The Northern District of California denied a motion by Rovio Entertainment Ltd. (“Rovio”), the developer of the video game Angry Birds, for an ex parte temporary restraining order (“TRO”) against alleged counterfeiters of Angry Birds plush toys, finding insufficient evidence of a likelihood of immediate and irreparable harm in the absence of such relief. The full Order, issued by U.S. District Judge Saundra Brown Armstrong on November 6, can be read here. Continue reading »
To what extent will a U.S. court entertain copyright claims involving a foreign defendant and its activities abroad? A recent federal district court decision examines this question. In Rundquist v. Vapiano SE, Swedish photographer Ewa-Marie Rundquist alleged that Vapiano, an international restaurant chain, was using her photographs without permission as a “central décor element” in its restaurants around the world and on its website, giving rise to claims of copyright infringement under the laws of the U.S. and fifteen foreign countries. Continue reading »
- False authorship lawsuit hits West Publishing in the pocket parts. Recently, two law professors successfully sued West Publishing (Thomson Reuters Legal) for defamation after the publisher falsely attributed to them authorship of a pocket part treatise update. While Professors David Rudovsky and Leonard Sosnov had in fact authored the treatise and several annual updates after that, they had refused to write the update in question because West had reduced their compensation. After a jury trial, the plaintiffs each received $90,000 in damages and $2.5 million in punitive damages. A Pennsylvania district court subsequently denied West’s motion notwithstanding the verdict, but did reduce the punitive damages award to $110,000 each because there was no jury finding that West acted with malice. The court order requires West to choose between either accepting the revised award, or pursuing its motion for a new trial, but not both.
- ASCAP appeals to Supremes for review of “public performance” decision. The American Society of Composers, Authors and Publishers (“ASCAP”) petitioned the Supreme Court to review the Second Circuit Court of Appeals’ ruling that downloading musical works over the Internet does not constitute public performance under the Copyright Act. The Second Circuit concluded that the Act’s “public performance” factor requires “contemporaneous perceptibility” of the work, such as Yo-Yo Ma “draw[ing] the bow across his cello,” while downloading a song is merely transmitting music to a potential listener. The court drew a distinction between a download and a streaming transmission over the Internet, explaining that the latter is a public performance because the user perceives the song simultaneously with the transmission. Further, the download itself does not play the file and the user must take additional action to experience the work. In its petition for cert., ASCAP argues that downloading a music file amounts to public performance for which the author is entitled to additional compensation (artists already collect royalties for copies created by the download). ASCAP maintains that the Second Circuit’s interpretation of the Act was inaccurate because a public performance can occur even if listeners receive it “at different times” and that the Circuit court had created an “unworkable and inequitable statutory scheme that fails to account for emerging technologies.”
- BMG faces class action lawsuit over digital royalties. Rob Zombie, Whitesnake, and other music performers are leading a federal class action lawsuit against UMG Recordings, Inc., claiming the world’s largest record company is shortchanging them on royalties from digital downloads and cell phone ringtones. The musicians estimate they have been underpaid by tens of millions of dollars per year and seek restitution and declaratory relief entitling them to future royalties. According to the complaint, UMG arbitrarily labels digital music downloads from online music providers like iTunes as a “sale” rather than a license and pays the artists a lesser royalty than the standard 50% payable in connection with a license to a third party. The class action follows a Ninth Circuit ruling that UMG underpaid Eminem and other performers for digital music download royalties. Rob Zombie’s lawsuit is based on the same grounds, which tips the scales in the musicians’ favor, especially after the Supreme Court refused to review the Eminem decision. As the New York Times predicted in the wake of that ruling, its implications may indeed prove life changing for many aging musicians.
- Polo wears Ralph Lauren. The United States Polo Association (“USPA”) will not be able to place the word “Polo” next to its Double Horsemen logo on a new line of perfume for men because a New York court ruled that such use infringes on Polo Ralph Lauren’s (“PRL”) trademark. Federal Judge Robert Sweet found that USPA’s logo featuring two men on horses swinging polo sticks (PRL’s features one player in a similar posture) used in conjunction with the word “Polo” is likely to cause consumer confusion with the clothing designer’s perfumes. USPA initially filed the suit in 2009 seeking a declaratory judgment that its logo does not infringe PRLs’ trademark. The court denied USPA’s request and instead granted PRL a permanent injunction against USPA’s use of the logo. In its ruling, the court relied on PRL’s consumer survey showing confusion in 27.8% of the participants. The court also determined that PRL’s trademark is inherently distinctive and said that the USPA’s choice of colors and wording on the product suggested that they “intended to capitalize on PRL’s reputation and goodwill-instead of building their own.”
- Gergana Miteva
The Associated Press (“AP”), Shepard Fairey and Fairey’s companies have settled their claims in the copyright infringement lawsuit over the Barack Obama “Hope” poster and related merchandise.
In the lawsuit, which has been pending since 2009 in federal district court in Manhattan, the AP claimed that Fairey infringed its rights by using an AP photograph of Obama in the “Hope” poster Fairey created without crediting or compensating the AP. Fairey claimed that he did not appropriate any copyrightable material from the photograph and that his use of the photograph constituted fair use under copyright law.
On Wednesday, the AP issued a press release announcing that it reached a settlement with Fairey and his companies, Obey Giant Art, Inc., Obey Giant LLC and Studio Number One, Inc., which resolves the parties’ claims in the litigation. Continue reading »
Deciding when to pursue fashion counterfeiters is a tough call. The vendors hawking fake Prada bags from a folding table may be judgment-proof. The Web sites peddling bogus Cartier watches often reside off-shore or are registered under false names. Is it worth it for fashion brands to go after these kinds of operations?
The Lanham Act provides attractive legal remedies. Willful counterfeiters are subject to mandatory financial penalties, and absent unusual circumstances, the court must award treble damages or profits (whichever is greater) plus reasonable attorney’s fees if the counterfeiter knew the goods were counterfeit and intentionally offered them for sale. Continue reading »
Imitation may be the sincerest form of flattery, but this is little consolation to an artist whose original ideas are sold as another’s. This type of “flattery” is particularly rampant in fashion, an industry inspired by the avant-garde but sustained by the masses.
Designers, however, may soon have another tool with which they can hem in their imitators. Last month, the Senate Judiciary Committee unanimously approved an amended version of the proposed Innovative Design Protection and Piracy Prevention Act, Senate Bill 3728 (the “Act”) (a copy of the bill is here). The Act is the culmination of much effort from various constituencies, including the Council for Fashion Designers of America and the American Apparel and Footwear Association, to protect fashion designs from the industry’s ubiquitous knock-offs and imitations. Continue reading »
Deckers Outdoor Corporation (“Deckers”) has accused the maker of BearPaw boots of copying Deckers’ classic UGG® Australia (“UGG”) shearling boot lines. Deckers’ complaint, filed in federal court in California, alleges that Tom Romeo and Romeo & Juliette, Inc., doing business as BearPaw, Inc. (“BearPaw”) are liable for federal trade dress infringement and dilution, unfair competition, and state and common law unfair competition claims. Deckers joins other fashion-focused plaintiffs that seek to rely on trade dress as a means of protecting their designs against alleged copyists and knock-off artists. Continue reading »
• Material Girl Wars. Madonna is being sued for trademark infringement over her new line of “Material Girl” products. The plaintiff, Rwachsberg Holdings, claims it has been selling “personal care” and “household” products under the “Material Girl” mark since 1992. Evidently, Rwachsberg is not the first to claim ownership of the “Material Girl” mark. Madonna was sued for trademark infringement in August by clothing manufacturer, LA Triumph.
• People Will Say We’re in Business. Shirley Jones, star of “Oklahoma!” “Carousel” and “The Partridge Family,” has filed a federal class action lawsuit claiming a Nevada Corporation has been licensing her image – and the images of other California residents – without consent. According to the complaint, defendant Corbis Corporation offers images of Jones on several websites for purchase and download. As of posting time, a search of Corbis’s website returns over 100 images of Jones.
• Which One is the Evil Twin? An exclusive from our friends at THR, Esq.: Gerard Butler’s production company, Evil Twins, has been sued for trademark infringement by a similarly named company. The owners of Evil Twin Productions claim they have a registered trademark in the name “Evil Twin” and that Butler’s company is causing confusion in the marketplace.
• Thou Shalt Not Steal My Idea. Rapper 50 Cent is being accused of copyright infringement by author Shadrach Winstead. Winstead claims 50 Cent stole portions of his book “The Preacher’s Son – But The Streets Turned Me Into A Gangster” for an album and DVD film entitled “Before I Self Destruct.” According to the complaint, portions of 50 Cent’s album and film are “strikingly similar” in “content and word choice” to Winstead’s book.
• Sugarland Case Settles. Hit country-music duo, Sugarland, narrowly avoided going to trial this week against founding member, Kristen Hall, who is suing the group for her share of profits. The parties have reportedly reached a settlement of Hall’s $14 million lawsuit and have until December 13 to finalize the agreement.
• Court Says “Not Now” to Facebook Request. New York courts continue to weigh in on the discoverability of social networking information. In McCann v. Harleysville Ins. Co., the defendant sought photographs and account information from a personal injury plaintiff’s Facebook page. Characterizing the request as a “fishing expedition,” the court denied the discovery, but left open the possibility that a narrower request might be successful. Another New York court recently granted a similar discovery request in Romano v. Steelcase, finding that the defendant had established the relevance of the materials it sought.
- Nicole Hyland