Copyright Office removes insult, adds new one with DMCA agent re-registration process

Posted on December 1, 2016 by rtushnet

Apparently one no longer has to provide a fax number to have a complete agent designation, which is good news.  (Welcome to the 21st century!)  But take a look at this password requirement:

I’m sorry, CO, but you are not my bank (and two-factor authentication would be better if you were). 
Anyway, consider this your reminder: DMCA agent re-registration is now a thing.

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New edition, Goldman & Tushnet, Advertising and Marketing Law

Posted on November 30, 2016 by rtushnet

Eric Goldman has posted all about it, including an overview and links for where you can get your own fresh copy.  Eric did the heavy lifting on getting this out, and I really appreciate it.  I also am personally satisfied with the revised disclosure materials, which incorporate recent FTC activity and the DC Circuit’s AMI decision applying Zauderer to all mandatory factual disclosures.

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New edition, Goldman & Tushnet, Advertising and Marketing Law

Posted on November 30, 2016 by rtushnet

Eric Goldman has posted all about it, including an overview and links for where you can get your own fresh copy.  Eric did the heavy lifting on getting this out, and I really appreciate it.  I also am personally satisfied with the revised disclosure materials, which incorporate recent FTC activity and the DC Circuit’s AMI decision applying Zauderer to all mandatory factual disclosures.

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Reading List: Legal Amateurism

Posted on November 29, 2016 by rtushnet

Legal Amateurism, Annelise Riles

 Abstract:

 Academics in the humanities and social sciences have often remarked upon the “amateuristic” quality of the analytical tools used by legal scholars. Rather than dismiss this quality out of hand, this paper approaches “legal amateurism” as a practice of knowledge production that can be studied ethnographically. The type of academic work produced by legal scholars expresses a unique relationship between scholarship and practice that bears the imprint of both the Formalist and Realist legal traditions. A certain degree of amateuristic scholarship, especially if it pertains to topics outside of one’s immediate area of expertise, provides legal professionals with a space for thought, reflection, and play – elements that are experienced as sorely lacking in today’s fast-paced, highly technological world. While amateur, non-monetized work can be a way to accrue symbolic capital or demonstrate a certain level of privilege, it also offers legal professionals the opportunity to refresh and renew their commitment to their own work and the legal profession more generally. Drawing on examples from the eccentric scholarship of John Henry Wigmore, as well as the drafting of technical documents in a Japanese bank, this paper argues that a certain aesthetic of amateurism lies at the heart of what it means to be a legal professional today.

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ABA Blawg 100/Hall of Fame

Posted on November 29, 2016 by rtushnet
I’ve made the ABA
Blawg Hall of Fame, as well as the Blawg
100, which is very nice.  I believe it’s in part a reward for
persistence, as I’ve been at this since 2003 (though I only got serious in
2005), making the blog older than my children. 
A number of other interesting IP blogs made the list, including
Hall-of-Famer Eric Goldman; check it out!

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TM question of the day, high heel edition

Posted on November 28, 2016 by rtushnet

We know that Louboutin’s red sole mark is only valid as applied to shoes with contrasting uppers.  So, do these shoes infringe?  (In case it’s hard to tell, I’d describe the sole color as a fairly bright pink.)  Do they dilute?

pink, white, silver

If they can dilute, could a different but also unusual-for-soles color dilute?  Wouldn’t any unusual and contrasting color make consumers think of Louboutin?

white with–dare I say–Tiffany blue contrasting sole

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Breakfast break: energy claims not misleading by US standards

Posted on November 28, 2016 by rtushnet
Spector v. Mondelēz International, Inc., 178 F.Supp.3d
657 (N.D. Ill. 2016)
Mondelēz makes belVita Breakfast Biscuits and
Breakfast Bites. Spector allegedly bought packages of Breakfast Biscuits in
reliance on the package representations of “NUTRITIOUS STEADY ENERGY ALL
MORNING”:
 ​

The relevant graphic uses a clockwise arrow
representing a four-hour period of time between 8 a.m. and noon:
​

The Breakfast Bites icon is similar, but
contains the phrase “4 hours”:
​

The back of the Breakfast Bites box states that
a single serving is “[a] nutritious start to a busy morning,” which is “a
nutritious, convenient, on the go breakfast choice that contains slow-release
carbs from wholesome grains to help fuel your body for 4 hours”:
​

Spector alleged that this was misleading, in
that it portrays the products as “perfect for an ‘on-the-go’ lifestyle due to
their being ‘portable.’ ” However, th products actually provide four hours of
nutritious steady energy only if they are combined with a serving of low-fat
milk. The disclosures on the Australian website for belVita allegedly showed
that “Defendant fails to state in its United States advertising that the
purported studies on which Defendant claims to rely require that the Products
be consumed with at least a serving of low-fat milk in order to obtain the
benefits Defendant touts.”
The back of the Breakfast Biscuits box, which
repeats the claim of four hours of “nutritious steady energy all morning” while
suggesting that Breakfast Biscuits be “enjoy[ed]…as part of a balanced
breakfast with a serving of low-fat dairy and fruit,” allegedly conveyed that
milk was optional.
Pleading a violation of the Illinois Consumer
Fraud Act requires a plaintiff to satisfy Rule 9(b).  The fundamental defect here was that Spector
pled no facts, such as personal
experience or third-party studies, showing that the products don’t provide
“nutritious steady energy” as promised.  Spector’s allegation of falsity was merely
conclusory. 
Spector argued that the studies cited by Mondelēz
on its Australian website were sufficient to form the basis of a plausible
claim that the “nutritious steady energy” claim was actually false because the
Australian website supposedly said that a glass of milk was required.  Under
Illinois law, “[l]ack of substantiation is deceptive only when the claim at
issue implies there is substantiation for that claim, i.e., if
defendants had claimed something along the lines of ‘tests show that [the
product in question] is [ ] effective ….” Here, though, the products’
packaging didn’t imply there was substantiation for the “nutritious steady
energy” claim.  [I disagree—in the modern
world, a health or nutrition claim is a scientific claim, especially when
quantified for “four hours,” and necessarily implies some degree of scientific
substantiation.]
Further, while the Australian website did imply the existence of
substantiation for the “nutritious steady energy” claim, Spector didn’t allege
she ever saw the substantiation claim on that website and thus she couldn’t
have relied on it.  But she was using the
Australian substantiation as evidence that the US package was false, not as
something she relied on.  Mondelēz argued
that, because Spector herself made the studies part of the complaint, the court
could examine them, but the court found merit to Spector’s point that she was
citing the description of the studies, not the studies themselves.  So the court proceeded without evaluating the
study data.
The Australian website allegedly claimed that “belVita
Breakfast biscuits† provide carbohydrates that are continuously and gradually
absorbed and released throughout the morning,” with the † leading to the statement,
“belVita Breakfast plus a glass of low-fat milk,” below this chart:

​
Although these disclaimers were
repeated multiple times, the court found it clear that they didn’t say that “one must consume the Products with low-fat milk in
order to achieve four hours of energy.” “The actual statements do no more than
refer to the fact that milk was consumed with the Products in the cited
studies.” Plaintiff confused correlation with causation. This was not enough to
rise to the level of plausibility under Twiqbal,
especially since her claims sounded in fraud. 
“In the context of this case, the Court concludes that Plaintiff must do
more than allege ‘the neutral facts necessary to identify the transaction.’”  This was necessary to protect Mondelēz from
the stigma of fraud.  Further Illinois
courts are “always watchful that the Act not be used to transform nondeceptive
and nonfraudulent omissions into actionable affirmations.” An omission is
actionable only “where it is employed as a device to mislead.”
Also, Spector lacked a relevant injury under
ICFA.  Although she alleged a financial
injury—she wouldn’t have bought the products or paid as much for them had she
known the truth—that wasn’t enough under ICFA. 
Illinois cases established that a plaintiff who alleges deceptive
advertising about the effectiveness of a product has not suffered an injury if
she “believed the [product] [was] effective and never complained to anyone that
[it] did not work.” Spector never alleged that she didn’t get four hours of
steady energy.
The same defects doomed her claims for breach of
express warranty and unjust enrichment.

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Fourth Circuit rejects attempt to control references to expert services with IP

Posted on November 28, 2016 by rtushnet

File under “we need a federal anti-SLAPP law.”

Devil’s Advocate, LLC
v. Zurich Am. Ins. Co., No. 15-1048, 2016 WL 6871905, — Fed.Appx. —- (4th
Cir. Nov. 22, 2016)

John W. Toothman is
a lawyer and the founder of Devil’s Advocate, a consulting firm that provides
expert testimony about the reasonableness of legal fees. In 2008, Zurich became
embroiled in a coverage dispute in Texas state court.  In 2010, a lawyer representing, contacted
Toothman about serving as an expert witness in the case. Toothman responded by
email, indicating his availability and attaching a copy of a blank form billing
agreement, his resume, and additional information about Devil’s Advocate’s
services. The Billing Agreement left blank spaces for fee terms; nobody at
Zurich signed it.  After a further
request, plaintiffs proposed a fee of “2.1% of the gross amount of the fees we
would review and report upon,” and stated that the proposal was “preliminary,
prior to our engagement and full review of available information.” 
Zurich didn’t accept
the proposal but told Toothman that, because the deadline for designating
experts had passed, Zurich needed leave of court to designate him as an expert
witness, which was a condition precedent to Zurich’s acceptance of the proposal.
In several emails, Toothman indicated that he knew he had not yet been retained.  Toothman ultimately sent an estimate of
nearly $70,000 and an invoice for half that amount; Zurich denied ever agreeing
to its terms.
Toothman then took
the position that “[payment of the full fee was triggered when Zurich
designated me as its expert on December 3, 2010.” Zurich withdrew its request
for leave to designate him as an expert witness in the Texas litigation. Plaintiffs
responded by suing Zurich, alleging claims of breach of contract, unjust
enrichment, conversion, unauthorized use of name, trademark infringement, and
copyright infringement.  None of these
worked, in the district court or on appeal.
Unjust enrichment:
no sufficient allegation of actual benefits conferred on Zurich.  Plaintiffs knew that Zurich was submitting
their materials to the court, and that getting court approval was a condition
precedent to getting plaintiffs hired. 
The assertion that the mere use of their names would promote a better
settlement was “wholly speculative” and anyway not realized by Zurich because
it withdrew its motion to designate Toothman as an expert before settling the
Texas litigation.
Unauthorized use of
Devil’s Advocate’s corporate name and Toothman’s personal name. Virginia Code §
8.01-40(A), in pertinent part, says:
Any person whose name, portrait, or picture is used without having
first obtained the written consent of such person, or if dead, of the surviving
consort and if none, of the next of kin, or if a minor, the written consent of
his or her parent or guardian, for advertising purposes or for the purposes of
trade, such persons may maintain a suit in equity against the person, firm, or
corporation so using such person’s name, portrait, or picture to prevent and
restrain the use thereof; and may also sue and recover damages for any injuries
sustained by reason of such use. …
But a corporate
entity is not a “person” for purposes of the Virginia statute. And Toothman’s
name wasn’t used for advertising purposes, defined as “a publication which,
taken in its entirety, was distributed for use in, or as part of, an
advertisement or solicitation for patronage of a particular product or
service.”   Use in a court filing or
email to opposing counsel isn’t advertising or use in the course of business; we
are unable to discern what additional legal services Zurich could have intended
to solicit.”
Trademark
infringement: time-barred under Virginia’s two-year statute of limitations for
fraud.

Copyright infringement: first, plaintiffs’ proposal lacked substantial
similarity to the designation Zurich filed in Texas, an inquiry that could be
made at the motion to dismiss stage.  The
proposal discussed “Appellants’ conflicts, Toothman’s familiarity with the
parties involved, his academic and professional experience, an overview of the
billing structure, and some observations on the Texas litigation.” In terms of
extrinsic similarity, the expert designation “generally summarizes the subject
matter on which Zurich’s two experts would testify without specifying the material
about which either intended to opine.” There was “little if any similarity,”
and likewise it was “implausible that any intended audience could view these
two documents as intrinsically similar.”
Zurich also didn’t
infringe the copyright to Toothman’s resume; its use was fair under Bond v.
Blum, 317 F.3d 385 (4th Cir. 2003).  The
material was factual; Zurich’s use “was not for profit or in a traditionally
commercial sense”; the amount taken didn’t interfere with any legitimate
purpose copyright exists to serve; and there was no interference with a market
because there was no market for Toothman’s resume as such.
Breach of contract:
there was no meeting of the minds.
Conversion of name
and reputation: a plaintiff can’t show the necessary element that the defendant
wrongfully exercised dominion or control over property, thereby depriving
plaintiff of its possession, where he consented to the use of the property.  The facts indicated Toothman’s implied
consent: “Toothman knew that, in order to obtain permission to designate him as
an expert, Zurich needed to disclose his name to the court and opposing
counsel, and he permitted such disclosure.”

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Court tentatively holds that NY’s GBL covers damage via personal injury

Posted on November 21, 2016 by rtushnet
Carias v. Monsanto Co., 2016 WL 6803780, No. 15-CV-3677 (E.D.N.Y.
Sept. 30, 2016)
The plaintiffs filed a putative class action claiming
injuries based on their use of Monsanto’s herbicide Roundup. Along with
products liability claims, they brought claims under New York General Business
Law §§ 349 and 350. The court dismissed claims under the GBL for injunctive
relief and design defect claims are dismissed, but not others.
The primary ingredient in Roundup is glyphosate; the EPA
approved Roundup and its labeling. The label says that “Glyphosate targets an
enzyme found in plants, but not in people or pets.” There are no warnings of
serious health risks to humans.  In 2015,
the International Agency for Research on Cancer classified glyphosate as
“probably carcinogenic to humans.” The plaintiffs alleged that, in reliance on
the “plants not people” statement, they purchased Roundup on “several
occasions” over the past four years and “used and/or [were] exposed to the use
of Defendant’s Roundup products in their intended or reasonably foreseeable
manner.” They allege that their “exposure to glyphosate caused” various
maladies, including non-Hodgkins lymphoma, pancreatic cancer, renal pelvis
cancer, “a pituitary gland tumor,” leukemia, “irritable bowel syndrome/leaky
gut disease,” diabetes, and kidney disease.
Plaintiffs alleged that the “plants not people” statement
was false because glyphosate inhibits organisms from producing the enzyme EPSP
synthase, which is found in gut bacteria in human stomachs and intestines. The
total microbiota found in humans can weigh up to five pounds, but gut bacteria are
vulnerable to being killed off by glyphosate.
Monsanto argued that FIFRA preempted the failure-to-warn and
GBL claims, as did the EPA’s conclusions in various contexts that, as a factual
matter, glyphosate does not pose a chronic health risk to human and is not
carcinogenic.  Multiple district courts
have rejected these arguments, and this one did too, mainly because false
statements about safety cause pesticides to be misbranded under FIFRA, and
states can impose their own remedies for conduct that violates FIFRA.  EPA’s approval of the label, and statements
about safety, weren’t factual findings entitled to preemptive force for these
purposes.  However, plaintiffs’ request
for injunctive relief under the GBL was preempted because it would require
Monsanto to change the label.
Monsanto also tried to rely on the GBL § 349(d) safe harbor
for acts that comply with federal agency rules, regulations, or statutes.  EPA’s approval of the Roundup label didn’t
suffice given FIFRA’s language, which makes clear that FIFRA doesn’t absolve
pesticide makers from liability for misbranding. 
Further, plaintiffs plausibly pled that “plants not people”
was false or misleading.  It could be
literally false to say that the relevant enzyme is “found in plants, but not in
people or pets,” because it is, in fact, found in the gut bacteria of humans. Further,
plaintiffs plausibly alleged that this statement was “inherently misleading
because it creates the impression that glyphosate has no affect [sic] on people
or pets, when in reality, it directly affects both people and pets—by
killing-off beneficial gut bacteria.”
Monsanto argued that plaintiffs were relying on a strained
parsing of the word “in,” but the court didn’t find it implausible. “Notably,
defendant does not point to a single case granting a motion to dismiss where
the statement at issue was literally false or the statement at issue was even
remotely similar to one at bar.” 
Monsanto wanted to dispute that Roundup affects gut bacteria in a manner
that is any way detrimental to human health. Not on a motion to dismiss.  If Monsanto was right, then it would have a
strong argument that “plants not people” is not material.  (Why? 
People are allowed to care about whatever they care about; advertising
law usually doesn’t judge the wisdom of their preferences.  Also, I remember a time when the effect of H.
pylori on ulcers was a matter for debate and even mockery—if Roundup does
affect gut bacteria, a reasonable consumer might care even if the scientific
consensus was that no harm has been shown.)
Further, plaintiffs alleged a cognizable injury.  Monsanto argued that exposure to glyphosate
by ingesting it on agricultural crops wasn’t related to plaintiffs’ purchases
of the Roundup consumer products at issue in their GBL claims. But plaintiffs
also alleted that they were exposed to the Roundup products they purchased. “[C]omplicated
questions of causation are normally not decided on a motion to dismiss.”  Monsanto further contended that personal
injuries aren’t actionable harms under the GBL, a matter on which there was
scant authority.  The GBL allows any
person “injured” by reason of a violation of the statute can recover “actual
damages.”  The plain language thus covered
personal injuries.  (The court contrasted
New Jersey law; the comprehensive New Jersey Products Liability Act is the
right authority for personal injury claims, not the New Jersey consumer
protection law, but New York doesn’t have a comprehensive products liability
statute.)  Although the court was
skeptical that GBL §§ 349 and 350 should apply to personal injury claims, “which
have traditionally been pursued through product liability suits under New York
common law, defendant has not persuaded the Court at this time.”  The court was willing to revisit the issue on
fuller briefing at a later stage.

In a footnote, the court noted that “causation for the GBL
claims appears to be a particularly difficult hurdle as plaintiffs will
presumably have to prove that their injuries were caused by the specific
Roundup products that they purchased and used even though the plaintiffs were
also exposed to glyphosate through numerous other sources—a point noted in
plaintiffs’ own complaint.”  Further, the
court cautioned that a fee award would be unlikely “when, as here, the
plaintiffs have suffered substantial and high-value personal injuries and
allege product liability-type claims under the guise of the GBL. The instant
suit is unlike most GBL § 349 claims, which involve statutory damages or
minimal actual damages, and where the prospect of an attorney’s fees award may
be necessary to attract competent counsel.” 
And, “[b]ecause of the nature of the injuries alleged by the named
plaintiffs here, the Court has grave doubts that class treatment will be
appropriate in this suit.”  Apparently
the court wasn’t willing to hand plaintiffs an unalloyed victory.

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Pro tip: don’t refer to delayed TM claim as “lottery ticket”

Posted on November 21, 2016 by rtushnet

Dropbox secured a rare laches ruling based in significant part on internal discussions by the other claimant to “dropbox” about how delaying a claim until after Dropbox’s IPO would increase the payout.  Via DuetsBlog.

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