Over the years I have run across trademark licenses and trademark infringement settlement agreements where one party or the other wants the ability to donate counterfeit goods that may have been confiscated to a charity.  Rights holders often refuse because of the concern that the counterfeit goods may not actually go to a charity, but be placed back into the stream of commerce and resold in the marketplace.  A bigger concern for trademark holders is the quality and safety of the counterfeit/infringing items.  Could someone be hurt by a dye in fabric or paint on a toy?

This December, the homeless in LA benefitted from recently passed Senate Bill 324.  The Los Angeles Police Department piracy unit donated 10,000 pairs of confiscated counterfeit athletic shoes.  Under the California Penal Code section 350, the police may donate, with consent of the trademark owner, confiscated counterfeit goods to organizations serving the homeless.

The New York Times reported this week that in 2009 the City of New York shredded and incinerated tons of “knock-off” clothing collected in police raids.  In the past the City donated these garments to charity organizations that removed the counterfeit trademark markings.  In 2009 the City reports there were no requests for the goods to go to charities.

The US Customs and Border Protection are involved as well.  The New York/New Jersey US Customs and Border Protection field office is the fourth US Customs office to develop a counterfeit donation program.  Los Angeles, Detroit and San Francisco US Customs and Border Protection field offices already have such programs in place.  Most of the items included in the donations are clothing, but there have been some donations of televisions. 

Article 46 of the TRIPS agreement governs what the US Customs and Border Protection may do with confiscated items.  This link is a law review note that gives lots of details on the pros and cons of donating items to charity.   The article looks at the situation that occurred where over $20 million dollars in seized infringing items were provided to hurricane survivors after Hurricane Katrina.

Tareq Salahi, one half of the couple that crashed the White House state dinner a few weeks ago, paid-off his landscaper by a court’s order to turn over a “Patek Philipe” watch valued at more than $15,000.00.  Oops, it was a fake valued at around $100.00.

The Washington Post reports the timepiece was evaluated by a jeweler to determine it was a counterfeit watch. 

My question…. Did Mr. Salahi know he was wearing a fake?  I am assuming the brand on the watch was not misspelled and there were no obvious signs of it being counterfeit.  This article from the New York Times gives some great insight on how every day is “Black Friday” in the counterfeit market.  One vendor on Canal Street in New York was offering deals on “Patek Phillipe” (notice the two “l’s” in Philipe) watches. 

How do you spot a fake a watch? After you confirm the name is spelled correctly, attorney Donald J. Valdez, who specializes in luxury product brand enforcement, says “if you see the second hand going tick, tick, tick … you have a fake.” Valdez continues, “The sweep hand on luxury brand watch will be perpetual motion.  Some fakes have been developed where it is difficult to spot the tick.”

Two other tail-tail signs are the color of the watch casing surrounding the face of the watch varying from an original and the stretch or elasticity in the band. “If you purchase a watch with an expansion band and it expands like a baby gate and doesn’t slide back into place, it is a fake,” says Valdez.

Visual artist Daniel Moore won at the trial level against the University of Alabama's lawsuit alleging Moore's original fine art violated the University's trade dress rights in the school’s football uniform and crimson color.

Moore, a visual artist who attended the University of Alabama, and has sent his children to the University as well, is well-known for his real-life paintings of “great moments” in University of Alabama football history. 

The litigation began in 2005 after numerous years of an amicable relationship between the parties.   In a very large nut shell, from 1991 to 2000 there was a licensing agreement in place allowing Moore to reproduce and offer for sale certain visual works that included “indicia” of the University/Football team.   “Indicia” was defined to include logos, seals, symbols and “Colors: Crimson PMS 201 Gray PMS 429.”  “Uniforms” were never included as “Indicia.”

After the agreement ended, Moore continued to create fine art visual works that included the football team, and uniforms --- but not “Indicia.”  Moore’s defense, “if I am not including ‘Indicia’ there is no reason to pay a royalty.”  The University claimed common law trade dress rights in the team’s uniforms and crimson color and that Moore’s paintings infringed upon such trade dress rights. 

The Opinion is long but does a good job of setting out the arguments.  The case in my mind really turns on the decision in ETW Corp. v. JIREH Publishing, Inc., 332 F.3d 915 (6th Cir. 2003). ETW is the Tiger Wood’s case where the publisher distributed limited edition fine art prints of Tiger Woods. The court in ETW made it clear that First Amendment freedom of expression trumps publicity rights when the work is an original or true limited edition fine art.  If they were talking about coffee mugs and t-shirts, a different decision would have been rendered.

The case style is University of Ala. Bd. of Trustees v. New Life Art, Inc., Civ. No. 7:05-cv-00585-UNAS-RBP (N.D. Ala. 2009).

Sometimes life only gives us time for a quick coffee break and snippet of information that we lawyers tuck in the back of our mind to pull out for later use (either a moment of great insight for a client or a cocktail party story that only other intellectual property attorneys appreciate).

Take your coffee break and enjoy:

Professor Susan Scafidi at the Counterfeit Chic blog takes a quick coffee break and sounds off on Nescafe and Starbucks “Via.”

Trademark lawyer Marty Schwimmer tells us about “stuff he’s gotten free” by blogging and how the FTC will be regulating those “freebies” to bloggers and other social networkers. 

The Hollywood Reporter, ESQ blog reports a lawsuit for theft of an idea against the William Morris Agency for the television show “Shaq vs.”

The Copyright Litigation Blog advises statutory mergers trigger copyright infringement.

Las Vegas Trademark Attorney Ryan Gile tells us “Rat Pack” is generic in connection with Rat Pack tribute shows. 

If you have a little longer coffee break, treat yourself to this week’s Blawg Review #232 from Solo Practice University.  Not IP related, but an interesting read. 

House of Bryant, the administrators for the song “Rocky Top,” sued A&E Television Network for copyright infringement of the song based on an authorized clip of the song included in an episode of the television show “City Confidential” featuring a crime that took place in Knoxville, TN. 

The City Confidential episode aired on December 11, 2004 and included a 12-second clip of the song “Rocky Top.”  The song is included in a scene of a University of Tennessee football game as performed by the school’s marching band.  Defendant’s Memorandum in Support of its Motion to Dismiss states: “During this brief sequence, and as part of the actual noise occurring within the stadium, the UTK marching band can be heard playing an instrumental version of the musical composition “Rocky Top.” The song is audible for a total of approximately twelve seconds; however, the tremendous noise of the crowd and the narration of the documentary obscure the song for approximately six of the twelve seconds. Therefore, the song “Rocky Top” can be heard on its own for only six seconds of the Program.”

A&E, citing the 2008 court ruling regarding the use of the song “Imagine,” argues the usage was “fair use” which is a defense to copyright infringement. In the “Imagine” case, Yoko Ono -- the plaintiff, was denied an injunction for an unauthorized use of the song “Imagine” in the film Expelled, with the court holding the defendant/alleged infringer was likely to prevail on a fair use defense.  A&E, like the defendant in the “Imagine” case, is relying on the transformative nature of the use.  The Defendant’s Memorandum in Support of the Motion To Dismiss argues the use of “Rocky Top” is transformative in that it is used to portray the atmosphere around Knoxville and the lyrics, used in context with the subject matter of the murder mystery, are a commentary on what life should be like in Tennessee.

The first air date of December 11, 2004 does not seem to be contested by either party. The episode has continued to air.   The Complaint was filed June 3, 2009.  I am wondering why A&E has not raised the defense of statute of limitations because the three year statute of limitations found in 17 U.S.C. sec. 507(b) should apply.  The section states that “no civil cause of action may be brought later than three years from the date the claim accrued.”  It is possible the parties had a tolling agreement while they attempted to resolve the matter outside of the court house.

You can read the complaint here.  House of Bryant Publications, L.L.C. v. A&E Television Networks, Middle Dist. Tenn., Civil Cause No. 3:09-cv-00502.

You can read the Defendant’s Brief In Support of the Motion to Dismiss here.

I blogged here and here regarding the recent case brought by author J.D. Salinger for copyright infringement against the writer, publisher and distributor of a sequel to "Catcher In The Rye" entitled "60 Years Later: Coming Through the Rye."

Although Mr. Salinger won in the district court when the Judge held Mr. Salinger was likely to succeed on a claim of copyright infringement, an appeal has since been filed along with “Friends of the Court” Amicus Briefs.

The Amicus Briefs filed by the American Library Association (here),

The New York Times Company (here), and

Public Citizen, Inc. (here), all argue to the court that the district court erred in its decision. 

The briefs are worth the read for the depth of case law cited. 

The primary focus of the briefs filed by the American Library Association and The New York Times Company is the concern that First Amendment rights of authors/creators/readers are being narrowed and that an unduly restrictive fair use standard was applied.

In comparison, the Public Citizen brief’s primary focus is the concern the district court extended copyright to “ideas” and has blurred the line between the idea/expression dichotomy.

Agree or disagree, this case is one to watch and to read the court filings. 

I posted here on June 5 that author J.D. Salinger filed a lawsuit seeking damages for copyright infringement and an injunction against the writer, publisher and distributor of a sequel to "Catcher In The Rye" .... "60 Years Later: Coming Through the Rye."

On July 1, 2009, U.S. District Court judge Deborah Batts issued a preliminary injunction barring the defendant from manufacturing, publishing, distributing, shipping, advertising, promoting, selling or otherwise disseminating “60 Years Later, “  the unauthorized sequel to J.D. Salinger’s novel, “Catcher in the Rye” in the United States.  Her opinion is posted here.

The Judge held Mr. Salinger was likely to succeed on a claim of copyright infringement after weighing, in detail, the factors for a fair use defense.

In a 37 page decision, the Judge first determined Mr. Salinger held a valid copyright for the “Catcher” and moved to a discussion of the fair use defense (17 USC Sec. 107).  The decision is a great resource for the history and line of cases related to fair use.More...

Author J.D. Salinger, at 90 years-old, filed a lawsuit this week  seeking damages for copyright infringement and an injunction against the writer, publishers and distributor of a sequel to "Catcher In The Rye" .... "60 Years Later: Coming Through the Rye."

A character very much like an aged Holden Caulfield,  at 76 years old, an escapee from a retirement home and identified as ``Mr. C" takes on New York, like the young Holden in "Catcher In The Rye."  J.D. California, the author of the sequel never refers to the character as Holden Caulfield, only as "Mr. C." 

The complaint asserts the sequel infringes Salinger's copyright rights in both his novel and the character Holden Caufield.  The sequel and the original both begin with Holden leaving an institution and end with he and his sister at the carousel in Central Park.   The complaint goes on to allege the bulk of the book has Holden doing, seeing and talking to the same folks as in the original while he is in New York.

The sequel is currently available for purchase in the UK and is scheduled for a Fall 2009 release in the US.

Can J.D. California successfully defend an action for copyright infringement?  The Wall Street Journal blog has a great outline of the defense here.  I struggle with the thought that this sequel could be fair use.  It is really going to hinge on whether or not this new work is transformative of the original.  I posted earlier this year on the status of fair use and transformation in the Shepard Fairy case.

Last week an appellate court in Malaysia brought to an end an ongoing legal battle that began in 2001.  McDonald’s corporation sued the owners of the McCurry restaurant in Kuala Lumpur claiming likelihood of consumer confusion between the McCurry name and the McDonald’s trademark.

The menu at McCurry is traditional Indian food and the name supposedly stands for Malaysian Chicken Curry.  There was no use of the Golden Arches in the McCurry trademark.  The Appeals Court ruled there was no proof that the owner of the McCurry mark misrepresented the business to the public or confused consumers.  The court examined the differences in food sold as well as the differences in the consumers.

During the pending legal battle, the owner of the McCurry restaurant removed the “c” from Mc on its signage.   The “c” was replaced last week after the ruling. 

There has been a lot of chatter lately in social networking circles regarding 1) right of privacy; 2) copyright; and 3) libel.

Right of Privacy:
If I post something on FaceBook®, MySpace®, Twitter™ or any other social networking site, do I have a right of privacy, such that my comments cannot be re-published?  A California appellate court ruled last week that there is no right of privacy in our rants, praises, or anything else we post on social networking sites.

The Plaintiff, Moreno, posted comments on her MySpace page that were then picked up and re-published in the local newspaper.  The plaintiff sued for invasion of privacy and intentional inflection of emotional distress.

The Wall Street Journal reported: "'The facts contained in the article were not private,' 5th District Court of Appeal Justice Bert Levy wrote. 'Rather, once posted on myspace.com, this article was available to anyone with Internet access.' Added Levy: 'Under these circumstances, no reasonable person would have had an expectation of privacy regarding the published material.' He noted that Moreno’s 'potential audience was vast.'”

Here is a twist on a fact pattern.  A lawsuit was recently filed for breach of the fair debt collection statute because a debt collector posted information on the debtors' MySpace. It is one thing for you to publish the information yourself, a different issue if someone else publishes the information.  Keep reading below regarding libel concerns. More...