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.”

Text of decision: blockchange sdny jurisdiction

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.

 

 

Sukumar v IOC, 21cv215-GPC (AGS) (SD Cal June 1 2021)

 

Plaintiff ordered three commemorative replica stopwatches from Omega for $350K. The watches and customized pouches were to be engraved with the Olympic Rings logo (the original stopwatch had been used in the 1932 Olympics).  Plaintiff was dissatisfied with the final product. Omega “rejected any attempt to resolve the issue and refused to refund the purchase.” Plaintiff requested the right to obtain create substitute engraved pouches, proposing that he use the same third party Omega had used to create the pouches it had sold Plaintiff. However,  Omega indicated that it did not have the authority to allow the plaintiff to affix the Rings logo to the pouches. Plaintiff sought direct permission from the IOC, owner of the Rings logo, to use the logo but IOC didn’t respond. The decision doesn’t indicate as such, but it may be the case that Plaintiff intended to re-sell the stopwatches, thus the concern that there be no dispute as to his right to affix the rings to the pouches. I mean, who needs three commemorative stopwatches at $115K per.

Plaintiff brought a declaratory judgment against the IOC, seeking confirmation that he could utilize the logo (apart from a separate lawsuit against Omega).

From the decision:

At bottom, Plaintiff is a consumer who purchased collectible Omega stop watches
engraved with the Olympic Rings as well as pouches and ribbons embossed with the
Olympic Rings, and because he was not satisfied with the pouches and ribbons that
Omega produced, he seeks to independently have the pouches and ribbons with the
Olympic Rings made either through the third party used by Omega or an independent
third party. However, to do so, he must seek permission from the intellectual property
holder, the IOC, and not by filing a declaratory judgment lawsuit. Plaintiff acknowledges
that all rights to the Olympic Rings belong exclusively to the IOC and the Olympic Rings
may only be used “with the express prior written consent of the IOC.”  Therefore, his declaratory relief action is merely seeking an answer to
whether he may use the Olympic Rings on the pouches and ribbons in lieu of obtaining
prior written consent from the IOC. That is not a proper use of the DJA.
Therefore, even if the Court granted Plaintiff leave to amend to add the allegation
that he has a reasonable apprehension that the IOC will bring a trademark infringement
suit, those allegations are not sufficient to establish a case or controversy under the DJA.

Text of decision: sukumar v ioc sd cal DJ

 

 

Jawad Elatab v Hesperios, 19 cv 9678 (ALC) (SDNY June 2, 2021)

I mean in the case. Of course it’s fair use here.

Defendant clothing company published plaintiff’s photo (left, above) of Bella Hadid, on its Instagram account with the caption:  “@Bellahadid in our Lou tank and Lou Bel skirt knit set in fawn brown (right, above). Coming soon for Fall, although available now in summer colours. .  .” Plaintiff sues for copyright infringement. Defendant moves to dismiss alleging fair use.

Noting that it is difficult for a defendant to establish the affirmative defense of fair use at the motion to dismiss stage (given that the defendant can only work with the facts contained in plaintiff’s complaint), but also noting that its not impossible to prevail at that state (given that the court could possibly determine that use was fair by merely looking at plaintiff’s work and defendant’s complained-of reproduction, as you can do in the side-by-side above (See what I did there?).

The court then proceeds to evaluate fair use:

  1. Nature of use: The posting of the photo did not alter the original message of the photo. There is no modification – nor invitation to defendant’s IG followers to provide commentary. “defendant has failed to demonstrate that its post was anything other than commercial use to advertise its clothing.”
  2. Nature of the work: The photo was a typical creative work entitled to (c) protection. No discussion in the decision where the photo was published if ever.
  3. Amount and substantiality used: Defendant argued it needed to copy the entire work to invite its members to comment – however there was no such invitation – merely an advertisement for the clothes.
  4. Potential Effect of the Use on the Market or Value: Defendants posting invades plaintiff’s statutory right to license.

So is it possible to reproduce a photo of a celebrity wearing your company’s clothes?

Text of Elatab v Hesperios fair use decision

Etsy/DePop

Coupang:

Mercado Libre: