Cthulhu the functional?

Jake Linford has recently expounded in detail about the descriptive or even functional characteristics of certain sounds, making certain “coined” words more useful in marketing.  Here’s a great example from Michael Saler, As If: Modern Enchantment and the Literary Prehistory of Virtual Reality (2012): “Some critics found these names ridiculous, but Lovecraft countered that ‘a coined word which has been shaped with great care from just the right associational sources’ could be effective, evoking sensations from Symbolist poetry. ‘Cthulhu’ was self-evidently le mot juste.”

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Fashion weak: fashion show fails to enjoin New York Fashion Week name

Fashion Week, Inc. v. Council of Fashion Designers of
America, Inc., 2016 WL 4367990, No. 16-cv-5079 (S.D.N.Y. Aug. 12, 2016)
FWI sued CFDA for trademark dilution, unfair competition and
false designation of origin, and trademark infringement based on use of of “NEW
YORK FASHION WEEK” and its acronym “NYFW” (“NYFW THE RUNWAY SHOWS” was also
theoretically at issue, but not really pressed; the court didn’t think FWI had
a protectable mark in that phrase).  On
June 28, FWI sought a TRO and a preliminary injunction against the use of these
terms in connection with live semi-annual events in New York during which
fashion designers launch new clothing lines. The court denied these requests.
CFDA’s showcase events date back to 1943 when “Press Week”
was launched, an event dedicated to promoting American designers of women’s fashion.
The semi-annual week-long events in New York “are recognized as one of the four
major fashion weeks in the world.” From 1993-2015, they were formally named
after their location or sponsor, such as “Olympus Fashion Week” and
“Mercedes-Benz Fashion Week,” but in the press and the industry, they were
widely referred to as “New York Fashion Week” from at least 1993 onwards. In 2015,
CFDA went with “New York Fashion Week,” “NYFW,” and “NYFW The Shows,” in promotion
and production of the fashion events, as well as a new domain name, NYFW.com.
FWI produces fashion shows and sells tickets to “consumers
and fashion aficionados,” positioned as “publicly accessible alternatives to [CFDA]
fashion events which are restricted to members of the fashion industry and
media only.” FWI shows are one day long and coincide with the defendants’
semi-annual schedule.  FWI registered NEW
YORK FASHION SHOWS in 2012, and produced three fashion shows under that name,
then in 2013 renamed itself Fashion Week Inc. and applied for NEW YORK FASHION
WEEK on the Supplemental Register.  The
application was granted for online entertainment ticket agency services in 2014.
FWI produced and sold tickets to two fashion shows under the NEW YORK FASHION
WEEK mark—a show in September 2014 and a show in September 2015. Both sold five
hundred tickets and earned $25,000-30,000 in profit. 
FWI applied to register NYFW for online ticket sales for
entertainment and fashion shows in May 2015, after defendants announced their
intention to use NYFW online to promote their fashion events.  The mark issued on the Principal Register in
December 2015.  In August 2015,
defendants sent FWI a C&D “requesting that FWI cease promoting its fashion
shows online in a manner that might mislead consumers into thinking they were
purchasing tickets to the [CFDA] events.” 
In ensuing discussions, FWI offered to transfer its marks and sponsors
to defendants “and threatened litigation, delay, and bad press.” FWI
subsequently filed trademark applications for the marks NEW YORK FASHION WEEK
THE RUNWAY SHOWS, NYFW THE RUNWAY SHOWS, NYFW and NEW YORK FASHION WEEK for
organization of fashion shows for entertainment purposes.
In July 2015, CFDA organized and produced the September 2015
and February 2016 fashion events. In April and June 2016, FWI sent cease and
desist letters to defendants about the marks. 
This litigation resulted. CFDA’s next fashion events were scheduled to
begin on September 8, while FWI didn’t have any fashion shows presently
scheduled; plans to hold an event in February 2017 had been put on indefinite
hold after FWI’s anticipated sponsors severed ties with FWI.
The district court began by assuming that eBay and Salinger required it to reject any presumption of irreparable
injury based on likely success on the merits, even in a trademark case.  This change also changed the significance of
delay, once used to rebut such a presumption. 
Now it’s just a “significant” factor to consider in determining
irreparable harm.  Here, FWI’s delay in
suing and moving for an injunction “argues strongly against granting the
preliminary injunction.”  In January
2015, after all, CFDA had filed a petition to cancel the NEW YORK FASHION WEEK
mark, and the petition included CFDA’s representation that it had made
continuous use of the trademark since at least 1994.  Plus, there was the April 2015 announcement
that CFDA would be using NYFW as part of its domain name and on social media
platforms. In its moving papers, FWI even included a news article from January
2015, reporting that the defendants’ event in September 2015 would be called
“New York Fashion Week.”
FWI argued that its delay was due to investigation and
settlement discussions, but there was no evidence that defendants ever
considered reverting back to a sponsor-based title.  In light of the public announcements, at
least by August 2015, FWI’s belief that CFDA would reverse course was
unreasonable. After the shows in September 2015 and February 2016, FWI knew that
CFDA wasusing the marks it claimed a right to use, but FWI continued to do
nothing.There was no evidence that settlement discussions continued into 2016,
but even if they had, the time between their alleged collapse in January and
June 2016 was too long.
In addition, FWI failed to show actual irreparable
harm.  Loss of control over one’s reputation
is irreparable because this loss “is neither calculable nor precisely
compensable.”  [Note that if this is
really true, we’re back to the presumption of irreparable injury, because
courts have told us that lost control is what confusion means.  If courts acknowledge
that, in fact, what they call confusion is often unlikely to pose significant
risks to the plaintiff’s reputation—perhaps because of the demonstrated
resilience of strong brands—then this claim makes some sense even in a world
without presumptions of irreparable injury, but it does call into question why “confusion”
is defined so broadly.]
Here, FWI didn’t provide sufficient evidence of goodwill
that it could lose.  It only presented
evidence that it used the NEW YORK FASHION WEEK mark in connection with the
September 2015 fashion show, and it didn’t submit evidence of brand loyalty or
recognition in the industry.
Separately, FWI failed to show likely success on the merits—you
can tell from this discussion that there are serious doubts about the validity
of its asserted marks or their extension beyond “online entertainment ticket
agency services.” FWI argued that consumer confusion, evidenced by emails to
FWI seeking to buy tickets to the CFDA events, showed secondary meaning and
harm.  The court thought otherwise—CFDA,
not FWI, was likely to show secondary meaning in these descriptive marks.  Though CFDA didn’t use “NEW YORK FASHION WEEK”
to describe itself until recently, the press and industry did, and it could claim
trademark rights in nicknames.  (Industry
evidence included a declaration from Anna Wintour, FWIW.)
Unsurprisingly, the balance of equities and the public
interest also argued against any injunction. 
An injunction would disrupt the upcoming New York Fashion Week, which
was “an important asset to the New York economy,” and would deprive the public
of a useful term by which to describe the events.

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Cookie crumbles: court refuses to dismiss (c) claim based on facts of plaintiff’s life

Eggleston v. Daniels, No. 15-11893, 2016 WL 4363013 (E.D.
Mich. Aug. 16, 2016)
Sophia Eggleston alleged that her self-characterization in
her 2009 memoir The Hidden Hand was
the uncredited inspiration for the character Loretha “Cookie” Lyon on the FOX
television series Empire, and sued
for copyright infringement (and violation of her right of publicity). The Hidden Hand recounts “many
significant events” in Eggleston’s life, including “the attempted kidnapping of
her youngest daughter, and coming to terms with her brother’s homosexuality,
which he revealed to her while she was in prison,” as well as numerous gun
threats and the murder of her two sisters. 
The memoir also covers her romantic relationship with a man in the music
business.
In Empire, Cookie
Lyon, the imprisoned, drug-dealing ex-wife of the man in control of Empire
Entertainment, gains release and demands her share of the company.  “Thus begins the struggle for control of
Empire Entertainment between Lucious, Cookie, and their three sons: Andre, a
married businessman with bipolar disorder, Jamal, a gay singer rejected by his
homophobic father, and Hakeem, a talented but unfocused rapper.”  Eggleston alleged that there were many
striking similarities between her self-depiction and Cookie Lyon’s character:
they’re “both light-skinned African-American women who wear expensive clothing,
lead gangs, have placed hits on men and sold drugs, have gay family members,
have two family members who were murdered, have served prison sentences, and
are known for their ‘vicious insults’ and propensity to slap people.” They’ve
both “shielded others by stepping in front of a loaded gun, have endured the
kidnapping or attempted kidnapping of one of their children, lost their lovers
while in prison, and attacked their former lovers’ new lovers upon release from
prison,” as well as making liberal use of “hoe” and “bitch.”  Fox, understandably, contended that these
were stock features, which seems correct.
However, the court refused to dismiss the copyright
infringement claim.  Copyright in facts
is thin, but selection and arrangement of facts are protectable.  [But if your selection principle is “this
happened to me,” that can’t be a protectable selection method, any more than
alphabetical ordering is protectable even though some methods of ordering (top
10 books) may be.]  The court took back
all its statements about filtering by agreeing with
Eggleston that the appropriate comparison was between “copyrightable elements
of her self-portrayal in The Hidden Hand
and copyrightable elements of the Cookie Lyon character.
The court agreed that the twenty-three elements Eggleston
listed in her complaint “represent a protectable compilation of experiences and
traits,” and constituted more than the sum of its parts.  Though at first glance, many of these elements
seemed typical to “stories about those involved in drugs and violence.”  But featuring a woman “in the dominant role
as drug dealer, gang leader, and perpetrator of violence. This is not the stock
and trade of the average drug gangster potboiler.”  The court commented that “Defense counsel
could not offer examples of other works in this narrative genre that featured
female characters in the ‘drug or organized crime boss-like’ role,” and that
the court found only the 2011 telenovela series La reina del Sur produced by
Telemundo or the 1999 Jorge Franco novel Rosario Tijeras. 
[Not Savages, the Don Winslow book/Blake Lively vehicle
with Salma Hayek in the boss role?  Animal Kingdom,
the 2010 Aussie crime movie resurrected as a TNT series?  WeedsQueen Pin (this seems exactly
on point)?  Megan Abbott’s QueenpinNot
to mention
the history, or, as
Joanna
Russ
might say, How
To
Suppress
Women’s
Criming.  She did it, but she’s the only one!]
[Separately, this reasoning would still be wrong without
these examples.  It may be unusual, but
implementing the idea “the surgeon was the child’s mother!” is not
unknown.  And it’s also just an idea, no
matter what profession it’s applied to.  The
scenes a faire that follow may gain new resonance because of the audience’s
reaction to the gender-swap, but they’re still scenes a faire.  Moreover, the court’s explanation reveals the
far deeper flaw: copyright is for expression, but the characteristics plaintiff
alleged were copied are—according to plaintiff herself—facts, and there is no
protection for facts no matter how difficult they were to produce or live
through.  By saying that the similarities
are between plaintiff and Cookie Lyon, rather than between a character
plaintiff created and Cookie Lyon, the court reveals the fundamental error
here.]
[And the court makes it worse by allowing plaintiff to carve
up the work any way she wants and claiming protection only in the “character,”
instead of treating the memoir as the
expressive work protected by copyright. 
Once you slice out the “character” (who actually only exists in
conjunction with the plot, sequence of events, mood, etc.—try to imagine James
Bond hosting a cooking show and see if there’s still “James Bond” there), then
all other dissimilarities in the works can be ignored, even though they are
crucial to any actual audience’s perception of the character.  Justin Hughes did great work
warning about this
, but it still happens.]
The court found that some elements [facts about Eggleston]
were “also not obviously of the stock-standard variety, regardless of a
character’s gender.”  For example, both
Eggleston and Lyon had a gay family member. 
[Okay, if you have ten people in your close family, it would appear that
the
odds are actually pretty good
that you are closely related to a gay person.  True, previous generations would have been
somewhat less likely to write about it, but so what?]  Other “unusual” commonalities between Eggleston and Lyon were that they both “experienced
the kidnapping of one of their children, have had two close family members
murdered, have lost their lovers while serving time in jail, and have shielded
others by stepping between them and a loaded gun. Taken together, these
elements are arguably original and substantially similar.”  [To put the objection another way, these
elements aren’t original to Eggleston.  She didn’t, I take it, make her brother gay,
kill her lover while she was in jail, or point a loaded gun at someone she
cared about.  Stepping in front of the
gun, while brave, is not a creative act even though the precise words she used
to describe that event might be
copyrightable.]
Eggleston’s copyright claim survived the motion to
dismiss.  Her right of publicity claim didn’t,
because she didn’t plausibly allege a pecuniary interest or any commercial
value in her identity.

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6th Circuit rejects college players’ Lanham Act, ROP claims

Marshall v. ESPN, No. 15-5753 (6th Cir. August
17, 2016)
Plaintiffs claimed that, as college football and basketball
players, they had publicity rights in their names and images as used in TV
broadcasts.  “Whether referees, assistant
coaches, and perhaps even spectators have the same rights as putative licensors
is unclear from the plaintiffs’ briefs.” 
Tennessee’s right of publicity statute, however, explicitly excluded any
“sports broadcast,” and Tennessee refused to recognize any common-law right of
publicity.  This also killed a Sherman
Act claim, since there could be no conspiracy to control a non-existent right.
Plaintiffs’ Lanham Act claims failed because—well:
The theory here is that if, say,
ESPN shows a banner for ‘Tostitos’ at the bottom of the screen during a football
game, then consumers might become confused as to whether all the players on the
screen endorse Tostitos. Suffice it to say that ordinary consumers have more
sense than the theory itself does.

But honestly, is this theory (which was justly rejected) any
more ridiculous than the theory that consumers might think that a fast food
restaurant endorsed a movie about beauty queens?  That consumers might think that Jose Cuervo
had partnered with a whiskey company because both used red wax seals among many
other packaging devices?  That Budweiser
might have endorsed a parody ad for Budweiser Oily?  And, if we have nothing but common sense to
guide us here, on what basis exactly is the players’ theory so easily
distinguishable from those successful claims that it doesn’t even reach
plausibility?

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6th Circuit rejects college players’ Lanham Act, ROP claims

Marshall v. ESPN, No. 15-5753 (6th Cir. August
17, 2016)
Plaintiffs claimed that, as college football and basketball
players, they had publicity rights in their names and images as used in TV
broadcasts.  “Whether referees, assistant
coaches, and perhaps even spectators have the same rights as putative licensors
is unclear from the plaintiffs’ briefs.” 
Tennessee’s right of publicity statute, however, explicitly excluded any
“sports broadcast,” and Tennessee refused to recognize any common-law right of
publicity.  This also killed a Sherman
Act claim, since there could be no conspiracy to control a non-existent right.
Plaintiffs’ Lanham Act claims failed because—well:
The theory here is that if, say,
ESPN shows a banner for ‘Tostitos’ at the bottom of the screen during a football
game, then consumers might become confused as to whether all the players on the
screen endorse Tostitos. Suffice it to say that ordinary consumers have more
sense than the theory itself does.

But honestly, is this theory (which was justly rejected) any
more ridiculous than the theory that consumers might think that a fast food
restaurant endorsed a movie about beauty queens?  That consumers might think that Jose Cuervo
had partnered with a whiskey company because both used red wax seals among many
other packaging devices?  That Budweiser
might have endorsed a parody ad for Budweiser Oily?  And, if we have nothing but common sense to
guide us here, on what basis exactly is the players’ theory so easily
distinguishable from those successful claims that it doesn’t even reach
plausibility?

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ISP fails to dismiss (c) and CMI claims based on watermarked photo

Goldstein v. Metropolitan Regional Information Systems,
Inc., 2016 WL 4257457, No. TDC-15-2400 (D. Md. Aug. 11, 2016)
Goldstein is a professional photographer who registered a
copyright in a 2007 photograph he took of the Silver Spring Metro Station,
which appears on his website with the watermark “© http://ift.tt/2bxtZLd”
centered at the bottom of the image.  Defendant
MRIS runs an online real estate listing service that allows subscribers, mainly
real estate brokers, to post listings for available properties for a fee.
Subscribers agree to assign to MRIS the copyright in any photograph they upload
to the database.  In 2014, Goldstein
learned that his Metro Photograph had been uploaded to the MRIS database, still
with Goldstein’s original watermark, but also the additional watermark “© 2013
MRIS” or “© 2014 MRIS,” depending on the year the image was uploaded.  Despite notice from Goldstein’s attorney, the
photo allegedly continued to be displayed on/uploaded to the MRIS site during
2014 and continuing into 2015, at which point the MRIS watermark was updated to
“© 2015 MRIS.” Goldstein alleged that, as a result, the Metro Photograph was
uploaded to additional real estate websites and used in additional real estate
promotional materials without his permission.
Goldstein sued for infringement, contributory infringement,
violation of the DMCA’s CMI provisions, and violation of the Lanham Act.
Easiest bit first: Goldstein alleged that MRIS’s addition of its own copyright
watermark to the Metro Photograph was a false representation under the Lanham
Act. Although this sounds like a false advertising claim, the court found it Dastar-barred: Dastar held that “claims of false advertising and trademark
infringement under the Lanham Act do not overlap with copyright claims” because
“origin” means physical origin, and because otherwise plaintiffs could create a
kind of perpetual copyright or patent. 
“Thus, ‘creative’ works, those artistic creations that fall within the
ambit of copyright law, necessarily fall outside the scope of the Lanham Act.”  This is overstated in some significant ways,
but query whether anyone’s found a way to say it better.
Direct infringement: MRIS argued that Goldstein didn’t allege
“volitional conduct” by MRIS, relying on Costar Group, Inc. v. LoopNet, Inc.,
373 F.3d 544 (4th Cir. 2004). Direct infringement requires “actual infringing
conduct with a nexus sufficiently close and causal to the illegal copying that
one could conclude that the machine owner himself trespassed on the exclusive
domain of the copyright owner.”  In Costar, LoopNet was a passive ISP that
could not be held liable for direct infringement of Costar’s copyright when
Costar’s unmarked photographs appeared on its website, even though it engaged
in cursory screening of photos.  The
court here, however, distinguished Costar
as having been decided on summary judgment. 
Goldstein alleged that MRIS or an agent of MRIS uploaded the Metro
Photograph.   In one exhibit, the photo appears in a slide
in a slideshow that was available on the MRIS website, which didn’t contain any
reference to a particular real estate agent or broker, or to a particular
property. “Drawing all inferences in Goldstein’s favor, this Exhibit, particularly
with the markings added by MRIS, supports the reasonable inference that MRIS or
its agent, rather than an outside user of MRIS, engaged in direct infringement
by copying Goldstein’s copyrighted photograph to its website.”
So far, so good, but the court goes on to say more things
that ought to be disturbing.  The court
also distinguished Costar because “(1)
when MRIS received it, the Metro Photograph, on its face, was marked as
copyrighted by Goldstein; (2) MRIS, unlike LoopNet, took the affirmative step
of marking the Metro Photograph as subject to its own copyright; and (3) MRIS
then copyrighted its entire website, including the Metro Photograph.”  [The court here means “registered” for (3),
and this conflation pervades the opinion, including the treatment of (1)—after
1978, all original works are “born” copyrighted, so if you see a modern photo
you know it’s “copyrighted,” though you may not know who owns the copyright or
whether it has been licensed or whether a fair use is being made.]   (2) is probably bad business practice, but
it’s likely as automatic as many other activities that have been held not to
strip ISPs of the DMCA safe harbor, when the court gets around to that.  Anyway, I’m not sure why any of these three
facts makes MRIS’s conduct “volitional” if Loopnet’s wasn’t.  The court said that “MRIS doubly asserted a
copyright in the Metro Photograph by stamping that facially copyrighted
photograph with its own copyright markings and then copyrighting the entire
website containing that photograph,” but that’s still not “volitional” conduct implicating the rights protected by
copyright
, under Costar.
Further comment: It seems really, really unlikely that MRIS
uploaded the photos, as opposed to a MRIS user. 
Should my prediction prove true, should MRIS get its attorneys’ fees for
defending the direct infringement claim?
Contributory/vicarious infringement: contributory
sufficiently pled; vicarious not.  MRIS
knew or had reason to know of Goldstein’s copyright, because “[w]here works
contain copyright notices within them, as here, it is difficult to argue that a
defendant did not know that the works were copyrighted,” and when MRIS got
Goldstein’s C&D, it knew or had reason to know of the infringing use.  And
MRIS’s practice of adding its own
copyright to the Metro Photograph, a practice it continued even after being
placed on notice that the Metro Photograph was being used on its website
without Goldstein’s permission, can reasonably be considered ‘conduct that
encourages or assists the infringement.’ For example, the addition of the MRIS
copyright markings could lead MRIS users to believe that they had a license to
use the Metro Photograph in their listings as part of their subscription to the
MRIS service.
Though MRIS asserted that it promptly removed each
reappearance of the photo, that wasn’t enough on a motion to dismiss, and its
continued reappearance was enough for contributory infringement [in the absence
of the DMCA].
Vicarious infringement/inducement: MRIS likely had the right
and ability to control the infringing activity and charged a fee to post
listings on its website, “the website has as its main purpose the posting of
real estate listings, a purpose distinct from trafficking in infringing
material. It is therefore not reasonable to conclude that the availability of
infringing photographs such as the Metro Photograph drew customers to subscribe
to the MRIS service.” The inducement claim failed for similar reasons.
Compliance with the DMCA, the court further held, was an
affirmative defense not suitable for resolution on a motion to dismiss.  And here it gets even worse, though
presumably the court could at least fix this on summary judgment: the court
suggests that the copyright notice on the photo might trigger actual knowledge
that using the photo would infringe “a copyright.”  How is that actual notice, especially given
an automated upload?  Moreover, the
statutory provision that noncompliant DMCA notices don’t give actual knowledge
would seem to preclude this reasoning, since a watermark is a far cry from a
DMCA notice with all the relevant information. 
And again, the court suggested that MRIS’s addition of its own watermark
went beyond “storage at the direction of a user of material that resides on a
system or network” to “affirmative appropriation of another’s copyright.”
CMI violations: Goldstein alleged violations of § 1202(a) and
(b). §1202(a)  makes it unlawful for a
person to “knowingly and with the intent to induce, enable, facilitate or conceal
infringement provide copyright management information that is false.” §1202(b)
prohibits a person, “without the authority of the copyright owner or the law,”
either to “intentionally remove or alter any copyright management information”
or to “distribute” work “knowing that copyright management information has been
removed or altered …knowing or … having reasonable grounds to know that it
will induce, enable, facilitate, or conceal an infringement.”  Again, the complaint adequately stated a
claim, though the court commented that Goldstein could only recover once for a
§1202 violation.
MRIS unconvincingly argued that the watermark wasn’t CMI
because it didn’t meet the requirements for a full copyright “notice.” §1202
doesn’t require that.  §1202(a)’s
requirements were satisfied because MRIS allegedly added its own copyright
watermark to the photo without owning the copyright.  MRIS argued that it had a copyright in the
database as a whole, thus had a good faith belief that its watermark wasn’t
false.  That didn’t work because of (1)
Goldstein’s watermark and (2) the procedural posture of a motion to
dismiss.  MRIS argued that its watermark
wasn’t added knowingly and with the intent to facilitate infringement, because
it was added “automatically” to all images uploaded to their site, but again
that’s not an argument that works on a motion to dismiss, and anyway
Goldstein’s C&D provided actual knowledge.

§1202(b): MRIS argued that it didn’t “intentionally remove
or alter any copyright management information,” since Goldstein’s watermark was
left intact.  The court, however,
declined to dismiss Goldstein’s claim that adding CMI was “constructive”
alteration of his own CMI, since it had “more visual impact” and “undercut[]”
the message that Goldstein owned the copyright. There was no case law either
way on constructive alteration of CMI, but, “[p]articularly where MRIS’s
copyright mark was placed immediately before Goldstein’s copyright mark and
used more recent dates, that mark could be construed as trumping, diluting, or
superseding, and thus altering, Goldstein’s CMI.”

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Amicus in LV v. My Other Bag

Chris Sprigman and I organized a law professors’ brief supporting My Other Bag in LV’s appeal from the well-reasoned district court opinion.  Open call for anyone defending against a dilution claim: it’s time for the straight-up First Amendment challenge, and I am interested in providing amicus support for anyone who wants to do that.

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