Sonia Sotomayor an Intellectual Property Attorney?

It turns out President Obama’s nominee to the Supreme Court was a partner at a firm that handled intellectual property litigation. In fact she ruled on an important copyright case, Tasini vs. New York Times, while she served as a federal judge for the U.S. District Court of the Southern District of New York. However, the case was later reversed by the appellate court and was then appealed again by the U.S. Supreme Court, in New York Times Co v. Tasini 533 U.S. 483 (2001). The case involved a claim of copyright infringement brought by freelance journalists against the New York Times and other news organizations (the “publishers”), when the publishers distributed articles written by the journalist to Lexis/Nexis, a legal database, without the permission of the journalist. The publishers claimed a privilege accorded collective work copyright owners by §201(c) of the Copyright Act.

At the District Court level, Sotomayor ruled in favor of the publishers, claiming that they were entitled to reproduce the articles within Lexis/Nexis under the protection of the collective work copyright. (The collective copyright entitles the copyright owner rights to the collection as whole, but not to the individual authored works which are separately copyrighted works). However, both the appellate court and the U.S. Supreme Court reversed Sotomayor’s decision ruling in favor of the freelance journalists.

The Supreme Court reasoned that as the articles appear in Lexis/Nexis, they do not appear as a collective work, rather “[w]hen the user conducts a search, each article appears as a separate item within the search result.” The Court further stated “the Database does not reproduce and distribute the article ‘as part of’ either the original edition or a ‘revision’ of that edition."

Obtaining Your Domain Name Back From Cybersquatters Through UDRP

A common scenario for established or new companies occurs when its primary domain name has been seized by a cybersquattor. For example, imagine your company name and trademark is “Sizaroma.” You were able to register www.sizaroma.com but later www.sizaroma.net, www.sizaromas.com, and www.sizaaromas.com were registered by someone else, probably a guy in China who in bad faith, has no intention of ever using domains. Or worse, he later puts up a competing website in bad faith with similar goods and services feeding off the goodwill that you have worked so hard to create. That my friends is a cybersquatter. So what are your options? One of the best is a Uniform Domain Name Resolution Policy proceeding (“UDRP”). A UDRP is like a streamlined litigation done with an arbitration panel, usually with the National Arbitration Forum or WIPO. A complaint is filed, and the cybersquatter is allowed a chance to respond. You do not have to serve the defendant like in a typical lawsuit. Nor is there a trial or any discovery. Further, there is no jurisdictional issues, so if the defendant is in China, a claim can still be made against him.

The net result is a transfer of the domain name. No money damages or injunction from using the trademark can be issued in UDRP, rather it's strictly about getting your domain name back. So the beauty of UDRP is that it is straight to the point, and can be completed within a few months rather than a long dragged out litigation that could last for a year or longer.

There are however other means for domain name disputes, such as filing a federal lawsuit under the Anticybersquatting Consumer Protection Act ("ACPA"), or perhaps a traditional trademark infringement lawsuit. An IP attorney would have to evaluate each scenario to determine the most appropriate method.

No Trademark for Pussy

Certain things can be trademarked while other things cannot. Some of the “not” things are certain words or designs that are deemed to be immoral or scandalous under Section (2) of the Lanham Act. For example, remember when Damon Wayans tried to trademark “Nigga” for clothing? That got shut down by the examiner at the USPTO under Section (2).

In a recent 27-page decision, the Trademark Trial and Appeals Board (“TTAB” or “Board”) refused registration of the mark PUSSY NATURAL ENERGY in connection with energy drinks on the basis of it being scandalous.

Applicant’s attorney of course argued the predictable, that the mark has multiple meanings (meow!), and that nothing in the packaging is inherently or even suggestive of a vulgar connotation. Nonetheless the Board still stated that “the continually evolving meaning of the term ‘pussy’ has come to mean something more, (sic) than merely a cat…[s]pecifically, the term ‘pussy’ refers to the female genitalia…” Further, the Board concluded that based on the evidence the “attention-grabbing meaning is the only reasonable meaning to conclude the relevant public would perceived in this context.” Dare we ask what flavor the drink was?

AMERICAN APPAREL DUKES IT OUT WITH LAWYER KEITH FINK

American Apparel has had its share of lawsuits. More recently with Woody Allen after American Apparel posted billboards of Allen without his permission. Now, American Apparel is on the offense against an opposing attorney in an employment litigation.

Keith Fink has a reputation as an aggressive employment attorney, typically suing celebrities and others in the entertainment industry. One of Fink’s notable cases is against blogger queen Perez Hilton over the PerezRevenge domain name trademark litigation. Fink represents a former employee of America Apparel that is suing the company’s CEO Dov Charney for sexual harassment.

As a preemptive attack, American Apparel has taken out several ads in UCLA’s Daily Bruin newspaper attacking Fink (who is a professor at UCLA) for his allege misconduct. UCLA however, stopped placing the ads, so America Apparel has moved on to the L.A. Business Journal. The May 11th issue of the paper has an America Apparel ad blasting Fink

Legalzoom Gets Sued

Legalzoom, the legal self-filing service is facing a hefty lawsuit from a Los Angeles attorney Kent Seton, whose speciality is in forming non-profit corporations. Seton sued Legalzoom on February 5, 2009 in Los Angeles Superior Court for breach of contract and misappropriation. The complaint alleges that Seton and Legalzoom entered into a joint venture in which customers of legalzoom would fill out forms on the Legalzoom website, and those forms would be sent to Seton to finalize the formation of a nonprofit entity.

The complaint further alleges that Legalzoom stopped sending Seton the forms and stopped sharing any profits earned, yet Legalzoom retained the proprietary system, that Seton claims he created, on the Legalzoom website.

Legalzoom was paying Seton a fixed fee of $350 per completed application. In total, Seton received $1.6 million from Legalzoom since the venture.

Legalzoom claims there was never a written agreement between them and Seton and that "there is no rational basis for the lawsuit" according to Legalzoom co-founder Brian Liu.

More Fake Celebrity Twitter Profiles

Fake celebrity Twitter profiles are getting out of control, see my previous post regarding the topic. Now Kanye West is the latest celebrity to be subject to a fake Twitter profile. Some cases regarding the use of a celebrity's likeness involved the claim of Right of Publicity. California Civil Code Section 3344 prohibits "Any person who knowingly uses another's name, voice, signature, photograph, or likeness, in any manner on or in products, merchandise, or goods, or for purposes of advertising or selling, or soliciting purchases of products, merchandise, goods or services, without such person's prior consent..." Putting the law aside, we can always count on Kanye's supersensitivity for great entertainment value. Here is what he wrote from his blog:
“DON’T HAVE A F****** TWITTER… WHY WOULD I USE TWITTER??? I ONLY BLOG 5 PERCENT OF WHAT I’M UP TO IN THE FIRST PLACE. I’M ACTUALLY SLOW DELIVERING CONTENT BECAUSE I’M TOO BUSY ACTUALLY BUSY BEING CREATIVE MOST OF THE TIME AND IF I’M NOT AND I’M JUST LAYING ON A BEACH I WOULDN’T TELL THE WORLD. EVERYTHING THAT TWITTER OFFERS I NEED LESS OF. THE PEOPLE AT TWITTER KNOW I DON’T HAVE A F****** TWITTER SO FOR THEM TO ALLOW SOMEONE TO POSE AS ME AND ACCUMULATE OVER A MILLION NAMES IS IRRESPONSIBLE AND DECEITFUL TO THERE FAITHFUL USERS. REPEAT… THE HEADS OF TWITTER KNEW I DIDN’T HAVE A TWITTER AND THEY HAVE TO KNOW WHICH ACCOUNTS HAVE HIGH ACTIVITY ON THEM. IT’S A F****** FARCE AND IT MAKES ME QUESTION WHAT OTHER SO CALLED CELEBRITY TWITTERS ARE ACTUALLY REAL OR FAKE. HEY TWITTER, TAKE THE SO CALLED KANYE WEST TWITTER DOWN NOW …. WHY? … BECAUSE MY CAPS LOCK KEY IS LOUD!!!!!!!!!”

Google Faces Class Action Lawsuit for Trademark Infringement Over Adwords

On May 11, 2009, a Texas trademark litigation attorney initiated a class action lawsuit against Google, Youtube, AOL, and Turner Broadcasting System for trademark infringement. The Class Representative is a small software company in Marshall, Texas, called Firepond. The jist of Plaintiff's Complaint alleges that Defendants are infringing Plaintiff's trademarks by selling Plaintiff's trademark words in Adwords. For example, “Firepond” is one of the terms that were bid upon by Plaintiff’s competitors. When an individual searches for the term “Firepond” in a Google search, an Adword advertisement of one of Plaintiff’s competitor’s appears at the top of the search. This is not the first time Google has been sued for trademark infringement because of its Adwords sales. However, this is the first time it’s been in the context of a class action lawsuit.