marie-andree@maw-law.com, Author at MAW-LAW Web Site

CEDH : Violation par la France de la Liberté d’Expression d’un Avocat

May 20, 2015 · by marie-andree@maw-law.com ·

La Grande Chambre de la Cour Européenne des Droits de l’Homme (CEDH) a rendu le 23 avril 2015 un arrêt, Morice c. France, où elle condamne la France pour violation de l’article 10 de la Convention Européenne de Sauvegarde des Droits de l’Homme (CESDH) en raison de sa condamnation pour diffamation d’un avocat qui s’était exprimé dans la presse dans le cadre de l’affaire très médiatisée du Juge Borel.

Le juge Bernard Borrel avait été retrouvé mort en octobre 1995 à Djibouti, où il avait été détaché par le gouvernement français en tant que conseiller technique auprès du ministre de …read more

Filed Under: Cyber High and Law ·

TTAB: Fair Use Defense Not Successful in Trademark Dilution Cases if Defendant’s Use is Commercial

May 18, 2015 · by marie-andree@maw-law.com ·

On May 8, 2015, the Trademark Trial and Appeal Board (TTAB) sustained the New York Yankee’s opposition to the registration of three marks because they were likely to dilute by blurring some of the New York Yankees’ famous marks.

The case is interesting because the TTAB firmly stated that the fair use defense in trademark dilution cases, provided by the Trademark Dilution Revision Act, cannot succeed if Defendant’s use is commercial.

IET Products and Services, Inc. (Applicant) was seeking to register “THE HOUSE THAT JUICE BUILT” in class 25 for “T-shirts, baseball caps, hats, jackets and sweatshirts,” THE HOUSE THAT JUICE BUILT in class 21 for “Mugs”, and a design mark showing a top hat atop a syringe. As the TTAB did, we will consider THE HOUSE THAT JUICE BUILT to be one mark, regardless of the quote marks.

The New York Yankees (Opposer) claimed that these three marks were likely to cause dilution by blurring of its design mark featuring a top hat atop a baseball bat and THE HOUSE THAT RUTH BUILT mark.

Dilution by Blurring

Dilution by blurring is defined by Section 43(c)(2)(B) of the Trademark Act as an “association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark.” Such dilution can occur even in the absence of confusion or likelihood of confusion, Section 43(c)(1). It suffices that a substantial percentage of consumers are reminded of the famous mark when seeing the junior mark, even if they understand that the origin of the goods or services is not the famous mark.

The Court of Appeals for the Federal Circuit enumerated in Coach Servs. Inc. v. Triumph Learning LLC four factors which must be proven to prevail in a dilution by blurring claim:

(1) the plaintiff “owns a famous mark that is distinctive;

(2) the defendant is using a mark in commerce that allegedly dilutes the plaintiff’s famous mark;

(3) the defendant’s use of its mark began after the plaintiff’s mark became famous; and

(4) the defendant’s use of its mark is likely to cause dilution by blurring or by tarnishment.”

First Factor: Fame

Section 43(c)(2)(A) of the Trademark Act considers that a mark is famous “if it is 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.” Courts may use four non-exclusive factors to determine if a mark is famous, which are:

The duration, extent, and geographic reach of advertising and publicity of the mark.
The amount, volume, and geographic extent of sales of goods or services offered under the mark.
The extent of actual recognition of the mark.
Whether a mark is registered.

The TTAB found the Top Hat Logo design mark of the New York Yankees to be famous for dilution purposes. The mark has been used for more than 50 years and is displayed at Yankees Stadium during the team home games, which have been broadcast on several national networks, such as ESPN or ABC, on the MLB Network. The mark has also been used in connection with sponsorship with other brands, such as Pepsi-Cola, and has been also used on apparel and on the Yankee’s uniforms.

The TTAB also found THE HOUSE THAT RUTH BUILT mark to be famous for dilution purposes. This mark refers to the original Yankee Stadium in New York, which was nicknamed as such after Babe Ruth joined the team in 1920, shortly after the opening of the stadium, and drew huge crowds there because of his slugging abilities and his huge personality. Opposer introduced as evidence some 2,600 newspaper articles published from 2000 to 2007 containing both “Yankees” and “the House that Ruth Built.” The TTAB found it to be “strong evidence not only that the public and press have come to view THE HOUSE THAT RUTH BUILT as an indicator of source for Opposer … but also that it is a famous mark.” The first dilution element is thus satisfied.

The TTAB found that Applicant used its mark in commerce, as an application based on intent to use a mark in commerce under Trademark Act Section 1(b) satisfies the commerce requirement under the Trademark Dilution Act, and thus the second dilution factor was satisfied. Under the third dilution factor, Opposer had to prove its marks became famous before Applicant filed its intent-to-use application. This was the case here, and the third dilution factor was satisfied. The marks were registered, and so the fourth factor was also satisfied, and the TTAB found both Opposer’s marks to be famous.

Fourth Factor: Whether Applicant’s Mark are Likely to Cause Dilution

The Trademark Act enumerates six non-exhaustive factors which a court may consider to determine whether a mark is likely to cause dilution by blurring. These factors are:

(i) The degree of similarity between the mark or trade name and the famous mark.

(ii) The degree of inherent or acquired distinctiveness of the famous mark.

(iii) The extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark.

(iv) The degree of recognition of the famous mark.

(v) Whether the user of the mark or trade name intended to create an association with the famous mark.

(vi) Any actual association between the mark or trade name and the famous mark.

First Likely to Cause Dilution by Blurring Factor: Degree of Similarity between the Mark and the Famous Mark

When determining whether a mark is likely to dilute a famous mark by blurring, the TTAB does not conduct a Section 2(d) likelihood of confusion analysis, but, rather, examines the degree of similarity or dissimilarity of the marks, in their entireties as to appearance, connotation, and commercial impression, Research in Motion Ltd. v. Defining Presence Marketing Group Inc., 102 USPQ2d 1187, 1198 (TTAB 2012).

The TTAB found that the Applicant’s Top Hat and Syringe design mark does trigger consumers to conjure up Opposer’s famous Top Hat and Baseball Bat design mark. When the two marks are presented side-by-side, “[t]he overall similarity between the two design marks is immediately apparent. Each incorporates a circle and features a similarly patterned top hat resting atop a slender object leaning to the right.”

Applicant argued that its word mark was an “irreverent” version of Opposer’s word mark and “an expressive and jocular reference to the newsworthy and public issue of the use of performance enhancing drugs (“PEDS”) by Major League Baseball (“MLB” players – including players affiliated with Opposer’s baseball club”. For the TTAB, Applicant’s word was sufficiently similar to Opposer’s mark to triggered consumers to conjure up Opposer’s famous word mark.

Second Likely to Cause Dilution by Blurring Factor: Degree of Inherent or Acquired Distinctiveness of the Famous Mark

The TTAB found Opposer’s Top Hat design mark and word mark to be inherently distinctive, and thus this factor favored the New York Yankees.

Third Likely to Cause Dilution By Blurring Factor: Extent to Which the Owner of the Famous Mark is Engaging in Substantially Exclusive Use of the Mark.

The TTAB found no evidence of any third-party use of Opposer’s Top Hat design. Applicant had argued that Opposer’s work mark had already been diluted by seven other marks, such as THE HOUSE THAT FRIED CHICKEN BUILT or THE HOUSE THAT JACK BUILT and produced printouts of their registration and Internet printouts displaying these marks. However, the TTAB was not convinced as “[t]hird-party registrations are not evidence of use” and Internet printouts only prove the existence of these websites, not that the public may have been aware of the information there published. Also, Applicant did not introduce any evidence “as to the extent of the use and promotion by third parties of their HOUSE THAT _____ BUILT marks,” which is necessary to assess whether a particular use is so widespread that it does have an impact on consumer’s perceptions.

Fourth Likely to Cause Dilution by Blurring Factor: Degree of Recognition of the Famous Mark

The TTAB found this factor to be neutral for Opposer’s Top Hat design mark, as there was not enough evidence to infer the degree of recognition of the mark. However the TTAB found THE HOUSE THAT RUTH BUILT to be a widely recognized mark.

Fifth Likely to Cause Dilution by Blurring Factor: Whether User of the Mark Intended to Create an Association with the Famous Mark

Applicant admitted that its marks create an association with Opposer’s marks, but claimed that its Syringe Top Hat design mark and its word marks were fair use. Indeed, Section 43(c)(3)(A) provides for a fair use and a parody defense against dilution claims. However, the fair use defense failed in our case as the TTAB pointed out that “Applicant’s argument ignore[d] the language of Section 43(c)(3)(A)… which limits the fair use exclusion as defined in the statute to use of a famous mark other than a designation of source for the person’s own goods or services.” Also, section 43(c)(3)(C) limits the fair use exclusion to “noncommercial use.” In other words, the fair use defense cannot apply in dilution cases if the use is commercial and acts as a designation of source.

Applicant also claimed that its Syringe Top hat design mark and its work marks were a parody, and that a parody, it was successful because it created an association with Opponent’s design mark. But the parody defense failed, because the TTAB refused to consider the parody defense as part of its assessment of the dilution, because Applicant’s marks were used in commerce.

The TTAB thus strongly signals that parody defenses are not likely to be successful in dilution cases, as it “[found] it virtually impossible to conceive of a situation where a parody defense to a dilution claim can succeed in a case before the Board.” The TTAB expressly stated that this case was an opportunity “to modify [its] prior suggestion in Research in Motion that an alleged parody should be considered as part of [its] dilution analysis even when parody does not provide a safe harbor for a defendant.” The TTAB had followed in its Research in Motion decision the Fourth Circuit Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC 2007 decision. In this case, the Court had held that the dog toy “Chewy Vuiton,” which sold for less than $20 and crudely represented a Louis Vuitton bag was a successful parody of the Louis Vuitton bags and trademarks. Another court, the 10^th Circuit, had found in 1987 that using “Lardashe” as a mark for larger-size women’s blue jeans was a successful and permissible parody of “Jordache” jeans, Jordache Enterprises, Inc. v. Hogg Wyld, Ltd. In Louis Vuitton Malletier, the Fourth Circuit found the pet toy to be “an irreverent, and indeed intentional, representation of an LVM handbag, albeit much smaller and coarse.” In our case, the fact that the goods sold under Applicant’s marks were the same (tee-shirts and mugs) than the ones sold by Opposer may have influenced the TTAB’s decision.

If Applicant would not have, well, applied to register the trademarks, but, instead, would have used them in, say, a blog written to denounce PED use in major league baseball, the parody defense would have likely be successful, as the use would not have been in commerce. The TTAB found the sixth dilution by blurring factor, the actual association between the mark and the Famous mark to be neutral, as only twenty-two shirts bearing Applicant’s marks, and no mugs, had been sold. This was indeed a very limited use of the marks in commerce. However, the marketing plans of Applicant are unclear, and they may very well have anticipated greater sales. The Yankees did not strike out at the TTAB.

Image of Yankee Stadium is courtesy of Flickr user Severin St. Martin under a CC BY 2.0 license.

Filed Under: Sports Law, Trademark · Tagged: Parody, Trademark Dilution, TTAB

La Cour de cassation fait primer le droit à l’information sur le droit à l’image

May 13, 2015 · by marie-andree@maw-law.com ·

Nous avons vu la semaine dernière que la première chambre civile de la Cour de cassation a récemment fait primer le droit à l’information sur le droit à la vie privée d’un homme politique. Elle rendit également le même jour, le 9avril 2015, un arrêt de rejet qui fait primer le droit à être informé sur le droit à l’image.

Les faits étaient les suivants. M.X avait accordé à M.Y un entretien, filmé à son domicile. M. Y réalisait un documentaire intitulé ” La vérité est ailleurs ou la véritable histoire des protocoles des sages de Sion », coproduit …read more

Filed Under: Cyber High and Law ·

Cour de Cassation : Droit à l’Information Prime sur la Vie Privée d’un Homme Politique

May 6, 2015 · by marie-andree@maw-law.com ·

La première Chambre civile de la Cour de Cassation a rendu le 9 avril 2015 un arrêt de rejet qui confirme que les juges doivent prendre en compte la contribution d’informations propres à porter atteinte à la vie privée de personnalités politiques au débat d’intérêt général, afin de décider si leur publication doit être interdite car elle porte atteinte à la vie privée, ou si elle doit être autorisée car le public a droit à être informé.

Les faits étaient les suivants. M.X et M.Y, sont deux hommes vivant en couple, tous deux cadres d’un parti politique. Un livre, ” …read more

Filed Under: Cyber High and Law ·

Right of Publicity and Freedom of Speech Clash in Manhattan

April 27, 2015 · by marie-andree@maw-law.com ·

This New York Appellate Division case affirmed the First Amendment right of Defendant, a photographer, over the right to privacy of Plaintiffs’ children, whose pictures were taken surreptitiously using a high powered camera lens and became the subject of an art exhibition. The case is Martha Foster et al. v. Arne Svenson, (2015 NY Slip Op 03068).

Defendant Arne Svenson is a photographer. As he explained on his web site, “he has turned outward from his usual studio based practice to study the daily activities of his downtown Manhattan neighbors as seen through his windows into theirs.” The result of this work became the series The Neighbors, which was exhibited in 2013 in New York and Los Angeles, and will be exhibited next year in Denver. Svenson used a telephoto lens,inherited from a bird-watching friend, to take pictures, from his own downtown Manhattan apartment, of people living or working in a building across the street, without their knowledge, taking advantage of its glass facade and open windows.

Defendant took pictures of Plaintiffs’ minor children, then three and one year old, which became part of the exhibition. Plaintiffs asked the defendant to stop selling these pictures, and defendant took down a picture representing the two children together, but kept offering for sale the picture representing Plaintiffs’ daughter alone. Plaintiffs then sent the gallery a cease-and-desist letter, asking it to take down the pictures from its site and to stop selling them. It complied, but the photographs were shown on several media channels reporting about the exhibition, and the address of the building was also made public.

Plaintiff filed a suit against Svenson, claiming invasion of privacy and intentional infliction of emotional distress. The New York Supreme Court, a court of first instance, denied the claim on August 5, 2013 and granted defendant’s motion to dismiss. Plaintiffs appealed.

(I wrote about the New York Supreme Court case here.)

New York’s Statutory Right to Privacy

New York State does not does not recognize a common-law right of privacy, and its only privacy statute, New York Civil Rights Law §§ 50 and 51, is a right of publicity statute. The Appellate Division provides a short history of the New York privacy law in its discussion.

Under § 50, “[a] person, firm or corporation that uses for advertising purposes, or for the purposes of trade, the name, portrait or picture of any living person without having first obtained the written consent of such person, or if a minor of his or her parent or guardian, is guilty of a misdemeanor.” § 51 of the statute provides for injunctive relief and damages. As such, the statute only forbids nonconsensual commercial appropriations of the name, portrait or picture of a living person. If the person whose likeness has been appropriated consents to this use, or if the use is noncommercial, then it is not prohibited.

The New York Supreme Court had noted in the Svenson case that “the question… is whether the photographs used by the photographer in a show or as examples of his art qualified as a commercial use or for the purpose of advertising or trade” and that the New York legislature “also sought to protect the constitutional right of freedom of expression.”

Is Selling Art Commercial Appropriation?

The photographs taken by Defendant had been offered for sale. Does that mean that taking them without authorization constituted commercial appropriation? Plaintiffs were arguing that these photographs were bought and sold in commerce. However, the Appellate Division noted that New York courts “have refused to adopt a literal construction [of “for advertising purpose” and “for the purpose of trade”] because the advertising and trade limitations of the privacy statute were drafted with the First Amendment in mind.”

The Appellate Division also cited its own Nussenzweig v. diCorcia 2007 case, where plaintiff, Erno Nussenzweig, had claimed that defendant, Philip diCorcia, had violated his New York statutory right of privacy when presenting in an art exhibition, and selling to the public, a photograph of Plaintiff taken in the streets of New York. Plaintiff argued that the photographer had made a commercial use of his image. Indeed, diCorcia had grossed about $240,000 from the sale of a limited edition of the photographs from this exhibition, and the photographs had been sold for $ 20, 000 to $30,000 each.

The invasion of privacy action was found to be time-barred in Nussenzweig, but two Justices wrote in a concurring opinion that the artwork “constitutes a matter of general public interest entitled to First Amendment protection.” They noted that plaintiff’s photograph had been published “in both the popular press and art media [which] confirm[ed] that the image is “a matter of legitimate public interest to readers” so as to bring its use within the newsworthiness exception to the privacy statute” and that “the inclusion of the photograph in a catalog sold in connection with an exhibition of the artist’s work does not render its use commercial, as plaintiff suggests [because][i]f the image is a matter of public interest, it is immaterial whether that interest is satisfied by viewing the original in a museum, art gallery or private dwelling or by perusing a reproduction in an art magazine or other publication.”

The Appellate Division concurred with the Nussenzweig concurrence. There was no doubt for the court that Defendant’s photographs must be considered works of art, as even Plaintiffs had conceded that Defendant was a renowned art photographer and that he had assembled photographs to present them in an art gallery exhibition.

For the Appellate Division, the fact that Svenson had made a profit from the sale of the photographs does not render the use of the photographs commercial, citing the Stephano v. News Group Publications 1984 case, where the New York Court of Appeals explained that it was the content of the article at stake, but not the publisher’s motive to increase circulation which determines, under the New York privacy statute, whether a particular item is newsworthy, and thus protected by the First Amendment, or merely commercial.

The Photographs are Protected by the First Amendment

New York courts may find that a particular use of someone’s likeness is protected by the First Amendment and is thus outside the scope of New York Civil Rights Law §§ 50 and 51. In our case, the photographs were presented in an art gallery.

The Appellate Division noted that, “[a]lthough the Court of Appeals has not been confronted with the issue of whether works of art fall outside the ambit of the privacy statute, others courts that have addressed the issue have consistently found that they do,”citing as an example the 2002 Hoepker v. Kruger Southern District of New York (SDNY) case, where the court found that that ”a careful weighing of interests” between privacy and freedom of speech is necessary, and must be done by the courts on a case by case basis. This may be particularly difficult if the protected speech is art, as art is not “newsworthy events or matters of public interest” the protection of which prevails over right of privacy, but stated that “New York courts have taken the position in the right of privacy context that art is speech, and, accordingly, that art is entitled to First Amendment protection vis-à-vis the right of privacy.”

Infliction of Emotional Distress?

Plaintiffs had also argued that the photographs had been obtained in an improper manner and thus should not been exempt from being considered as advertising or trade under the statute. They did not, however, cite any authority supporting this position. The Appellate Division took the view that Plaintiffs were thus arguing that “the manner in which the photographs were obtained constitute[d] the extreme and outrageous conduct contemplated by the tort of intentional infliction of emotional distress and serves to overcome the First Amendment protection.”However, the court did not find that Defendant’s behavior had been outrageous, even if the pictures were taken while the children were inside their home, as Defendant’s actions “certainly do not rise to the level of atrocious, indecent and utterly despicable.” Also, the Appellate Division noted that “the depiction of children, by itself, does not create special circumstances which should make a privacy claim more readily available.”

An Appeal to the Legislature

New York, unlike other States, does not have a general invasion of privacy statute, only a right to publicity statute. While the Appellate Division reluctantly affirmed that there was no cause of action for violation of the New York statute, it added that “in these times of heighted threats to privacy posed by new and ever more invasive technologies, we call upon the Legislature to revisit this important issue, as we are constrained to apply the law as it exists.” It remains to be seen if the New York Assembly will hear this plea.

Image is courtesy of Flickr user cheb.odegaard under a CC BY 2.0 license.

This post was originally published on The 1709 Blog.

Filed Under: First Amendment, Privacy, Right of Publicity, Southern District of New York · Tagged: First Amendment, Right of Publicity, Southern District of New York

Adidas Files Trademark Infringement Suit Against Marc Jacobs Over Stripes

April 15, 2015 · by marie-andree@maw-law.com ·

U.S. law does not grant copyright protection to clothes, because they are considered by the Copyright Act to be useful articles which cannot be protected by copyright. Indeed, under Section 101 of the Copyright Act, “the design of a useful article… shall be considered a pictorial, graphic, or sculptural work [and thus protectable by copyright] only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.” That means that if a part of the design of the garment can be separated from the useful part of the garment, this separate part can be protected by copyright.

Fashion companies can also protect some of their designs by applying for a patent or by registering them as a trademark. Such is the case for Adidas’ three stripes design, which is also a registered trademark (the Three-Stripes Mark).

Does that mean that no other designer may feature three parallel stripes, or even four parallel stripes, on a particular garment? This will have to be decided by the District Court of Oregon, where adidas America and adidas AG (Plaintiffs) filed suit on April 8 against Marc Jacobs International, LLC (Defendant), claiming that that a Marc by Marc Jacobs’s jacket featuring four parallel stripes on its sleeves infringes adidas’ Three-Stripes Mark.

Plaintiffs allege that this constitutes trademark infringement, trademark dilution, and unfair and deceptive trade practices. They are asking the District Court of Oregon to permanently enjoin Defendant from manufacturing and selling these models, or other models which would similarly infringe on the Three-Stripes Mark, to stop using this mark, and to order the destruction of goods and materials using the mark. They are also asking the court to award them monetary and punitive damages and to enjoin Defendant to disgorge all profits from the sale of the allegedly infringing goods.

The case is Adidas America, Inc. v. Marc Jacobs, 3:15-cv-00582.

The Three-Stripes Mark

Plaintiffs own several trademarks for three parallel stripes on garments, as, for instance, the registered trademark No. 2,058,619 for “sports and leisure wear, namely shirts” which consists of “three parallel bands positioned along the length of each sleeve of a shirt.” It also owns several trademarks which use the term “3 stripes,” such as THE BAND WITH THE 3 STRIPES mark, which is registered in class 25 for sport and leisure wear.

Plaintiffs contend that the public recognizes these three-stripes as an indication of origin of adidas goods, and listed in its complaint several uses by the media of three stripes “when describing adidas and its products.

Adidas Y-3 line

The adidas Y-3 line is designed by Japanese designer Yohji Yamamoto. It was first introduced in 2002 and is sold in department stores and in adidas’ stores. Many of the Y-3 clothes feature three stripes on their shoulders, front or back, or on the sleeves.

Marc Jacob’s Jacket

Plaintiffs allege that a jacket manufactured and sold by Marc Jacobs infringes the Three-Stripes Mark. The complaint provides photographs of the jacket which features four stripes on its sleeves, a design which the complaint states is likely to be confused by the public for an adidas Three-Stripe Mark.

Similarity and Trademark Infringement

As this is not a copyright infringement suit, but a trademark infringement suit, the court will not examine if both designs are substantially similar. Instead, it will examine if the stripes featured on Defendant’s model is recognized by the general public as an indication of origin of goods, and if there is a likelihood of confusion between the stripes as used by defendant on its jackets and the Three-Stripes Mark. The Oregon district court will use the Ninth Circuit Sleekcraft factors to determine a likelihood of confusion. These factors are the strength of the mark, the proximity of the goods, the similarity of the marks, evidence of actual confusion, the marketing channels used, the degree of care exercised by customers, the defendant’s intent in selecting the mark, and the likelihood of expansion of the product lines.

It remains to be seen if the court will be convinced that four stripes on a garment infringes the Three Stripes Mark. However, if Plaintiffs are unsuccessful in their trademark infringement claim, they may still be successful in their dilution claim.

Trademark Dilution

The complaint also alleges that the Three-Stripe Mark is famous, and that its unauthorized use by Defendant dilutes its distinctiveness in violation of 15 U.S.C. § 1125(c), which entitles the owner of a famous mark to an injunction against a third party using a mark in commerce “that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury.”

Since October 2006, when the Trademark Dilution Revision Act was enacted, a Plaintiff only needs to prove a likelihood of dilution, not an actual dilution. The Act defines a famous mark as a mark “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,” which may be determined by the courts using several factors, such as the duration, extent, and geographic reach of advertising and publicity of the mark, the amount, volume, and geographic extent of sales of goods or services offered under the mark, and the extent of actual recognition of the mark. The Three-Stripes Mark is certainly famous, and is also certainly distinctive.

Dilution by blurring is defined by 15 U.S.C. § 1125(c) as an “association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark.” The law lists several factors which may be used by the courts to determine whether the junior mark is likely to cause blurring, including the degree of similarity between the mark or trade name and the famous mark, the degree of inherent or acquired distinctiveness of the famous mark, the extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark, the degree of recognition of the famous mark, whether the user of the mark or trade name intended to create an association with the famous mark, and any actual association between the mark or trade name and the famous mark.

Therefore, even if the court would find that the stripes on the Marc Jacobs jacket do not infringe Plaintiffs’ trademark, the court may still find that they are so similar as to dilute the Three-Stripes Mark.

Image is Courtesy of Flickr user Kick Photo under a CC BY-ND 2.0 license.

Filed Under: Fashion Law, Trademark · Tagged: Fashion Law, Trademark Dilution, Trademark Infringement

Fox News Files Motion for Interlocutory Appeal in 9/11 Photo Fair Use Case

April 14, 2015 · by marie-andree@maw-law.com ·

Readers of this blog may remember that Judge Edgardo Ramos from the Southern District of New York (SDNY) denied on February 10, 2015 Fox News Network’s motion for summary judgment in a copyright infringement suit filed by the copyright holder of an iconic 9/11 photograph. Fox News had unsuccessfully moved for summary judgment, claiming fair use.

Fox News (Defendant) has now filed on March 19 a motion to certify the February 10, 2015 opinion and order for immediate appeal, under 28 U.S.C. § 1292(b), which gives a district judge the power to certify an order of interlocutory appeal , if he believes that “such order involves a controlling question of law as to which there is substantial ground for difference of opinion and that an immediate appeal from the order may materially advance the ultimate termination of the litigation.” Under Second Circuit case law, cited by Defendant, a question of law is controlling if the certified order would terminate the action, or could significantly affect the conduct of the action, or if the issue has precedential value for a large number of cases.

Fox News is arguing that the February 10, 2015 order is presenting the controlling question of law of whether…

“For fair use purposes, whether a secondary user may transform a visual work by placing that work in a new context and for a new purpose, without substantial physical alterations.”

Fox News calls this area of law “murky” and further notes that “guidance is sorely needed” as “the use of visual works on social media… is widespread.”

Transformative Qualities of Social Media

Fox is asking the Second Circuit to recognize a “context-sensitive test” for transformative use, and claims that social media is “transformative by design.” It argues that “transformative qualities of social media are not taken into account when considering a fair use defense” and that the “use’s particular context” should be taken into account in fair use cases. Such finding would have “massive implications for the millions of Americans who use social media on a regular basis.” Fox News also claims that not considering the use of protected works on social media to be fair “would effectively proscribe a wide swath of ongoing online speech. The public has a strong interest in having these fundamental free-speech concerns addressed at the earliest possible juncture. ”

Defendant further argues that it had used Plaintiff’s photo “in an inherently transformative context: on social media.” As social media is not one-way to communication, but rather, a way to share ideas, expression on social media “is thus inherently intertwined with comments and criticism,” two of the purposes expressively mentioned by Section 107 of the Copyright Act.

While this argument alone appears overbroad, as agreeing with it would allow for almost any use of copyrighted work on social media, Fox narrows the argument further along in its memorandum when arguing that interlocutory review is warranted because the order “implicate[d] fundamental free-speech questions,” as its and others’ speech may be chilled “from using copyrighted content on social media to discuss issues of public concern.”

Difference of Opinion Over Appropriate Standard for Transformation of Visual Works

Defendant also argues that certification is warranted because the fair use jurisprudence of the Second Circuit is divided. While cases such as Swatch Grp. Mgmt. Servs. Ltd. v. Bloomberg L.P., and Bill Graham Archives v. Dorling Kindersley Ltd. held that a use can be transformative even if the copyrighted work has not been altered, the Second Circuit placed great weight on transformative use in Cariou v Prince. Defendant also cited the Second Circuit Authors Guild, Inc. v. Hathitrust case, where the court asserted that “[a]dded value or utility is not the test: a transformative work is one that serves a new and different function from the original work and is not a substitute for it” (at 96).

Transformative Content or Transformative Purpose?

Fox News is arguing that Judge Ramos relied on Cariou, which conflicts with Bill Graham. It cites ablog post written by Professor Rebecca Tushnet , where she noted that, in Cariou, “the court, despite speaking of purpose, seemed to require transformation of content, contrary to the aims of much appropriation art” and also wrote that “Fox’s purpose… [of use] was an issue of fact, not indisputably different as the publisher’s was in Bill Graham Archives.” Indeed, in Bill Graham, the Second Circuit found that a publisher’s purpose in using copyrighted images of posters in its biography of the Grateful Dead was “plainly different from the original purpose for which they were created” (at 609) and was fair use.

Is publication on social media, a new context for the work, enough to warrant finding of a different purpose? Probably not, but the issue of the respective weight of transformative content and transformative purpose for fair use analysis purpose warrants further discussion in court. Many copyright practitioners and scholars are now rooting for Fox’s motion to be granted, hoping it will lead to another Second Circuit fair use case, which may clarify Cariou.

This blog post was first published on The 1709 Blog.

Image is courtesy of Flickr user Heather Paul under a CC BY-ND 2.0 license.

Filed Under: Copyright, Fair Use ·

Dentist Claiming to Own Copyright in Patient’s Negative Comments about Her Misused Copyright Law

March 24, 2015 · by marie-andree@maw-law.com ·

Going to the dentist is not particularly pleasant, but, at least, one does not usually expect to have to consult a copyright attorney before sitting in the chair.

However, patients of a Manhattan dentist had to sign, before being able to receive any treatment, including emergency treatment, a confidentiality agreement which assigned to the dentist and her dental practice a copyright over any comments made about her or her practice.

One of these patients was not satisfied by Defendant’s dental services and wrote about his dissatisfaction on Yelp and other sites allowing users to comment about services. According to the complaint, Defendant unsuccessfully asked these sites to remove Plaintiff’s comments, sent Plaintiff invoices purporting to charge $100 per day for the posting of these comments, and threatened to file a copyright infringement, breach of contract, and defamation suit if the comments were not removed from the sites.

Several of the dentist’s patients filed a class action suit in November 2011 in the Southern District of New York (SDNY), claiming that, even if Defendant does indeed own the copyright in these comments, they were not infringing under the fair use defense of Section 107 of the Copyright Act. Defendant moved to dismiss but the motion was denied on March 27, 2013, by Judge Paul A. Crotty from the SDNY.

On February 27, 2015, Judge Crotty rendered a default judgment in favor of Plaintiff. The case is Lee v. Makhenevich, 1:11-cv-08665 (SDNY).

For Judge Crotty, the comments posted by Plaintiff were not infringing as they were fair use. Also, for the SDNY,

“[o[btaining the promise by plaintiff… in the [m]utual [a]greement to [m]aintain [p]rivacy… not to publish criticism of defendants, the [a]greement’s purported assignment of copyrights, and the assertion of copyright claims by defendants for the express purpose of preventing the dissemination of [plaintiff]’s [c]ommentary, constitute breaches of fiduciary duty and violations of dental ethics and are subject to the equitable defenses of unclean hands, and, as to such assignment and assertion, constitute copyright misuse.”

Judge Crotty also ruled that

“[Plaintiff]’s assignment and promise in the [a]greement not to publish criticisms of defendant… are null and void for lack of consideration… [that Plaintiff]’s assignment and promise in the [a]greement not to publish criticisms of defendants are null and void for unconscionability… [that] [t]he [a]greement is a deceptive act or practice in violation of Section 349(a) of the New York General Business Law… and [that] [Plaintiff’]’s [c]ommentary is not actionable defamation under New York common law. “

I will only write about the copyright issues in this case.

Using Copyright to Suppress Speech

This case is interesting because it is a textbook example of a case where a party is using copyright to attempt to suppress speech.

The agreement signed by Plaintiff read, in part, that in consideration for the dentist to agree not to provide any lists of patients or personal information to any marketing companies, the patient would “assign… all Intellectual Property rights, including copyrights, to Dentist for any written, pictorial, and/or electronic commentary.” The agreement claimed that dentists are able to provide such information to third parties because of a “loophole” in HIPAA, the federal medical data privacy law, and added further that “Dentist feels strongly about Patient’s privacy as well as the Practice’s right to control its public image and privacy.” The agreement would last five years from the date of the dentist’s last service to the patient, or three years after the termination of the dentist-patient relationship.

HIPAA, however, forbids covered entities, such as MDs and dentists, from disseminating patient information for marketing purpose, so there is no need for such agreement to protect patient’s privacy. The complaint argued that, since there are no “loopholes” in HIPAA, the assignment was null and void for lack of consideration. Judge Crotty agreed.

In his March 2013 order, Judge Crotty referred to all these actions as “aggressive and threatening conduct.” Indeed they were.

After Plaintiff had published negative comments on both Yelp and DoctorBase, he first received a letter from “North East PC/Attn Urgent/Legal” [catchy title, eh?] threatening him with a $100 000 lawsuit because he had violated the agreement. The letter, signed “Corporate Practice”, informed Plaintiff that the letter “shall serve [him] as the only notice prior to litigation” and contained a draft of a complaint which appeared ready to be filed, if the Plaintiff did not comply with the letter’s demands. The office of the dentist also sent Yelp and DoctorBase DMCA takedown notices, telling them that the dentist owned the copyright in the comments and asking them to take the comments down.

On October 17, 2011, Plaintiff received a letter from Defendant’s attorney, which stated that his comments posted online included damaging inferences which denigrate, defame, and cast aspersions upon the dentist and the dental office” and that “according to The Ethics of Medical Justice / Dental Justice Agreements, under the Code of Internet Ethics, your comments are not considered constructive commentaries but rather as personal attacks to the office’s well-being and reputation.” Medical Justice is the company which had written the agreement used by Defendant. The Center for Technology and Democracy filed a complaint in November 2011 with the Federal Trade Commission asking it to investigate Medical Justice, and the company has since stopped proposing such agreements to dentists and MDs.

Copyright Registration

But after having claimed that the comments infringed her copyright, and after having threatened to sue Plaintiff for copyright infringement, Defendant argued that there could not be a copyright infringement suit at all. In her memorandum of law to support her motion to dismiss, Defendant had claimed that the suit had to be dismissed because a copyright registration is a pre-requisite to any copyright infringement suit, but that Defendant had not registered her copyright in the comments.

Judge Crotty noted though, in his March 2013 order, that Plaintiff does not claim that his own copyright has been infringed, but, rather, that his comments “about Defendants’ hardly defensible practices are subject to copyright protection. Defendant’s argument that the copyright must be registered before relief turns the law upside down.”

Fair Use

Instead, Plaintiff claimed that “non-commercial use of copyrighted materials for criticism and comment is a paradigmatic fair use that is not infringing” and that “[t]he posting of [his comments]… can have no effect on their potential market or value because no such value exists.” On February 27, Judge Crotty agreed on that point.

Misuse

Plaintiff also sought a declaration that the agreement’s promise not to publish criticisms, the purported acquisition of copyrights in the comments, and the assertion of copyright claims, constituted breaches of fiduciary duty, violations of dental ethics, and were subject to the equitable defenses of unclean hands and copyright misuse.

Judge Crotty agreed with Plaintiff on these points as well, and awarded him $4,766 in damages.

This post was originally published on The 1709 Blog.

Filed Under: Copyright, Fair Use · Tagged: Copyright, Fair Use, SDNY

La CNIL Publie Une Fiche d’Information sur le BYOD

March 24, 2015 · by marie-andree@maw-law.com ·

La Commission Nationale de l’Informatique et des Libertés (CNIL) a publié le mois dernier une fiche d’information sur les bonnes pratiques ” BYOD ».

BYOD est l’acronyme de ” Bring Your Own Device, dont l’équivalent français est ” AVEC, c’est à dire ” Apportez Votre Equipement personnel de Communication », et qui désigne la pratique pour les employés d’apporter leurs outils de communication personnels dans l’entreprise et de les utiliser à des fins professionnelles.

Les employés connectent ainsi leur ordinateur portable ou leur tablette au système informatique de l’entreprise et les utilisent afin de créer des documents professionnels, ou bien …read more

Filed Under: Cyber High and Law ·

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La CNIL Publie Une Fiche d’Information sur le BYOD

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