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U.S. Intellectual Property and New Media Law Update POLO PARTIALLY UNHORSED Westchester Media et al. v. PRL USA Holdings, Inc.et al. (Fifth Cir. - June 27, 2000) ELVIS MAY BE ALIVE BUT A SUIT ABOUT HIM IS NOT Brewer-Giorgio et al. v. Producers Video, Inc. (Eleventh Cir. - July 3, 2000) LEGAL JIU-JITSU Gracie et al. v. Gracie et al. (Ninth Cir. - July 6, 2000) NABBING THE NAPSTER A & M Records, Inc. v. Napster, Inc., et al. (N.D. Cal. - Opposition of Defendant Napster, Inc. to Plaintiffs' Motion for Preliminary Injunction) PLEASE NOTE: PLEASE NOTE: Bazerman & Drangel, P.C. has moved locations. We are now located at 60 East 42nd Street, Suite 820, New York, NY 10165. Our telephone, facsimile and e-mail information remain the same. POLO PARTIALLY UNHORSED Westchester Media et al. v. PRL USA Holdings, Inc.et al. (Fifth Cir. - June 27, 2000) There is hardly a lawyer alive who does not know the name Ralph Lauren and the POLO trademark for assorted goods and goodies of the middle and upper middle classes. Polo Magazine, on the other hand, initially had a more limited audience. It was founded in 1975 and was aimed toward the polo enthusiast, hockey on horseback. The issues were primarily about the sport with discussions of the games' details, sports equipment and my particular favorite, the accident of the month. Over time it also developed sections on life styles. The magazine obtained a number of registrations for the mark POLO for magazines on the subject of equestrian sports and lifestyles. By the time of the suit, one had become incontestible. Ralph's company was aware of the existence of the magazine and, in fact, advertised in it. In May 1997, the magazine was purchased by plaintiff Westchester Media and given a new face and became primarily directed to the lifestyles of the rich rather than limited to the more sports minded section of that group although there was, periodically, a special issue devoted to the sport under the designation "Polo Players' Edition." A suit ensued. The lower court found trademark infringement and issued a broad injunction. In this case, the Fifth Circuit agreed with the lower court on the issue of infringement, noting, however, the tension between the Lanham Act and the First Amendment where the marks related to publications such as books and magazines. The Court, among other things, noted the Second Circuit rule that unless the title has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the title explicitly misleads as to the source or the content of the work, literary titles would not violate the Lanham Act. Here, the Fifth Circuit did find that the argument for confusion, i.e., misleading the public, was sufficiently particularly compelling to overcome the First Amendment limitation. However, the Fifth Circuit went beyond this to question the remedy found by the lower court. The lower court essentially enjoined use of POLO for a magazine about lifestyles, but allowed continued use of POLO with regard to "The Players' Edition." The court noted first that there were serious First Amendment questions because magazine titles were not merely commercial speech, but rather a hybrid of express and commercial speech. In addition, the court found that there were certain practical limitations in trying to enjoin certain editions and not other editions of the magazine. The court noted that it was undisputed that "The Polo Players' Editions" could continue and it was difficult to see how, over time, the distinction could be made. The Fifth Circuit noted that Ralph Lauren was biting the hand that fed him since his POLO products originally got their aura from the sport. All this, coupled with the sophistication of the buyer, led the court to believe that a disclaimer would be sufficient for the purposes of protecting the Lauren products. Thus, the case was remanded for a decision on the appropriate remedy. Thhttp://caselaw.findlaw.com/cgi-bin/getcase.pl?court=5th&navby=case&no=9920754CVO ELVIS MAY BE ALIVE BUT A SUIT ABOUT HIM IS NOT Brewer-Giorgio et al. v. Producers Video, Inc. (Eleventh Cir. - July 3, 2000) If you were one of those people who believed that Elvis is still alive, Gail Brewer-Giorgio was the writer for you. This suit involves a book, script and other materials she developed in connection with a television program concerning whether Elvis is still here. She initially worked with the Defendant to develop a script for the dearly noted departed, but had a parting of the ways. The television program was aired in 1992. Right before the statute of limitations ran, Ms. Brewer-Giorgio sued based on, among other things, copyright relating to her books. However, she did not file a copyright suit based on her draft scripts since she had as of yet not obtained a copyright in them. A number of years thereafter, she attempted to amend the original Complaint to add a claim for infringement of copyright of the script saying essentially that there was no violation of the statute of limitations since the amendments would relate back to her original filing with regard to copyright infringement on other matters. The Court pointed out that there was no copyright registration in existence as of the date that the copyright claim was barred by the statute of limitations and, accordingly, that the Judge was well within his discretion to bar the amendment of the Complaint since such amendment would be futile. The decision can be viewed at: http://caselaw.findlaw.com/cgi-bin/getcase.pl?court=11th&navby=case&no=9913515OPN LEGAL JIU-JITSU Gracie et al. v. Gracie et al. (Ninth Cir. - July 6, 2000) Two first cousins Carley Gracie and Rorion Gracie both operated jiu- jitsu instruction businesses in California. One sued the other for infringement of the registered marks GRACIE JIU-JITSU and the Triangle Design Logo. The jury found that Rorion did not have a valid federal service mark for GRACIE JIU-JITSU but he did have a valid federal registered mark for the registered Triangle Design Logo which the Defendant had willfully infringed, awarding $108,000 in damages. The District Court entered judgment for that amount but denied the Plaintiff's motion to order cancellation of the federal registration of GRACIE JIU-JITSU service mark. The Court also awarded $620,000 in attorneys' fees. The Ninth Circuit found the District Court erred in refusing to cancel the registration for GRACIE JIU-JITSU following the jury's finding of invalidity. Once the District Court gave the jury the power to determine the validity of Rorion's federal registration, refusing to cancel the registration after the jury declared it to be incapable of serving as a mark was inconsistent with the District Court's duty to give effect to a jury's verdict. The Court did note, however, that it is a general rule that the prevailing party in a case involving Lanham Act and non-Lanham Act claims can recover attorneys' fees only for the portion of the fee related to the Lanham Act claims. It can only receive payment for both when the Lanham Act claims and the non-Lanham Act claims are so intertwined that it is impossible to differentiate between the work done on the separate claims and, accordingly, remanded the matter to the District Court to attempt to apportion between the service on the two matters or to make a finding that apportionment would be impossible. The decision can be viewed at: http://caselaw.findlaw.com/cgi-bin/getcase.pl?court=9th&navby=case&no=9815672 NABBING THE NAPSTER A & M Records, Inc. v. Napster, Inc., et al. (N.D. Cal. - Opposition of Defendant Napster, Inc. to Plaintiffs' Motion for Preliminary Injunction) For those of you who don't live on the net, Napster is a program designed to get around the copyright laws or at least paying royalties. You download the Napster program from a web page. You do not download copies of music. Napster searches for a desired song on internet sites where individuals have made digital copies of recordings for free downloading. Obviously, such a program is upsetting to the music industry and makes a large number of people who have quite haven't mastered the concept of intellectual property quite happy, or at least richer by saving the $12 or so which the CD would cost. Not surprisingly, members of the industry sued. The industry made a Motion for Preliminary Injunction. The judge in a bench decision granted the motion but the 9th Circuit has stayed the injunction pending appeal. While we don't have the 9th Circuits opinion lifting the stay, we have located the motion requesting the injunction be stayed. The motion provides information as to the reasons the injunction was originally granted. The motion can be seen at: http://dl.napster.com/napster_stay.pdf |
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