|
|
|
|
|
|
||||
|
|
|
|
|
|
» Home Page » Members » Practice Areas » Clients   » Publications Articles VIP Newsletter Guide to Registering Read Excerpts  » Events & Speaking » Contact Us » 1-800-343-IDEA |
|
U.S. Intellectual Property and New Media Law Update EINSTEIN’S HAIR TO STAND ON END, IF ATTORNEYS’ FEES AWARDED Electronic Arts, Inc. et al. v. Hebrew University of Jerusalem, et al. (Ninth Cir., May 7, 2004) LITIGATION IS NOT MUCH FUN Silverstein v. Penguin Putnam, Inc. (Second Cir., May 7, 2004) DIPPIN’ DOTS IS CREAMED Dippin’ Dots, Inc. v. Frosty Bites Distribution, LLC (Eleventh Cir. May, 2004) MAXWELL HUFFS AND PUFFS… TMI Inc. v. Joseph M. Maxwell (Fifth Circuit, April 2004) EINSTEIN’S HAIR TO STAND ON END, IF ATTORNEYS’ FEES AWARDED Electronic Arts, Inc. et al. v. Hebrew University of Jerusalem, et al. (Ninth Cir., May 7, 2004) Electronic Arts ("EA"), a popular gaming company filed suit against Hebrew University of Jerusalem ("HUJ"), seeking declaratory judgment that its use of Albert Einstein's image in a complex video game did not infringe upon HUJ's legal ownership of Einstein's publicity rights. After much legal showmanship, HUJ filed a covenant that it would not sue EA for using Einstein's image in its game. Arguing that its covenant not to sue mooted EA's action for declaratory judgment, defendant HUJ moved for dismissal which the District Court granted. The district court did, however, retain jurisdiction to determine attorneys' fees. EA then sought attorneys' fees pursuant to the Astaire Celebrity Image Protection Act, Cal. Civ. Code § 3344.1 and the request was denied. EA argued that its declaratory judgment action was brought under § 3344.1 and triggered the mandatory attorneys' fees clause. The district court held that § 3344.1 did not contemplate any actions brought by an alleged infringer. EA appealed this decision in belief that while Cal. Civ. Code § 3344.1 does not specify which of the affected parties may bring suit, it refers to the person who violated the section and the injured party or parties. Similarly, with respect to attorneys' fees, § 3344.1 provides that attorneys' fees will be awarded to the prevailing party, regardless of whether the prevailing party is the holder of the publicity rights or the alleged infringer. Further, the legislature considered and rejected restricting attorneys' fees to the injured party. The Ninth Circuit bought this argument by comparing § 3344.1 to 17 U.S.C. § 505 of the Copyright Act which provides for a discretionary award of attorneys' fees to the "prevailing party" in a civil action. The Court noted that other Courts have interpreted that provision to permit fees for declaratory judgment plaintiffs and therefore the almost identical language in Cal. Civ. Code § 3344.1 should be interpreted and applied the same way. The Appeals Court remanded for a determination of whether EA was the prevailing party and, if so, of the amount of fees. Unpublished — no link — But see: 2004 U.S. App. LEXIS 904 LITIGATION IS NOT MUCH FUN Silverstein v. Penguin Putnam, Inc. (Second Cir., May 7, 2004) In 1996, Stuart Silverstein released Not Much Fun: The Lost Poems of Dorothy Parker. Early on, Dorothy Parker sold hundreds of poems and verses to popular magazines. She included some of these works in her first and best volume of collected poetry, Enough Rope, in 1926, but many were overlooked. It is these more than 120 neglected poems that form Not Much Fun. Silverstein alone researched and compiled the book which included a 60-page introductory biography. Silverstein brought the book to Defendant Penguin, in 1994, and was offered $2,000 to publish it as part of a larger collection of Parker's poems which Penguin already published. Penguin was outbid by Scribner who proceeded to publish the Silverstein's title. In 1999, Penguin released Complete Poems, which contained a large section titled "Poems Uncollected by Parker." This section was - Not Much Fun, less the introduction – and with a slight change to the order in which a few the poems were presented. Silverstein sued asserting claims against Penguin for copyright infringement, violation of the Lanham Act, immoral trade practices and unfair competition, and for an injunction. After a hearing, the Court granted summary judgment in favor of Silverstein and issued an injunction prohibiting Penguin from distributing and recalling the book from retailers. Penguin appealed to the Second Circuit who overturned the judgment and remanded for further proceedings. The appeals court concluded that in its view there were material issues of fact as to whether Penguin had taken any creative input by Silverstein that is more than trivial. Silverstein argued that a protectable right exists in his selection of poems by showing that he excluded from his compilation some of the uncollected poems, either because he did not consider them to be "poems" or because he believed they had not been written by Mrs. Parker. The Second Circuit panel also felt that the right asserted by Silverstein in a compilation copyright was too slight to support an injunction against publication of the Penguin volume given that Silverstein held no copyright in the poems themselves; that Penguin had not used Silverstein's arrangement; and the chief principle of Silverstein's selection--that the poems previously had not been collected--reflects an exercise of judgment by Mrs. Parker, not by Silverstein. Silverstein seems to be learning that litigation is Not Much Fun. The decision can be viewed at: http://caselaw.lp.findlaw.com/data2/circs/2nd/037363p.pdf DIPPIN’ DOTS IS CREAMED Dippin’ Dots, Inc. v. Frosty Bites Distribution, LLC (Eleventh Cir. May, 2004) Dippin' Dots, Inc. brought suit under the Lanham Act (15 U.S.C.S. § 1125), alleging that its logo and trade dress in its brightly colored small flash-frozen round or ball shaped ice cream, known as DIPPIN' DOTS, were being infringed by its competitor, Frosty Bites. The District Court for the Northern District of Georgia granted summary judgment in Frosty Bites' favor and Dippin' Dots appealed the District Court's ruling. The Court of Appeals affirmed, finding that Appellant's brightly colored small frozen round or ball shaped ice cream were functional and therefore not entitled to trade dress protection. The court reasoned that "any flash-frozen ice cream product will inherently have the same features as dippin' dots", making the product design as a whole essential to its purpose and affecting its quality. Dippin' Dots also argued that Frosty Bites' logo was confusingly similar to its own. However, the court ruled that the respective logos were overwhelmingly dissimilar, even when viewed by impulse purchasers, and affirmed on this point as well. The decision can be viewed at: http://www.ca11.uscourts.gov/opinions/ops/200314047.pdf MAXWELL HUFFS AND PUFFS… TMI Inc. v. Joseph M. Maxwell (Fifth Circuit, April 2004) TMI, Inc. builds and sells houses under the service mark TRENDMAKER HOMES and owns the domain name registration of www.trendmakerhomes.com. A disgruntled prospective customer, Joseph Maxwell, established a website, which had no paid advertising and did not link to any other sites, using the domain name www.trendmakerhome.com. The site was intended and used to voice Maxwell's complaints about his experiences with TMI. After a year or so, Maxwell's domain name registration expired. Thereafter, TMI sent Maxwell a cease and desist letter and Maxwell retaliated by registering the domain name www.trendmakerhome.info, but never posted any content thereon. TMI initiated a law suit under the anti-dilution provision of the Lanham Act, the Anti-Cybersquatting Consumer Protection Act ("ACPA), and the Texas state anti-dilution statute. The district court concluded that the ACPA required commercial use for liability, but did not address whether commercial use was a required element of the federal anti-dilution statute. The court of appeals held that commercial use was in fact required to find dilution, but did not rule on whether the ACPA covered non-commercial use. Instead, the court focused it analysis, with regard to the ACPA, on whether Maxwell had "a bad faith intent to profit from …register, traffic, in, or use a domain name that … is identical or confusingly similar to [TMI's] mark". 15 U.S.C. § 1125(d). Unlike the district court, which found that Maxwell did have the requisite bad faith intent to profit, the Fifth Circuit held that Maxwell's conduct was not the type that the ACPA was intended to prevent, reasoning that Maxwell's intention was to inform consumers about TMI rather than engage in a practice of registering a number of domain names in an effort to sell them to the trademark owner. Lastly, the Fifth Circuit reversed the district court yet again, finding that Maxwell was not liable under the Texas State Anti-Dilution Statute. http://caselaw.lp.findlaw.com/data2/circs/5th/0320243cv0p.pdf |
|
|
|
|
|
|
||||
|
|
Call for a free consultation:
|
|