April 22, 2008 Right of Publicity

Borat movie plaintiff not successful in image appropriation case

[Brian Beckham is a contributor to Internet Cases and can be contacted at brian.beckham [at] gmail dot com.]

Lemerond v. 20th Century Fox, No. 07-4635, 2008 WL 918579 (S.D.N.Y. March 31, 2008)

In the movie Borat: Cultural Learnings of America for Make Benefit Glorious Nation of Kazakhstan, the fictional Kazakh character (alter ego of comedian Sacha Cohen) journeys to America — all the while videotaping his interactions with unsuspecting people. One scene shows Borat greeting plaintiff Lemerond (“Hello nice to meet you. I’m new in town. My name a Borat”), then promptly running off in the opposite direction screaming (“Get away! What are you doing?”). (Those who have not seen the movie should note that the text does not capture the awkwardness of the exchange). The 13-second clip is shown twice in the full-length film, as well as in a movie trailer (but in the trailer the plaintiff’s face is blurred).

Plaintiff Lemerond filed suit under New York Civil Rights Law section 51 and New York common law for the unlawful use of his image. Defendant 20th Century Fox filed a 12(b)(6) motion to dismiss the suit for failure to state a claim. The court granted the motion.

Since New York does not recognize a common law right of privacy (the related right of publicity, like a trademark must be used in commerce to identify the source of goods or services — celebrities would normally enjoy such a right), the court decided the plaintiff’s suit on the basis of whether his likeness was used for “advertising purposes or purposes of the trade” without written permission. The most significant question was whether his appearance in the clips and trailer was for advertising purposes.

The court offered what might be considered a strained reading of the New York statute. It first cited to case law that held the statute was limited to “nonconsensual commercial appropriations of the name, portrait, or likeness of a living person.” It then pointed to another case which held that the nonconsensual use of a person’s image to depict “newsworthy events or matters of public interest” is protected by the statute. The court then quoted yet another case stating that this newsworthiness exception broadly covered “social trends, or any subject of public interest” and went on to observe that “public interest” and “newsworthy” have been defined in the most liberal and far reaching terms. Accordingly, the court found that Borat’s antics fit “squarely” within the newsworthiness / social commentary exception of the New York statute, stating that

[T]he movie employs as its chief medium a brand of humor that appeals to the most childish and vulgar in its viewers. As its core, however, Borat attempts an ironic commentary of ‘modern’ American culture…challeng[ing] its viewers to confront, not only the bizarre and offensive Borat character himself, but the equally bizarre and offensive reactions he elicits from ‘average’ Americans.

In a footnote, the court approvingly cited a 1970 case in pointing out that “the mere fact that defendants are spurred by the profit motive and engaged in the commercial exploitation of [a] motion picture does not negate their right to depict a matter of public interest or to advertise the picture by the showing of a ‘trailer’.”

Perhaps an open question is when, if ever, a New York news reporter or movie producer would need permission to use a non-celebrity’s image in his or her reporting, movie, or advertising, i.e., on a subject not necessarily in the public interest.

April 18, 2008 Copyright, DMCA

The vexing linkage between access and protection in DMCA anticircumvention analysis

A couple of days ago David Donoghue wrote about the recent case of Nordstrom Consulting, Inc. v. M&S Technologies, Inc., No. 06-3234, 2008 WL 623660 (N.D. Ill. March 4, 2008). Dave’s post gives a very thorough treatment of all aspects of the case, which involve primarily allegations of infringement of the copyright in software.

The case also involved a claim of circumvention under the Digital Millennium Copyright Act, at 17 U.S.C. 1201(a). The court granted the defendants’ summary judgment motion on this claim.

The dispute arose from a rather typical set of facts. The parties had collaborated on the development of some software. Along the way the principal author of the software became dissatisfied and parted ways. Litigation ensued over the parties’ ownership and use of the source code.

Before plaintiff Nordstrom officially severed ties, he went on vacation. While he was gone, one of the defendant’s employees (Butler) sent Nordstrom an email saying that Butler needed access to the source code which was stored on a computer there in the office, in order to help out a customer. Nordstrom didn’t respond for several days, and in the meantime, Butler disabled the BIOS password for the computer.

Nordstrom sued under Section 1201 over this disabling of the password. The court relied heavily on the Federal Circuit’s decision in Chamberlain Group, Inc. v. Skylink Technologies, Inc., 381 F.3d 1178 (Fed. Cir. 2004) to conclude that there was no violation of Section 1201’s anticircumvention provisions.

The Chamberlain case draws a necessary connection between circumvention and infringement. And the presence of this connection is the vexing part of the analysis. A quick reading of Section 1201 does not reveal the link.

But the Chamberlain court held that Section 1201’s prohibition on circumvention does not give rise to a new property interest, only a new cause of action, one that goes after circumvention of methods controlling access to protected works. One can’t pursue a defendant just for circumvention in a vacuum, so to speak. The circumvention has to bear some “reasonable relationship to the protections that the Copyright Act otherwise affords copyright owners.” Chamberlain, 381 F.3d at 1202. In other words, without infringement or the facilitation of infringement arising from the cirumvention, a cause of action under 1201 does not arise. The linkage is one between access and protection.

The holding of the Nordstrom case as to the DMCA claim picks up on this link between access and protection. Summary judgment on the circumvention claim was proper because the plaintiff could not show that Butler’s disabling of the BIOS password protection on the computer storing the source code enabled any infringement. The evidence before the court was that Butler accessed the code to fix a problem on behalf of an authorized licensee of the software. Because of the license, there could be no infringement. Without any connection to infringement, under the teaching of Chamberlain, a cause of action for circumvention could not be sustained.

April 18, 2008 Miscellaneous

World IP Day coming up on April 26th, 2008

Saturday, April 26, 2008 marks the ninth annual World Intellectual Property Day. Begun in 2000 by the World Intellectual Property Organization, World IP Day aims to illustrate the benefits of and cultivate respect for IP. WIPO’s Director highlights this in a message noting that IP development and protection contributes to new technologies and an overall richer human experience for everything from the means to tackle global warming to watching the world wide broadcast of the Olympic games, and that IP nurtures human creativity, while fostering cultural, economic, and social development. From the telegraph to the Internet, IP increasingly connects the world.

Each country celebrates World IP Day in its own way, and a list of scheduled activities can be found here; a list of suggested activities such as concerts, essay-writing contests, and general awareness-building activities can be found here. A gallery of past and present artwork celebrating World IP Day is available here (this year’s poster here).

April 14, 2008 Cybersquatting, Trademarks

Former band members’ use of service mark is not so Chic

Rogers v. Wright, No. 04-1149, 2008 WL 857761 (S.D.N.Y. March 31, 2008)

The U.S. District Court for the Southern District of New York has issued a permanent injunction restricting the use of the service mark CHIC in connection with musical performances by two former members of the musical group of the same name.

Plaintiff Rogers (founder of the music group Chic) claimed that Defendants Wright and Martin (former Chic singers) infringed his rights in the service mark CHIC for music and vocal entertainment services. Rogers formed the group in 1977 and obtained service mark registrations for the band name in 1982 and 2004.

Chic

Wright and Martin, who previously performed on Chic albums and in live televised performances, had been performing in the U.S. and abroad since 2003. At various times, and without permission, they operated a Web site at www.ladiesofchic.com, and billed themselves as “First Ladies of Chic”, “Chic”, “The Original Ladies of Chic”, “Chic: Live!”, and “Les Chic”. They were billed by one venue as “original artists singing all the original hits.”

The court first found that Rogers had valid rights in the CHIC mark — regardless of whether those rights arose from the 1982 or 2004 registrations or from common law rights. The court then found a likelihood of confusion between Rogers’s mark and Wright and Martin’s use of the same using the 8-factor Polaroid test.

Specifically, the court found: (1) the CHIC mark was “at least moderately strong” in that it had created a tendency in the minds of consumers to associate it with Rogers’s band; (2) the defendants’ uses of the Chic mark (as noted above) were “sufficiently similar” to cause confusion; (3) the parties competed directly in the same market; (4) an analysis under “bridging-the-gap” was not required because of the third factor; (5) there was some evidence of actual confusion; (6) the defendants intended to take advantage of the plaintiff’s reputation and good will in adopting their various uses of his mark; (7) there was little evidence of the quality of defendant’s product; and, (8) similarly, there was little evidence of the sophistication of the relevant consumer group, i.e., concert attendees or promoters. Taking all of these factors together, the court found “little difficulty” in finding Defendants’ use of Plaintiff’s mark was likely to cause confusion.

The court was not persuaded by the defendants’ attempted fair use defense. The defendants had certainly used CHIC as a mark (and not, for example, mere comparative advertising or other descriptive purposes – see, e.g., Playboy Enters., Inc. v. Welles, 279 F.3d 796 (9th Cir. 2002). Moreover, the defendants’ promotional materials used the CHIC mark in a prominent manner. The court was similarly unpersuaded by the defendant’s argument that the Lanham Act did not apply to acts outside of the U.S.

April 8, 2008 Fraud/Misrepresentation, Trademarks

Apple vs. the Big Apple charity over apple-shaped logos

Apple, Inc. is seeing red over New York City’s attempts to register a trademark for green-friendly services, and the dispute challenges one of Apple’s trademark registrations for its ubiquitous logo.

Apple comparison

Apple has filed an Opposition (No. 91/181,984) with the United States Patent and Trademark Office’s Trademark Trial and Appeal Board against NYC & Company, Inc.’s attempts to register the “Infinite Loop Apple” design mark (shown above at left). Apple asserts that use of NYC’s mark would likely cause confusion with Apple’s famous logo (shown at right) especially given the presence of Apple’s flagship Manhattan retail location.

NYC’s application states the mark is to be used for, among other things, promoting “education on environmentally friendly policies and practices of the City of New York” (See Application Nos. 77/179,942 and 77/179,968). Apple claims that confusion would be likely because of the similarities in appearance and commercial impression between the marks, and because certain of the goods and services recited by NYC are identical or highly related to goods and services offered under the Apple mark.

NYC answered the Notice of Opposition and filed a Counterclaim seeking to cancel Apple’s registration for the logo as used in connection with “mugs, dishes, drinking glasses, and wine glasses.” NYC claims that Apple procured the registration through fraud, because it knowingly misrepresented that it was using the mark in connection with those goods on its Declaration of Use and Renewal Application under sections 8 & 9 of the Trademark Act, when it fact no such use was being made. If the Board finds such fraud, Apple faces cancellation of its entire registration for those goods. Fraud has been a recurring issue before the TTAB of late, as evidenced by this recent post from John Welch’s TTABlog.

Apple, of course, denies the allegations of fraud. In any event, if the cancellation is successful, Apple’s most important marks (i.e., for computer hardware) would remain intact.

Time will tell whether Apple’s efforts to protect its mark will bear fruit. The company probably feels even more incentive to keep others from trading on its reputation and goodwill after hearing about this recent study, which found that people who see the Apple logo may feel more creative.

April 2, 2008 Trademarks

Blackberry and Twitter in a trademark tussle?

In April 2007, Twitter, Inc. filed application no. 77166246 to register the trademark TWITTER with the U.S. Patent and Trademark Office. (Twitter is the ever-more-popular tool that enables “friends, family, and co–workers to communicate and stay connected through the exchange of quick, frequent answers to one simple question: What are you doing?” It’s fun. You should try it if you’re not using it already. And you can start by following me.)

Anyway, in February the application reached the point where it was published for opposition. That means that any other trademark owner out there who feels it would be damaged by the TWITTER mark being registered can oppose the application in the Trademark Office.

On March 14, 2008, Research in Motion (of Blackberry fame) stepped up and requested an extention of time to oppose the TWITTER application. I ran a quick search for registered marks owned by Research in Motion (you can do that yourself here), but didn’t see anything close to “Twitter”. Can anyone think of an unregistered mark that RIM owns that is similar to TWITTER? Or any other reason why RIM would want to oppose this application? Comments are open, as they have been for some time.

April 1, 2008 Section 230

No CDA immunity for adult-oriented Web site in right of publicity case

Doe v. Friendfinder Network, Inc., — F.Supp.2d —-, No. 07-286, 2008 WL 803947 (D.N.H. March 28, 2008)

Plaintiff Doe learned that a nude image and some biographical information about herself had been used to set up a bogus profile on the adult-oriented personal-ad Web site Adult Friend Finder. She sued the operator of the site alleging a number of claims, like defamation and intentional infliction of emotional distress. She also alleged misappropriation of her right of publicity under state law, and false designation of origin and false advertising under the federal Lanham Act.

Adult Friend Finder moved to dismiss the claims, arguing that the Communications Decency Act (“CDA”) at 47 U.S.C. 230 immunized the site from liability for the information provided by someone other than the site operator. The court agreed with Adult Friend Finder as to the majority of the claims, holding that the claims were barred by the CDA where the plaintiff sought to impose liability on the site as the publisher or speaker of the information.

But the court held that the CDA did not immunize Adult Friend Finder from Doe’s state law claims for violation of the right of publicity, or for violation of the federal Lanham Act.

Section 230(e)(2) provides that “[n]othing in this section shall be construed to limit or expand any law pertaining to intellectual property.” You may recall that last year the Ninth Circuit [in Perfect 10, Inc. v. CC Bill, LLC, 488 F.3d 1102 (9th Cir. 2007)] held that 230(e)(2)’s restriction on immunity only applied to federal claims involving intellectual property (leaving state law claims barred).

The court in this case disagreed with the Ninth Circuit on this point, looking at the plain language of the statute and finding no meaningful distinction between state and federal causes of action involving intellectual property, especially given the presence of the word “any” when decribing “law[s] pertaining to intellectual property.”

March 31, 2008 Trademarks

1-800-SKI-VAIL found not to infringe VAIL ski resort mark

Vail Associates, Inc. v. Vend-Tel-Co., Ltd., — F.3d —-, 2008 WL 342272, (10th Cir. February 7, 2008)

[Brian Beckham is a contributor to Internet Cases and can be contacted at brian.beckham [at] gmail dot com.]

Vail Associates, owner of the incontestable service mark VAIL (which is used in connection with a wide variety of skiing and resort-related services), sued Vend-Tel-Co, the operator of the “1-800-SKI-VAIL” phone number, for infringement. After trial, the District Court entered judgment in Vend-Tel-Co’s favor, and Vail Associates sought review.

The Court of Appeals for the Tenth Circuit affirmed the lower court’s judgment, holding that use of Vend-Tel-Co’s “1-800-SKI-VAIL” mark (registered in 2001) was not likely to cause confusion with Vail Associates’s VAIL mark (registered in 1989).

Key to the appellate court’s decision was witness testimony from the proceedings. Vail Associates’s vice-president of marketing and sales testified that customers dialing the phone number would mistakenly think they were reaching Vail Associates, but acknowledged “hundreds of uses of the letters V-A-I-L in the names of [other] businesses in the Vail Valley.” As for the descriptive term “ski,” testimony from another witness revealed ownership of no less than 23 vanity phone numbers incorporating that term. Also important was the testimony of a travel agent who fielded calls to the number 1-800-SKI-VAIL. She testified that the typical caller would ask questions of a general nature (e.g., about products, directions, lift prices, ski conditions, etc.).

Vend-Tel-Co’s main witness, trademark attorney Kenneth Germain, testified that in the context of ski resorts, the VAIL mark was a “world renowned” strong mark, but that in the context of goods and services offered by businesses in the Vail area, it was weak (being geographically descriptive). Germain further testified that he did not deduce an intent to infringe (Vend-Tel-Co’s advertising materials promoted area businesses), and that use of the VAIL mark was a necessary, good faith component of the Vend-Tel-Co’s marketing activities.

Viewing the evidence in the light most favorable to the Vail Associates, the Court of Appeals was satisfied that the District Court did not err in finding that consumers perceive the VAIL mark as referring to a particular geographic location, namely, a Colorado skiing destination. It held that Vail Associates failed to prove consumers associate the word “Vail” exclusively with its resort services.

As to the likelihood of confusion factors, the court found none favored Vail Associates. It observed that (1) Vail Associates offered little evidence of actual confusion, and the testimony reflected that consumers recognized Vail as a destination, not a specific service provider, (2) despite some showing of secondary meaning, the VAIL mark was found to be “not particularly strong”, (3) Vail Associates did not prove that in creating the phone number Vend-Tel-Co intended to deceive the public, trade on Vail Associates’s goodwill or reputation, or infringe its mark, (4) the marks were not similar in sight, sound, or meaning, (5) the parties’ services were not similar, but rather “symbiotic”, and were not marketed in a similar manner, or with similar connotations, and (6) consumers exercised great care in purchasing Vail Associates’s services which the court termed “first class accommodations at first class prices” in contrast to dialing a toll-free number.

The dissenting opinion offered that: (1) the marks were confusingly similar (indeed, the additional “1-800-SKI” elements furthered consumer confusion), (2) Vend-Tel-Co intended to trade on the goodwill and reputation of Vail Associates, (3) there was ample testimonial evidence of actual confusion (namely the travel agent’s testimony), (4) the services and their marketing “appeal to exactly the same class of consumers,” (5) despite care exercised by consumers in purchasing ski packages, there was significant, uncured initial interest confusion, and (6) VAIL is an incontestible descriptive mark whose strength was proven by evidence of secondary meaning, and that Vend-Tel-Co did not take VAIL out of the ski resort services context; instead, it emphasized that context with their choice of mark.

March 25, 2008 About This Site

New contributor to Internet Cases: Brian Beckham

I’m pleased to welcome Brian Beckham, the newest contributor to Internet Cases. Brian is currently based in Switzerland as a Case Manager with the World Intellectual Property Organization (WIPO) Arbitration and Mediation Center. He’s licensed to practice law in Virginia, and while he was practicing in the states, he focused on trademark law (as well as communications related contracts and licensing and nonprofit law) before joining WIPO in 2007. He holds a degree in philosophy from Ohio University, a J.D. and LL.M. in information technology from the John Marshall Law School in Chicago, and can often be found cycling the Alps surrounding Geneva, Switzerland. Drop him a line at brian.beckham [at] gmail.com. Although Brian works for WIPO, his posts are made in a personal capacity and recap publicly available information. Here’s a link to a more complete bio: http://jbrianbeckham.blogspot.com.

Brian’s first post deals with NASCAR’s unsuccessful attempts to wrangle a domain name from another party using the mark within a domain name.

March 25, 2008 Cybersquatting, Trademarks

NASCAR beat to checkered flag in domain name dispute

[Brian Beckham is a contributor to Internet Cases and can be contacted at brian.beckham [at] gmail dot com.]

Complainant NASCAR filed a complaint under the Uniform Domain Name Dispute Resolution Policy (“UDRP”) against The Racin’ Connection, Inc. over the domain name nascartours.com. In the stock car racing business since 1948, NASCAR is a household name in U.S. motor sports. Its DAYTONA 500 attracted 30 million television viewers in 2007. NASCAR licensed its various marks to over 200 licensees to the tune of USD 2 billion in 2006. An entire industry revolves around providing tickets and packages to NASCAR-sanctioned events. One such entity, The Racin’ Connection, Inc. has provided such tour packages for over 30,000 customers in part through its website at the nascartours.com domain name since 1996.

NASCAR alleged in its complaint that the unlicensed domain name was confusingly similar to its NASCAR mark, that The Racin’ Connection, Inc. had no rights or legitimate interests in the domain name, and that the domain name was registered and was being used in bad faith. NASCAR further asserted that use of its marks in a domain name (as opposed to on a website) was not a fair use, and that such use was intended to “entice…[and] misleadingly divert consumers for [] commercial gain.”

The Racin’ Connection, Inc. argued that the domain name was not confusingly similar to the NASCAR marks, but that its use of the marks was a fair use as part of a bona fide offering of services as a “race package reseller”. It further pointed out that it promoted only NASCAR events and displayed a disclaimer on its website.

Finding the The Racin’ Connection, Inc.’s argument of laches unavailing, the 3-member Panel found that the domain name was confusingly similar to the NASCAR mark. The Panel noted that there is a split in URPD cases regarding whether a bona fide offering of goods or services on a reseller’s (authorized or not) website using a mark in a domain name confers a legitimate interest on the reseller. In this case, the Panel found that The Racin’ Connection, Inc.’s use of the NASCAR mark in its domain name did confer such rights. (The Panel considered several factors from the previous Oki Data case paramount: The Racin’ Connection, Inc. was only offering NASCAR tours; the website disclosed the parties’ relationship; and the respondent did not try to “corner the market” in domain names incorporating the mark). Finally, the Panel found that The Racin’ Connection, Inc.’s sales of NASCAR tours since 1992 and disclaimer on its website coupled with a lack of evidence from NASCAR as to any actual consumer confusion negated a finding of bad faith in its registration or use of the domain name.

Ultimately, despite confusing similarity between the domain name and the NASCAR mark, given the good faith use of the mark in connection with a bona fide offering of services and the rights created thereby, NASCAR was not able to stop the use of its mark in a domain name.

The Full text of the Decision is available at: http://www.wipo.int/amc/en/domains/decisions/html/2007/d2007-1524.html

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