Right of publicity/passing off blast from the past

From The Spirit of the Times, May 21, 1845

“Gen. Tom Thumb’s father brought suit in Paris, against the manager of a theatre, who announced a play called Tom Pouce, (Thumb,) while the General was exhibiting himself at another place. The tribunal decided in favor of the General, the name of Tom Pouce had to be removed from the bills, and the manager paid the costs of suit. The piece was produced as ‘Tom Pouff’ afterwards.”

H/T Zach Schrag

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when are state law unfair competition claims preempted?

Duer v. Bensussen Deutsch & Associates, Inc., 2015 WL
11256568, No. 14-CV-01589 (N.D. Ga. Jul. 8, 2015)
Very broad preemption finding makes me blog this older case
that popped out of Westlaw.  Duer makes
medicine dosage adherence tools suitable for affixing to pill bottles. The
product has seven slides, each representing a day of the week, and a user moves
a slide each day she takes a pill.  Duer claimed
rights in the trademark “Take-n-Slide”; a utility patent; and copyright in the
insert sheet packaged with her product.  Defendants allegedly copied Duer’s product and
package insert sheet, which she discovered when one of their customers
contacted her, believing that they’d received her product.
Duer properly alleged non-functionality by identifying  several non-functional elements, including
the particular shape of the product, the vertical arrangement of the days of
the week, and the chosen color scheme. “The existence of a utility patent which
contains claims that may include the above elements does not change the
analysis.” The utility patent was strong but not conclusive evidence of
functionality; she was entitled to try to meet her “heavy” burden of showing
nonfunctionality. Duer also properly pled secondary meaning, with details about
her ad expenditures, how long she’d advertised, and at least one instance of
actual confusion as well as intentional copying.
However, the court dismissed Duer’s claims for false
advertising and unfair competition. 
False advertising: the product insert allegedly actually displayed Duer’s
product.  However, this wasn’t “commercial
advertising or promotion,” because it wasn’t disseminated to influence
consumers to buy defendants’ goods.  “A
product insert cannot influence a consumer’s purchasing decision because the
public would only see a product insert after purchasing the product.”
Duer’s unfair competition/passing off claim failed because
she failed to allege that defendants weren’t the actual, physical origin of the
products it sold.  This seems quite
wrong: her argument was that defendants sold products that were falsely
attributed to her; the fact that they
are the origin is kind of the point.
More plausibly, but still interestingly, the court held that
Duer’s Georgia Uniform Deceptive Trade Practice Act and her tortious
interference with contract claim were preempted by the patent/copyright laws
because they relied on the same conduct alleged in her patent, copyright, and
trade dress infringement claims.  [Sloppiness
here: there’s no preemption based on the trade dress-related claims, on these
facts.]  Duer was essentially arguing
reverse passing off—that defendants were claiming her design as their own—which
courts routinely find to be preempted.

Duer argued that her GUDTPA claim had an “extra element” of
a deceptive act, but reverse passing off implicitly contains a deceitful act or
misrepresentation.  “The fact that the
defendants were selling the allegedly infringing works under their own
names—and, hence, implicitly misrepresenting the origin of the works or causing
confusion in the consuming public cannot alter the finding of preemption.” 

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Parody product fails to squeak through the cracks in dilution/infringement claim

VIP Products, LLC v. Jack Daniel’s Properties, Inc., No.
14-cv-02057 (D. Az. Sept. 27, 2016)
The court denied VIP’s motion for summary judgment on its
declaratory judgment action against JDPI, and also kicked out a number of VIP’s
defenses, leaving confusion and dilution claims for trial based on VIP’s “Bad
Spaniels” durable rubber squeaky novelty dog toy, which is in the shape of a
liquor bottle and features a wide-eyed spaniel over the words “Bad Spaniels,
the Old No. 2, on your Tennessee Carpet.” On the back of the Silly Squeakers
packaging for the Bad Spaniels toy, it states: “This product is not affiliated
with Jack Daniel’s.”

 VIP’s product, on left

VIP’s label

The court found that VIP couldn’t be engaged in nominative
fair use because this defense only applies where a defendant uses the plaintiff’s
identical mark or trade dress, which VIP didn’t.  “[I]t is the defendant’s very use of the
plaintiff’s identical trademark that makes the nominative fair use analysis
necessary rather than application of AMF Inc. v. Sleekcraft Boats, 599 F.2d 341
(9th Cir. 1979) which utilizes eight factors to focus on the similarity of the
trademarks used by the plaintiff and the defendant in order to determine
liability for likelihood of confusion in the marketplace.”  This is an extremely tone-deaf reading of New Kids, because it’s the reference to
the plaintiff, not the identicality of the marks, that drives the First
Amendment interests justifying a different liability test.  The fact that a trademark owner can claim
confusion based on a parodic reference to it makes the need for New Kids at least as great when the
reference also involves distortion.
Then, and arguably worse, the court found that VIP couldn’t
raise a First Amendment defense because its dog toy wasn’t an artistic or expressive
work.  Aaaaaaaaaaargh.  OK: (1) Both parties claim that the markings,
shape and coloration of the dog toy communicate a message, though they disagree
about what that message is.  That means
that the dog toy is expressive, even if it’s not a painting.  (2)  Expressive
is not the opposite of commercial speech, nor is it the opposite of “has
trademark significance”; the dog toy is not, in any event, commercial speech. (3)
The trademark owner’s claim seeks to suppress an allegedly infringing message,
not any nonexpressive characteristics of the dog toy: trademark regulates
communication, which doesn’t make it unconstitutional but does mean that
extending it beyond commercial speech is dicey business indeed. 
Nonetheless, the court found that regular Sleekcraft applied. “[T]he First Amendment
affords no protection to VIP because it is trademark law that regulates misleading
commercial speech where another’s trademark is used for source identification in
a way likely to cause consumer confusion.” 
Why is the design of the product commercial speech?  Because “VIP makes trademark use of its
adaptations of JDPI’s trademarks and the Jack Daniel’s trade dress to sell a
commercial product, its novelty dog toy,” and thus it has “the dual purpose of
making an alleged expressive comment as well as the commercial selling of a
non-competing product.”
A reasonable trier of fact could find likely confusion and
dilution of a famous mark. VIP also failed to exclude the report and the
testimony of JDPI’s dilution expert, Dr. Itamar Simonson, who opined on “the
implication(s) of the association between the Bad Spaniels toy and Jack
Daniel’s whiskey on JDPI’s trade dress and trademarks and the meaning of the
mark/brand to consumers.”

JDPI proposed that Simonson would discuss: 1) The basics of
consumer behavior and “how marks such as famous trade dress are represented in
memory”; 2) the basics of the “associative network memory model” which are
accepted by experts in the consumer behavior field; 3) the application of the
“associative network memory model” to the instant case; and 4) the conclusion
that VIP’s Bad Spaniels toy causes negative implication for JDPI’s trade dress
and marks and thus is likely to tarnish them. 
The court allowed his testimony as admissible based his knowledge,
training and experience rather than on his use of scientific evidence with a
testable, proven methodology.  Surveys,
focus groups, studies, or other real world tests weren’t required for him to
apply his expertise to the facts of the case.

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Texas and 3 other states sue to block ICANN transition

Read the complaint.  Let me know if you can make sense of the theory.

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Ad featuring old, mild citations against health facility was false by necessary implication

Heartland of Urbana OH, L.L.C. v. McHugh Fuller Law Group,
P.L.L.C., 2016 WL 5375676, 2016 -Ohio- 6959, No. 2016–CA–3 (Ct. App. Sept. 23,
Heartland appealed from summary judgment granted to McHugh
in Heartland’s deceptive trade practices case against McHugh, and the court of
appeals reversed, finding that the relevant ad was false by necessary
implication and that injury was presumed because the ad targeted Heartland.
In 2014, McHugh published a full-page ad and online ad in
the Urbana Daily Citizen newspaper that discussed Heartland, a skilled nursing
care facility located in Urbana, Ohio. The ad contained a picture of
Heartland’s facility in Urbana, and stated:
The government has cited HEARTLAND OF URBANA NURSING AND
REHABILITATION CENTER for failing to provide necessary care and services to
maintain the highest well-being of each resident. If you suspect that a loved
one was NEGLECTED or ABUSED at Heartland of Urbana, call McHugh Fuller today! Has
your loved one suffered?
Broken Bones
Unexplained Injuries
“Attention,” “Neglected or Abused,” and “Death,” were in
red, bold type. “Cited” was also underlined in red.
In fact, Heartland had not had a citation of any kind for
over two years, and had not had a citation remotely similar to the one alleged
in the advertisement since June 24, 2010, more than four years previously. Even
the June 2010 citation did not cause harm to any nursing home patient, and the
deficiencies had been corrected in June 2010.  Under Federal standards, violations are assessed
by letters ranging from “A” to “L,” with “L” being the most severe. “J,” “K,”
or “L” violations mean that a nursing facility is in immediate jeopardy, and is
in risk of being cut-off from Medicare reimbursement. The particular violations
on June 24, 2010 were only “E” and Level 2 violations, “which, at worst,
contemplate only minimal physical discomfort and the potential to undermine a
given resident’s ability to maintain or reach his or her highest practicable
well-being, in light of definitions of that resident’s plan of care.”
According to Heartland, “negligence, abuse, bedsores, broken
bones, unexplained injuries, and death” would have Level 4 severity. By
contrast, three matters that were involved in the June 24, 2010 citation, were:
a failure to document and administer laxatives prescribed for constipation; a
failure to timely reassess abdominal pain for 18 hours; and a failure to apply
prescribed antibiotic for two weeks after a physician had ordered a culture.
Subsequently, the legislature amended state law to prohibit
the use of the results of an inspection or investigation of a home in an ad unless
the ad included:
(i) The date the inspection or
investigation was conducted;
(ii) A statement that the director
of health inspects all homes at least once every fifteen months;
(iii) If a finding or deficiency
cited in the statement of deficiencies has been substantially corrected, a
statement that the finding or deficiency has been substantially corrected and
the date that the finding or deficiency was substantially corrected;
(iv) The number of findings and
deficiencies cited in the statement of deficiencies on the basis of the
inspection or investigation;
(v) The average number of findings
and deficiencies cited in a statement of deficiencies on the basis of an
inspection or investigation conducted under this section during the same
calendar year as the inspection or investigation used in the advertisement;
(vi) A statement that the
advertisement is neither authorized nor endorsed by the department of health or
any other government agency.
Query: what are the First Amendment implications of this
The trial court found that this legal change had mooted
Heartland’s claim.  The court of appeals
reversed, because if McHugh willfully violated the state Deceptive Trade
Practices Act, Heartland would be entitled to attorneys’ fees.
Ohio courts follow the Lanham Act in interpreting the DTPA.  The court of appeals found the ad false by
necessary implication.  “When the
advertisement was published, McHugh, a law firm, would have known that any
claims based on the June 24, 2010 citations were barred due to the statute of
limitations.”  McHugh also had access to
information that Heartland wasn’t cited in 2012 or 2014, and that none of the
2010 citations related to harm to residents. “[T]he only reasonable conclusion
is that the advertisement falsely implied Heartland was a facility where
patients were being exposed to very dangerous conditions, including death,”
which justified a finding of intent to deceive consumers.

In noncomparative advertising, plaintiffs must show
causation and harm, but a material, misleading comparison to a specific product
necessarily causes harm to the target, relieving the target of its burden of
separately showing causation and harm. 
The court of appeals applied this rule here, to the broader category of “misleading
advertisements identifying a specific party,” although the ad wasn’t
comparative. The court of appeals did say that the presumption of causation and
injury was rebuttable.

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Conversation on fan films and copyright, part 2

My exchange with Henry Jenkins can be found here.  Part 1 here.

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Transformative work of the day

Shot by shot recreation of photos with male and female roles reversed, in response to a sexist GQ pictorial. Transformative, but in a good way—the reverse of the mocking transformations I cataloged in My Fair Ladies.

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