Righthaven Remembered

It’s hard to believe that Righthaven, the company that was going to change the news media business by applying the patent lawsuit business model to the enforcement of copyrights, filed its first series of lawsuits five years to go.  (The events were so notable that even this trademark dedicated blog could not resist writing up a copyright related post).

To mark the anniversary, former Las Vegas Sun Reporter Steve Green (now a staff writer with the Orange County Register), who helped shine a spotlight on Righthaven as the company embarked on and went about its controversial copyright enforcement campaign, published a new article last week which looks back upon the rise and demise of Righthaven (including new quotes from Righthaven founder Steve Gibson who continues to stand by the actions taken by Righthaven).


See the photo of Steve Gibson and the infamous “bluetooth” headset. (Photo © Las Vegas Sun)



Avoiding the Wrath of Righthaven

There has been a lot of discussion in the Las Vegas area (and nationwide) about the numerous copyright infringement lawsuits filed by a Las Vegas company named Righthaven, LLC. As of August 4, 2010, Righthaven had filed approximately 86 lawsuits against various website operators claiming copyright infringement. While not immediate apparent from the lawsuits, Righthaven is essentially a company established by Stephens Media LLC, the owner of numerous newspaper including the Las Vegas Review Journal (the “RJ”), in order to go after any and all third party websites that improperly excerpt all or part of the copyrighted articles from the RJ.

Many people who post content online may be under the impression that they can lawfully post all or part of an article originally published in the RJ so long as appropriate credit to the RJ is given (as well as possibly a link back to where the article appeared on the RJ’s website). In actuality, such actions may constitute copyright infringement.

The RJ just accepted this type of copyright infringement for the longest time as an unfortunate byproduct of the Internet. However, earlier this year, the RJ apparently had a change of heart and is now aggressively going after anybody who posts any of its copyrighted content online. A blog posting by Sherman Frederick, the publisher of the RJ, posted in May 2010 explained the RJ’s new aggressive actions towards reposting of the RJ’s copyrighted content.

We grubstaked and contracted with a company called Righthaven. It's a local technology company whose only job is to protect copyrighted content. It is our primary hope that Righthaven will stop people from stealing our stuff. It is our secondary hope, if Righthaven shows continued success, that it will find other clients looking for a solution to the theft of copyrighted material.

To describe Righthaven as a “technology company” is probably a glamorization of what is essentially a company more akin to a law firm established by the RJ to be the assignee of various copyrighted articles so that Righthaven can obtain copyright registrations on such articles and then file lawsuits in federal court for copyright infringement. By establishing a separate company, not only can the RJ keep a distance from and avoid being associated directly with the aggressive tactics of Righthaven, it can also have what is (most likely) a law firm working on a contingency basis based on all of the settlement amounts obtained from the unsuspecting website operators who find themselves looking at either paying a quick nuisance settlement or spending thousands of dollars of legal fees defending what may possibly be fair use, but what is more likely than not a clear cut case of copyright infringement (albeit unintentional on the part of the person who just wanted to cite to one of the RJ’s articles). And even in those cases where the articles were posted by third parties under circumstances where the website operator may be immune under the Digital Millennium Copyright Act (“DMCA”), it still often makes more sense to just give into Righthaven’s demands than to pay the cost to prove that no liability exists.

Righthaven’s agenda to obtain quick and easy cash settlements (in addition to having its copyrighted content taken down from those posting without permission) is clear by the fact that Righthaven never contacts any of these websites and orders them to take down the infringing content nor sends any kind of cease and desist letter to takedown request against the website. Of course, Righthaven is under no obligation to do so, but at the same time, if such letters were sent out (something that apparently, rival newspaper company Greenspun Media does with much success), then Righthaven knows that the website operators are likely to quickly comply and take down the content – without Righthaven getting any “compensation” for the use of its articles (or compensation to offset the time and effort for sending out such notices). Instead, the party is immediately named as a defendant in a lawsuit (which only costs $350 to file, not including the time it might take for a paralegal to modify Righthaven’s boilerplate legal complaint to the facts and circumstances of each case), which puts the named defendant in the serious situation of having to spend time and money addressing these allegations or else face a default judgment by the court. Rather than fight against Righthaven and obtain what is at best likely to be pyrrhic victory, most defendants will choose to just settle.

Some may be asking how the RJ can claim a copyright over the news that it covers. While the RJ cannot claim copyright rights over news events, it can claim a copyright to the particular way that one of its employed writers describes a news event. Accordingly, while you can describe a particular news event on your website that you may have read about in the RJ, you cannot describe such news by using the precise copyrighted written text that the RJ used to describe the news.

And while copyright law does protect certain uses of a copyrighted work as “fair use,” such as when a work is reproduced for purposes of criticism, comment, news reporting, teaching, scholarship, and research, whether a particular use constitutes “fair use” actually involves an analysis of several factors used by courts including the purpose and character of the use (whether use is commercial or for nonprofit purposes), the nature of the copyrighted work, the amount and substantiality of the portion used in relation to the copyrighted work as a whole, and the effect of the use upon the potential market for or value of the copyrighted work. See 17 U.S.C. §107. One factor often overlooked by many website operators is the commercial nature of their websites. Think your website is non-commercial? – well, if you have pay-per-click ads being displayed on your website and you are generating some revenue from the website, then your website is more commercial than you think.

So what is a website to do in order to avoid the “wrath” of Righthaven if you want to mention an RJ news article on your website? While there is nothing clearly outlined on the RJ’s own website, Mark Hinueber, the Vice President and General Counsel for Stephens Media, recently provided some guidance for third parties regarding how to properly cite review journal articles.

Mr. Hinueber is informing interested parties that the appropriate procedure for using stories published in the RJ (and any other publication owned by Stephens Media) is to post the headline of the story and then the first paragraph with a link to the original story. Accordingly, if you wish to quote from an RJ story on your website – and you do not otherwise obtain a non-exclusive license from the RJ to post all or part of the story on your website – then you should post only the headline, the first paragraph of the story, and a link to the RJ’s website where the original story can be found.

The following example illustrates what is acceptable to the RJ:

$145 MILLION BUDGET SHORTFALL: Union proposes pay cut for all employees in Clark County School District
By JAMES HAUG
LAS VEGAS REVIEW-JOURNAL
A 1.5 percent pay cut by all 38,500 employees in the Clark County School District would prevent layoffs and resolve the budget crisis for the 2010-11 school year, according to a proposal from the union representing school principals and administrators.

The rest of the article can be viewed by clicking here.

For those website owners that are not actively involved in posting content, but which maintain a website which allows third parties to post content to online forums, then you need to confirm that you have taken the proper steps to ensure that your website is immune from any claims for damages for copyright infringement under the safe harbor provisions of the DMCA. The DMCA safe harbor provisions require a copyright owner to first give notice to the website owner that copyrighted content appears on its website and an opportunity to take down the material before proceeding with a lawsuit.

Many website owners may be under the impression that they are protected by the DMCA when in reality, there are very specific requirements must be met before a website owner can invoke the DMCA safe harbor provisions. See 17 U.S.C. §512(c).

In particular, the safe harbor only applies to service providers who have designated an agent to receive notifications of claimed infringement and providing information about the agent (name, address, phone number, and electronic mail address of the agent) to the Register of Copyrights, which maintains a directory of agents available for publication inspection. See 17 U.S.C. §512(c)(2). This list can be viewed here.

So it is not enough to just name an agent in your terms of use policy. You must go a step further and provide the name of this agent to the Copyright Office. The Copyright Office has forms available online for designating an agent – Interim Designation of Agent to Receive Notification of Claimed Infringement – and for amending the designated agent – Amended Interim Designation of Agent to Receive Notification of Claimed Infringement. The filing fee is $105 and an additional $10 for group of 30 or fewer alternative names for the service provider. The designation can be mailed to Copyright RRP, P.O. Box 71537, Washington, DC 20024. More information from the Copyright Office on the requirement of designating an agent to receive notification of claims of infringement can be viewed here.

Once you have designated the proper agent, if a user to your website posts an RJ article that infringes the RJ’s or Righthaven’s copyright rights, then the RJ or Righthaven must provide you with the proper takedown notice and allow the website owner to remove the infringing content before proceeding with litigation.

Righthaven has likely been targeting those websites where either the website owner directly posted the RJ’s article or, to the extent a third party may have posted the article, then the website did not have an agent designated to receive notification of claimed infringement, and thus cannot invoke the DMCA safe harbor. (Indeed, some of the more recent complaints filed by Righthaven include factual allegations about the Defendants not instituting any proactive policy intending to address the posting by others of copyright-infringing content).

For those that have to date flown under the Righthaven radar, you can begin taking immediate steps to avoid facing any kind of copyright infringement liability. However, if you are the unfortunate recipient of a notice that a lawsuit has been filed against you by Righthaven for copyright infringement, you should take the matter seriously and immediately consult with legal counsel familiar with copyright law and with Righthaven. If you choose not to respond to the complaint, you could face a default judgment being rendered against you by the court that could go as high as $150,000 per infringement.

[08/09/10 Update: Las Vegas Sun has an article that includes a reference to this particular blog post and other websites dedicated to the Righthaven.]

Las Vegas Sun Spotlights Righthaven Copyright Infringement Lawsuits

To date, I have not written anything on this blog about Righthaven LLC, the so-called start-up company in Las Vegas that has garnered much nationwide attention for filing a slew of copyright infringement lawsuits in Nevada U.S. District Court against websites posting Las Vegas Review Journal stories. The lack of any coverage on my part was mostly due to my deliberate choice to make this blog strictly about trademarks; but like most intellectual property attorneys in Las Vegas, I am well aware of the name Righthaven.

Nevertheless, a group of articles published today by Steve Green with the Las Vegas Sun compels me to break with my blogging tradition in order to spotlight these articles (published in the LVRJ’s competitor paper) which provide a detailed report of Righthaven’s actions from all points of view (and not just because one of the articles includes a quote from yours truly).

Main article: Legal attack dog sicked on websites accused of violating R-J copyrights

Related Articles:

• Some targets of Righthaven lawsuits fighting back
• Are website copyright violations hurting newspapers’ bottom line?
• Defendants in R-J copyright lawsuits speak out

Having taken the plunge into discussing copyrights on this blog and specifically about Righthaven, I hope to post my own article that I’ve written about Righthaven within the next day or so.

Court of Appeals Reverses Lower Court’s Constructive Trust on BRATZ trademarks

Various news reports (Reuters, Bloomberg, USA Today, LA Times) reported on the decision by the Ninth Circuit Court of Appeal reversing a district court’s decision to enjoin MGA Entertainment, Inc. (“MGA”) from selling its popular BRATZ line of dolls. See MGA Entertainment Inc et al Mattel Inc, Nos. 09-55673 and 09-55812 (9th Cir. July 22, 2010). The district court’s injunctive relief was entered after a jury found that Mattel, Inc. (“Mattel”) was the rightful owner of the BRATZ dolls because the doll idea and name was created by a former Mattel employee and awarded Mattel millions of dollars in damages (this latest decision states that $10 million was awarded although most published reports at the time of the original jury decision was $100 million – anyone explain the discrepancy?).

As part of the district court's injunctive relief, the court imposed a constructive trust over MGA’s entire Bratz trademark portfolio, which essentially transferred MGA’s entire BRATZ trademark portfolio to Mattel. Under the rationale that “[t]he beneficiary of the constructive trust is entitled to enhancement in value of the trust property,” the lower court concluded that, because the two marks BRATZ and JADE had been transferred improperly, Mattel was entitled to the enhancement of the value of such property and ordered a constructive trust over MGA’s entire Bratz trademark portfolio.

The Court of Appeals, however, reversed this decision on the ground that the court’s overly broad constructive trust allowed Mattel to acquire “the fruit of MGA’s hard work, and not just the appreciation in value of the ideas Mattel claims it owns.” The court noted that the general rule of making the beneficiary of the constructive trust entitled to the enhancement in value of the trust property “has the greatest force where the appreciation of the property is due to external factors rather than the efforts of the wrongful acquisitor.” But when the value of the trust property increases based on the efforts of the defendant, “a constructive trust that passes on the profit of the defendant’s labor to the plaintiff usually goes too far.”

The court stated the following:

Even assuming that MGA took some ideas wrongfully, it added tremendous value by turning the ideas into products and, eventually, a popular and highly profitable brand. The value added by MGA’s hard work and creativity dwarfs the value of the original ideas Bryant brought with him, even recognizing the significance of those ideas.

In this case, while the original Mattel employee’s idea of a line of dolls, which included the names BRATZ and JADE, may have been improperly taken by MGA, MGA went on to create multiple generations of Bratz dolls (from Cloe, Yasmin, Sasha and Jade to Ciara, Dana, Diona, Felicia, and Fianna to variations on the original four dolls such as Bratz Flower Girlz Cloe and Bratz on Ice Doll Yasmin) as well as Bratz doll accessories, video games, and a move – efforts which “significantly raised the profile of the Bratz brand and increased the value of the Bratz trademarks.”

The Court, in vacating the lower court’s constructive trust, found the court’s actions of transferring an entire $1 billion brand over to Mattel – value that was created mostly from MGA’s own efforts and not reflective of the value of the two particular names, BRATZ and JADE, that were found to have been taken improperly by MGA – was an abuse of discretion:

It is not equitable to transfer this billion dollar brand— the value of which is overwhelmingly the result of MGA’s legitimate efforts—because it may have started with two misappropriated names. The district court’s imposition of a constructive trust forcing MGA to hand over its sweat equity was an abuse of discretion and must be vacated.

For copyright fans, the decision also includes an interesting discussion regarding the fine line between copyrightable expression and unprotectable ideas (“Mattel can’t claim a monopoly over fashion dolls with a bratty look or attitude, or dolls sporting trendy clothing—these are all unprotectable ideas.”).

Two Las Vegas Adult Film Companies Battle Over “Deep Throat”

This summary is not available. Please click here to view the post.

Facebook Shuts Down Scrabulous in U.S. and Canada After Notice of Lawsuit Against Game Makers

It's Scrabulous . . . no more.

Well, it didn’t take long for Facebook, Inc., the popular online networking site, to give into the demands of Hasbro Inc., the owner of the rights to the famed Scrabble game in the United States and Canada. Reports today from Bloomberg News (link here) are that Facebook, Inc. decided to shut down the popular “Scrabble”-like game Scrabulous in the U.S. and Canada. Last week, Hasbro filed a trademark and copyright infringement lawsuit against Rajat Agarwalla, Jayant Agarwalla and their company, RJ Softwares, the developers of the Scrabulous game. See Hasbro, Inc. v. RJ Softwares, Rajat Agarwalla, and Jayant Agarwalla, Case No. 08-cv-6567 (S.D.N.Y. July 23, 2008). A copy of the complaint can be found on The Trademark Blog.

Hasbro also sent a notice of infringement to Facebook and demanded that Facebook shut down Scrabulous. (Click here for an earlier blog entry on the cease and desist letter sent previously by Hasbro to Facebook). As is often the case, Facebook apparently did not take Hasbro’s earlier demands seriously until it recognized that Hasbro was willing to take legal action.

It will be interesting to see if Mattel, the owner of the rights to Scrabble outside the U.S. and Canada (through J.W. Spear & Sons Limited), decides to take any action to shut down the game elsewhere.

Harry Potter and the Disappearing Trademark Infringement Claims

In the trial of the lawsuit filed by J.K. Rowling and Warner Bros against RDR Books over its planned publication of the “Harry Potter Lexicon” (a print version of the free-of-charge Harry Potter Lexicon fan website - http://www.hp-lexicon.org/ - created by Steven Vander Ark), so much of the media attention has focused on the copyright infringement claims that I was beginning to wonder when the parties would get around to the “good stuff” – namely, the claims for trademark infringement and unfair competition that were part of the original and amended complaint. See Warner Bros. Entertainment Inc. et al v. RDR Books et al, Case No. 07-cv-09667 (S.D.N.Y.); see also previous blog posts here and here.

Well, either through wizardry or good lawyering, it appears that the parties may have reached a settlement of those claims.

As reported by the WSJ.com Law Blog today (link here), the lawyers informed the court this morning that they had reached a settlement on the false advertising and deceptive trade practices claims whereby RDR agreed not to use J.K Rowling’s name nor her quote endorsing the online version of the Lexicon on the cover of the book version.

In addition, Anthony Falzone, the executive director of the Fair Use Project at Stanford University’s Center for Internet and Society, who is one of the attorneys representing RDR Books, also informed the court that the parties want to “paper a settlement” on the trademark infringement and unfair competition claims.

Sounds like the parties have reached an agreement on the disclaimer to be used on the book’s cover and elsewhere (and possibly an agreement not to use the stylized Harry Potter mark) in order to prevent the public from being confused as to any affiliation, connection, or association of the publisher with Rowling and Warner Bros. or as to the origin, sponsorship, or approval of the Lexicon by Rowling and Warner Bros.

With those claims settled, that only leaves that boring copyright infringement claim. (yawn – ed.)

But for those of you interested in the copyright infringement aspects of the case, which are significant especially with respect to the fair use defense, check out the following posts:

• WSJ Law Blog Q&A with King & Spalding IP attorney Ethan Horwitz (link here)


• Prof. William Patry’s post (here) on “The Patry Copyright Blog” regarding the case


• Professor Tim Wu’s comments (here) on Slate about the lawsuit

Fashion Maven Diane von Furstenberg Sues Target for Copyright and Trademark Infringement Over “Spotted Frog” Design

The media was abuzz today about the lawsuit filed against Target Corp. (“Target”) by Diane von Furstenberg Studio, L.P. (“DVF”), the limited partnership established by Diane von Furstenberg in 1997 to sell her “signature” line of dresses, over alleged copies of her famed “wrap dresses” being sold at Target stores. The news stories on the lawsuit in Reuters and Associated Press were picked up by numerous news outlets.

DVF has a history of filing similar lawsuits against retailers that sell dresses and other products that copy her “signature” designs. While most of the press about DVF’s lawsuits have focused on the allegations of “copyright infringement” (because most of DVF’s designs are copyrighted), the complaints typically include some trademark infringement allegations – specifically, false designation of origin and unfair competition.

Although I haven’t seen the actual complaint against Target, it is likely to be similar to the lawsuit DVF filed last year against Forever 21, which involved allegations that Forever 21 was selling dresses and blouses with nearly identical print designs (the same scale and colorway) as those copyrighted by DVF in several copyright registrations (“Small Dentelle,” “Flower Lace Band,” “Mimosa,” and “Scattered Stones”). See Diane Von Furstenberg Studio, LP v. Forever 21, Inc. et al, Case No. 07-cv-02413 (S.D.N.Y.). A copy of the first amended complaint in that case can be downloaded here. A good blog posting on this particular case (with pictures) can be found here.

In the instant complaint, DVF is going after Target for dresses which copy the “scale, pattern, and colorways” of DVF’s copyrighted “Spotted Frog” Design that DVF registered with the U.S. Copyright Office on September 13, 2006. See Copyright Registration No. VAu-704-976.

"Spotted Frog"

The design was apparently introduced at Furstenberg's Spring 2007 fashion show during New York Fashion Week in September 2006 – and appears on dresses, luggage, handbags and other items.

While DVF sent a letter to Target last Friday notifying Target about the allegedly infringing dress, and Target subsequently removed the dress from its website, the complaint alleges that the dress is still being sold at Target’s retail stores.

Vegas™Esq. Comments:
Given DVF’s past success with these types of lawsuits, I see no reason to believe this case will be any different. The parties will reach some kind of settlement.

I will leave the copyright issues raised by DVF's lawsuits to others (i.e., DVF’s use of its design copyrights to essentially stop the sale of a dress style that clothing manufacturers are typically free to imitate).

As for the false designation of origin and unfair competition claims, DVF’s complaint in Forever 21 described its “products” as high-quality and superb design that have achieved outstanding reputation among customers, especially fashion conscious women. In addition, the complain bragged how DVF’s products are sold in high-end department stores such as Barney’s, Neiman Marcus, and Saks Fifth Avenue as well as on DVF’s website.

However, given the worldwide renown and high-end reputation garnered by DVF’s products, can the company really argue that consumers are likely to be confused with respect to the origin of similar looking dresses sold at Target? Without sounding too condescending to Target customers (after all, I’m a Target shopper myself), most Target customers seeing a dress on the racks with a pattern resembling the above “frog” pattern on it (or anything similar) are not likely to remotely associate it with DVF (much less be confused as to its source or origin). And those fashion conscious shoppers who know enough about fashion to recognize a DVF design when they see one are also savvy enough to know that a genuine DVF dress would never be sold at a not-so-high-end store like Target, and therefore, they are not likely to be confused as to source or origin or believe that the dress is somehow approved by DVF.

Jerry Seinfeld and wife Jessica face copyright infringement, defamation and trademark infringement lawsuit over cookbook

On January 7, 2007, Missy Chase Lapine (“Lapine”) and The Sneaky Chef, Inc. filed a lawsuit in the U.S. District Court for the Southern District of New York against Jerry Seinfeld and Jessica Seinfeld for copyright infringement, defamation, and trademark infringement. See Missy Chiase Lapine and The Sneak Chef, Inc. v. Jessica Seinfeld and Jerry Seinfeld, Case No. 08-CV-00128 (S.D.N.Y.). A copy of the complaint can be downloaded here. The New York Times and Associated Press both ran articles today on the lawsuit.

Lapine is the author of “The Sneaky Chef: Simple Strategies for Hiding Healthy Foods in Kids’ Favorite Meals,” which was published in April 2007 by Running Press, an imprint of the Perseus Books Group. Lapine alleges that Jessica Seinfeld plagiarized her cookbook when she authored “Deceptively Delicious: Simple Secrets to Get Your Kids Eating Good Food,” which was published in October 2007 by Collins, an imprint of HarperCollins.

According to the complaint, Lapine, the former editor of Eating Well magazine, began researching methods for getting children to eat healthier foods in 2002. Lapine prepared a manuscript of her book describing her methods of hiding healthy foods into foods that kids like to eat by using vegetable purees. On February 6, 2006, Lapine sent a 139 page book proposal to HarperCollins Publishers; however, her proposal was rejected. In early May 2006, Lapine submitted a second proposal to HarperCollins, which was again rejected. In June 2006, Perseus Books Group accepted Lapine proposal. The parties entered into an agreement to publish the book on August 1, 2006. Running Press released the book on April 2, 2007, and it became a New York Times best seller within three weeks.

Sometime in May 2007 while promoting her book, Lapine learned of Seinfeld’s book from an eight-page promotional brochure. Running Press sent a letter to HarperCollins on July 9, 2007, pointing out the similarities between the books. In particular, the name of the book was titled “Sneaky Secrets to Get Your Kids Eating Good Food” and the cover had a caricature of Jessica Seinfeld holding some carrots behind her back and winking – similar to Lapine’s book cover which features a caricature of a winking chef holding a finger to her lips (saying “shhh”) and hiding carrots behind her back. HarperCollins wrote back on July 31, 2007, asserting that it did not believe any changes were necessary. When the book was published in October 2007, the cover art was changed slightly so that the carrots appeared on a cutting board behind the woman’s back and the subtitle of the book was renamed “Simple Secrets to Get Your Kids Eating Good Food.” The spine, first page, and insert also include a drawing of Jessica Seinfeld holding a finger to her lips as if saying “shhh.” The complaint goes into great details on the similarities between multiple parts of each book.

Lapine also claims that Jerry Seinfeld defamed her with remarks he made to David Letterman on an episode of CBS' "Late Show with David Letterman” airing last October 29, 2007 (YouTube link here). According to the complaint, when Jessica Seinfeld began promoting her book, the media began raise questions about Seinfeld’s book. During his appearance on Letterman, Seinfeld stated, "Now you know, having a career in show business, one of the fun facts of celebrity life is wackos will wait in the woodwork to pop out at certain moments of your life to inject a little adrenaline into your life experience.”

Seinfeld continued telling Letterman:

Yes, I have wackos, you have had wackos. I believe your wackos are very well documents. . . . Now, if you’re any good as a woodwork wacko, you are patient. You wait. You pick your moment and then spring out and go wacko. So, there’s another woman who had another cookbook. And it was a similar kind of thing with the food, and the vegetables in the food, and uh, my wife never saw the book, read the book, used the book . . . So this woman says, “I sense this could be my wacko moment.” . . . So she comes out and she says, and she accuses my wife, she says, you stole my mushed-up carrots. You can’t put mushed up carrots in a casserole, I put mushed-up carrots in the casserole. It’s vegetable plagiarism.

Seinfeld then added:

And I’m more upset, we’re sorry that she is, you know, angry and hysterical, and because she’s a three-name woman, which is what concerns me. She has three names . . . And you know, if you read history, many of the three-name people do become assassins. . . . Mark David Chapman. And you know, James Earl Ray. So that’s my concern.

Jerry Seinfeld also appeared on E! News where he said:

As a celebrity, I enjoy the fact that whenever you do something; some nut job comes out of the woodwork and gets hysterical. I know the truth that nothing ever happened. I don’t’ know if you know the story about the guy I went to college with who claimed I stole the whole TV series form him, and he sued me for 100 million dollars. So this woman is another kind of nut. You know, she thinks she invented vegetables. And she’s accusing my wife of stealing her mashed-up carrots.

Lapine maintains that Seinfeld’s statement falsely characterized her as mentally unstable and potentially violent (like David Letterman’s infamous stalker) or as a mentally unhinged celebrity stalker who is using the cookbook controversy to extort money from him.

Richard Menaker, attorney for the Seinfelds, said regarding the allegations of plagiarism and defamation: “Both are without merit. There's no truth in fact or law to this claim of plagiarism. The idea for Jessica Seinfeld's book came from her own experiences with her family out of her own kitchen." As for the defamation allegations, Menaker said “Jerry Seinfeld is entitled to his opinions. Even though Jerry Seinfeld is a public figure, he doesn't lose his right to free speech because of that."

While much of the publicity surrounding the lawsuit has focused on the claims of copyright infringement and defamation, hidden within the lawsuit is a trademark infringement claim as well (and thus the reason why the complaint is being showcased on this blog).

The complaint alleges trademark infringement under §32 and §43(a) of the Lanham Act. On December 25, 2007, The Sneaky Chef, Inc. received a registration for the work mark THE SNEAKY CHEF for three classes of goods and services: 1) books and other related printed materials in the fields of nutrition, food preparation and the culinary arts; 2) Educational services and a television show in the fields of nutrition, food preparation and the culinary arts; and 3) Providing information in the field of food preparation and the culinary arts. An application for THE SNEAKY CHEF logo, filed August 14, 2007, for the same three classes of goods and services is still pending. The company also filed two additional intent-to-use applications on October 28th and November 24th for THE SNEAKY CHEF and THE SNEAKY CHEF (and Design) for two classes of goods (cooking equipment and accessories and Food products, namely, purees used as ingredients of foods; fresh pureed fruits and pureed vegetables; frozen pureed fruits and pureed vegetables).

Lapine argues that Seinfeld’s use of a line-drawn caricature of a female chef hiding carrots behind her back and winking and the image of a female holding a finger to her lips as if to say “shhh” is confusingly similar to Lapine’s logo of a caricature of a winking chef holding a finger to her lips (saying “shhh”) and hiding carrots behind her back.

Lapine also asserts trademark infringement injury to business reputation under New York law. For the federal trademark infringement, Lapine seeks disgorgement of all profits from the book. For the above two state law claims, she seeks the same as well as triple damages.


Vegas™Esq. Comments:
The trademark infringement allegations are fairly weak – thrown in by her attorneys no doubt to cover all bases. It is not clear from the complaint how Seinfeld’s book infringes on the THE SNEAKY CHEF word mark. And as for the caricatures, while the goods are related, the marks are not very similar and Lapine's logo is not very strong.

I will leave to others to opine about the merits of her copyright allegations – except to say that I think she has a compelling case.

As for her claims of defamation, when I saw Seinfeld make his comments on Letterman, I felt he went too far in his “wacko” comments. (Seinfeld left out the two most important three-names: Lee Harvey Oswald and John Wilkes Booth.) Of course, comments made in poor taste do not necessarily amount to defamation.

Because Lapine does not appear to be the extortionate “wacko” that Seinfeld has portrayed her to be, I would hope that Seinfeld does the right thing and use that “Seinfeld” money to reach a confidential settlement rather than spending it defending this case with the reasonable chance that he could lose.

Trademark Infringement Lawsuits Take Center Stage in Las Vegas

The Las Vegas Business Press had an article on Saturday (link here) written by Valerie Miller entitled "Big trademark lawsuits become common in Las Vegas courts." The article describes the "surge" of trademark and copyright infringement lawsuits involving Las Vegas companies.

Embarq
Most Las Vegas residents get their telephone service through Embarq, the reincarnation of Sprint (of course, as many will also tell you, a rose by any other name smells the same). What many do not know is that there is a second telephone company in Las Vegas -- Nevada Telephone Co. (website temporarily disabled, which gives you an idea of how successful business has been).

On October 29, 2007, Embarq Holdings Company, LLC filed a trademark infringement lawsuit in the U.S. District Court for the District of Nevada against Robert A Jankovics, Nevada Utilities, Inc., Embarq and Embarq Central Telephone Company. See Embarq Holdings Company, LLC v. Jankovics et al, Case No. 2:2007cv01442 (D. Nev.). Jankovics is the manager of Nevada Utilities, Inc. which does business as Nevada Telephone Co.

At issue is a sign bearing the name "Embarq Marketing Division" with an airplane logo at Nevada Telephone’s headquarters. Embarq claims that the sign is confusingly similar to Embarq’s jet logo and that the proximity between the Embarq name to a sign for Nevada Telephone will cause consumer confusion. Embarq holds the trademark for the mark EMBARQ (for telecommunication services), which was registered on July 10, 2007 (date of first used claimed as May 17, 2006).
Jankovics says he has removed the sign and logo in response to Embarq’s demands, but does not believe he infringed upon Embarq’s trademarks. The sign was present because a company named Embarq Marketing Associates, which owns a business selling sexually oriented materials, rented space in the building now owned and occupied by Nevada Telephone and Jankovics let the tenant keep the sign up.

As for the other two entities that are defendants in the lawsuit, according to information on file with the Nevada Secretary of State’s office, Embarq Central Telephone Company was incorporated back on August 14, 2007. Jankovics is listed both as the company’s registered agent and secretary. On the same day, Jankovics filed a Nevada service mark application for the mark EMBARQ CENTRAL TELEPHONE COMPANY.

Jankovics claims he was trying to help out Embarq by incorporating the Embarq Central Telephone Company and applying for the service mark for the same name, which Embarq declined to purchase despite Jankovics’ offer to sell it for one dollar. Central Telephone Company, the former Sprint operating company, has filed fictitious firm names in Clark County to do business as "Embarq."

Finally, with respect to the defendant Embarq (in case you were asking why Embarq is suing itself), on June 13, 2006, Jankovics formed a corporation named EMBARQ, which remains active and where Jankovics is named as President, Secretary, Treasurer, and Director of the Company. [Footnote: Nevada law does not require corporations to use additional word or words such as "Incorporated," "Limited," "Inc.," "Ltd.," "Company," "Co.," "Corporation," "Corp.," or other word which identify it as not being a natural person so long as the name does not appear to be that of a natural person and containing a given name or initials.]

If you do a search on the Nevada Secretary of State’s website (link here) for the officer name ROBERT JANKOVICS, you can see that Jankovics has incorporated or organized several Nevada entities under various names relating to phone service across the valley. You can also view the companies for which he (or his wife, Anita) serves as resident agent by clicking here and here and here.

I personally like the name of one of Jankovics’ other companies (which was dissolved on April 13, 2007) – Disembarq. Very clever.

Blue Man Group
The company behind the Blue Man Group is suing some people behind a show that is allegedly confusingly similar to that of the Blue Man Group’s show.

On November 26, 2007, Blue Man Productions Inc.("BMPI") filed a copyright infringement lawsuit in the U.S. District Court for the District of Nevada against Uptowne Productions, Inc., Kraft-E Events, LLC, Kevin Kraft, and Larry C. Vladetic. See Blue Man Productions, Inc. v. Uptowne Productions, Inc. et al, Case No. 2:2007cv01566 (D. Nev.). Vladetic is an officer of Uptowne and manager of Kraft-E.

BMPI’s lawsuit alleges that the defendants produce a live theatrical show that incorporates the character and other intellectual property of BMPI. BMPI sent a cease and desist letter to the defendants last April, but apparently the defendants continue to produce the show. Vladetic claims that he is only running a "booking agency," which booked only one show before receiving the cease and desist letter.

BMPI owns several registrations for the mark BLUE MAN GROUP, including for entertainment services in the nature of live musical and theatrical performances which was registered May 15, 2001).

World Market Center
Most Las Vegas residents and most furniture businesses nationwide know about the World Market Center – the behemoth group of buildings located near Downtown Las Vegas which are occupied only two times a year for one week each time for one of the largest furniture shows in the country.

On February 7, 2007, Cost Plus Management Services, Inc. ("Cost Plus") filed a trademark infringement lawsuit in the U.S. District Court for the District of Nevada against World Market Center Venture, LLC ("WMC"). See Cost Plus Management Services, Inc. et al v. World Market Center Venture, LLC, Case No. 2:2007cv00156 (D. Nev.).

At issue is the name "world market" by WMC. Cost Plus holds federal registrations for the mark WORLD MARKET for, among others goods and services, furniture and retail store services featuring general merchandise ("market" disclaimed"). Cost Plus alleges that WMC’s use of the "world market" name and logo is likely to cause confusion with Cost Plus’ registered marks and has damaged Cost Plus’ business, reputation, and goodwill. Cost Plus also holds several registrations for the mark COST PLUS for retail furniture stores services and retail store services featuring general merchandise (here and here).

WMC is also facing another trademark challenge at the USPTO. WMC filed a trademark application for the mark WORLD MARKET CENTER on September 1, 2004 for four classes of services including conducting trade exhibitions, leasing trade exhibition space, construction of trade showroom facilities, and providing general-purpose facilities for trade shows. The mark was published for opposition on January 4, 2006; however, on May 30, 2006, the World Trade Center Association (owner of the WORLD TRADE CENTER mark) filed an opposition. See World Trade Centers Association Inc. v. World Market Center Venture, LLC, Opposition No. 91171390 (T.T.A.B). The action is currently suspended until March 31, 2008, while the parties apparently pursue negotiations.

We Must Never Forget.

Vegas™Esq Comments:
Since Ms. Miller did not seek out my comments for her story, I shall provide them here:

Embarq – Embarq has the upper hand here although I doubt the company will get the $75,000,000 that the Justia database indicates Embarq is seeking. While it may not be able to stop Jankovics from working near some business with the name Embarq, he can be stopped from taking any actions that associate his telephone services with the name Embarq. I would imagine that Embarq will be keeping a close watch on Mr. Jankovics’ companies containing the name Embarq.

Blue Man Group – Without more information about the allegedly infringing production, I am not in a position to opine. However, BMG is a fairly popular show nationwide, so if the other show involves characters dressed in black with a head covered in blue makeup and engaging in the type of actions characteristic of BMG (lighted steel drums with colored pain flying while drumming, making music with industrial pipes, shooting marshmallows into the audience, draping the entire audience in paper – I’ve seen the show and it is interesting), I tend to think that BMG has the upper hand.

World Market Center – this is the fun one to watch. Some commentators (including one attorney quoted in the article) seem to favor Cost Plus. However, on the issue of trademark infringement, I actually tend to believe that World Market has the upper hand because of the type of services involved and the nature of the consumers. World Market Center is a trade show venue – it does not compete with Cost Plus, which is a retail store. Consumers who buy at Cost Plus are not the same consumers that would attend the World Market Center. And to the extent that they do, the patrons of the World Market Center are well aware of the differences between the two and would not be confused. In addition, as the article notes, most people refer to Cost Plus World Market as just "Cost Plus" (I know that I do). The "World Market" part of the mark is a little on the descriptive side, and therefore, a stronger likelihood of confusion must be demonstrated to show infringement.

Of course, Cost Plus is also likely to argue likelihood of dilution. Nonetheless, while Cost Plus’ long use of the mark WORLD MARKET gives it a basis for arguing that its mark is famous, I tend to question whether such famous mark has the requisite "distinctiveness" for Cost Plus to maintain a dilution action under the 15 U.S.C. § 1125(c). Even though a mark may be famous (i.e., widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark’s owner), that alone may not be enough to make such mark distinctive (where distinctiveness refers to the ability of the famous mark to uniquely identify a single source and thus maintain its selling power).

Stanford University to battle Hogwarts School in Harry Potter Lexicon Copyright and Trademark Dispute

I previously posted (link here) about the lawsuit filed by J.K. Rowling and Warner Brothers against RDR Books over RDR’s plans to publish a 400 page book entitled the “Harry Potter Lexicon” which is apparently just a print version of the free-of-charge Harry Potter Lexicon fan website website (http://www.hp-lexicon.org/). See Warner Bros. Entertainment Inc. et al v. RDR Books et al, Case No. 1:2007-cv-09667 (S.D.N.Y.).

A temporary restraining order was put into place pending the court’s decision on Rowling’s motion for preliminary injunction. The hearing for that motion is scheduled for February 6, 2008.

Now comes news that RDR has a powerful new ally to aid in its battle against Rowling and Warner Brothers – a group of intellectual property lawyers at Stanford Law School. See news stories here and here.

The Fair Use Project at Stanford University’s Center for Internet and Society announced on Tuesday that it would help defend RDR books in the lawsuit. Fair Use Project executive director Anthony Falzone said that the book RDR wants to publish is protected by long-standing U.S. law giving people "the right to create reference guides that discuss literary works, comment on them and make them more accessible".

So how will the Stanford Center for Internet and Society match up against Hogwarts School of Witchcraft and Wizardry? My money is on the school that relies upon law rather than magic.

“Second Life” trademark infringement lawsuit ends with First Life Default Judgment

VirtuallyBlind.com (link here) reported on the default judgment entered in favor of Eros, LLC against defendant Robert Leatherwood. See Eros, LLC v. Robert Leatherwood and John Does 1-10, Case No. 8:2007cv01158 (M.D. Fla.). A copy of the default judgment can be downloaded here (courtesy of VirtuallyBlind.com).

A November 15th story by “Second Life” Reuters (link here) provides a good overview of the events surrounding the case and leading up to the default judgment. In July, Eros filed suit against then unknown Leatherwood for selling illegal copies of Eros’ product, the SexGen bed (a piece of furniture with special embedded animations that enable Second Life players to create an adult film with their avatars). Eros also has a pending Section 1(a) trademark application for the mark SEXGEN (the current description of “Scripted animation system utilizing a defined menu to actuate avatars within a virtual world accessed through a 3-dimensional virtual platform” has been rejected as vague).

A four month investigation of the IP addresses of the avatar accused of the trademark infringement (named Volkov Catteneo) uncovered Robert Leatherwood. Leatherwood denied being Catteneo, but nonetheless failed to respond to Eros’ lawsuit. Eros filed its motion for default judgment soonafter.

With the default judgment entered, Eros can now seek damages against Leatherwood. Of course, collecting such a judgment may be difficult, given that Leatherwood is apparently an unemployed high-school dropout living with his family.

Harry Potter and the Trademark Infringement Lawsuit

I’m a few days late on this one because most published reports about the lawsuit have focused on the copyright infringement aspect of the case with little publicity about the accompanying trademark infringement allegations.

On October 31, 2007, J.K. Rowling (author of the widely popular Harry Potter series of books) along with Warner Brothers Entertainment Inc. (the producer of the Harry Potter movies) filed a lawsuit in U.S. District Court for the Southern District of New York against RDR Books (“RDR”), a book publisher, and John Does 1-10 for copyright and trademark infringement. See Warner Bros. Entertainment Inc. et al v. RDR Books et al, Case No. 1:2007-cv-09667 (S.D.N.Y.). A copy of the complaint can be downloaded here.

At issue is RDR’s plan to publish a 400 page book entitled the “Harry Potter Lexicon” which is apparently just a print version of the free-of-charge Harry Potter Lexicon fan website website (http://www.hp-lexicon.org/). The book is scheduled to be released in the United Kingdom on or about November 5, 2007, and in the United States on November 28, 2007. The author is Steve Vander Ark, the editor of the Harry Potter Lexicon fan website and a noted librarian of all things Harry Potter (even Rowling herself has admitted to occasionally perusing the website to check a fact while writing her books).

Despite the fan website having Rowling’s explicit endorsement, this repackaging of the website’s contents from a free website into a commercial book apparently goes against Rowling’s own plans to publish her own Harry Potter companion book, the proceeds of which would be donated to charity (as she has done with two other such companion books).

Much of the complaint is spent educating about the history of the Harry Potter books. (I can now say that I know what a Quidditch is.) The complaint also details the back and forth communications between Plaintiffs’ counsel and RDR over the pending publication of the book leading up to the filing of the lawsuit.

On September 18, 2007, counsel for Plaintiffs sent a cease and desist letter to RDR citing two federal court cases where companion books were found to be copyright infringement. RDR did not respond other than to indicate its own legal counsel was reviewing the issues raised. In an interesting turn, however, on October 11, 2007, RDR sent its own cease and desist letter to Warner Bros. claiming that a timeline appearing on some of the Harry Potter DVDs infringes on the copyrighted content of the Lexicon website.

While the complaint’s main count is the copyright infringement allegations, Plaintiffs also wield their magic trademarks to help fight this dastardly battle against the evil RDR. The complaint cites to the fact that, pursuant to an agreement between Warner Bros. and Rowling, Warner Bros. holds over 15 federal trademark registrations for the HARRY POTTER mark (along with several other registrations and pending applications based on the various titles of the Harry Potter books). The two most relevant registrations are Reg. Nos. 2,450,788 (word mark) and 2,685,932 (stylized), both for “Printed matter and paper goods” which covers books featuring characters from animated, action adventure, comedy and/or drama features, comic books, and children's books.

Plaintiffs allege Section 32(1) federal trademark infringement (15 USC §1114(1)) against RDR’s use of Plaintiff’s registered HARRY POTTER marks in connection with the sale of the Lexicon book. Plaintiffs further allege that RDR’s book, through its use of the HARRY POTTER marks and lack of adequate disclaimer, will create a likelihood of confusion as to the affiliation, connection, association, origin, source, and sponsorship of the book (amounting to Section 43(a) unfair competition and false designation of origin (15 USC §1125(a)(1)(A)) as well as a likelihood of confusion as to the nature, characteristics and qualities of the book (amounting to Section 43(a) false advertising (15 USC §1125(a)(1)(B))).

The complaint also includes allegations of deceptive trade practices under New York General Business Law §349 (New York Deceptive Trade Practices Act) and unfair competition under New York common law. Finally, Plaintiffs seek a declaratory judgment regarding Defendant’s allegations of copyright infringement over the timeline that Plaintiff Warner Bros. included in DVD versions of several Harry Potter films. The complaint requests a permanent injunction against RDR, actual damages, statutory damages (for the copyright infringement claim), treble damages, costs and attorneys fees.

It is interesting that the Plaintiffs explicitly state in the complaint that “Plaintiffs intend to donate any monetary award that may result from Defendant’s activities prior to an injunction being entered to charity.” This may be a preemptive measure on the part of Rowling and Warner Bros. to assuage any negative publicity arising from the lawsuit from fans who might be alienated by the impression of the big bad evil wizards (Rowling and Warner Bros.) going after a loyal Harry Potter fan.

If you are interested in commentary on the copyright aspects of the lawsuit, I recommend Prof. William Patry’s post (link here) on “The Patry Copyright Blog” as well as the comments by Sharmil McKee at the McKee Law Office Small Business Blog (link here).

As for the trademark aspects of the lawsuit, in addition to a fair use defense, which will also be claimed as part of RDR’s defense to the copyright infringement allegations, I would suspect RDR to claim laches on the part of the Plaintiffs who not only allowed the Lexicon website to use the HARRY POTTER marks in the same way that the alleged Lexicon book likely will, but also endorsed such use,

How effective a fair use defense may be will depend on the extent to which RDR attempts to prevent any likelihood of confusion (through a disclaimer on the cover, etc.). The complaint’s allegations that no such disclaimer will be on the cover of the book was based on information and believe since RDR apparently did not provide Plaintiffs with a copy of the book or its cover before the complaint was filed.

Regardless of where this case ends up, one wonders if Dumbledore would be happy or upset that this lawsuit has taken away from the media coverage surrounding the recent revelation by Rowling of his sexual orientation.