Dirty Dancing remake: court grants reconsideration on dilution

Lions Gate Ent. Inc. v. TD Ameritrade Servs. Co., No. cv
15-05024  (C.D. Cal. Aug. 1, 2016)
Previous
discussion and images from the campaign here.
  Lions Gate claims common-law marks in DIRTY  DANCING and NOBODY PUTS BABY IN A CORNER, while
Ameritrade’s ads used the line  “Nobody
puts your old 401k in a corner” and a depiction of a man  lifting a piggy bank over his head.  The court granted reconsideration of the
dismissal of the trademark dilution claims, because it previously required the
that the defendant use a mark identical or nearly identical to the plaintiff’s
mark.  The Ninth Circuit has held
(wrongly, in my opinion) that the defendant’s mark need not be identical,
nearly identical, or even substantially similar to the plaintiff’s mark under
the TDRA.  Levi Strauss & Co. v.
Abercrombie & Fitch Trading Co., 633 
F.3d 1158, 1172 (9th Cir. 2011).  
RT: The court of appeals based its reasoning on the
existence of a multifactor statutory test for blurring which mentions only the
degree of similarity, without setting a threshold for similarity.  But the multifactor test also lists various
elements of distinctiveness/fame, without setting a threshold—and nonetheless,
in order to be “famous,” the mark at issue will already have satisfied a
threshold requirement of very high distinctiveness.  Given the power accorded the owner of a “famous”
mark under the dilution statute, and the lack of clarity over what dilution
even is, not to mention the fact that the legislative history exclusively
discusses identical marks such as “Buick Aspirin,” a requirement of (near) identicality
would be more appropriate.  However, the
district court here can’t ignore circuit precedent—it’s not as if the district
court is a 9th Circuit panel.

Anyhow, revisiting the issue, while the court initially concluded
that Ameritrade didn’t seem to be using the mark as a mark for its own goods
and services, which is a requirement
under the TDRA, it now devoted more attention to the issue and found that Lions
Gate had sufficiently alleged use as a mark. 
Ameritrade allegedly admitted that they used “Nobody puts your old 401k
in a/the corner” as a tagline, which was tantamount to admitting use as a mark.  (What about the dance lift with the piggy
bank?)  Slogans can be trademarks, and
Ameritrade has previously sought registration for other slogans.  Because the complaint alleged that the tagline,
“used alone and with other allusions to the  motion picture, such as the Dance Lift and the
reference to the  song … is likely to
cause people to falsely or  incorrectly
believe that Lions Gate has approved, licensed,  endorses, sponsored, and/or authorized, or is
associated with, TD  Ameritrade’s
products and/or services,” that was sufficient to allege use as a mark.  Note the oddity here that allegations about
confusion, which don’t seem to have been revived, turn into allegations about
trademark use—perhaps another reminder of the poor fit of dilution into
American theories about what trademarks are for.

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Transformative use of the day?

Is a caption contest for a photo a transformative use?  It does seem to rely heavily on the content of the photo!

See https://twitter.com/TheSteveBurnio/status/760579894900293633/photo/1: The winner of the caption contest:

Caption: “Donald Trump, center.”

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Seen at the amusement park: TM question of the day

“Straight Outta Here! Seniors” T-shirt in Straight Outta Compton style

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ADR website was commercial speech for purposes of client’s false advertising lawsuit

JAMS, Inc. v. Superior Court of San Diego County, No. D069862,
— Cal. Rptr. 3d —-, 2016 WL 4014068 (Cal. Ct. App. Jul. 27, 2016)
Kevin Kinsella sued JAMS, an ADR provider, and the Honorable
Sheila Prell Sonenshine (Retired), alleging that he relied on
misrepresentations and omissions on the JAMS website about Sonenshine’s background
in stipulating to hiring her to resolve divorce issues.  Defendants filed an anti-SLAPP motion to
strike, and the trial court found the action exempt from the anti-SLAPP
procedure because it involved commercial speech.  The court of appeals functionally affirmed
(procedural details omitted).
JAMS allegedly promotes the hiring of neutrals for ADR,
collecting a fee for its services. JAMS provides biographies of its neutrals on
its Web site and represents its family law neutrals are “ ‘trusted’ experts.”
According to the complaint, the JAMS Web site stated “ ‘[JAMS ensures] the
highest ethical standards’ and ‘[e]verything we do and say will reflect the
highest ethical and moral standards. We are dedicated to neutrality, integrity,
honesty, accountability, and mutual respect in all our interactions.’”  Kinsella alleged that he agreed to hire
Sonenshine to resolve his over-eight-figure divorce which included assets from
venture capital partnerships he managed. 
He alleged that he carefully reviewed the JAMS website, and agreed to
Sonenshine because of her alleged business experience enabling her to
understand his separate property holdings and private venture capital funds.
However, after Sonenshine began conducting hearings,
Kinsella alleged he “became alarmed by what he saw and doubted that she
possessed the business accomplishments her resume led him to believe she
possessed.” He began to look into her background and discovered information
causing him to question her integrity. 
JAMS allegedly touted Sonenshine’s business success surrounding the
co-founding and management of two companies when “the history of those two
ventures is full of adverse and unfavorable accusations” against Sonenshine and
her son in a class action lawsuit for fraud, and JAMS stated that she founded
an equity fund when “the equity fund existed in name only as it never raised
any equity capital and was, therefore, never funded” and never operated “as a
functioning investment entity.”
Kinsella sued for violations of the CLRA, fraud, negligent
misrepresentation, and state-law false advertising.  Defendants argued that the statements on the
JAMS Web site and in Sonenshine’s online biography weren’t within the
commercial speech exemption to the anti-SLAPP law because (1) the exemption
applies to “ ‘representations of fact’ “ not to omissions or nonfactual
representations such as puffery, and (2) Sonenshine’s biography was not purely
commercial speech because it was also used for noncommercial purposes such as
for litigants to evaluate potential conflicts of interest or for dissemination
to bar groups for noncommercial events.
The commercial speech exemption was added to curb abuse of
the anti-SLAPP statute.  It exempts
actions arising from commercial speech when (1) the cause of action is against
a person primarily engaged in the business of selling or leasing goods or
services; (2) the cause of action arises from a statement or conduct by that
person consisting of representations of fact about that person’s or a business
competitor’s business operations, goods, or services; (3) the statement or
conduct was made either for the purpose of obtaining approval for, promoting,
or securing sales or leases of, or commercial transactions in, the person’s
goods or services or in the course of delivering the person’s goods or
services; and (4) the intended audience for the statement or conduct was a
commercial audience.  This exception is
to be narrowly construed.
The court of appeals held that the commercial speech
exemption covered more than “positive assertions of facts.”  Likely success on the merits was not an
element of whether the exemption applied. 
Rather, the legislative history showed an exemption aimed squarely at
exempting false advertising claims.  The
exemption was designed to track Nike v.
Kasky
, focusing on the speaker (someone who’s selling stuff), the content
of the message (representations of fact meant to induce sales), and the
intended audience (actual or potential buyers). 
However, Kasky and the
legislative history didn’t require affirmative or positive representations, as
opposed to omissions or half-truths.  Kasky specifically noted that unfair
competition law and false advertising law “prohibit ‘not only advertising which
is false, but also advertising which[,] although true, is either actually
misleading or which has a capacity, likelihood or tendency to deceive or
confuse the public.’”
Statements on the JAMS website about Sonenshine’s background
and qualifications to provide ADR services as well as general statements about
how JAMS conducts its business in providing ADR services were thus commercial
speech. The representations in her biography were factual; their truth or  misleadingness was a matter for the merits,
not for the exemption. Statements that JAMS ensured “ ‘the highest ethical
standards,’” that “ ‘[e]verything we do and say will reflect the highest ethical
and moral standards’” and that JAMS is “ ‘dedicated to neutrality, integrity,
honesty, accountability, and mutual respect in all our interactions’” were also
representations of fact “for purposes of analyzing the commercial nature of the
speech.”  They were “specific statements
representing how JAMS conducts its operations,” and were “certainly intended to
be relied upon by customers of its services, otherwise they would serve no
legitimate purpose.” The court noted that violation of these standards could
lead to bar discipline for lawyers. 
Further, posting Sonenshine’s biography in conjunction with these
statements “may have implicitly represented JAMS adopted her representations
about her credentials and ratified them as reflecting ‘integrity, honesty,
[and] accountability.’”  But the court of
appeals didn’t finally reach the issue of whether these statements were true,
false, or otherwise nonactionable.  The
court distinguished cases involving mere promises of future action.
Defendants also argued that the website statements might be
used for multiple purposes, such as to comply with Sonenshine’s judicial duty
of disclosure, and that the causes of action arise from postretention conduct,
not commercial speech. The court of appeals rejected these arguments; first,
all the website statements Kinsella challenged were there in order to be viewed
by actual or potential ADR buyers or customers, or attorneys representing
actual or potential buyers or customers of ADR services. Kinsella used them for
that purpose. “Therefore, the statements or conduct from which Kinsella’s causes
of action arise is more ‘commercial speech’ than anything else. Whether or not
the statements may be used for other purposes does not change the analysis.”

References to Sonenshine’s postretention statements in the
complaint also didn’t defeat the commercial speech exemption.  Those allegations were about how Kinsella
found out there were problems, not about the speech that allegedly misled him
to his detriment.  If he did allege
claims based on noncommercial speech, that could be taken care of later.

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Design Patent Damages event in DC, Aug. 2

Details/RSVP here.

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Design Patent Damages event in DC, Aug. 2

Details/RSVP here.

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Court of appeals says FU to state university’s TM claim

Florida International University Board of Trustees v. Florida
National University, Inc., 2016 WL 4010164, — F.3d —-, No. 15-11509 (11th
Cir. Jul. 26, 2016)
FIU sued FNU for changing its name from Florida National
College to Florida National University; the district court rejected FIU’s
claims and the court of appeals affirmed. 
FIU is a public university founded in 1965.  “It has grown to become one of the nation’s
largest public four-year universities, with over 50,000 full-time students
enrolled in the fall of 2012.”  FNU is a
for-profit higher education institution that, when founded in 1987, offered
only associate’s degrees.  It began as
Florida International Institute, changed to Florida International College, then
changed again to Florida National College when FIU sued for trademark
infringement.  In the 21st
century, Florida National College became accredited to offer bachelor’s degrees
and a master’s degree, and in 2012 it changed its name to FNU.  It had 2,795 students enrolled in a recent
winter term; it currently operates two campuses in Miami-Dade County – one of
which is less than two miles from FIU’s main campus – and also offers online
courses.  FIU has opposed FNU’s 2012
applications for the word mark “Florida National University” and a related
design mark.
In the confusion analysis, the strength of the accusing mark
is the second most important factor.  In
the 11th Circuit, incontestability enhances strength, and FIU’s word
mark was incontestable.  The reasoning
here is not logical but the result is sensible:
The district court observed that,
viewed in isolation, the terms comprising FIU’s word mark were either generic
or descriptive. But, in light of its incontestable status, the court
appropriately presumed that FIU’s mark was relatively strong. Nonetheless, it
determined that FNU had rebutted the presumption of strength by showing
extensive third-party use of the mark, explaining that FNU had identified “13
other entities using the terms ‘Florida’ and ‘University’ – all of which are
aimed at the same education marketplace as FIU.” Thus, the district court
adjudged FLORIDA INTERNATIONAL UNIVERSITY and the attendant acronym to be
“relatively weak.”
Note: it seems a little odd to treat incontestability, which
is an irrebuttable presumption of
distinctiveness, as creating a rebuttable
presumption of “relative” strength, but not a lot odder than treating it as an
uptick in strength.
The court of appeals agreed that the evidence of third-party
use was “an essential factor in determining a mark’s strength.”  Here, the district court’s findings of
diminished strength of the name and acronym were reasonable.  Florida A&M University (FAMU), Florida
Atlantic University (FAU), Florida Christian University (FCU), Florida Gulf
Coast University (FGCU), Florida Memorial University (FMU), Florida Polytechnic
University (FPU), Florida State University (FSU), University of Central Florida
(UCF), University of Florida (UF), University of North Florida (UNF),
University of South Florida (USF), and University of West Florida (UWF), were geographically
proximate and offered the same services, which was sufficient to weaken the FIU
marks.  “[I]n context, it seems to us
that FIU operates in a crowded field of similar names.”
FIU argued that the district court focused too much on
conceptual strength and not on commercial strength.  “The practical problem with FIU’s argument,
however, is that FIU didn’t offer any direct evidence of commercial strength.”  Yes, FIU spends millions annually on
marketing, but that “tells us precious little about the efficacy of those
efforts in creating marketplace recognition of FIU’s mark. Absent comparative
evidence establishing that FIU has spent substantially more on advertising than
its competitors in the field of higher education, or ‘direct evidence of
consumer recognition,’” FIU’s promotional efforts didn’t count as evidence of
commercial strength that would require the district court to ignore third-party
uses. 
The district court also, inconsistently, accepted FIU’s
claim to own a famous mark within the meaning of the Florida Anti-Dilution Act,
which requires  that a mark be very
strong and distinctive. Third-party use cuts against a finding of fame, but
there was no error in the court’s ultimate conclusion that FIU’s mark was
weak.  The court relied in its dilution
reasoning on FIU’s duration and extent of use, duration and extent of advertising,
and federal registration, ignoring the other five factors identified by the
state legislature in the statute. Also, the district court didn’t give full
attention to the fame inquiry because it found FIU’s dilution claim failed on
other grounds.  There was no clear error
in the finding that FIU’s mark was relatively weak.
Similarity of marks: The district court reasoned that there
were similarities in sound and appearance, but that the antonymic meaning of
the words “national” and “international” outweighed any similarity. This was a
reasonable conclusion,
especially in a field where so many
competitors have names that appear and sound similar. Moreover, in a crowded
field of similar acronyms, the district court reasonably found that the
addition of one more school identifying itself with an acronym containing the
letters F and U would not materially add to the confusion. This is especially
true in a field like post-secondary education, where the primary consumers –
potential students (and likely their parents too) – generally spend a
substantial amount of time and energy learning about their options before
choosing a school and are, therefore, unlikely to be confused by similar names.
Note: consumer sophistication comes in here because the 11th
Circuit doesn’t have that as a separate factor.
Similarity of goods/services: Favored FIU. 
Similarity of retail outlets and customers: The district
court found that the student populations were significantly different: “most
FNU students are seeking associate’s degrees or ESL programs that FIU doesn’t
provide; FIU targets students who are directly out of high school and seeking a
four-year degree, whereas most FNU students have been out of high school for an
average of ten years; and, unlike FIU, FNU doesn’t require students to submit
standardized test scores prior to admission.”  But, both schools offer bachelor’s and
master’s degrees as well as online courses and, therefore, they have some
potential overlap in prospective students. This favored confusion but not
heavily so.
FIU argued that the district court underweighed this factor
because of the substantial overlap in students and campuses.  The court of appeals disagreed, because
nearly half of FNU’s students sought an associate degree, which FIU doesn’t
offer.  (If FIU is like many other state
schools, though, it admits plenty of students with associate degrees.)  Over 21% were enrolled in ESL programs; though
FIU offered ESL as well, that was only for students “seeking to enter college
or professional schools.” Also, while FIU generally offers a “traditional”
four-year college experience, including living on campus, almost all of FNU’s
students commute to class at night after work.  The campuses and websites for students were
also dissimilar. FIU has a “342-acre metropolis” containing residential halls,
an eight-story library, a nature preserve, an athletic stadium, and an art
museum. FNU has two main campuses, each consisting of a single building.  And each offers online courses through their
own websites, which “would dispel rather than cause confusion … because the
websites are separate and distinct, suggesting two completely unrelated [ ]
entities.” The district court didn’t clearly err in assigning little weight to
this factor.
Similarity of advertising media: the parties advertised in
the same types of printed publications, “there was no evidence that any of the
readers of FIU’s publications were likely to also read magazines or other publications
in which FNU advertises.” They do advertise on the same South Florida NPR station.  Again, the district court reasonably found
that this favored confusion, but had little weight overall.
FNU’s intent: The district court found that FNU’s knowledge
of FIU’s marks, and the prior litigation between the parties, wasn’t evidence
of improper intent because the parties had peacefully coexisted for more than
twenty years after settling that lawsuit. FNU’s shifting explanations for its
name change—it first said that it had to do so to be accredited, and when that
proved false it said that “university” was more attractive to foreign students—could
support a finding of bad intent.  But the
district court’s finding to the contrary was not clear error, given FNU’s
reasonable explanation for adopting “university.”
Actual confusion: There was no evidence of actual confusion
among prospective students at either institution.  However, there was one email from a FedEx
employee to an FIU administrator asking whether FNU “is accredited with FIU”;
and one letter sent to FNU from a California high school student who requested
information regarding “both admission to and programs at Florida International
University” because she was investigating “the various colleges and
universities [that she was] considering attending” as part of a sophomore class
project. Also, a radio announcer who was reading an FNU advertisement once said
“Florida Int — Florida National University.” 
The district court found that the FedEx employee wasn’t shown to be an
actual consumer; that the student’s letter was de minimis evidence; and that
the announcer’s “flub” wasn’t evidence of confusion. Thus, actual confusion
didn’t weigh in favor of FIU, and this conclusion wasn’t clear error, especially
given the sophistication that a reasonable consumer would exercise in deciding
among institutions of higher education.
Given all this, there was no clear error in the district
court’s balancing of the factors.
Along with its classic trademark infringement claim, FIU
argued that “FNU’s name change, its intentional omission of its for-profit
status, and its adoption of the course numbering system of Florida’s state
universities were all part of an attempt to falsely associate itself in the
public eye with Florida’s state universities.” 
The district court recognized that “a significant portion of the public
may be confused about FNU’s affiliation with the State of Florida,” but
concluded that this confusion had not resulted in confusion over FNU’s
affiliation with FIU.  (Sounds like a job for the Florida AG—except the
Florida AG doesn’t have a great record of pursuing for-profit educational
institutions.)
The court of appeals affirmed on other grounds.  “The district court’s construction of Section
43(a) of the Lanham Act would render that cause of action wholly duplicative of
a trademark infringement action for trademark holders, when in fact the language
of Section 43 is much broader.”  The
language of §43(a) “seems to encompass FIU’s false association theory that FNU
has used a name, symbol (its logo), and device (the course naming and numbering
system) that create the false impression that FNU is associated with the State
of Florida.”  But the court of appeals
didn’t resolve the issue, because FIU didn’t explain how it was harmed by FNU’s
acts associating itself with Florida public universities.  FNU’s expert testified that 30% to 50% of
survey respondents thought that the State of Florida or some other government
entity operates FNU, but less than 1% of survey respondents associated FNU with
FIU.

Dilution: Lack of similarity; lack of intent to piggyback on
FIU’s name or goodwill; and lack of risk of association doomed the claim. 

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Incentivizing creativity through suffering?

Ana Swanson at the Washington Post reports on a study that appears to connect unhappiness with greater creativity.  If we care about incentivizing creative output, should we therefore deliberately torment artists?

Borowiecki’s analysis suggests that negative emotions are not just correlated with creativity but that they actually have a causal effect on it. Using econometrics, he calculates that a 9.3 percent increase in negative emotions leads to a 6.3 percent increase in works created in the following year. To generate an entire important composition in the next year, the composer would need to see his negative emotions increase by about 37 percent.

“Creativity, measured by the number of important compositions, is causally attributable to negative moods, in particular to sadness,” he writes.

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Reading list: the First Amendment and the FDA

Christopher Robertson, A Trojan
Horse? How Expansion of the First Amendment Threatens Much More than the
Regulation of Off-Label Drugs
, forthcoming, __ Ohio State Law Journal __
(2017)
Abstract:
Scholars, advocates, and courts
have begun to recognize a First Amendment right for drugmakers to promote their
products “off-label”, without proving safety and efficacy of new intended uses.
Yet, so far, this debate has occurred in a vacuum of peculiar cases, where
convoluted commercial speech doctrine underdetermines the outcome. Review of
the seven arguments deployed in the off-label domain finds that they cannot be
so limited. Instead, if they were valid, they would undermine the FDA’s entire
premarket approval regime, reopening the door to a snake oil market where hype
replaces science. Even more, if valid, this First Amendment logic would
undermine a wide range of statutory regimes that have similar intent-based
structures and rely on speech as evidence of intent. Ultimately, with relevance
to First Amendment theory, this article reveals a broad and longstanding
coherence in the law.

I find Robertson’s argument compelling as a matter of logic,
though I think at least some judges are likely to treat unapproved drugs as
just different and therefore think that Caronia
and Amarin can be limited to
substances approved as drugs for some purpose even absent a sensible theoretical distinction.

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Failure to do anything to show damages leads to fee award in false advertising case

Gravelle v. Kaba Ilco Corp., No.13-CV-642, 2016 WL 3920208
(E.D.N.C. Jul. 15, 2016)
Bringing false advertising claims isn’t risk free for the
plaintiff. Not only may the defendant scrutinize the plaintiff’s own
advertising for counterclaims, attorney’s fee awards against a losing plaintiff
are not unknown, and here’s one. 
Gravelle, pro se, made two electronic key cutting machines, the CodePro
4500 and later the RapidKey 7000.  Kaba
makes key blanks and key cutting or duplication machines, and bought  the right to manufacture and sell a key
cutting machine, now known as the EZ Code, from Gravelle a decade ago. 
Gravelle alleged that Kaba falsely labeled two features on
its EZ Code machine as “patent pending,” despite the fact that Kaba never filed
an application for a patent for those features, and that defendant’s use of
that false mark diverted sales away from Gravelle’s company. He alleged false
marking under the Patent Act and false advertising under the Lanham Act, as
well as state-law unfair competition. 
Kaba won summary judgment because Gravelle couldn’t show competitive
injury or damages proximately caused by Kaba’s conduct.

“Exceptional” cases allow fee awards in patent and false
advertising cases.  Octane Fitness says that an “exceptional” case is “one that stands
out from others with respect to the substantive strength of a party’s
litigating position (considering both the governing law and the facts of the
case) or the unreasonable manner in which the case was litigated.”  Here, the claims were “exceptionally
meritless” for two reasons: first, Gravelle couldn’t produce any evidence of
harm to sales of his older machine; sales numbers were consistent and only
tapered off at the end of the machine’s useful life. Second, he couldn’t show
any harm to sales of his new machine or any connection between his sales and
Kaba’s use of “patent pending.”  The fact
that the court granted summary judgment weighed in favor of finding
exceptionality. Though it’s regularly the case that reasonable arguments
ultimately fail, here there were no reasonable arguments.  “Plaintiff’s lack of evidence demonstrated a
lack of thoughtful consideration about the quantum of evidence necessary not
only to prove his claim but to substantiate it at the most basic level.”  A fee award would also discourage further
frivolous claims.  The court considered
Gravelle’s pro se status as well as the parties’ relative disparity in
resources, but found that fees should be awarded anyway, given that “no
litigant could have reasonably believed that plaintiff had been damaged by
defendant’s conduct” on this record.

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