This billboard in Herald Square is arguably one of the most famous signs in the world, at least during the parade on Thanksgiving. In 1963, Macy’s entered into an agreement with the owner of the billboard that the sign could not be used to “. . . advertise or refer directly or indirectly to any establishment selling at retail or directly to any consumer [other than Macy’s] . . .” The restriction is supposed to last forever. Macy’s has been renewing its agreement to advertise on the sign every ten years. The most recent term ended this past August without renewal, as the sign’s owner seems to have a new advertiser – Amazon – who does sell directly to consumers. The text of Macy’s complaint alleging breach of the covenant is here: Macys Complaint

Prevailing defendant’s motion for fees denied by Judge Liman. The Octane standard for “exceptionality” includes frivolousness, motivation, objective uneasonableness (both in the factual and legal components of the case, and the need in particular circumstances to advance considerations of compensation and deterrence.

Plaintiff’s patents, although found to be unenforceable at the motion to dismiss stage, were presumed to be valid, and plaintiff made colorable arguments as to their validity. The patents were not self-evidently unenforceable.


Text of RDPA v Geopath, 1:20-cv-03573-LJL, (SDNY, September 20, 2021): liman denying fees

Plaintiff claims copyright in ART WE ALL and design., which design he claimed he merchandised. Sues Defendant for selling ARTWEALL merchandise on copyright and trademark. Magistrate Judge finds that (1) plaintiff’s affixation of the design in grafitti insufficient to show that defendant had access to the work; and (2) plaintiff failed to show that he actually sold merchandise  bearing the mark.  Defendant’s summary judgment granted and the complaint was dismissed.

Text of Gayle v Villamarin: gayle v villamrin sdny decision

Photographer, represented by the Liebowitz firm, sued defendant media website for unauthorized publication of plaintiff’s photo illustrating an article entitled “Rick Ross Questions Birdman’s Net Worth After Cash Money Boss Defaults On $12 Million Loan.” Plaintiff’s allegation that defendant was based in Brooklyn according to third-party website, deemed inadmissible hearsay and therefore insufficient to establish specific jurisdiction.

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Strike 3 subpoenas ISPs to determine the identities of John Does that it alleges downloaded its copyrighted (adult) films. The decision describes the procedure to be filed in view of the “sensitive nature of the allegations.”

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National Academy of TV Arts and Sciences v. Multimedia System Design d/b/a “Crowdsource the Truth, 20-cv-7269 (VEC), SDNY July 20, 2021

Hollywood Reporter coverage when suit was filed.

Defendant “produces video content that, inter alia, traffics in wild conspiracy theories” (now there’s a finding of fact in a judicial decision you don’t see every day). Defendant distributed a video that used an image of the EMMY Award statuette holding a COVID-19 virus “as part of a video honoring countries that downplayed the seriousness of the COVID-19 pandemic.” No comment.

Plaintiff, owner of trademark and copyright in the EMMY statuette, sues for TM infringement and dilution, and copyright infringement.

On 12(b)(6), Defendant moves to dismiss on grounds of de minimis copyright infringement, copyright fair use, trademark fair use, and absence of trademark confusion. It brought a Anti-SLAPP counterclaim, as well as counterclaims for declaratory judgment and misuse of the DMCA. Plaintiff moves to dismiss the counterclaims.

In a methodical decision discussing all factors in the copyright fair use, trademark dilution, and likelihood of confusion tests, the court denies all of defendant’s motion, and grants plaintiff’s motion dismissing the requests for “mirror image” declaratory relief.


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