Tennessee Personal Rights Protection Act: There Has to Be Use In Advertising

Posted on November 21, 2011 | Leave a comment

The above picture is one Lauren Gauck, a Fox news anchor  in Memphis, Tennessee. Ms. Gauck sued Karamian, the owner of a gossip (sorta) website called “The Dirty.com”  that allows users to post pictures of women in order to ask Karamian and “the Dirty Army” (the site’s readers)  whether the women are “hot” or not. The Dirty Army also posts pictures of people, mostly women, who they want to “slam” or ridicule. Karamanian posts what are supposed to be witty comments on the pictures, which mostly consist of his opinion that the women are not “hot” enough. The Dirty.com supposedly published photos of Ms. Gauck and her friends, along with a pornographic picture (though redacted) of a woman who was represented to be Ms. Gauck, but in fact, was not her. Karamanian posted a couple of snarky comments about how it was time for her and her friends to “go to a one-piece.”

    Ms. Gauck sued under Tennessee’s Personal Rights Protection Act (“TPRPA”) (and asserted various tort theories under Tennessee common law), but was not successful in obtaining an injunction against the future posting of the material because the court found that she was not likely to succeed on the merits of her TPRPA claim. In short, the court found that Tennessee’s Personal Rights Protection Act is more restrictive than the Restatement approach adopted by other states. Under Tennessee law, as contrasted with states that follow the Restatement approach, to succeed on a TPRPA claim, the plaintiff has to show that  the Defendant used her image or likeness in advertisement or solicitations, rather than for the defendant’s “own purposes and benefit.” Because Ms. Gauck was unable to show a causal connection between thedirty.com’s use of her name and image and an increase in visitors to the site or advertising revenue, she was unable to show that her image was being used as an advertisement or solicitation. Consequently, her claims failed and she was not able to enjoin the site from publishing her image and likeness in the future (although the opinion indicates that the defendant had pulled the photos down and that defense counsel had stated that Karamian had no intention of republishing the post pertaining to Ms. Gauck.

Bottom Line: To win on a TPRPA claim, the plaintiff has to show that her image or likeness was used in advertising…simply showing that the defendant received a benefit from the use of the image or likeness is not enough under Tennessee’s narrowly drawn statute.

Gauck v. Karamian, et. al, No. 2:11-cv-02346,  2011 WL 3273123 (W.D. Tenn. July 29, 2011).

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Posted in Image aned Likeness

When Is It Okay To Copy Someone Else’s Stuff?

Posted on November 19, 2011 | 1 comment

I frequently get calls from clients wanting to know if they can use someone’s copyrighted material for a presentation they are doing. Let’s talk about a hypothetical client who wanted to know if he could use clips from old TV shows and movies to spice up a boring presentation he was making to college students about recent developments in the automotive industry or some such topic. (Spoiler alert: Forty years after the first gas crisis and we still don’t have cars that get a decent MPG).  Anyhow, let’s say this client was making the presentation to around 75 engineering students. Although you might think this was a simple “yes” or “no” question, you’d be wrong. The issue is whether this particular use in these particular circumstances constitutes “fair use” under U.S. Copyright laws. There are a number of factors to consider but the main ones are as follows:

Purpose of use: Copying and using selected parts of copyrighted works for specific educational purposes qualifies as fair use, especially if the copies are made spontaneously, are used temporarily, and are not part of an anthology. The fellow in the hypothetical was using the clips for educational purposes so this factor cut in favor of fair use.

Nature of the work: For copying paragraphs from a copyrighted source, fair use probably applies. For copying a chapter, fair use may be questionable. Copying an entire poem is probably out.

Proportion/extent of the material used: Duplicating excerpts that are short in relation to the entire copyrighted work or segments that do not reflect the “essence” of the work is usually considered fair use.

The effect on marketability: If there will be no reduction in sales because of copying or distribution, the fair use exemption is more likely to apply. This is probably the most important of the four tests for fair use. This factor cut in favor of our hypothetical client using the works.

    Based on the “fair use” factors, our presenter would likely be able to make out a fair use defense. The purpose was educational, he was not charging a fee; he was using only a very small portion of the overall work, not its “essence”; and his use would have no effect on the marketability of the movie or TV show, etc. In this particular instance, using the clips was probably OK and I would likely give him my qualified blessing (with the endless lawyer caveats, of course.) However, if your proposed use is more commercial in nature, you should consult an attorney before using the copyrighted works of another. Also, don’t make the mistake of thinking that giving the author credit gets you off the hook for copyright infringement if you aren’t able to make out a fair use defense. You either need to obtain the author’s written permission or you need to use material that would not make you guilty of copyright infringement. Maybe this is your chance to work in your own original material. Who knows? You may even be discovered.

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Posted in Copyrights

Top 10 Ways to Protect Your Trade Secrets

Posted on November 17, 2011 | Leave a comment

If you’re not doing these things, you should be:

1.    Where feasible, encrypt your data.
2.    Institute multi-level passwords to protect confidential information.
3.    Enter into confidentiality agreements with your employees requiring them to protect your data.
4.    Enter into confidentiality agreements with your vendors and contractors as well.
5.    Train your employees in data security and put in policies and procedures to keep it safe.
6.    Do not dispose of documents or data carelessly.
7.    Restrict visitors and employ prudent plant security.
8.    Lock up or otherwise secure sensitive information.
9.   Use copy protection and embedded codes to trace copies.
10.  Provide confidential information on a “need-to-know” basis only.

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Posted in Trade Secrets

What To Do When You’ve Been Sued

Posted on November 16, 2011 | Leave a comment

You’re watching the game, eating that seven layer dip your wife makes, enjoying an adult beverage or two. The doorbell rings and somebody you don’t know hands you a bunch of documents and tells you you’ve been served. It takes you a minute to figure out what’s going on but eventually it sinks in—you’ve been sued. You promptly panic, envision losing your house, and using your children’s college fund to pay a bunch of lawyers who won’t return your phone calls. I’m not going to lie to you. Being a defendant in a lawsuit is worse than getting a root canal or watching the out-takes to American Idol–it’s really bad. There really is very little upside and the downside is considerable. However, as in all things, keeping your wits about you will serve you well. Here’s what you do:

1. Jump on this immediately. Do not pretend like it is not happening and that it will go away. This is one of those problems that if ignored, will get bigger and more disastrous.

2. Do not destroy any documents or computer files related to the facts or issues in the lawsuit. Doing so can come back to bite you and you will undoubtedly regret it.

3. Use your contacts to find a good lawyer that specializes in the area of law in which you’ve been sued. Don’t just assume because you’ve seen an ad for this person during Judge Judy that he or she is a good lawyer. I can assure you, there is a very wide range of competency among lawyers and you want someone at the top of the range. If you know a lawyer personally, that is the best place to start. Ask him or her for suggestions. Ask it this way: “If you were the one being sued, who would you use?” Ask your contact for referrals inside and outside his or her own law firm. Call those folks and ask the same question. After a few calls, you will notice that you are hearing the same two or three names over and over again. Set up a meeting with each of those two or three and quiz them carefully about how they would approach the case, what they know about the judge, and the reputation and competency of the opposing lawyer. Hire the one who seems the most enthusiastic about your case and that you have the best feeling about.

4. Understand that if this person is any good, you will have to pay them, probably by the hour. Generally, unless you have some sort of fabulous counterclaim to make against the party suing you that would entitle you to a big payout, a decent lawyer will not defend you for a contingency fee. Even a terrible lawyer won’t defend you for a contingency fee if you don’t stand a chance of winning a big settlement, which is almost always the case when you’re a defendant. Fees can vary wildly, depending upon the area of law you are dealing with, the complexity of the case, the seniority and reputation of the lawyer, and the area of the country in which you live. I can tell you this: it won’t be cheap.

5. In that bunch of papers that the process server handed you was a complaint. You will have to file an answer to that complaint, paragraph by paragraph, usually within 20 to 30 days of the date you were served. Your lawyer, if you have one, will do this for you but you should carefully review everything to make sure it is correct and complete. If you don’t file your answer on time, the court could enter a default judgment against you, which is a very bad thing. Don’t let that happen. If you have not yet found a lawyer before your answer is due, at the very least, write a letter to the court telling it that you are diligently working on finding counsel and request an additional 30 days to answer. While I can’t promise you that this will work, a court isn’t likely to enter a default judgement when there has been some sort of effort on the part of the defendant to keep it informed and to find counsel.

6. Once you select a lawyer, ask him to figure out immediately what your exposure is. You cannot make a rational informed decision about how to approach the case unless you know what your worst case scenario is. Insist that this analysis be a high priority on the front end.

7. Do not get your back up. You will undoubtedly be furious that you have been sued and will, even if you are a very nice person, find yourself hating the plaintiff with a passion. Don’t let this cloud your judgment. Staying in a lawsuit (as opposed to seeking a quick and fair settlement) for the principle of the thing is usually a stupid move. Keep your wits about you and think like a business person, not like a Hatfield or McCoy.

8. That being said, there are times when you simply can’t compromise. Maybe it’s a bet the company-type issue and you have no choice but to go the distance and fight as hard as you can. If this is the case, by all means strap on your armor and go to war. However, most cases have room on the front end for a reasonable and fair resolution. If this is possible in your matter, insist that this approach be explored, sooner rather than later.

9. Once you’ve found a good lawyer, trust him or her. Listen to their advice and take it unless it sounds patently ridiculous or self-interested. Remember to keep asking your lawyer the question: “What would you do if it were you facing this lawsuit (or facing this particular decision in the lawsuit).”

10. If you simply cannot afford a good lawyer, try your community’s legal aid organization. Your local bar association should be able to tell you where to call. If you don’t qualify for or can’t obtain pro bono (free or cheap) assistance, consider paying for two or three hours of a good lawyer’s time to tell you what your best defenses are and how you need to develop and plead them. (If you were paying close attention in your interviews with your prospective lawyers (see above) you should have learned a lot about what your possible defenses are already.) Then, familiarize yourself with the rules of the court in which you’ve been sued and follow them carefully. Contact the lawyer on the other side and tell him or her that you would like to explore a quick and fair settlement. Be extremely professional and respectful. You do not want to come across like an unreasonable crackpot or an impossible jerk. Emphasize that you don’t not have any money and, unless they take what you have to offer on the claim, you would have no choice but to explore bankruptcy. If the other lawyer is satisfied that you are not a deep pocket, you may be able to work something out fairly cheaply. If you are able to settle it yourself, insist on a full release of all claims that the plaintiff had or may have had against you. Insist on a provision that the lawsuit is dismissed with prejudice. Don’t pay unless you have a promise of at least these two things in writing. I would also strongly recommend your paying a lawyer to look over the settlement agreement to make sure that you don’t get taken for a ride.

Remember: this too shall pass. Figure out what you can learn from this experience and apply it. And don’t answer the door to someone you don’t know during a ball game.

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Posted in Litigation

Was Abercrombie Trading on the Situation’s Brand?

Posted on November 16, 2011 | Leave a comment

Mike “The Situation” Sorrentino sued Abercrombie and Fitch (“A&F”) yesterday (MPS Entertainment LLC et al v. Abercrombie & Fitch Stores Inc., case number 1:11-cv-24110, (S.D. Fla.), claiming that A&F’s  recent marketing campaign traded on his “enormous popularity.” The Situation is one of the stars of the MTV reality show “Jersey Shore,” who according to Snookie, has already blown the money he’s made from the show).  A few months ago, A&F claimed that they made The Situation an offer of a substantial amount of money to stop wearing A&F clothes on the show because it harmed its “aspirational” brand. A&F then sold shirts emblazened with slogans like, “The Fitchuation” and “GTL, You Know the Deal.” According to Sorrentino, A&F never made any such offer to him and the whole thing was a publicity stunt to get thousands of articles written about the chain and create interest in A&F’s “situation” clothing. Does he have a point? I think he does. While A&F will undoubtedly claim that it was not making trademark use of the Situation’s name or catch phrases, that their shirts were “merely ornamental” i.e., the material on the front of the shirt was not supposed to be a source identifier but instead was just “for looks,” I think when you look at the facts as a whole, A&Fwas very cleverly trading on his name. Is that actionable or compensable? We’ll have to wait and see if the self-proclaimed “guido” gets his due.

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Posted in Branding, Trademarks

Does Pornography Have Copyright Protection?

Posted on November 14, 2011 | Leave a comment

Or, to put it another way, is there an obscenity defense to copyright infringement? Surprisingly, this may be an open question. This interesting article by David Kluft of Foley Hoag traces the protection available for obscene works. Early cases held that there was no protection for obscenity and it wasn’t until 1979 that the 5th Circuit held in Mitchell Bros. Film Group v. Cinema Adult Theater, 604 F. 2d 852 (5th Cir. 1979) that copyright protection did not hinge upon the “morality” of the content because society’s views of what is “moral” changes over time.  While a few courts have followed the 5th Circuit’s lead, as recently as 1998, a New York district court  refused to enjoin an alleged infringer, stating that the subject matter was “hard core pornography bereft of any plot and with very little dialogue.” So, a plaintiff may have an uphill battle obtaining copyright protection for pornographic subject matter.

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Posted in Copyrights

Photographers: It Pays to Brand Yourself as an Artist

Posted on November 14, 2011 | Leave a comment

This photograph by Andreas Gursky sold at Christie’s last week for 4.3 million dollars. Evidently I have no taste whatsoever because this looks like envelope after envelope of the snapshots I used to take at church camp with my Kodak Instamatic, all of which are currently in an unlabeled box in my attic. It’s nice and everything, but 4.3 million dollars?? According to an unnamed source at Christies (who evidently didn’t think it was all that either), smart photographers are only creating a very limited number of copies of a particular photo and digitally altering them so that they are more like “art.” This ups the cache, ups the price, and ups their brand as an “artist.” I say power to them but you could buy your own farm with a river running through it for way less than 4.3 million dollars in my neck of the woods. I’d rather have that.

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Posted in Art Law, Branding

A Counterfeit Paris

Posted on November 13, 2011 | Leave a comment

This is slightly off-topic but I thought it was fascinating. As a IP lawyer, I help clients deal with the problem of counterfeit products. But how about a counterfeit city? During World War II, the French built a fake Paris, recreating all of its iconic buildings out of wood, in an effort to confuse the Germans and prevent the bombing of the real Paris. Fake Paris was 15 miles away, along the Seine. Fake Paris was immediately dismantled after the war. Whether it would have worked or not, we’ll never know but thankfully Paris avoided the German bombs anyway.

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Posted in Counterfeiting

Trademark Scam: Do I Need to Send These People a Bunch of Money?

Posted on November 12, 2011 | Leave a comment

trademark scams

I frequently get calls from concerned clients who have registered trademarks at the U.S. Patent and Trademark Office. They have received some sort of official looking “invoice” from a company that sounds governmental and important and the “invoice” implies that the client’s trademark will expire or be dismissed or some such horrible thing unless $650 bucks is promptly remitted. Be advised that this is a scam and don’t fall for it.

How the Scam Works

The scammers send unsolicited mailings to registered trademark owners and applicants, offering trademark monitoring services, trademark renewal services, and other general trademark maintenance at exorbitant prices.  These companies have nothing to do with the United States Patent and Trademark Office (“USPTO”) but search the USPTO public records and send offers directly to trademark owners.  Their materials are designed to appear as though they were prepared by an official government agency, often disguised as government invoices or other official notices regarding trademark rights.  Many trademark owners have mailed in large sums thinking that these invoices are required for trademark registration or protection.

For example, the United States Trademark Protection Agency has chosen a name confusingly similar to the USPTO and offers “trademark monitoring services” through unsolicited mailings.  This service monitors only the Trademarks Official Gazette and the USPTO online database of trademark applicants, both of which are available to the public, without charge, on the USPTO website.  The USPTO is aware of this scam and has posted a warning on its website that “An entity doing business as the ‘United States Trademark Agency’ is NOT affiliated with the United States Patent and Trademark Office.”

Similarly, Trademark Info Corporation mails trademark owners “invoices” requesting payment of $596.00 in exchange for “publication” of the mark on a website that provides nothing more than a list of other trademark owners that were scammed for the fee. Other known companies that regularly send out unsolicited mailings include United States Trademark Center, American Trademark Agency, Trademark Renewal Services, and Trademark Safeguard – Trademark Monitoring Service.

These companies prey on trademark owners’ desire to vigorously protect their marks. While trademark owners obviously should monitor and protect their intellectual property, the services offered in these unsolicited mailings are confusing, expensive and unnecessary.

MAINTAINING AND PROTECTING YOUR TRADEMARKS (The Stuff You Do Have To Do To Keep Your Trademarks Alive)

An owner of a federally registered trademark is required to file an affidavit confirming their continued use of their mark during the sixth year following the date of registration (a “Section 8 Affidavit”). In addition, the trademark owner must file a Section 8 Affidavit and a renewal application (a “section 9 Affidavit”) during the tenth year following the date of registration.  If you don’t meet these and other deadlines, your registration will get cancelled. You do have fees associated with this filings, but they should only be paid to the USPTO (and your lawyer may also have legal fees associated with accomplishing these maintenance filings for you).

In addition, you should monitor third party use of similar marks so that you can oppose applications for confusingly similar trademarks and spot potential infringers. Because failure to adequately pursue infringers can lead to loss of certain rights and remedies, you should contact qualified trademark counsel any time you see someone else using your marks in an infringing way.  Many trademark owners use third party trademark monitoring services available from NameProtect, CT Corsearch, Thompson and other reputable companies.  These companies provide thorough monitoring services at reasonable prices and do not send unsolicited mailings to trademark owners.

Official trademark notices will only be sent by the USPTO or your attorney.  If you do receive a notice regarding your trademark rights, alert your attorney before you make payments to any third party.  Please alert employees in your financial, accounting, or other relevant departments to make sure they aren’t taken in by the scammers either. Everyone in your organization should feel free to file these “invoices” in the “round file.”

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Posted in Trademarks

Trademark Question of the Day: Is Skee-ball a Generic Term?

Posted on November 11, 2011 | Leave a comment

Some folks think so, namely competitive skee-ball league operator Full Circle United, LLC. On Tuesday, Full Circle lodged a breach of contract and trademark suit in New York, claiming game manufacturer Skee-Ball Inc.’s “skee-ball” mark is generic. Full Circle did this as a defensive maneuver because they were being sued by Skee-Ball, Inc. for trademark infringement in California over its use and registration of the mark “Brewskee-Ball.” First of all, one of the most interesting aspects of this story is that there IS a competitive Skee-Ball league– from New York, to California, to Texas (“from Skee to shining Skee”). Second, is Skee-Ball a generic term? That depends on a lot of different factors–has Skee-Ball, Inc. diligently and faithfully treated it like a trade mark? Have they protected it when others have not treated it as a trademark? Is there another word for Skee-Ball? What do consumers think? These are the types of questions the hired gun experts will be debating in this case, assuming it doesn’t settle. There is a great deal of risk for the holder of mark that could possibly be generic. It is often wise to settle the case before you submit that all important question to the “jury lottery.” If you’ve got a trademark, make sure you are doing everything you can to avoid it being deemed generic. This can save you a lot of heart-ache down the road.

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Posted in Trademarks

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