Various entities in ROTHSCHILD financial group sues ROTHSCHILD CLUB.

Complaint Rothschild

Plaintiff is a retailer. Defendant attempts to sell it counterfeit product, which plaintiff refuses. Defendant says to third-party retailers: “Plaintiff is a satisfied customer.” Plaintiff brings 32 and 43(a) causes. District court dismisses at 12(b)(6) level, indicating that the unauthorized use of plaintiff’s mark doesn’t lead to confusion as to source of products. Second Circuit reverses, noting that the false advertising prong is much broader, applying to any false statement containing an unauthorized use of a mark, which statement may harm plaintiff (and notes that it has recognized ‘satisfied customer’ cases as recently as 2003. Important discussion of the scope of false advertising and of standing.

Decision Famous Horse v 5th

My son asked me for BEATS BY DR DRE headphones, retail $300, so I pretended not to hear him and left the room.  I tried that the next couple of times he asked me.  Eventually I had to do one of my ‘when I was your age speeches’ which makes him drowsy enough for me to escape.  Yesterday he texted me that he found a website selling them for 66% off.  DHGate.com, indicating that it is a wholesaler, offered three of the headphones for $100 each, plus free shipping (from China).  Three of his friends had gotten together and purchased them (and the attendant status that goes with them).   I checked out the website and saw that they were offering ear-bud versions for as little as 10% of retail.   I called Monster (manufacturer of BEATS) and asked them to confirm whether DH Gate was an authorized re-seller. No, they are on the ‘blacklist.’  And then I had a ‘when things are too good to be true’ talk with my son.

Kachingle says that it has pioneered a new approach that will save traditional journalism thorugh ‘micropayment monetization’ of content such as blogs. A Kachingle customer’s account is billed some small amount when they read content on a site that partners with Kachingle.  Kachingle approached the NY Times, which declined to participate. Nevertheless, Kachingle maintained various Times blogs in an index and directed readers to those blogs – however it was able to insert its own ads on the Times page (see para. 22 of the complaint).  The Times is suing on asserted trademark causes – no copyright causes.

Complaint Ny Times v Kachingle

Hogans Lovell: OEM Products May Not Infringe Tradmarks in China:

The Shanghai Higher People’s Court upheld a lower court’s decision that OEM (Original Equipment Manufacturer) products do not infringe a registered trademark in China if they are manufactured and exported to the order of a different owner of the same trademark abroad.

A US federal trademark registration for which a Section 15 affidavit has been accepted after 5 years of continuous use, is said to be ‘incontestable.’ That is to say that ‘title has been quieted,’ with regard to prior users.  There is a laundry list of exceptions to incontestability in Section 33 of the Lanham Act.  Two common attacks on an incontestable registration that are never time-barred from being argued, are ‘genericide’ and ‘fraud on the PTO.”

The Second Circuit just head a more unusual attack on registrant’s ownership of an incontestable registration. 

It is an understatement to say that various entities in Russia have fought over ownership of the STOLICHNAYA trademark for a while.  The US registration for STOLICHNAYA became incontestable in 1974. Ordinarily, when the registration is assigned, the assignee steps into the shoes of the registrant. The reg was assigned from Pepsi to Allied Domecq and Allied assigned it to SPI.  FTE and SPI fight over ownership and FTE  alleges that the assignment to Allied Domecq wasn’t proper.  SPI argues that FTE can’t challenge its or Allied Domcq’s ownership of the registration because the registration is incontestable. The District Court agrees.

The Second Circuit:  Nope.  The assignee only steps into the shoes of the incontestable registrant if the assignment was proper. The Court must evaluate whether the assignment was proper before awarding the ‘assignee’ the cloak of incontestability.

Decision Stoli

Center For Democracy & Technology: “Campaign Takedown Troubles“:

This report documents the extent to which overly aggressive copyright claims under the Digital Millennium Copyright Act have inappropriately stifled political speech on the Internet during recent campaign cycles.Broadcasters, concerned about the reuse of their news and public affairs footage in political advocacy, sometimes turn to the mechanisms created by the DMCA to force the removal of online political ads that contain such footage.Yet the incorporation of brief clips of news footage into campaign ads is highly likely to be fair use and thus non- infringing under copyright law.This report, drawing on publicly reported incidents and private interviews with campaign professionals, examines the problem of broadcasters and other news organizations abusing copyright enforcement tools in ways that impair lawful online speech by political candidates.  It is CDTʼ s hope that greater public exposure of and attention to this problem will discourage such abuse in the future

Copyright Takedowns

Plaintiff owns rights in SPEEDBOOK, seeks expedited discovery to determine if published reports are true that Google will use SPEEDBOOK for a tablet computer.

Motion Expedite Discovery Goo