Tuesday, December 20, 2011

Wednesday, December 14, 2011

Copyright Registration of Unpublished Collections or Groups of Works

Just a quick note about registering a single copyright for unpublished groups or collections.  While it is very efficient and less costly than registering separate copyrights for each work in the group, the drawback is that you may only be able to collect damages on the single group, not the multiple works within the group.  This is especially true with regard to statutory damages. Something to keep in mind when comtemplating a group registration.

Tuesday, August 30, 2011

Trademark Infringement Damages under the Lanham Act for Infringement of Unregistered Trademark

In doing some research in a trademark infringement case, I am reminded (by Mr. McCarthy) that all of the Lanham Act Section 35 (15 U.S.C. §1117)  remedies for infringement of a registered mark are available under Section 43(a) (15 U.S.C. §1125(a))  for infringement of unregistered marks.  Keep that in mind when considering whether or not to bring a trademark infringement suit based on a common law trademark.

Wednesday, August 24, 2011

Be Careful Accusing Movie Studios of Infringing Your Copyrighted Story or Screenplay

I get contacted frequently by authors claiming that their story has been "stolen" and is now a successful movie or television show.  Most claim that they sent a script or story to the studio at some point in time, and now they've been ripped off.    They always want the attorney to go after the bad guys and collect money from them for the author, and, oh yea, get your attorney's fees from the bad guys.  These authors never have any money to pay the attorney.... I'm always sympathetic, but skeptical.  There aren't really any new ideas under the sun, just rehashed stories transposed or "transformed" in some way.  I have never taken one of these cases because I have never felt the author had a strong case.  In a recent case on point, the judge actually ordered the plaintiff to pay the attorney's fees of defendant 20th Century Fox.  Plaintiff claimed Fox ripped off his story to make the movie Aliens vs. Predators.  The judge saw it differently, finding that there was no similarity, in fact the stories were substantially different, and any points of similarity were due to stock themes.  Plaintiff was ordered to pay $40,000 of Fox's attorney's fees.  http://tiny.cc/sggmk

Moral:  Studio's are fighting hard against claims of copyright infringement, so be careful before bringing a claim against them.

Monday, May 23, 2011

Top 10 List From 2011 International Trademark Association (INTA) Annual Meeting

The INTA annual meeting in San Francisco (May 14-18) was a lot of fun - and a lot of hard work.  I was busy everyday from early in the morning until late at night.  It's exhausting, but satisfying, to network with old and new friends and attend the quality educational sessions.  I'm looking forward to next year's meeting in Washington, D.C.

Although difficult to limit it to 10, below is my top 10 list for the 2011 meeting.  My thanks to everyone who contributed to a great meeting.

1. Hanging out with our Canadian associates

2. E-Trademarks Listserv party

3. Hanging out with our Argentina associate and friends

4. Dinners at Tadich Grill and Grotto No. 9 with colleagues

5. Outstanding educational sessions

6. Madrid Users Group Meeting: great information, cool swag

7. Luncheon table topic hosted by GoDaddy.com counsel and staff

8. Thomson party at Harry Denton's Starlight Room

9. Meeting with all our great foreign associates

10. Relaxing with a good cigar every night.

Thursday, April 21, 2011

Never Say DieHard

Never say DieHard - that is Sears' position in a case filed in federal court in Chicago against Rockhard Laboratories' use of DieHard for a “sexual enhancement spray” that acts as “a numbing agent for male genitalia.”  The Sears legal department took issue with Rockhard's use of DieHard based on Sears' long use of DieHard with car batteries and other products.

Last year Sears asked Rockhard to stop using Diehard with the DieHard spray, and Rockhard agreed and abandoned its pending federal trademark application.  However, it continued to distribute and sell the product.

Sears is claiming trademark infringement under likelihood of confusion and dilution theories. Hopefully, the judge won’t die laughing. One comment about the case already online said “assault on battery.”  The jokes will no doubt continue.

My take is that Sears may have a credible dilution claim in the form of tarnishment.  What do you think?

Sears, Roebuck and Co. et al v. Rockhard Laboratories, LLC et al.
Case Number: 1:2011cv02483
Filed: April 13, 2011
Court: Illinois Northern District Court
Presiding Judge: John F. Grady

Friday, March 11, 2011

Fairey Obama image still in litigation

Despite the fact the Shepard Fairey and AP settled their differences over Fairey's arguably transformative use of an AP copyrighted photo of President Obama and have agreed to work together to exploit the HOPE image, the AP is suing several retailers who licensed Fairey's work and are exploiting the image on various products.  It will be interesting to see whether or not Fairey's fair use argument holds up, but we'll probably never know - the cases will likely settle.  Here's a link to the rest of the story.


Have  a great day!

Thursday, March 3, 2011

I'm back with a vengenance! WPIX, Inc. v. ivi, Inc.

In this case, the Copyright Office opined that a distributor of broadcast programming over the Internet does not qualify for a compulsory license as a cable system under §111 of the Copyright Act.  The court agreed with the Copyright Office that a service providing Internet retransmissions does not qualify as a cable system.  The compulsory license for cable systems was intended for localized retransmission services and could not be used by a service dedicated to retransmitting broadcast signals nationwide.

Case is from the U.S. District Court, Southern District of New York.

Have a great day!