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.

liebowitz inquisitr personal jurisdiction edny decision

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.”

strike 2 john doe subpoena edny

 

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.

LINK TO TEXT OF DECISION:

emmy crony award sdny decision

 

 

Blockchange Ventures I GP, LLC. v. Blockchange, Inc, 1:21-cv-00891-PAE (SDNY July 22, 2021.
Jurisdictional discovery will be required.
From the decision (Edelman, J): “Plaintiff, based in New York, is “engaged in the provision of venture capital, development capital, private equity, investment funding and wealth management exclusively in the field of digital assets.” . Plaintiff characterizes Defendant, a California corporation with its headquarters in San Jose, CA, as dealing in “investment services and wealth management exclusively in the field of digital assets.”  Defendant denies that it is an investor, and counters that it is instead a software-as-a-service (“SaaS”) provider for “SEC-regulated registered investment advisors.” In its supporting declarations, Defendant alleges that it has no business ties to New York—no address, servers, bank account, real or personal property, telephone listing, or agents or employees in the state—and that it does not “buy or sell any assets in New York” or “solicit business in New York.”. It is vague, however, as to whether the “assets” it refers to includes the SaaS product that it provides to investment advisors.
…..

To be clear, the fundamental issue is whether Defendant, either on its own through its website, or through a partnership with Gemini, has sold its services under the allegedly infringing “Blockchange” mark to customers in New York. Absent such evidence, the Court expects to dismiss Plaintiff’s claims for lack of personal jurisdiction; if such evidence is adduced through discovery, the Court expects to deny Defendant’s motion to dismiss under Rule 12(b)(2). Given these clear guideposts, the Court encourages the parties, after discovery, to confer as to whether further motion practice on this point is necessary, or whether—as to the limited issue of personal jurisdiction—the record is clear enough to obviate such a need.”

The Alcohol and Tobacco Tax and Trade Bureau (“TTB”) approved a winery’s label for its ELOUAN pinot noir. A class action under California’s Unfair Competition Law was brought alleging that the label’s references to Oregon’s Coasts were misleading, as while the grapes came from Oregon, the wine was created in Napa, California. Defendant moves to dismiss, asserting, in part, that the TTB’s approval created a safe harbor against the UCL.

Held: While an agency’s approval of a product’s labeling could create a safe harbor against state statute, for purposes of 12(b)(6), it could not be determined whether the TTB had scrupulously reviewed the claims made in these labels, and therefore defendant could not claim a safe harbor at this point in the proceedings.

Also – Class Action plaintiff who purchased the wine in Louisiana did not have standing to pursue the claim under California’s UCL.

Photo above of label by Michael Alberty from this 2018 article.

Text of decision:

nd cal copper cane oregon coast MtD

 

Trump sues Twitter in Southern Florida, as a part of a class that has been de-platformed. Count one is that the First Amendment has been violated, Count two seeks a declaration that Section 230 is unconstitutional, and an unspecified amount of monetary damages are sought. He sued Google and Facebook in separate actions.

Twitter’s Terms of Service has a choice of forum provision (California)

News coverage  BBC, Axios,  and C-Span.

Text of complaint in Trump v Twitter: trump v twitter complaint

ITG v Capna CD Cal re KOOL v BLOOM dilution, 2:21-cv-00818-ODW(PVCx)(CD Cal June 3, 2021)

 

Plaintiff ITG Brands  owns registrations for the KOOL logo stylized, but also for the interlocking “O”s as separate registrations. Defendant moves to dismiss dilution claim, arguing that whether or not the KOOL logo is famous, the point of similarity, namely the overlapping “O”‘s, is not. Furthermore, dilution is implausible because the marks are so dissimilar.

With regard to whether plaintiff has properly pled that its interlocking OO logo was famous, the court observes:

To be sure, Capna raises an interesting argument—ITGB groups together the
KOOL Marks and KOOL OOs in the FAC as if they share the same characteristics,
when they do not. (Mot. 3.) Indeed, it may turn out that the KOOL Marks are famous
while the KOOL OOs are not. Regardless, the issue with Capna’s Motion is that it
challenges the veracity of ITGB’s pleadings by raising factual doubts, e.g., how much
of the alleged advertising expenditures, sales numbers, and widespread recognition are
attributable to the KOOL OOs as opposed to the KOOL Marks? These questions will
need to be answered, but not necessarily at the pleading stage. Taking all factual
allegations as true, ITGB adequately alleges that the KOOL OOs are famous. 

With regard to whether dilution is plausible, the court concludes:

As ITGB and Capna both sell smoking products, it is plausible that
consumers might mistakenly believe that KOOL cigarettes and BLOOM cannabis
products ***originate from the same source*** based on the shared use of nearly identical
interlocking OOs in the middle of each brand’s respective logos. (emphasis added).

Emphasis added to “originate from the same source” because “same source” is a confusion concept, not a dilution concept.

A composite trademark consists of word elements and graphic elements (check out TMEP Section 1213.02). A composite mark vs composite mark can be complex. Notice how in the packaging depicted above, in addition to the composite marks, the graphic elements are prominently depicted apart from the composite as well. And it might be the case, as the court may have decided, that the KOOL mark (or KOOL stylized mark) are famous, but the OO element is not. So it would be interesting.