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U.S. Intellectual Property and New Media Law Update HAND BAGS OF DOUGH AT STAKE Louis Vuitton Malletier v. Dooney & Bourke, Inc. (2nd Cir. 2006) PARAMOUNT’S FANCY FOOTWORK - REAL-LIFE ‘FLASHDANCER’ CANNOT CLAIM COPYRIGHT OWNERSHIP IN MOVIE Maureen Marder v. Jennifer Lopez; Sony Music Entertainment, Inc.; Paramount Pictures Corporation (9TH Cir. 2006) STOCK FALLS FOR DOW & MCGRAW Dow Jones & Co., et al. V. The Mcgraw Hill Companies, Inc. (2nd Cir. 2006) HAND BAGS OF DOUGH AT STAKE Louis Vuitton Malletier v. Dooney & Bourke, Inc. (2nd Cir. 2006) Louis Vuitton sued Dooney & Bourke for trademark infringement of its Multicolore patterned pocketbook. Early in the case, Plaintiff Louis Vuitton filed and lost its motion for preliminary injunction to stop D&B from imitating its "LV" logo style with its "DB" logo style. In denying the motion, Judge Shira Scheindlin said that issuance of an injunction would hurt competition by giving the French luxury goods company a monopoly over a look. On Appeal, the Second Circuit affirmed the denial of the injunction based on Federal dilution, but vacated and remanded the portion of the order addressing the remaining claims, including Lanham Act and New York state trademark infringement and dilution claim. Among the reasons for the remand were that: 1) the District Court placed too high a burden on Plaintiff by requiring a "strong" likelihood of success on the merits as a opposed to a mere "likelihood of success"; and 2) the Court inappropriately focused on the similarities of the marks in a side-by-side comparison instead of viewing the products sequentially in the context of the marketplace. The Second Circuit concluded by indicating that "on remand, [the court] should consider the precise trademark claimed by the plaintiff and whether, under market conditions and when viewed sequentially, Vuitton can prove likelihood of confusion between its Multicolore mark and the pattern of the D&B's It-Bag." With much at stake, I am certain this case will be revisited in a later newsletter. http://www.ipcounselors.com/Louis.pdf http://ttabvue.uspto.gov/ttabvue/ttabvue-79000042-EXT-3.pdf PARAMOUNT’S FANCY FOOTWORK - REAL-LIFE ‘FLASHDANCER’ CANNOT CLAIM COPYRIGHT OWNERSHIP IN MOVIE Maureen Marder v. Jennifer Lopez; Sony Music Entertainment, Inc.; Paramount Pictures Corporation (9TH Cir. 2006) Plaintiff-Appellant, Marder, sued Paramount seeking (i) a declaration that she had an ownership interest in the copyright in the hit 1980s movie Flashdance, and was therefore entitled to royalties in respect of her interest, and (ii) damages for infringement of that copyright based on the 2003 Jennifer Lopez music video I'm Glad (produced by Sony), which included J-Lo recreating certain scenes from the movie. It seems the storyline of the movie Flashdance was based on Marder's own life story. Marder claimed that she had contributed to the creation of the film by meeting with the film's creators to talk about her real-life experiences as an exotic dancer and working on the outline of a screenplay with writer Joe Eszterhasin. Unfortunately for Marder, she had in 1982 signed a (very broad) Release agreement releasing Paramount "...of and from each and every claim, demand, debt, liability, cost and expense of any kind or character which have arisen or are based in whole or in part on any matters occurring at any time prior to the date of this Release". The Release also discharged Paramount from claims "arising out of or in any way connected with, either directly or indirectly, any and all arrangements...in connection with the preparation of screenplay material and the production, filming and exploitation of...Flashdance". The Release also granted Paramount the right to make a movie based on Marder's life story. The movie went on to gross over $150 million since its release in 1983. In contrast Marder received the sum of $2300.00 in exchange for her Release of Paramount. Marder's claims were dismissed in the District Court (Central District of California). On appeal, the Ninth Circuit Court of Appeals affirmed the District Court's order. Despite the relatively low consideration received by Marder in exchange for the Release, the Court found that the clear meaning of the terms of the Release, as understood in their ordinary sense, were apparent to Marder and admitted of only one reasonable interpretation. The language and terms of the Release therefore knocked out each of Marder's claims. Marder argued that the term "any matters", as used in the Release, referred only to legal claims arising prior to the signing of the Release, and did not refer to any and all events surrounding her involvement in the creation of Flashdance. The Court rejected such a legalistic reading, finding instead that by giving up "each and every claim", including "any arrangements...in connection with the preparation of screenplay material" Marder released Paramount of all copyright (and other) claims based on any input she contributed up to the date of the Release. Since she could not establish copyright ownership, it followed that she was not entitled to royalties or any damages from Jennifer Lopez or Sony. The court also noted that Marder was represented by counsel at the time of signing the Release in 1982, and that at no point did Marder claim that counsel's advice was deficient or ineffective. http://caselaw.lp.findlaw.com/data2/circs/9th/0455615p.pdf STOCK FALLS FOR DOW & MCGRAW Dow Jones & Co., et al. V. The Mcgraw Hill Companies, Inc. (2nd Cir. 2006) Dow Jones & Company, Inc. and The McGraw-Hill Companies, Inc. filed suit in the U.S. District Court for the Southern District of New York against the International Securities Exchange, Inc. (ISE) and Options Clearing Corporation ("OCC"). Plaintiffs' asserted that defendants' creating, listing, trading, and clearing of options on the shares of exchange funds that track the performance of stock market indexes created by plaintiffs constituted misappropriation, unfair competition, and trademark infringement and dilution. Both plaintiffs' sought preliminary injunctions.Error! Hyperlink reference not valid. The U.S. District Court for the Southern District of New York Court dismissed the complaints against ISE and OCC, and denied injunctive relief against ISE.. The The U.S. Court of Appeals for the Second Circuit affirmed. The issue considered on appeal was "whether an options exchange, by creating, listing, and facilitating the trading of options on shares in an exchange traded fund ("ETF") designed to track a proprietary market index, misappropriates intellectual-property rights of the creator of the index." The Second Circuit held that by authorizing ETF shares and options to be freely sold, plaintiffs could not control the resale and public trading of those shares and options. In that same vein, since "defendants do nothing more than draw information from ..." plaintiffs' publication of their index values, the Court held that any use of the indexes by defendants did not constitute misappropriation. As to the trademark claims, the Second Circuit found that a mere assertion by ISE to use plaintiffs' respective trademarks, without more, did not give the defendants fair notice of the claims against them and did not show plaintiffs were entitled to relief. McGraw Hill, however, unlike Dow Jones, did allege one specific instance of what it perceived to be a trademark violation. Yet, the court found that this claim failed as well, since ISE's use of the term SPDR was a fair use, which described McGraw-Hill's product by its brand name. http://caselaw.lp.findlaw.com/data2/circs/2nd/054812p.pdf |
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