Trademark

National Security Agency v. McCall

Date: 

03/15/2011

Threat Type: 

Correspondence

Party Receiving Legal Threat: 

Dan McCall

Type of Party: 

Government

Type of Party: 

Individual

Court Type: 

Federal

Court Name: 

United States District Court for the District of Maryland

Case Number: 

1.13-cv-03203-MJG

Verdict or Settlement Amount: 

$500.00

Legal Counsel: 

Ezra Gollogly; Paul A. Levy; Scott L. Nelson

Publication Medium: 

Website

Relevant Documents: 

Status: 

Concluded

Disposition: 

Settled (total)

Description: 

McCall is a designer who creates parodies of the official seals of the National Security Agency ("NSA") and the Department of Homeland Security ("DHS") for use on T-shirts, mugs and similar merchandise. Merchandise containing McCall's designs were offered for sale on a website owned and hosted by Zazzle, Inc. In March 2011, Zazzle received a letter from the NSA, and in August 2011, an email from DHS, indicating that several different images offered by Zazzle, including those created by McCall, were in violation of federal law. Specifically, the NSA letter indicated that McCall's NSA parodies were in violation of 50 U.S.C. § 3613, prohibiting the misuse of federal agency names, initials, or seals. The DHS letter indicated that McCall's DHS parodies were in violation of 18 U.S.C. §§ 506, 701, and 1017, which similarly prohibit the wrongful use of seals of federal departments or agencies.

Thereafter, McCall filed a complaint for declaratory relief against the NSA and DHS regarding the designs which were the subject of the agency communications. In the complaint, McCall claimed that his parodies were not in violation of any federal law, as his use of the images of the NSA and DHS seals did not create any likelihood of confusion about the source or sponsorship of the materials on which they were available to be printed. McCall further claimed that the statutes cited by NSA and DHS must be construed narrowly to permit parodic use of the agencies' names and seals to avoid conflict with the First Amendment.

In February 2014, McCall entered into a settlement agreement ("Agreement") with both NSA and DHS. In the Agreement, the parties agreed to the following:

  • McCall acknowledges that the Agreement is the result of a compromise and is not an admission by the United States of any liability or responsibility.
  • McCall agrees to file a notice of voluntary dismissal to dismiss the Complaint with prejudice.
  • NSA and DHS agrees to formally issue a letter to Zazzle and McCall indicating that they were not in violation of any federal law.
  • Counsel for NSA and DHS will request from the United States Treasury Judgment Fund one check in the amount of $500 made payable to McCall for the court costs incurred by the plaintiff.

Subject Area: 

Jurisdiction: 

Dardenne v. MoveOn.org

Threat Type: 

Lawsuit

Date: 

03/14/2014

Party Receiving Legal Threat: 

MoveOn.org

Type of Party: 

Government

Type of Party: 

Organization

Court Type: 

Federal

Court Name: 

United States District Court, Middle District of Louisiana

Case Number: 

3.14-cv-00150-SDD-SCR

Legal Counsel: 

Stephen G. Bullock; Dara Lindenbaum; Joseph E Sandler; Lesli D. Harris; Matthew S. Almon

Publication Medium: 

Other

Relevant Documents: 

Status: 

Pending

Disposition: 

Injunction Denied

Description: 

MoveOn.org is a public policy advocacy group and political action committee. On March 4, 2014, MoveOn.org caused a billboard to be placed along an Interstate Highway in Louisiana. This billboard was meant to draw attention to a political statement directed at the Office of the Governor of Louisiana. The billboard also contained a photograph of a crawfish taken from the Louisiana Department of Culture, Recreation and Tourism's ("Department") website.

The Department issued a cease and desist letter claiming that the billboard contained a substantial and colorable imitation of a state service mark created, trademarked and used by the Office of the Lieutenant Governor of Louisiana. MoveOn.org then began running a television advertisement that included a photograph of the Billboard and posted a YouTube video of the commercial. Thereafter, Jay Dardenne, in his official capacity as Lieutenant Governor of the State of Louisiana and commissioner of the Department, filed a complaint against MoveOn.org alleging violations of Louisiana and federal trademark laws. Specifically, Dardenne cited violations of:

  1. La. R.S. 51:222
  2. La. R.S. 51:223.1
  3. 15 U.S.C. § 1051 et seq.

Dardenne moved for a preliminary injunction, arguing that the television commercial and YouTube video constituted trademark infringement under Louisiana and federal trademark laws because the imitation of the service marks, together with the photograph taken from the Department's website, was likely to cause confusion or mistake as to the origin of the message of the billboard. Dardenne further asserted that infringement of the service marks by MoveOn.org did not constitute a protected parody claiming that the subject of the billboard, Governor Bobby Jindal, was not the creator of the service marks. Alternatively, Dardenne claimed that MoveOn.org was utilizing more of the service marks than was necessary to achieve its parody so as to suggest affiliation, sponsorship, or endorsement of the billboard by the Office of the Lieutenant Governor.

In its memorandum in opposition to the motion for preliminary injunction, MoveOn.org stated that the law allows trademarks to be used for parodic purposes. Furthermore, MoveOn.org argued that to establish infringement under both federal and Louisiana law, plaintiff must prove a likelihood of consumer confusion. MoveOn.org claimed that the plaintiff could not do this because no reasonable person viewing the advertisement, which was harshly critical of the state, could believe the billboard was conveying a message from the state itself. MoveOn.org also argued that its use of a modified version of the service mark was strongly protected because it was an expressive use for non-commercial purposes and that the service mark belonged to the State of Louisiana, which was the target of the parodic use.

On April 7, 2014, the court ruled that the plaintiff had not demonstrated a substantial likelihood of prevailing on its burden of proving a likelihood of confusion among viewers of the billboard. Furthermore, the court concluded that the plaintiff had failed to demonstrate a compelling reason to curtail MoveOn.org's political speech in favor of protecting of the State's service mark. Finally, court concluded that the plaintiff failed to demonstrate that injective relief was required to ameliorate irreparable injury. Accordingly, the motion for a preliminary injunction was denied.

Subject Area: 

Jurisdiction: 

Craigslist v. 3taps

Date: 

07/20/2012

Threat Type: 

Lawsuit

Party Receiving Legal Threat: 

3taps, PadMapper

Type of Party: 

Organization

Type of Party: 

Organization

Court Type: 

Federal

Court Name: 

United States District Court for the Northern District of California: San Francisco Division

Case Number: 

3:12-cv-03816-CRB

Legal Counsel: 

3taps: Allen Ruby (Skadden, Arps, Slate, Meagher & Flom LLP), Christopher J. Bakes (Locke Lord LLP); PadMapper: Venkat Balasubramani (Focal PLLC)

Publication Medium: 

Website

Relevant Documents: 

Status: 

Pending

Disposition: 

Dismissed (partial)
Lawsuit Filed

Description: 

Craigslist is a classified advertisements website with one section of its site dedicated to housing. With a simple design that has not been significantly updated since its creation, craiglist allows users to post (among other things) apartment rental listings. In order to make the material on craigslist more user-friendly, PadMapper takes the information from craigslist's apartment listings and plots these on an easily searchable map, adding search filters. 3taps is a startup committed to collecting and distributing public data, which partnered with PadMapper to assist with its access to the apartment information on craigslist.

In response to their use of craigslist's listings, craigslist sent PadMapper a cease and desist letter. After PadMapper refused to comply, craigslist filed a complaint in the U.S. District Court for the Northern District of California on July 20, 2012, against PadMapper and 3Taps. In its complaint, craigslist asserted ten claims for relief, including contract (asserting breaches of craigslist's terms of use), copyright, and trademark/unfair competition claims.

3taps answered the complaint on September 24 and filed a counterclaim, asserting claims of antitrust violations, unfair competition, and interference with economic advantage. Overall, 3taps' defense and counterclaims focused on the premise that the facts drawn from craigslist's website are not craigslist's property, but in public domain, and that craigslist has maintained an unlawful monopoly through sham lawsuits, copyright misuse, improperly restrictive terms of use, and "ghosting." In its answer on October 30, PadMapper raised similar counterclaims alleging anticompetitive conduct by craigslist.

Craigslist filed a first amended complaint on November 20, 2012. In this amended complaint, craigslist added seven additional claims, for a total of 17. The claims were as follows (with new claims in italics)

  1. Trespass: Defendants have gained unlawful access to and interfered with craigslist's computer system, servers, and network.
  2. Breach of Contract: Defendants affirmatively accepted and agreed to be bound by the Terms of Use, which they willfully, repeatedly and systematically breached by accessing the craiglist website to copy and distribute the content posted therein.
  3. Misappropriation: As competitors with craigslist, Defendants wrongfully accessed craigslist's website and computer systems to make craigslist's content available to their customers, constituting free-riding on craigslist's substantial investment of time, effort, and expense.
  4. Copyright Infringement: Defendants reproduced and distributed the copyrighted material on the craigslist website without authorization from the copyright holder, craigslist.
  5. Contributory Copyright Infringement (against 3taps): 3taps provides its users with copies and derivative works of craigslist's copyrighted works without craigslist's consent, and knowingly permits its users to copy, reproduce, and prepare derivative works from the copyrighted works.
  6. Federal Trademark Infringement: Defendants' unauthorized use of the CRAIGSLIST mark in interstate commerce in connection with the sale or advertising of goods is likely to cause consumer confusion.
  7. Federal False Designation of Origin: Defendants' unauthorized use of the CRAIGSLIST mark is likely to create the false and misleading impression that Defendants' products or services are provided or sponsored by craigslist.
  8. Federal Dilution of a Famous Mark (against 3taps): CRAIGSLIST is a famous and distinctive mark, and 3taps' use of the mark is likely to cause dilution by blurring, particularly depleting the strength of the mark by impairing its distinctiveness.
  9. Federal Cyberpiracy Prevention (against 3taps): 3taps' use of CRAIGGERS in the craiggers.com domain is confusingly similar to and dilutive of the famous, registered CRAIGSLIST mark.
  10. California Trademark Infringement: Defendants' unauthorized use of the CRAIGSLIST mark in connection with the sale or advertising of goods/services in California is likely to cause confusion as to the source and/or sponsorship of the goods/services.
  11. Common Law Trademark Infringement: Defendants' unauthorized use of the CRAIGSLIST mark is likely to cause confusion as to the source and/or sponsorship of the goods/services.
  12. California Unfair Competition: Defendants have engaged in unfair business practices, injuring craigslist's business, reputation, and trademarks.
  13. Violations of the Computer Fraud and Abuse Act: Defendants accessed craigslist's computers and servers without authorization or in excess of authorization and obtained valuable information in transactions involving interstate or foreign communications.
  14. California Comprehensive Computer Data Access and Fraud Act: Defendants accessed and copied data from craigslist's computer systems and servers without authorization.
  15. Aiding and Abetting Trespass (against 3taps): 3taps has encouraged and facilitated access to craigslist's computers by supporting the collection, transfer, and storage of craigslist's content.
  16. Aiding and Abetting Misappropriation (against 3taps): 3taps has knowledge that the time-sensitive "scraped" craigslist content they provide PadMapper is to compete with craigslist, therefore aiding PadMapper's misappropriation.
  17. Accounting: As Defendants have benefited financially as a result of their misconduct at craigslist's expense, craigslist is entitled to a full accounting to determine the amount of money due to craigslist.

In response, PadMapper and 3taps amended their counterclaims on December 21. PadMapper updated its counterclaims to include (attempted) illegal maintenance of a monopoly in violation of the Sherman Act and California unfair business practices, and to seek declaratory relief for noninfringement of craigslist's copyrights. 3taps alleged similar counterclaims, including multiple monopoly and contract claims under the Sherman Act, California unfair competition, and interference with economic advantage.

PadMapper and 3taps also filed motions to dismiss on December 21, 2012. PadMapper, which first filed a motion to dismiss on October 30, 2012, amended this motion to dismiss craigslist's claims for trespass (claim 1), breach of contract (2), federal trademark infringement (6), federal false designation of origin (7), California trademark infringement (10), and common law trademark infringement (11). PadMapper argued that the Copyright Act preempts the breach of contract claim and that craigslist failed to state a trespass claim against PadMapper. PadMapper also argued that the four trademark claims are precluded under the U.S. Supreme Court's decision in Dastar v. Twentieth Century Fox Film, which narrowed the scope of the Lanham Act so not to cover claims where the core issue is a copyright claim, primarily the improper reproduction of copyrighted material.

3taps moved to dismiss craigslist's claims of copyright infringement (claim 4), contributory copyright infringement (5), violations of the Computer Fraud and Abuse Act (13), and California Comprehensive Computer Data Access and Fraud Act (14). With respect to the copyright claims, 3taps argued that craigslist has no standing to assert copyright infringement of user-generated content and its asserted copyright registrations are invalid. 3taps also argued that the statutory elements of the CFAA and California statute could not be satisfied, as establishing unauthorized access requires proof of hacking which craigslist judicially admitted did not occur.

In an opposition filed on January 31, 2013, craigslist reasserted the sufficiency of its pleadings and the validity of its copyrights. PadMapper and 3taps replied in support of their respective motions to dismiss on February 13.

On February 8, 2013, noting the complexity of the lawsuit, craigslist filed a motion to bifurcate and stay Defendants' amended counterclaims pending resolution of craigslist's claims. Craigslist argued that the counterclaims would be made moot or significantly narrowed if craigslist prevailed on its claims, and consideration of the antitrust counterclaims in conjunction with craigslist's claims would increase the legal and factual complexity of the case, delaying the proceedings. PadMapper and 3taps both opposed this motion on March 1. The defendants argued that the claims at issue are intertwined and would not be rendered moot if craigslist prevails, such that bifurcation would be inappropriate. The defendants further argued that a decision on bifurcation would be premature, and a stay of discovery would result in prejudice. In a reply on March 15, craigslist maintained that resolving craigslist's claims would at least streamline the antitrust claims, while the balance of potential prejudice weighs heavily towards bifurcation. Craigslist also argued that the motion was not premature and the bifurcation should occur before the start of discovery.  

On April 29, 2013, Judge Charles Breyer issued an order granting in part and denying in part the defendants' motions to dismiss, and granting craigslist's motion to bifurcate.  The district court denied 3taps' motion to dismiss the Computer Fraud and Abuse Act and California Comprehensive Computer Data Access and Fraud Act claims, noting that the defendant's continued access after clear statements regarding authorization in the cease and desist letters and terms of use sufficiently constitutes unauthorized access under these statutory provisions. The Court also denied PadMapper's motion to dismiss the trespass claim and the breach of contract claim, which it it ruled was not preempted by the Copyright Act. PadMapper's motion to dismiss the trademark claims was also denied, as the Court held that they were not precluded by Dastar. With respect to the copyright claims, the Court held that craigslist sufficiently established the originality of the compilation of the posts to warrant copyright protection, even in the individual posts themselves, and sufficiently registered copyright for this content.

However, the Court ruled that craigslist was the exclusive licensee of this content only from July 16, 2012 through August 8, 2012, during which period users were presented with a notice to click confirming craigslist's position as the exclusive licensee of the post. Outside of those weeks when the exclusive license confirmation statement was in use, the court found that craigslist could not sue for copyright infringement. Accordingly, the Court granted the motions to dismiss the copyright claims with respect to user-created posts submitted before July 16 or after August 8, 2012. Lastly, the Court concluded that "the likelihood of streamlining discovery for and adjudication of the antitrust counterclaims based on the outcome of Craigslist's claims-even if those counterclaims must ultimately proceed-warrants bifurcation," and therefore granted craigslist's motion to bifurcate and stay discovery on the antitrust counterclaims.

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Subject Area: 

Jurisdiction: 

Copyright of “Public Facts”: Craigslist v. PadMapper

Craigslist was meant for the common good, or as founder Craig Newmark puts it, “doing well by doing good.”  At least, that has been its announced mission since it began as an email distribution among friends.

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Jurisdiction: 

Pinterest: Fair Use of Images, Building Communities, Fan Pages, Copyright

When using Pinterest (and Flickr and YouTube and Facebook and on and on), what copyright, fair use, trademark and other issues weigh on building communities and corporate use of fan pages and social media generally?  A hypothetical “Company” has plans for its Pinterest “community”, and in particular, wonders about these situations:

  • Using Images of Identifiable People
  • Fair Use and Images
  • Trademarks: When is a “Fair Use” Argument Strongest?
  • Why Attribution and Linking to Original Sources is Important

3 introductory questions:

Question #1: Someone used to be a paid Company sponsor or spokesperson.  They are no longer.  Can the Company continue to post a photo of the old sponsor to Pinterest? Short Answer: If the contract with the sponsor expressly permits it, yes.  Ordinarily, the contract would specify engagement for limited time, and that would prohibit rights to use images beyond the contract period.  But it really depends on what the contract says.

Question #2: Can the Company post a photo of a fan of the Company? Short Answer: Express consent is required, either through a release or the fan’s agreement (whenever the photo is submitted) to terms of service.  Exceptions are discussed below.

Question #3: Can the Company post a photo of a Coca-Cola bottle on its Pinterest page? Short Answer: If the use of the image does not suggest (implicitly or explicitly) endorsement or association, then yes.

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Jurisdiction: 

DMLP Victory! Mass. Appeals Court Finds No Trademark Infringement in Critical Website

 (This piece is co-authored by Jeff Hermes and Andy Sellars)

The DMLP is pleased to announce that the Massachusetts Appeals Court has ruled in favor of the result we advocated in an amicus brief in Jenzabar v. Long Bow Group, Inc

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Jurisdiction: 

Olympic Citius Altius Fortius Pan-American: The U.S. Olympic Committee's Exclusive Rights

The U.S. Olympic Committee ("USOC") has a reputation for aggressively policing their exclusive rights to certain words, phrases, and symbols. And they have a special act of Congress to back them up.

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Content Type: 

Charles Carreon v. Matthew Inman, et al.

Date: 

06/15/2012

Threat Type: 

Lawsuit

Party Receiving Legal Threat: 

Matthew Inman, Indiegogo, Inc., National Wildlife Federation, American Cancer Society, and Does 1-100

Type of Party: 

Individual

Type of Party: 

Individual
Organization
Large Organization

Court Type: 

Federal

Court Name: 

U.S. District Court, Northern District of California

Case Number: 

3:2012-cv-03112

Legal Counsel: 

Attorney Venkat Balasubramani (for Defendant Inman); Attorney Sarah T. Grilli (for Defendant American Cancer Society); Attorney Richard L. Grossman (for Defendant American Cancer Society); Attorney Mark Allan Lemley (for Defendant Indiegogo, Inc.); C

Publication Medium: 

Website

Relevant Documents: 

Status: 

Concluded

Disposition: 

Dismissed (total)

Description: 

Charles Carreon is an attorney, who was retained by FunnyJunk, LLC, on matters related to the website FunnyJunk.com. On June 2, 2012, Carreon sent a letter on behalf of FunnyJunk to Matthew Inman, creator of TheOatmeal.com, which threatened legal action and demanded $20,000 on the basis of a blog post. For more information about this correspondence, see FunnyJunk, LLC vs. TheOatmeal.com.

On June 12, 2012, Inman posted an informal response to the June 2 letter on TheOatmeal.com. The post, inter alia, announced that Inman planned to raise $20,000 in donations, and that he would donate the money to the National Wildlife Federation and the American Cancer Society. A link at the bottom of the post directed readers to a page on Indiegogo.com, a fundraising website. By its conclusion, the fundraising effort generated $220,024. 

On June 15, 2012, Carreon filed a lawsuit against Inman, Indiegogo, Inc., the National Wildlife Federation, the American Cancer Society, and 100 anonymous Internet users based on the fundraising effort and other events allegedly caused by Inman. 

According to Carreon's initial complaint, he suffered a number of online attacks as a result of Inman's actions, including an attempt to reset the password to his website, and the creation of a Twitter account with the handle @Charles_Carreon. 

Carreon alleged several causes of action including trademark infringement, unfair competition, impersonation, and incitement to commit cybervandalism. Carreon also alleged that Inman and Indiegogo, Inc. had failed to file forms required by Cal. Gov. Code §§ 12580, et seq. and Cal. B&P Code §§ 17510, et seq., and were thereby conducting the fundraising effort unlawfully. Carreon further sought to impose a trust on the proceeds of the fundraising effort. 

Carreon alleged that the tweets published by an unknown user from the @Charles_Carreon account were a violation of the trademark he holds on his name, and that the attempt to reset the password to his website constituted a trespass to chattels. He claimed that Inman had incited cybervandalism through the fundraising campaign and other postings. 

On June 18, 2012, an anonymous individual registered the username "Modelista" on Ars Technica and commented on an Ars Technica post that he or she ran the @Charles_Carreon Twitter account. 

On June 25, 2012, Carreon filed an amended complaint. In the amended complaint, Carreon named California State Attorney General Kamala Harris as a party to the case to facilitate judgment on his claim for imposition of a trust. Carreon also named "Modelista" as the Doe defendant responsible for the @Charles_Carreon Twitter account.

On June 30, 2012, Carreon filed a motion for a temporary restraining order in an effort to prevent the disbursement of the funds generated by the fundraiser to Inman or any other entity, as well as a memorandum in support of the motion.  

On July 1, 2012, Indiegogo, Inc. filed an opposition to the motion stating that funds had been disbursed to the American Cancer Society and the National Wildlife Fund by check on June 29, 2012 and that this rendered Carreon's motion for a temporary restraining order moot.  

On July 2, 2012, the court entered an order requiring that Inman file proof of the delivery of the checks to the two charities. 

On July 3, 2012, Carreon filed a notice of voluntary dismissal.  

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Jurisdiction: 

Hermès International v. Does

Date: 

02/29/2012

Threat Type: 

Lawsuit

Party Receiving Legal Threat: 

John Does 1-100; XYZ Companies

Type of Party: 

Large Organization

Type of Party: 

Individual
Organization

Court Type: 

Federal

Court Name: 

United States District Court for the Southern District of New York

Case Number: 

1:12-cv-01623-DLC

Verdict or Settlement Amount: 

$100,000,000.00

Publication Medium: 

Website

Relevant Documents: 

Status: 

Concluded

Disposition: 

Default Judgment
Injunction Issued

Description: 

On March 6, 2012, Hermès International and its subsidiary Hermès of Paris filed a complaint (which had been prepared for February 29, 2012) in the U.S. District Court for the Southern District of New York against 34 websites that allegedly sold counterfeit Hermes bags, scarves, and other Birkin products. In the complaint, eight of the defendants were identified by name and served by email, while the remaining individuals and companies remained anonymous. Hermès's complaint alleges nine causes of action:
  1. Federal trademark counterfeiting violating the Lanham Act §§ 32(a)-(b)
  2. Federal trademark infringement violating the Lanham Act § 32
  3. Cybersquatting under the Anticybersquatting Consumer Protection Act
  4. Trade dress infringement and false designation of origin violating the Lanham Act § 43(a)
  5. Federal trademark dilution violating the Lanham Act § 43(c)
  6. Trademark dilution violating the N.Y. General Business Law § 360
  7. Deceptive acts and practices unlawful violating the N.Y. General Business Law §§ 349-350
  8. Trademark infringement violating New York state common law
  9. Unfair competition violating New York state common law

Hermès requested 100 million dollars in damages, alleging damages in the amount of two million dollars per trademark that was counterfeited or infringed.

After reviewing Hermès's complaint, District Court Judge Cote granted a temporary restraining order against the defendants on March 6, 2012. At this time, Judge Cote also established a March 16, 2012 deadline for the defendants to file an answer and ordered that they appear in court to show cause on March 20, 2012. The order also permitted service by email, which was verified on March 8, 2012.

On March 21, 2012, Judge Cote ordered a preliminary injunction against the defendants regarding the use of the Hermès trademarks and granted domain name seizure on an ex parte basis.

Hermès further filed a motion for default judgment against all of the defendants on April 13, 2012. In this motion, Hermès argued that that the defendants' failure to appear justifies the entry of a default judgment, in the form of enhanced statutory damages of 100 million dollars and permanent injunctive relief. On the same day, Hermès's attorney, Joseph C. Gioconda, filed a declaration in support of Hermès's motion for default judgment.

On April 19, 2012, Judge Cote issued to the defendants an order to show cause by appearing on April 27, 2012 to defend against an entry of default judgment. None of the defendants responded or appeared, and therefore on April 27, 2012, less than two months after the original complaint was filed, Judge Cote granted Hermès's motion for default judgment. Judge Cote awarded Hermès 100 million dollars in statutory damages and permanently injoined the defendants from use of the Hermès trademarks, designs, and/or domain names.

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DMLP Amicus Update: Narrow Victory in Massachusetts Anti-Counterfeiting Case

The DMLP recently appeared as an amicus curiae in Commonwealth v. Busa, a case brought in Boston Municipal Court under Massachusetts's anti-counterfeiting law, M.G.L. ch. 266 § 147 ("Section 147").

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DMLP files Amicus Brief Against Massachusetts's 'Anti-Counterfeiting' Law

Earlier this week the CMLP (under its new name, the Digital Media Law Project) sought leave to file an amicus brief in Boston Municipal Court in the case of Commonwealth v. Busa, which concerns a prosecution under Massachusetts's anti-counterfeiting law, M.G.L.

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Jenzabar v. Long Bow: Oral Argument Focuses on Initial Interest Confusion and Search Engine Results

This morning Jeff and I had the pleasure of watching the Massachusetts Appeals Court argument in Jenzabar, Inc. v. Long Bow Group, Inc.  As we mentioned once before on this blog, the CMLP filed an amicus brief in this case with the assistance of Harvard Law School's Cyberlaw Clinic.

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Kessler International v. Citizen Media Law Project

Date: 

03/14/2012

Threat Type: 

Correspondence

Party Receiving Legal Threat: 

Citizen Media Law Project

Type of Party: 

Organization

Type of Party: 

Organization

Publication Medium: 

Blog
Forum

Relevant Documents: 

Description: 

Kessler International ("Kessler") is a forensic accounting and brand protection company, and claims ownership in the USPTO-registered trademark FRAUDBUSTER, in multiple fields related to forensic accounting news and services.

 On March 14, 2012, Kessler sent a a cease and desist letter to the Citizen Media Law Project ("CMLP," the project that operates this threats database), claiming that the CMLP is committing trademark infringement and dilution by hosting a user who selected the username "fraudbuster." The letter demands that the CMLP remove the word "fraudbuster" from the website and pay Kessler for any profits attributable to use of the word "fraudbuster."

On March 21, 2012, the Cyberlaw Clinic at Harvard Law School responded on behalf of the CMLP. The CMLP noted that the word only appears twice on the CMLP website, and is used solely for its non-trademark meaning. The CMLP asserts that trademark law does not prohibit the expressive selection of a username in this context, and also notes several other instances where the public has used the term "fraudbuster" for purposes other than to identify Kessler's services.

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Ron Paul Campaign Gets a Lesson on Civil Liberties

Ron Paul's presidential campaign has been having a rough go of it: He has yet to win a Republican state primary or caucus.  But now his campaign's also-ran streak extends into the courtroom too, in a victory for the right to anonymous free speech.

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Ascentive v. Opinion Corp.

Date: 

09/24/2010

Threat Type: 

Lawsuit

Party Receiving Legal Threat: 

Opinion Corp. d/b/a PissedConsumer.com, Michael Podolsky, Joanna Simpson, Alex Syrov

Type of Party: 

Organization

Type of Party: 

Individual
Organization

Court Type: 

Federal

Court Name: 

U.S. District Court, Eastern District of New York

Case Number: 

10-cv-04433

Legal Counsel: 

Goetz Fitzpatrick PLLC

Publication Medium: 

Forum

Relevant Documents: 

Status: 

Pending

Disposition: 

Injunction Denied

Description: 

Ascentive, LLC, a software company, filed suit against Opinion Corp. d/b/a PissedConsumer.com on September 24, 2010, claiming that Opinion Corp., through its PissedConsumer website, infringed on Ascentive trademarks. The complaint alleges seven claims for relief against Opinion Corp.:

  • The first and second claims allege that Opinion Corp. violated the Civil Racketeer Influenced and Corrupt Organizations (RICO) Act, 18 U.S.C. 1961-1968, by conspiring to extort and solicit money from organizations that are the victims of complaints on the PissedConsumer website.
  • The third and fourth claims allege that Opinion Corp. violated the Lanham Act and Ascentive's common law trademark rights, respectively, by using Ascentive trademarks in web addresses such as Ascentive.PissedConsumer.com and FinallyFast.PissedConsumer.com.
  • The fifth through seventh claims allege that Opinion Corp. participated in unfair trade practices through its PissedConsumer website, resulting in interference with contractual relations and unjust enrichment.

In its answer, Opinion Corp. asserted that Ascentive's claims were barred by 47 U.S.C. § 230 (CDA 230). CDA 230 provides that "No provider or user of an interactive computer service shall be treated as the publisher or speaker of any information provided by another information content provider." It also provides that "No cause of action may be brought and no liability may be imposed under any State or local law that is inconsistent with this section." For more information on CDA 230, see the corresponding CMLP Legal Guide entry.

Ascentive filed a Motion for Preliminary Injunction on November 23, 2010, attempting to enjoin PissedConsumer from using Ascentive's trademarks in the site's metadata and as subdomains. In its Memorandum in Support of the Motion for Preliminary Injunction, Ascentive maintained that PissedConsumer holds itself out to be objective, but manipulates postings on its site and uses those to attempt to extort money from the victims of these complaints, in violation of RICO. Regarding the alleged trademark infringement, Ascentive argued that PissedConsumer has used Ascentive's trademarks in the site's metadata, causing PissedConsumer sites to appear prominently in Internet search results. According to Ascentive, this creates "initial interest" confusion in violation of the Lanham Act. Ascentive additionally claimed that its trademarks were used in subdomain names and as prominent text on the PissedConsumer sites, which further leads to consumer confusion resulting in trademark infringement.

In its Opposition Memorandum, Opinion Corp. claimed that Ascentive's request for a preliminary injunction was essentially a request for prior restraint on speech that is protected by the First Amendment and therefore invalid. Opinion Corp. argued that its use of Ascentive trademarks constituted expression protected by the First Amendment. Finally, Opinion Corp. argued that the content posted on its sites should be protected under CDA 230. It contended that "sites such as PissedConsumer.com fall squarely within the protection of the statute, which applies to all state law claims, however styled, so long as the act complained of is the publication of third party content."

After a hearing on Ascentive's Motion, and at the request of the presiding judge, Opinion Corp. submitted a bench brief discussing the application of fair use doctrine under the Lanham Act claim in this case. Opinion Corp. asserted that use of a trademark is protected when it is "fair[] and in good faith only to describe the goods and services of [the complaining] party." In this case, Opinion Corp. argued, PissedConsumer used the Ascentive marks in good faith as a means of cataloging sites, which constituted fair use.

Ascentive filed a reply letter arguing that a free speech defense is unavailable to sites creating confusion through a domain name. It also asserted that PissedConsumer is not protected by CDA 230, which provides no immunity for intellectual property claim or for content created by PissedConsumer, which include the self-created subdomains.

On December 13, 2011, in a rather lengthy opinion, the court rejected Ascentive's motion for preliminary injunction. The court ruled that there was no likelihood of confusion in PissedConsumer's use of Ascentive's trademarks, finding that "no reasonable visitor" to the various PissedConsumer sites would assume they are affiliated with Ascentive (or any other company), because the use of "pissed" in the domain name connotes criticism and negativity. Regarding use of the marks in metadata, the court found this did not create a likelihood of confusion, because PissedConsumer and Ascentive do not compete with each other, and because search engines generally do not use metadata to determine results. Finally, the court held that PissedConsumer is likely to fall within the protections of CDA 230 regarding the plaintiff's state law claims (unfair trade practices and consumer protection).

The court stated that this decision was without prejudice to Ascentive's opportunity to seek a permanent injunction after discovery has been completed.

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CMLP ANNOUNCEMENT: Amicus Brief Filed Regarding Intersection of Trademark Law & Freedom of Speech

On January 18, 2012, the Citizen Media Law Project (under its new name, the Digital Media Law Project -- new website coming soon) filed an amicus brief in the Massachusetts Appeals Court in Jenzabar, Inc. v. Long Bow Group, Inc., No. 2011-P-1533. 

Subject Area: 

Jurisdiction: 

Ron Paul 2012 v. Does 1-10

Threat Type: 

Lawsuit

Date: 

01/13/2012

Party Receiving Legal Threat: 

John Does 1-10

Type of Party: 

Organization

Type of Party: 

Individual

Court Type: 

Federal

Court Name: 

U.S. District Court, Northern District of California

Case Number: 

CV-12-00240

Publication Medium: 

Social Network

Relevant Documents: 

Status: 

Pending

Disposition: 

Dismissed (partial)

Description: 

On January 13, 2012, Ron Paul's presidential campaign organization sued anonymous YouTube users in federal court over a video posted on YouTube by user "NHLiberty4Paul" on January 4, 2012. The video is critical of then-Republican presidential candidate Jon Hunstman, focusing on Huntsman's ambassadorship to China. It concludes by suggesting that viewers vote for Ron Paul instead.

The complaint alleges that the video was created by parties opposed to Paul's presidential campaign, and was "deliberately calculated" to harm Paul's reputation by attaching his name to a "malicious" and "offensive" video. It further states that the video is "a classic case of dirty politics," and that Paul's campaign has absorbed "scathingly negative" media attention from news outlets that believed the video originated from the Paul campaign. The complaint alleges two counts of infringement of the Paul campaign's unregistered trademark in the name "Ron Paul" under 15 U.S.C. 1125(a), and a count of defamation. The campaign seeks monetary damages, the removal of the video, and injunctions against future use of the "Ron Paul" mark.

On January 18, the Paul campaign applied for expedited discovery to identify the YouTube users who posted the video. The application argues that the case cannot proceed until the defendants are identified, thus warranting expedited discovery on this point. The campaign seeks documents both from YouTube and from Twitter, where an account also called "NHLiberty4Paul" exists. Paul's campaign manager, Jesse Benton, also filed a declaration (scroll down) stating that the Paul campaign did not produce the Huntsman video.

UPDATE:

On January 25, a magistrate judge denied without prejudice the campaign's motion for expedited discovery. The magistrate applied the test from Columbia v. Seescandy.com, 185 F.R.D. 573 (N.D. Cal. 1999), which requires plaintiffs to (1) identify the anonymous persons with some specificity; (2) describe all other attempts the plaintiff has made to find the anonymous persons; (3) show that the lawsuit could survive a motion to dismiss; and (4) show a "reasonable likelihood" that the anonymous persons could be identified through discovery. Since the Paul campaign's motion did not address these factors, the magistrate denied it but invited the campaign to refile with the appropriate information. 

On January 27, Public Citizen, the Electronic Frontier Foundation, the American Civil Liberties Union, and the Digital Media Law Project filed a motion for leave to file an amicus brief in the case, urging the court to clarify the order of January 25th and impose the standard first articulated in Dendrite International v. Doe, 775 A.2d 756 (N.J. App. 2001). This standard requires (1) plaintiffs to provide reasonable notice to potential defendants and an opportunity for defendants to defend their anonymity before issuance of a subpoena; (2) plaintiffs to allege with specificity the speech that has allegedly violated the plaintiff's rights; (3) the court to ensure that the claim states a cause of action upon which relief can be granted as to each statement and against each defendant; (4)  plaintiffs to produce evidence supporting each element of its claims; and (5) the court to weigh the potential harm to the plaintiff from being unable to proceed against the harm to the defendant from losing the First Amendment right to anonymity.

On February 1, 2012, the court granted the motion to file an amicus brief, and instructed the Paul campaign to address the arguments raised by the amici if they decide to refile a motion for expedited discovery.

On February 12, 2012, the Ron Paul Campaign filed a revised application for expedited discovery. The court invited the amici Public Citizen, the Electronic Frontier Foundation, the American Civil Liberties Union, and the Digital Media Law Project to file a memorandum addressing the revised application. The amici filed a memorandum on February 22, 2012. On February 29, 2012 the Ron Paul campaign committee filed a reply brief.

On March 8, 2012, the court again denied the campaign's motion for expedited discovery.  The judge declined to determine which test, Seescandy.com or Dendrite, applied in the case, and instead looked to the common factor in both tests: whether the plaintiff had "filed a valid complaint so the Court can be assured that the alleged claims will withstand a motion to dismiss."  The court ruled that the Paul campaign had not, writing that its arguments failed to connect the YouTube video to a commercial venture as required by the Lanham Act.  As such, its trademark claims failed to overcome the first hurdle in both tests, and no further decision as to which test applied was needed. 

Having decided that the federal causes of action failed to state a claim, the court declined to grant expedited discovery on the basis of the remaining state-law defamation claim.  The court also noted that if the Lanham Act claims were dismissed, "issues develop" over the court's ability to exercise supplemental jurisdiction over the state law claims.

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Threat Source: 

RSS

CMLP Notes: 

1/20/12: Sharkey created

1/23/12: JH editing

2/7/12: AS edits

3/8/12: AB edits

3/15/12: AS added some interlocutory docket entries

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