Pryor Representation

Unfettered By Knowledge, I Speak Freely on Fox Business Live

Thu, 04 Feb 2010 17:01:46 -0500

I'm still shuddering. I was supposed to appear on Fox Business Live (a streaming version of Fox Business) to discuss the IP aspects of Google's dispute with China. Then this morphed into 'the IP aspects of Secy of State Clinton's Internet Freedom speech' (which was a very good speech even though there was little to do with IP). Then we're live on the air and the anchor asks me about the Bank of China lowering interest rates. As I launch into it, I'm thinking "did he just ask me about interest rates?" To my credit, I did not allow the question to affect my answer. And I was able to work in the line "I can get you a Chinese Trademark Application from my computer in New York." I should have offered a special Fox Business viewer discount. Call now. And I have some thoughts on IP protection in China, unused.

The Person You Send A Demand Letter To May Know A Senator

Fri, 29 Jan 2010 11:19:14 -0500

Here is a post about the MONSTER v VERMONSTER trademark dispute, which dispute Senator Leahy denounced as 'trademark bullying,' when introducing the Trademark Technical and Conforming Amendment Act of 2010.

iPad v iPad

Thu, 28 Jan 2010 13:52:54 -0500

Fujitsu Transaction Solutions filed a used based application on March 7, 2003, for IPAD, covering 'handheld computing device for wireless networking in a retail environment,' stating a date of first use of January 8, 2002. It was published recently and Apple has taken an extension of time until February 28, to oppose.

Apple's date of first use for the iPod is October 23, 2001.

THE TOY BOOK and BIG TOY BOOK v BIG BOOK (of Toys)

Tue, 26 Jan 2010 15:37:25 -0500

Publisher which had licensed Toys R Us to use THE TOY BOOK and BIG TOY BOOK (after dispute) sues for TRU continuing post-license use of BIG BOOK.

Complaint Big Toy Book

Plaintiff Gets Over Aquiescence Hump

Tue, 26 Jan 2010 10:20:31 -0500

Go to the iTunes store and listen to 30 seconds of "I Need A Freak," recorded in 1983 by the band Sexual Harrassment. This song was licensed by one of defendants (dba Sexual Harrassment) to the Black Eyed Peas for use in 'My Hump' in 2005. Plaintiff alleges he wrote the song. Defendant alleges acquiescence. SDNY dismisses defense on summary judgement.

Decsiion Acquiescence Copyright Hump

Chartered Financial Analysts v Charted Securities Analysts

Fri, 22 Jan 2010 14:07:08 -0500

Owner of CFA and CHARTERED FINANCIAL ANALYSTS marks sue user of CSA, CERTIFIED SECURITIES ANALYSTS and CHARTERED SECURITIES ANALYSTS marks.

Complaint Cfa v Csa

TRO Denied re Parody of Prop 8 Group's Logo

Fri, 22 Jan 2010 11:49:20 -0500

Anti-prop 8 advocacy group uses parody of pro-Prop 8 advocacy group. TRO of parody denied. Trademark Blog Coulrophobia archive here.

Decsion Protect Marriage Parody

Berne Doesn't Seem To Be Self-Executing

Wed, 20 Jan 2010 13:49:53 -0500

Sometimes decisions are interesting because the issue in contention is so apparently uninteresting (by this point). The Berne Convention pretty much (but not exactly) says that it is not self-executing. There are many U.S. decisions that say that it is not self-executing (and every SDNY decision holds that it is not). Congress, when it implemented Berne, concluded that it was not self-executing, and considered whether it needed to amend Section 412 of the Copyright Act (which requires plaintiff to have registered its work in order to be eligible for statutory damages), in view of Berne's provision that 'the exercise of rights not be subject to any formality [such as US registration]." It then consciously decided not to amend Section 412. Courts have held that the 412 requirement doesn't contradict Berne, as statutory damages are the enhancement of a right, not a right in and of itself.

Here, plaintiff seeks statutory damages for unregistered foreign copyrights, arguing that Berne preempts Section 412, which argument the Court quickly dispatches. All I'll say is: that's interesting.

Decision Reed Elsevier Berne

Third Quarter Statistics Re Trademark Filings

Wed, 20 Jan 2010 12:01:22 -0500

CSC's TRADEMARK INSIDER is out. Companies that filed a lot of trademarks in the 3d Q, 09, in addition to the usual suspects (Time Warner and Mattel are nos 1 and 2), incude the United Football League, the Big Balloon Adventure Movie and Jake's Fireworks.

Infringement and/or Breach of Contract and/or Fraud

Wed, 20 Jan 2010 09:29:07 -0500

Discussion of pleading standards in SDNY re trademark infringement and/or breach of a license agreement and/or fraud.

Decision Houbigant Breach Contract Fraud Infirngment

SDNY Decision on ABBOUD After 2d Cir Remand

Fri, 15 Jan 2010 10:01:20 -0500

Court sets out manner in which Joseph Abboud may use his own name after having sold ABBOUD trademark.

Decision Abboud Jan 12 10

EDNY: 5 Months Is Too Long To Bring Prelim Motion

Tue, 12 Jan 2010 15:49:41 -0500

Not really an unusual decision but a reminder about the need for speed when bringing preliminary injunction motions. Plaintiff learned of complained-of behavior in June, didn't file the proposed order to show cause until November. It's three reasons for delay: (1) waiting for the expedited copyright reg'ns; (2) it granted an extension to the defendant to answer; and (3) defendant behaved in dilatory fashion; were held to be insufficient reasons to dispel the point that plaintiff's delay belies its argument that the harm is irreparable.

Decision EDNY Unreasonable Delay PI Motion