Merits of loser-pays: Five years ago, the Mattel toy company sued artist/photographer Tom Forsythe for copyright and trademark infringement over “a series of 78 photographic images of the wildly famous doll showing her nude, and sometimes posed provocatively, in or around various household appliances. … After a lengthy legal tussle, which included a series of appeals, a federal judge late last week instructed Mattel to pay Mr. Forsythe legal fees of more than $1.8 million.” (Bill Werde, New York Times, Jun. 28).
Posts Tagged ‘trademarks’
“Dodgy Patents Rile Tech Industry”
Many techies are nervous if not aghast about the issuance of a number of patents by the U.S. Patent and Trademark Office in recent months, including one “awarded to security firm Network Associates that gives the company rights to technology that deletes ‘undesired data’ from a computer”, and “another that gives Amazon.com the right to charge other website operators for using browser cookies that store data structures”. (Amit Asaravala, Wired News, Apr. 5). Another controversial one: Frank Weyer and Troy Javaher of Beverly Hills were recently issued a patent for an Internet naming system. Earlier this year, they sued leading domain registrars Network Solutions and Register.com for alleged infringement of their patent. “The patent covers the method of assigning URLs and e-mail addresses of members of a group such that the “@” sign is the dot in the URL. For example, if a group used a so-called third-level URL, www.john.smith.com, the e-mail address would be john@smith.com.” (Marguerite Reardon, “Domain registrars sued over URL patent”, CNETNews.com, Jan. 15; “Nizza Group Sues Network Solutions and Register.com for Patent Infringement”, news.webhosting.info, Jan. 11). Weyer and Janaver’s Nizza Group issued a press release Jan. 8 about its success; its lawsuits have drawn much criticism in such places as The Register (Kieren McCarthy, “Patent lawyer puts claim to entire Internet”, Jan. 17; Geek.com (Jan. 20); Slashdot).
Easter chocolate bunny lawsuit
Swiss confectioner Lindt has filed for an injunction against the Austrian company Hauswirth, claiming that chocolate bunnies in gold foil are a Lindt trademark. Hauswirth says it has been producing such bunnies in Austria since 1962, and that Lindt previously lost a similar lawsuit against German rival Riegelein. (AFP, Apr. 8).
Update: PetsWarehouse case
Latest chapter in the ongoing PetsWarehouse saga (Dec. 28, Oct. 5 and links from there): Robert Novak’s lawsuit against Google and two other search engines was allowed to stand. Novak accused the search engines of violating the law by selling advertising tied to his trademarked phrase “pets warehouse”. (Declan McCullagh, “Judge won’t toss out Google, Overture suit”, CNet News, Apr. 6; Mar. 25 opinion). Update Oct. 16 (Novak prevails in a different action).
“In Trial Work, Edwards Left a Trademark”
Good New York Times page-one article investigating the Senator’s legal work, and in particular his big-ticket lawsuits over cerebral palsy. (Adam Liptak and Michael Moss, Jan. 31). See our earlier coverage Jan. 20 and Jan. 26. Alex Tabarrok, Sydney Smith, Charlotte Hays and Wayne Eastman comment.
Meanwhile, a theme has developed among several lawyer and law-professor bloggers that Edwards should not be held up to reproach even if it turns out that he employed dubious expert testimony to extract fortunes from innocent obstetricians, on the grounds that a trial lawyer is just doing his job when he seeks to introduce all admissible evidence on behalf of his client; in fact, he may even be obliged to do so as an ethical matter of “zealous advocacy”. (It should be stressed that Edwards strongly disputes the idea that his cases were in any way scientifically dubious.) We ourselves aren’t buying this line of reasoning, but it has some articulate advocates, including Peter Nordberg (who also defends Edwards here, while acknowledging that some details in the new Times piece “may supply grist for Edwards’ critics”), Franco Castalone, and David Bernstein. For our views of what constitutes proper “zeal” on lawyers’ part, see Jul. 17.
Dewey Decimal system owner sues Library Hotel
“The nonprofit library cooperative that owns the Dewey Decimal system has filed suit against a library-themed luxury hotel in Manhattan for trademark infringement. The Library Hotel, which overlooks the New York Public Library, is divided according to the classification system, with each floor dedicated to one of Dewey’s 10 categories. Room 700.003 includes books on the performing arts, for example, while room 800.001 has a collection of erotic literature.” A lawyer for the library group, Joseph Dreitler, claims a “person who came to (the hotel’s) Web site … would think they were passing themselves off as connected with the owner of the Dewey Decimal Classification system.” Eugene Volokh (Sept. 21) makes short work of this argument and classifies the action as a cousin to Fox v. Franken in trademark law abuse. The suit demands triple the hotel’s profits since its opening. (AP/Wired News, Sept. 20; Kevin Drum; Perfidy.org; Hill-Kleerup.org). Update Nov. 29: case settled.
“Entrepreneur” mag wins a trademark fight
“A federal judge recently ruled that the owner of Entrepreneur Magazine, a small-business publication with about 2 million readers nationwide, has … ‘exclusive right to use the mark in commerce.’ … So you can call yourself an entrepreneur, but if you want to include the word in the name of your business — particularly one in publishing — look out.” This summer, the court “awarded Entrepreneur Media a permanent injunction and $669,656 in damages” against Scott Smith, who ran a public relations firm called Entrepreneur PR. The court accepted the media company’s contention that Smith intentionally infringed on the trademark, “attempting to affiliate his firm with the magazine and feed off its popularity.” (Christine Van Dusen, “‘Entrepreneur’ a trademarked word, court rules”, Atlanta Journal-Constitution, Aug. 20; article and court opinion at magazine site; Janet Attard, “Business Information and Ideas To Go”, BusinessKnowHow.com, undated; Smith’s response; Scott Allen, “What’s in a Name?”, About.com, undated; Steve Strauss, “Playing the Name Game”, USA Today, Jul. 10, 2002 (earlier 9th Circuit ruling favorable to Smith); Peter I. Hupalo, “Entrepreneur: The Soap Opera Continues”, Thinking Like an Entrepreneur, undated). Scott is now appealing (“What’s in a Name?”, FreshInc., Aug. 14). On Nov. 1, 2001 we covered the magazine’s efforts to enforce its trademark against a different (and unrelated) defendant, the proprietors of the website Entrepreneurs.com.
Update: Fox gets skinned
Federal judge Denny Chin in Manhattan rebuffed Fox News’s request for an injunction to prevent the Penguin Group from releasing humorist Al Franken’s new book with a title mocking the network’s “Fair and Balanced” slogan (see Aug. 12). “There are hard cases and there are easy cases. This is an easy case,” said Judge Chin. “This case is wholly without merit both factually and legally.” “During arguments held before his ruling, Chin asked Fox lawyer Dorie Hansworth if she really believed that the [book’s] cover was confusing. ‘To me, it’s quite ambiguous as to what the message is,’ she said. ‘It’s a deadly serious cover … This is much too subtle to be considered a parody.” The book’s cover is dominated by its title, “Lies and the Lying Liars Who Tell Them: A Fair and Balanced Look at the Right”. (Gail Appleson, “Fox Loses Bid to Stop Sale of Franken Book”, Reuters/Yahoo, Aug. 22). Ernest Svenson (Ernie the Attorney) chides Fox not only for the weakness of its substantive trademark position but also for using its complaint as a vehicle for personal attacks on Franken: “the courts aren’t there for litigants who want retribution.” (“A lawyer’s take on Al Franken’s First Round Legal Victory”, Blogcritics, Aug. 22). Eugene Volokh also comments.
Fox’s thin pelt
Shrinking the parody exception? “Fox News Channel has sued liberal humorist Al Franken and the Penguin Group to stop them from using the phrase ‘fair and balanced’ in the title of his upcoming book. Filed Monday in Manhattan, the trademark infringement lawsuit seeks a court order forcing Penguin to rename the book, ‘Lies and the Lying Liars Who Tell Them: A Fair and Balanced Look at the Right.’ It also asks for unspecified damages. Fox News registered ‘Fair & Balanced’ as a trademark in 1995, the suit says.” The suit claims that Franken displays a “clear” intent “to exploit Fox News’ trademark, confuse the public as to the origins of the book and, accordingly, boost sales of the book”. (“Fox Sues Humorist Al Franken Over Slogan”, AP/Washington Post, Aug. 11). Last month it was reported that lawyers for Fox had sent a cease-and-desist letter to the Austin, Tex. creators of a T-shirt with a message “Faux News: We Distort, You Comply”, parodying the network’s well-known slogan. (Lee Nichols, Austin Chronicle, Jul. 11; AgitProperties website, Jun. 20).
In June radio talk show host Michael Savage, who at the time also had a TV talk show on MSNBC, sued three critics who had been urging advertisers to boycott his show (“Savage sues ‘rats'”, Southern Voice, Jun. 27; defendants SavageStupidity.com and TakeBacktheMedia). Separately, Savage’s producers fell short in an effort to argue that SavageStupidity.com’s domain name was “confusingly similar” to that of Savage’s own website and should be forfeited. (& more on the Fox/Franken case: New York Times, Eugene Volokh, Kevin Drum, Matt Yglesias, and (via InstaPundit) Alex Knapp, Jeff Jarvis)(& letter to the editor, Dec. 6).
Viacom, Spike Lee kiss and make up
But not until after a publicity bonanza for both sides. Filmmaker Shelton Lee (see Jun. 16-17) now says “I no longer believe that Viacom deliberately intended to trade on my name when naming Spike TV. As an artist and a filmmaker, I feel that protection of freedom of expression is a critical value, and I am concerned that my efforts to stop Viacom from using the Spike TV name could have the unintended consequence of threatening the First Amendment rights of Viacom and others. I am pleased to be able to resolve this matter and be able to work with Viacom on new projects”. (Buzz Johnson, “Spike Lee and Viacom Settle”, FilmStew.com; Washington Post; Hollywood Reporter/Reuters). Earlier, the son of musician Spike Jones filed court papers in the case, saying (per AP) “it is ‘frightening’ that filmmaker Spike Lee is trying to claim exclusive ownership of the name ‘Spike.'” (see The Legal Reader, Jun. 24).