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October 1, 2016

Week In Review

By Ben Natter

Neue Galerie Returns Painting Seized by Nazis and Then Rebuys It in Settlement

The Neue Galerie of New York has reached a settlement with the family of Alfred Hess in connection with a painting by Karl Schmidt-Rottluff, which was purchased by the gallery at auction in 1999. As part of the settlement, the gallery was required to return the painting to the Hess family and then repurchase the work at an undisclosed fair market value.

This settlement is of interest because the gallery owner, Ronald Lauder (son of Estée Lauder) has been a vocal and driving force in the return of art stolen by the Nazis. The return of this work came after an investigation into the origins of the work conducted by the Neue Galerie. The Hess family had been successful in other restitution claims in the past.


Met Picasso Belonged to Family That Fled Nazis, Suit Says

The estate of Paul Leffmann, a German Jewish businessman, filed suit against the Metropolitan Museum of Art in the Southern District. The complaint states that Mr. Leffman was forced to sell the Picasso painting for $13,200 to Picasso's art dealer and a Picasso collector in 1938.

In 1941, Thelma Foy bought the painting through New York's Knoedler Gallery for $22,500, and it was donated to the Met in 1952. The estate estimates the value of the painting to be more than $100 million. The complaint argues that the museum should have known that the painting had been owned by Paul Leffmann and that he was forced to sell the work.

Mr. Leffman's estate had been unsuccessfully negotiating with the Met for several years prior to filing this complaint. Attorneys for the Met stated that the 1938 sale was made at fair market value and that there is no issue with provenance.


Facebook Ordered to Stop Collecting Data on WhatsApp Users in Germany

In response to Facebook's August announcement that it would begin sharing data relating to WhatsApp users with Facebook, the city of Hamburg's Data Protection Commissioner ordered the company to stop collecting and storing data of German WhatsApp users, and to delete any data already stored relating to the 35 million German WhatsApp users.

The August announcement from Facebook stated that WhatsApp would disclose phone numbers and analytics to Facebook and allow businesses to contact WhatsApp users. Facebook has a subsidiary based in Hamburg, and the Data Protection Commissioner does have authority over the company.

Facebook responded that it is in compliance with European privacy rules and offered to work with the Data Commissioner. The Commissioner took issue specifically with the fact that Facebook did not ask for consent from WhatsApp users.


Prison Sentence Over Smashing of Shrines in Timbuktu: 9 Years

The International Criminal Court ordered a radical Islamist, Ahmad al-Faqi al-Mahdi, to nine years in prison for his organization of the destruction of historic Muslim shrines in Timbuktu, Mali. This sentencing is of interest as it was the court's first prosecution of the destruction of cultural heritage as a crime of war. Mr. Mahdi stated that he regretted his actions. He organized the destruction while serving in a position with Ansar Dine, an Al Qaeda spin-off.


New York City Starts $5 Million Fund for Women in Film and Theater

The Mayor's Office announced a new five-part initiative to promote equality in film and theater this past Thursday. The Office will create a fund of $5 million dollars for female artists in film and theater to advance projects relating to women. The fund will be distributed over five years. There will also be associated contests for potential NYC-based TV pilots and additional city sponsored scholarships.


ACC Football Game Will Move to Orlando's Camping World Stadium

The ACC football title game has been moved to Camping World Stadium in Orlando, Florida. The ACC pulled the game from Charlotte in protest over North Carolina's controversial House Bill, which limits the legal protection for lesbian, gay, bisexual and transgender people. The game is historically playered in Charlotte, NC.


Judge Issues Temporary Gag Order in Derrick Rose Rape Lawsuit

The California judge presiding over the Derrick Rose civil suit issued a temporary gag order on Thursday in response to pretrial publicity and manipulation of the press by both sides. Judge Michael W. Fitzgerald said that he was inclined to issue a longer gag order in light of pretrial publicity about the case, which was filed in the central district of California.

Fitzgerald was of the opinion that both parties were attempting to manipulate the press through statements and filings intended to garner attention and not serve their clients' best interests.


Law on Disparaging Trademarks Gets Supreme Court Review

The U.S. Supreme Court agreed to hear a case concerning a service mark application for an Asian-American band called the Slants. The SLANTS application was refused registration on the grounds that the name is disparaging, as it is historically a derogatory term for Asians.

Last year, a federal appeals court in Washington found in favor of the band and decided the Lanham Act statute covering disparaging marks was unconstitutional. The government argues that the Lanham Act does not prohibit free speech, but merely prevents registration of disparaging terms. The band agreed to the case going before the Supreme Court.

The Supreme Court decision should also resolve the REDSKINS trademark cancellation appeal, which is scheduled to be heard by a Virginia appellate court in December. The Redskins petitioned to the Supreme Court to hear its case at the same time, even though the case has not reached the appellate court. The Court did not respond to the petition.



October 3, 2016

EASL SECTION TELEVISION AND RADIO COMMITTEE: Arrowhead Capital Fin., Ltd. v. Cheyne Specialty Fin. Fund L.P.

By Pia Katerina Tempongko

The courts discussed New York Judiciary Law Section 470 in the case of Schoenefeld v. Schneiderman, as it relates to the requirement of maintaining a New York office in order to practice law in the State. Arrowhead Capital Fin., Ltd. v. Cheyne Specialty Fin. Fund L.P. was decided after Schoenefeld, and affirmed and followed up on that decision.

Defendant Cheyne Specialty Finance Fund, L.P. moved to dismiss the complaint of plaintiff Arrowhead Capital Finance, Ltd., pursuant to New York Judiciary Law Section 470. The defendant alleged that the plaintiff's lawyer, Barry Goldin, did not (and does not) maintain a New York office for the transaction of law business at the time he filed the summons.

Barry Goldin is an attorney licensed to practice in New York, but on his registration, he listed a Pennsylvania address as his main office. When he filed the summons and complaint on behalf of the plaintiff, Goldin listed his Pennsylvania office as well as a New York City address (240 Madison Avenue, 3rd floor), the latter an office owned by Edit Ltd, that he has permission to use. However, the court's filing system only listed the former address and phone number, until a New York firm, Wollmouth Maher & Deutsch LLP, filed a notice of appearance as co-counsel for Goldin. Goldin defended on three grounds: 1) he listed the New York address when he filed the summons and complaint; 2) the Wollmouth Firm's filing of notice of appearance cured the defect; and 3) there was no requirement to maintain a New York office before the courts decided the case of Schoenefeld v. Schneiderman, 821 F3d 273 (2d Cir 2016).

The defendant's motion is supported by an affirmation stating that there was no visible sign of Goldin's office outside the building, the lobby, the building directory, or on the 3rd floor where the office of Edit Ltd is located. The lobby attendant confirmed that Goldin does not hold an office in the building. The defendant also points out that Goldin's letterhead only lists the Pennsylvania address and states that an email from Goldin mentions that although the 240 Madison address accepts mail for him, Goldin's preferred address is the one in Pennsylvania.

To support his claim, Goldin submitted two affidavits - one from himself and one from a former lawyer, Deyan Drashich, stating that they had the use of Edit Ltd's office during the two cases on which they worked together. However, that office is not the one on 240 Madison, but exists at another address in New York City. They also claimed that when Edit Ltd moved to 240 Madison, they continued to receive documents in the new office, including the documents from the defendant's current counsel. The defendant hired a private investigator and submitted an affidavit affirming that Goldin's name was not on the directory in the lobby, and that there was no sign on the 3rd floor for Goldin or any law office.

Section 470 of the New York Judiciary law states that: "A person, regularly admitted to practice as an attorney and counselor in the courts of record of this state, whose office for the transaction of law or business is within the state, may practice as such attorney or counselor, although he resides in an adjoining state." The case of Schoenefeld states that the above statue requires nonresident attorneys to maintain a physical office in New York and that the statute should not be read as merely a requirement for nonresident attorneys to have some type of physical presence for the receipt of service.

In this case, there is no evidence that Goldin maintained an office or a phone in New York when the action was filed. Receiving mail and documents at the 240 Madison address is insufficient to constitute maintenance of a physical office in New York as required by Section 470. The court also held that hanging a sign coupled with receipt of deliveries would not satisfy the statute.

The court granted the defendant's motion to dismiss, and found that Goldin's arguments had no merit.

October 7, 2016

EASL Television & Radio Committee Report re Inaugural TV General Counsel Roundtable

Pamela Jones and Barry Skidelsky, co-chairs of EASL's Television & Radio Committee, report that Eriq Gardner, senior editor for the Hollywood Reporter, will moderate a panel discussion among several prominent cable TV network general counsel on January 24, 2017. Save the date!

This prestigious TV GC Roundtable will take place at the New York Hilton/Midtown Manhattan (1335 Avenue of the Americas, between 53rd and 54th Streets) as part of NYSBA's week-long Annual Meeting. CLE credit will be provided. A networking reception will follow off-site.

As this is the first edition of what is expected to become an annual luncheon/networking event organized by EASL's Television & Radio Committee, Pam and Barry are also planning now for next year with leading general counsel from traditional and online broadcasting.

Please contact Pam (pamela@pamelajonesesq.com) or Barry (bskidelsky@mindspring.com) for more information and/or future speaker opportunities, and help spread the growing buzz!

Week in Review

By Michael Smith

Federal Appellate Brief Word Limit Shrinking

In 1998, Rule 32 of the Federal Rules of Appellate Procedure was amended to include a 14,000-word count limit. That number was arrived at based on a desire for briefs to be no longer than 50 pages and an estimate that a page printed using a proportionally-spaced font had an average of 280 words. The Advisory Committee on Appellate Rules has since determined that a more accurate conversion would be 250 words per page, and the amendments to the Rules scheduled to take effect on December 1st will reduce the word count limit accordingly to 13,000 (and 6,500 for replies, down from 7,000). This rule change has been the subject of some controversy, as prominent lawyers, including Chief Justice Roberts, have argued against the reduction. Others, including Circuit Court judges, support the amendment.


U.S. Supreme Court Tells Redskins to Wait Its Turn

Two cases involving offensive trademarks have been vying for the Supreme Court's attention. One involves an Oregon band called "The Slants." The United States Patent and Trademark Office (USPTO) denied the band's application for registration of the name under section 2(a) of the Lanham Act, which permits the USPTO to refuse registration of trademarks that are "disparag[ing]." The Court of Appeals for the Federal Circuit found that such refusal violated the First Amendment, and the USPTO petitioned for a writ of certiorari.

The second case involves the Washington Redskins. The Eastern District of Virginia upheld the USPTO's cancellation of six of the team's trademark registrations as disparaging, and the team appealed to the U.S. Court of Appeals for the Fourth Circuit. Although the Fourth Circuit will not hear argument on that appeal until December, the Redskins made an unusual request: that the Supreme Court hear the Redskins' appeal concurrently with the The Slants case. The Supreme Court granted certiorari in the The Slants case in September, but rejected the Redskins' application on Monday.


Supreme Court Won't Review Challenge to NCAA Amateurism Rules

On Monday, the Supreme Court denied certiorari in the case of O'Bannon v. NCAA, leaving undisturbed a decision by the Court of Appeals for the Ninth Circuit that left both sides feeling ambivalent. The Ninth Circuit found that the National Collegiate Athletic Association (NCAA) could limit compensation of college athletes to the cost of attending an institution, but that limiting it further would violate federal antitrust laws. Two more challenges to the NCAA's amateurism rules are waiting in the wings, and there has been increased public scrutiny of compensation for college athletes.


Facing $38 Million Judgment, Cox Goes After $100K

Last year, a jury awarded music publisher BMG Rights Management (BMG) $25 million in a lawsuit that accused internet service provider Cox Communications of willfully contributing to illegal file sharing by employing intentionally lax anti-piracy standards and procedures. Cox appealed the ruling, but in the meantime, BMG is seeking over $13 million in costs and attorneys' fees. For its own part, Cox is going after Round Hill Music--a plaintiff dismissed from the case after the court found that it did not own any of the copyrights at issue--for $100,000 in attorneys' fees.



No Snow Under Golden Arches, Says Suit

The estate of celebrated "street artist" Dash Snow, who died in 2009 at the age of 27, has sued McDonald's in the U.S. District Court for the Central District of California for copying Snow's work without authorization. The estate alleges that hundreds of McDonald's restaurants decorated with fake graffiti incorporate Snow's famous "SACE" graffiti tag ("SACE" was Snow's pseudonym). The complaint alleges that "[n]othing is more antithetical to Mr. Snow's outsider 'street cred' than association with corporate consumerism--of which McDonald's and its marketing are the epitome."


Fourth "Blue Man" Royalties Suit Survives Dismissal, Without Fraud Claim

On Thursday, Judge Barry Ostrager of the New York County Supreme Court denied in part a motion to dismiss claims asserted by Ian Pai, who says he has not been adequately compensated for his "substantial contributions" to the billion-dollar performance ensemble, "Blue Man Group." Pai asserted breach of contract claims based on alleged oral agreements, which Judge Ostrager found were sufficiently pleaded, and a claim for fraud, which the judge found was time-barred.


CS:GO Class Action Dismissed

The U.S. District Court for the Western District of Seattle dismissed a class action lawsuit filed against video game giant Valve Corporation and third party gambling site CSGO Lotto, alleging that the defendants created an illegal online gambling market based around Valve's online video game, "Counter Strike: Global Offensive" (CS:GO) The complaint alleged that players purchased CS:GO "skins" on Valve's online "Steam" marketplace, which players could then pledge on CSGO Lotto's "rigged" gambling site for the chance to win cash. The court found that plaintiffs had failed to plead facts sufficient to demonstrate that the system was "rigged," or that any member of the proposed class suffered any actual injury.


Hasbro Settles Harris's Hamster Suit

Hasbro Inc. reportedly settled Fox News anchor Harris Faulkner's $5 million lawsuit that was filed in the U.S. District Court for the District of New Jersey. The lawsuit alleged that Hasbro was selling a "Harris Faulkner Hamster Doll" without her permission. Faulkner called the toy "insulting and demeaning."


New York Fantasy Sports Law Faces Constitutional Challenge

Plaintiffs affiliated with a group called "Stop Predatory Gambling" filed a lawsuit challenging New York's new law legalizing daily fantasy sports, claiming that the law violates section 9.1 of the State Constitution, which places strict limits on gambling.


Rose Accuser Testifies in Rape Case

The woman who has accused New York Knicks player Derrick Rose and two others of gang rape testified on Thursday in the trial of her $21.5 million civil case against Rose. The woman testified that she felt she had been drugged at a party at Rose's mansion, and that after she got home and passed out, Rose and the other two men came to her apartment and raped her. During a break, attorneys for the two other men asked the judge to order the witness not to cry.


Baylor University's Title IX Coordinator Claims Retaliation

Patty Crawford, Baylor University's Title IX coordinator, and the person in charge of implementing the school's response to allegations of sexual assault, filed a civil rights complaint with the Department of Education. Crawford claims that after the publication of a report criticizing Baylor's handling of sexual assault allegations, Baylor officials tried to prevent her from reporting violations, limited her department's funding, and delayed cooperating with her investigations.


Former Raiders QB Faces Charges After Naked Break-in

Tod Marinovich, a former quarterback for the University of Southern California and the (then) Los Angeles Raiders, was charged with trespassing, public nudity, and drug possession. Marinovich was found in the backyard of a home in Orange County, California, naked and trying to get rid of methamphetamine and marijuana.


October 15, 2016

Week in Review

By Eric Lanter

Is the National Football League's Concussion Settlement Broken?

Under the terms of the settlement struck in federal court between the NFL and hundreds of its former players, some of the former players are set to receive as much as $5 million each. This settlement comes as the NFL, and its experts, are learning more about the effects of repeated hits to the head of players. Research has indicated that chronic traumatic encephalopathy (CTE) is a condition that many former players developed during the course of playing in the NFL. The settlement does not touch on the issue of former players having CTE but distributes money to those with symptoms of CTE. A group of former players who have not yet suffered symptoms of CTE, such as Alzheimer's disease, has appealed the court-approved settlement to the United States Supreme Court. They argue that the settlement favors the group of players who are already suffering symptoms from CTE. It is unlikely that the Supreme Court will hear the case, given that it does not have wide-ranging consequences.


Russian Olympic Chief Asked to Resign

Russian President Vladimir Putin announced in Kovrov, Russia that as part of a plan to redeem Russia's global sports, he was going to replace Alexander Zhukov, the head of the Russian Olympic Committee (IOC). Mr. Putin indicated that he would consult with the International Olympic Committee before appointing Mr. Zhukov's successor, in light of the penalties for Russia ahead of the Winter Games in 2018.


Vladimir Putin Proposes Category of Athletes for Drug Exemptions

Vladimir Putin criticized the IOC and the World Anti-Doping Agency's pronouncements regarding banned athletes. In light of information released by hackers, Mr. Putin suggested that all athletes should disclose their full history of testing and the exceptions they met in the rules allowing them to compete. He also proposed that athletes who had previously tested positive should have their own category in competitions.


Sparta Prague Players Fined for Sexist Comments

The Czech Soccer Federation fined two Sparta Prague players for their comments made to a female assistant referee during a match. The men told the assistant referee that a woman's place was "in the kitchen," after she called a teammate offside who had just scored an equalizing goal. The team also ordered the offending players to attend training sessions of women's soccer teams.


Conundrum for Justices: Does a Design Patent Cover a Whole Smartphone?

The Supreme Court of the United States heard oral arguments in the case of Samsung v. Apple (No. 15-777). Apple alleged that Samsung infringed on a patent for the design of a smartphone by copying parts of Apple's iconic iPhone. The Justices took various approaches in explaining why Apple should not receive an award based on lost profits. However, Justice Sonia Sotomayor and Justice Anthony Kennedy noted that neither Samsung nor Apple's lawyers explained what standard applied in this matter.


Judge Rules That Disney Is Not in Violation of Visa Laws

A judge in Orlando, Florida ruled that Disney did not violate visa laws relating to H-1B visas. The lawsuit came as a result of American technology workers being laid off after training their foreign replacements. The former workers were required to show that Disney hiring the H-1B workers "will not adversely affect the working conditions" of other workers in similar jobs, and the outsourcing companies argued that the law would apply to them only if the American workers had been their employees, not Disney's. The judge agreed with this argument and dismissed the action.


Producer of "The Apprentice" Denounces Trump But Refuses to Release Tapes

Mark Burnett, the creator of the television show "The Apprentice," revealed that Donald Trump acted in vulgar and offensive ways during tapings of the show. This revelation comes just days after the leaking of a 2005 tape of Mr. Trump engaging in vulgar talk about women with "Access Hollywood" host Billy Bush. Mr. Burnett, however, refused to reveal tapes, as Mr. Trump's contract prohibits releasing unaired footage, and because Mr. Trump has control over the use of his name and likeness (although there may be a newsworthiness exception in this case).


Donald Trump Threatens to Sue the New York Times

Donald Trump's lawyers wrote a letter to the New York Times demanding that the newspaper retract its article reporting that Mr. Trump had sexually assaulted two women in previous years. The letter alleges that the article is "reckless, defamatory and constitutes libel per se." The New York Times responded, stating that if Mr. Trump wishes to have a court tell him he is wrong, the newspaper welcomes it.


Bob Dylan the Writer: An Authentic American Voice

The Swedish Academy awarded Bob Dylan the Nobel Prize in Literature. His contributions in the 1960s and 1970s brought a new type of song with "oracular, tumbling words in them." Mr. Dylan's songs often had social and political power in impacting American society, and his style became legendary. The Swedish Academy, in awarding Mr. Dylan the Award, has shown that it is "increasingly open to nontraditional forms of writing."


Derrick Rose's Accuser Testifies During Emotional Day in Court

Derrick Rose, a 28-year old basketball player for the New York Knicks, appeared in court in Los Angeles to listen to his former girlfriend testify regarding Rose and two of his friends allegedly raping her. With the trial ongoing, the woman described her intoxication and the details that she could recall from the drunken night several years ago. Rose did not comment as he left the courtroom.


Dismissal Denied, Rose's Trial Continues

The judge in Derrick Rose's trial denied a motion filed by Rose's attorneys asking for dismissal or mistrial on the basis of the plaintiff's lawyers omissions, including three text messages, from evidence. With denial of the motion, the trial continued, and two men who supposedly participated in the rape, Randall Hampton and Ryan Allen, testified. Both indicated that the alleged victim appeared to consent.


Bill Cosby's Lawyers Argue That Prosecutor's Delay Violated Rights

In the Court of Common Pleas in Montgomery County, Pennsylvania, Bill Cosby's lawyers filed a motion to have his criminal sexual assault charges dismissed. The basis for the motion was the prosecutor bringing the charges 10 years after the alleged criminal acts, denying Cosby his right to a fair trial. Judge Steven T. O'Neill has shown that he is not inclined to dismiss the charges, and set a trial date for June 5, 2017.


October 18, 2016

Second Circuit Reverses Copyright Fair Use Defense in "Hand of God" Case, but Affirms Dismissal on Standing Grounds

By Barry Werbin

While God may work in mysterious ways, in this case, the Second Circuit was anything but mysterious in taking away that which the district court had giveth by way of a copyright fair use defense to the producers of the Broadway show "Hand of God" for their use of the famous Abbott & Costello "Who's on First?" comedy skit (the Routine) in a portion of the show. In an important opinion issued on October 11, 2016, the Court reversed the trial court's finding that the defendants' verbatim use of more than a minute of Abbott and Costello's iconic comedy routine in a scene in "Hand to God" involving the lead character (Jason) and his hand puppet (who in the play lies about the origin of the Routine), as well as its use in a promotional video clip, qualified as a non‐infringing fair use. In its opinion, the Court clarified the limits of transformative use, cutting back on what had been viewed by many practitioners as an increasingly expanded application of that concept in fair use cases.

In granting the defendant's motion to dismiss in TCA Television Corp. v. McCollum, 151 F. Supp. 3d 419 (S.D.N.Y. 2015), the district court had found that use of the skit in the play was "highly transformative" as to support a fair use defense because "by having a single character perform the Routine, the Play's authors were able to contrast 'Jason's seemingly soft‐spoken personality and the actual outrageousness of his inner nature, which he expresses through the sock puppet.'... This contrast was 'a darkly comedic critique of the social norms governing a small town in the Bible Belt.'"

The Second Circuit criticized this reasoning as being "flawed in that what it identifies are the general artistic and critical purpose and character of the Play. The district court did not explain how defendants' extensive copying of a famous comedy routine was necessary to this purpose, much less how the character of the Routine was transformed by defendants' use."

The Court emphasized that Campbell v. Acuff‐Rose Music, Inc., 510 U.S. 569 (1994) "instructs that a court properly considers 'whether the new work merely supersedes the objects of the original creation, or instead adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message.'" [Emphasis in original]

Emphasizing that under the first fair use factor, the purpose and character of the use, the focus of inquiry "is not simply on the new work, i.e., on whether that work serves a purpose or conveys an overall expression, meaning, or message different from the copyrighted material it appropriates. Rather, the critical inquiry is whether the new work uses the copyrighted material itself for a purpose, or imbues it with a character, different from that for which it was created." Here, even if, as the District Court found, "Hand to God" is a "darkly comedic critique of the social norms governing a small town in the Bible Belt," and "even if the Play's purpose and character are completely different from the vaudevillian humor originally animating Who's on First?, that, by itself, does not demonstrate that defendants' use of the Routine in the Play was transformative of the original work."

The Court then reviewed its somewhat controversial decision in Cariou v. Prince, 714 F.3d 694 (2d Cir. 2013), cert. denied, 134 S. Ct. 618 (2013). Indeed, the Court acknowledged this in saying: "Insofar as Cariou might be thought to represent the high‐water mark of our court's recognition of transformative works, it has drawn some criticism." Contrasting the photographs that were altered in Cariou to the point where some were "barely recognizable," the Court emphasized that the Routine, as used in "Hand of God", was not altered at all: "The Play may convey a dark critique of society, but it does not transform Abbott and Costello's Routine so that it conveys that message. To the contrary, it appears that the Play specifically has its characters perform Who's on First? without alteration so that the audience will readily recognize both the famous Routine and the boy's false claim to having created it."

The defendants' argument, that using the Routine for such a "dramatic" rather than "comedic" purpose was transformative, was rejected by the Court because "[t]he 'dramatic' purpose served by the Routine in the Play appears to be as a 'McGuffin,' that is, as a theatrical device that sets up the plot, but is of little or no significance in itself." The lead character needed to lie about something, and the Routine was just used as the prop without changing its own essence. "Such unaltered use of an allegedly copyrighted work, having no bearing on the original work, requires justification to qualify for a fair use defense."

Similarly, the humor in the play's scene derives from the Routine itself, and the "defendants' taking is identically comedic to that of the original authors, that is, to have two performers expand on a singular joke in order to generate increasing audience laughter." As such, "there is 'nothing transformative' about using an original work 'in the manner it was made to be' used.'" Nothing in the record demonstrated that the "Play imbued the Routine with any new expression, meaning, or message", and the District Court erred in finding that it was transformative under the first Section 107 factor, which therefore weighs in favor of the plaintiffs. The commercial use of the Routine without any transformative purpose also weighed in favor of the plaintiffs because such use "duplicated to a significant degree the comedic purpose of the original work."

As for the second statutory fair use factor, "the nature of the copyrighted work," the Court found the Routine to be a creative work, which was used for dramatic effect by "perform[ing], verbatim, some dozen variations on the Routine's singular joke," thereby "provoke[ing] audience laughter in exactly the same way as the Routine's creators had done." This factor favored the plaintiffs.

The third factor, "the amount and substantiality of the portion used in relation to the copyrighted work as a whole," also "weighs strongly" in favor of the plaintiffs because the portion of the Routine used "plainly reveals the singular joke underlying the entire Routine: that words understood by one person as a question can be understood by another as an answer. Moreover, defendants repeatedly exploit that joke through a dozen variations. This manifests substantial copying."

Finally, with respect to the fourth factor, "the effect of the use upon the potential market for or value of the copyrighted work," the Court found that the "the district court disregarded the possibility of defendants' use adversely affecting the licensing market for the Routine." The Court clarified that derivative markets, while not the focus of this factor, are nevertheless not irrelevant. As the plaintiffs at the pleading stage alleged that there existed a traditional and active derivative market for licensing the Routine, this factor also would weigh in plaintiffs' favor, and the District Court erred in dismissing the complaint.

Nevertheless, the Court dismissed the complaint on the alternative ground that the plaintiffs failed to plead a valid chain of copyright ownership in the Routine, based on a tangled history of agreements and alleged assignments between Abbott and Costello and Universal Pictures Company (UPC), and then with the comedians' respective heirs and various successors in interests. The Court found that Abbott and Costello did not assign their copyrights in the Routine to UPC, but granted UPC only an exclusive, limited‐use license. As the plaintiffs' copyright standing rested entirely on a quitclaim transfer from UPC, and "the parties to the Quitclaim understood Abbott and Costello not to have transferred, but to have retained, ownership of the Routine's copyright," the plaintiffs lacked standing. The Court also rejected the plaintiffs' argument that the Routine was a work-made-for-hire, citing a 1938 radio performance of the Routine by the duo, more than two years prior to their first agreements with UPC.

Finally, the Court rejected the plaintiffs' theory that "the Routine so merged with the UPC movies in which it was performed as to become a unitary whole," finding that the Routine was an independent work that did not merge with the films, particularly where Abbott and Costello had created and performed the Routine long before the first UPC film featuring the skit was filmed, and the duo continued to perform it for years after that.

October 21, 2016


BY Barry Werbin

Well, just when we think things can't get much weirder, the photographer who took and owns the copyright in the Skittles-in-a-bowl image that the Trump campaign used in a political advertisement opposed to taking in Syria refugees that went viral, just sued Trump et al for copyright infringement in the Northern District of Illinois. The complaint was filed on Oct. 18th. SkittlesTrump.pdf

Trump's use of the image received flack because the photographer himself was a refugee from Turkish occupation in Cyprus who had escaped to the U.K., and is deeply opposed to Trump's policies. Here's Trump's Tweet and the ad itself:


October 22, 2016

Week in Review

By Eric Lanter

Billy Bush Departs From NBC

Following the revelation of the 2005 "Access Hollywood" video, where Donald Trump bragged about his sexual exploits to Billy Bush, NBC announced that Mr. Bush no longer works for the "Today" show. The terms of his departure were not made public.


New York Road Runners to Extend Doping Tests to Lower-Tier Races

New York Road Runners, one of the nation's largest road racing organizations, tests elite runners prior to its events, and disqualifies those who test positive for performance-enhancing drugs. Starting in Spring 2017, New York Road Runners will test top local and club runners as well, which is a tier below the professional runners, in an effort to increase awareness of the dangers of performance-enhancing drugs and to level the playing field. Should a runner be disqualified for testing positive, that runner will forfeit his or her prize money. However, an appeal is available for disqualified runners, leaving open the option for overturning an incorrect disqualification.


Venues Refuse to Pay Songwriters While Profiting from Music

The American Society of Composers, Authors and Publishers (ASCAP), a non-profit membership association with 585,000 member songwriters, composers, and music publishers, announced that it filed 10 copyright infringement lawsuits against bars and restaurants across the country as a result of "unauthorized public performance of its members' copyrighted musical works." While bars and restaurants can pay a license fee to access ASCAP's library of over 10 million musical works, the defendants have used ASCAP members' music without licenses. ASCAP stated that the average cost for a bar or restaurant to purchase a license to the musical works of ASCAP members is $2 per day to play an unlimited amount of music.


Jury Hears Closing Arguments in Derrick Rose Case

In Los Angeles, a jury heard closing arguments in a lawsuit accusing the National Basketball Association star Derrick Rose and two of his friends of raping a woman in her apartment in 2013. The woman had a relationship with Mr. Rose for approximately 20 months before the month prior to the alleged rape. The defense characterized the lawsuit as "fake" and her pain and suffering as "a hoax and a joke." The prosecution, however, called the three men "sexual deviants" who degraded the woman, as she was incapacitated during the sexual act.


Before Colin Kaepernick, There Was Martina Navratilova

Martina Navratilova, the tennis star, is known for her advocacy for children's rights, animal rights, and gay rights. She weighed in on Colin Kaepernick's recent protests during the national anthem prior to each National Football League (NFL) game in which he plays, where he protests police brutality and racial inequality. She said that his actions may be "somewhat disrespectful," but he should be praised for speaking out, as he is doing so in a peaceful way. This comes just weeks after Justice Ruth Bader Ginsburg called the protest "dumb and disrespectful", but not illegal.


Josh Brown, Kicker for New York Giants, Admitted Abusing Wife, and That Admission Causes the NFL to Reopen Its Initial Inquiry

Josh Brown, the kicker for the New York Giants, admitted to police that he abused his wife, Molly Brown. He stated that he was "physically, emotionally, and verbally" abusive. His admissions were noted in an NFL file that have been compiled after his arrest last year for domestic violence in King County, Washington. John Mara, co-owner of the Giants, said in August that the organization was aware of the allegations and was comfortable with the decision to re-sign him over the summer. However, Brown's admission caused the NFL to reopen its investigation.



Baylor University Is Under Federal Investigation Over Possible Title IX Violations

The federal government announced that it is formally investigating Baylor University to determine whether it violated Title IX during its internal investigations of sexual assault reports on campus. The investigation came as a result of a report released in early 2016, which led to the resignation of Kenneth Starr, president of the university, as well as the athletic director and football coach.


Criticism of the News Media Takes on Sinister Tone

Donald Trump's campaign has unleashed attacks on the news media unlike any since the candidacy of George Wallace. Mr. Trump has argued that the news media has been trying to "poison the minds" of voters with lies as part of a conspiracy against the American people involving "global financial interests." There has not been a concentrated effort to defend against these attacks, and at some of Mr. Trump's rallies, security has been provided for members from the media. Some journalists have postulated that Mr. Trump's campaign has observed perspectives from the West Coast and East Coast newspapers and interpreted those as ignoring the concerns of individuals in the middle of the country. This narrative has resonated with Mr. Trump's supporters and likely will continue in the final weeks of the election.


Rolling Stone Stays Focused as Defamation Trial is Set to Begin

Wenner Media, the entity that owns Rolling Stone magazine, is preparing to defend two lawsuits that the magazine faces over a 2014 article about an alleged gang rape at the University of Virginia. That article was widely discredited shortly after publication, and Rolling Stone retracted the piece after the Columbia Journalism School exposed its journalistic flaws. The associate dean of the University of Virginia filed a defamation lawsuit against Rolling Stone after she was portrayed as ignoring the alleged victim. The second lawsuit centers on the fraternity suing the magazine for portraying it as the scene of the alleged gang rape. That trial has yet to begin, but the fraternity is seeking $25 million in damages. Legal experts have said that Rolling Stone's exposure will be covered by insurance for both actions, and the magazine will likely survive the outcome of the lawsuits.


American Pleads Guilty in FIFA Case for Role in Bribes

Aaron Davidson, a sports marketing executive, admitted in federal court that he negotiated and paid more than $14 million in bribes to soccer officials on behalf of Traffic Sports USA. The bribes ensured that Traffic Sports USA received media and marketing contracts for soccer games. He signed a plea agreement, pleading guilty to racketeering conspiracy and wire-fraud conspiracy.


Spanish Court Overturns a Ban Against Bullfighting in Catalonia

Spain's Constitutional Court overturned a ban on bullfighting, which lawmakers in a region of Spain, Catalonia, approved six years ago. The decision has come under fire by Catalonians, who value their autonomy despite not being independent of Spain, and animal rights activists, who find the practice of bullfighting to be unjustifiably cruel to the animals. The sport had already taken a hit because of high debts and a drop in the number of bullfighting events in Spain, and the ban only exacerbated the sport's difficulties. The practical consequences of the Constitutional Court's ruling are still unclear.


October 26, 2016

Unprecedented Removal of Register of Copyrights Causes Consternation in Copyright Community

Authors Guild Statement
Courtesy of Mary Rasenberger

OCTOBER 24, 2016

Maria Pallante, the Register of Copyrights and Director of the United States Copyright Office, submitted her resignation today, after being abruptly removed and transferred from office last Friday by Dr. Carla Hayden, the new Librarian of Congress, who was sworn in just weeks ago. According to a statement issued by the Library of Congress, Hayden transferred Pallante to a newly created non-managerial position within the Library, Senior Advisor for Digital Strategy. Karyn Temple Claggett, an Associate Register, was appointed Acting Register of Copyrights, effective immediately.

We are disappointed to see Pallante go. She was a devoted leader of the Copyright Office, launching several major initiatives--including a full review of the Copyright Act to bring it into the 21st Century, and the modernization of the Copyright Office to better serve the evolving needs of digital-era Copyright Office constituents--initiatives that took great vision and courage. She also oversaw a full review of and set of recommendations for bringing the Office's technology into the 21st Century; she shored up copyright registration practices and created a comprehensive online guide to registration and recordation--the 2014 Compendium of U.S. Copyright Office Practices, Third Edition--which was the first wholesale revision of the Compendium in 30 years.

In another major initiative (which the Authors Guild has adopted as part of our 2016 Legislative Priorities), Pallante led the Office in a comprehensive study and then a recommendation to create a small claims tribunal, which would allow authors and other creators to bring small infringement claims inexpensively, without having to hire a lawyer. Congressmen Hakeem Jeffries (D-NY) and Tom Marino (R-PA) have already introduced legislation to implement the recommendations, and Congresswoman Judy Chu (D-CA) has indicated that she might as well.

During her tenure, Pallante displayed an uncommon willingness to comprehend and to balance the positions of all copyright stakeholders. Especially important to the Guild was Pallante's conviction that ultimately the creative industries cannot thrive without respect for individual creators. Under Pallante, the Copyright Office operated under and embodied the principle that copyright exists to benefit the public by incentivizing new works of authorship, and that the rights of individual creators need be respected to ensure that robust creative ecosystems can flourish through new digital platforms.

Upon taking office in 2011, Pallante outlined an incredibly ambitious set of Priorities and Special Projects which she proceeded to fully execute--and even exceed--something especially noteworthy given her relatively small staff. Among her many achievements, the Office in just five short years conducted comprehensive studies and issued policy reports on:

The Making Available Right in the United States (February 2016); Orphan Works and Mass Digitization (June 2015); Copyright and the Music Marketplace (February 2015); Resale Royalties (December 2013); Copyright Small Claims (September 2013); Copyright Protection for Pre-1972 Sound Recordings (December 2011); Legal Issues in Mass Digitization (October 2011); and Marketplace Alternatives to Replace Statutory Licenses (August 2011).

Leading always by example, Pallante tackled many difficult issues, and employed a standard of excellence and a work ethic that infused her diversely-minded staff--hired from all copyright sectors--with the energy and devotion to accomplish monumental amounts of exceedingly high quality work. Each study, report and other document issued during her tenure was extremely well researched and written, the law and facts meticulously analyzed. And in every study and rulemaking process, the Office thoroughly reviewed and addressed the hundreds (sometimes thousands) of stakeholder comments submitted for consideration.

It is a difficult time of transition in copyright law, with so much of the law being questioned and recast in response to the digital revolution. It is the rare person who can summon the abilities and strengths Pallante did to tackle these issues head-on. We applaud Pallante for her outstanding service as Register these last five years.

The timing of Pallante's removal is less than ideal, especially in light of her leadership on issues of copyright reform and the significant pending projects. Specifically, at the time of Pallante's removal, the Office was actively working towards reports on:

Moral Rights; Revising the Copyright Exceptions for Libraries and Archives; Mandatory Deposit of Online-Only Books; Copyright Office IT Modernization; Section 512 of the DMCA; and Section 1201 of the DMCA (Circumvention of Technological Protection Measures), among other issues.

It has been the Authors Guild's long held belief that the head of the Copyright Office, not the Librarian, should be responsible for issuing copyright policy. The Copyright Act currently states that the Register of Copyright is subject to the direction and supervision of the Librarian of Congress and that regulations established by the Copyright Office are subject to the Librarian's approval. This is required by the fact that the Copyright Office is a division of the Library of Congress (for historical reasons--the Library wanted the copyright deposits), and the Register is not a presidential appointee. This is why it has been a long-standing priority of the Authors Guild for Congress to modernize the Copyright Office to give it greater political, budget and IT independence from the Library.

Fortunately, Congress has heard our ideas and has been looking at changing the institutional structure of the Copyright Office. Legislation has been introduced in the House that would modernize the Copyright Office and give it greater independence from the Library. The Authors Guild endorsed this bill and continues to support this concept.

Meanwhile, we are pleased that Temple Claggett, Associate Register of Copyrights and Director of Policy and International Affairs for the United States Copyright Office, has agreed to serve as Acting Register while the search for a permanent replacement is underway. Temple Claggett is an astute and experienced copyright lawyer and manager and an excellent choice to lead the Copyright Office through this period of transition. In her prior role, Temple Claggett oversaw the office's domestic and international policy analyses, legislative support, and trade negotiations, among other matters. We look forward to working with Temple Claggett during the transition.

We understand that a search committee to fill the Register's position is being formed. The Authors Guild will request that creators be represented on that committee. We hope that the new Register will continue the Copyright Office's long tradition of championing and serving the interests of individual creators, men and women who work in an increasingly precarious economy, and whose work, though often taken for granted, remains the lifeblood of our culture.

What Belongs in a Personnel File?

By Kristine A. Sova

It's a good practice to maintain a general personnel file documenting an employee's employment history, but did you know that not every document pertaining to an employee belongs in the general personnel file? The better practice is to maintain more than one type of file on an employee, such as a medical file, an I-9 file, a payroll file, a benefits file, investigation files, and legal files, among others, in addition to the general personnel file.

So what can you include in an employee's general personnel file? The following documents are all appropriate and should be included:

-Employee contact and emergency contact information
-Employment application
-Letters of reference
-Offer letter
-Employment contract
-Compensation information
-Signed acknowledgement of receipt of employee handbook or other policies and procedures, as well as any periodic acknowledgements of new or amended handbooks or policies and procedures
-Job description
-Other signed agreements with an employee (such as confidentiality agreements), as well as any new agreements or amendments to existing agreements
-Performance reviews
-Documentation of employee discipline
-Documents reflecting changes in an employee's contact information
-Documents reflecting changes in an employee's compensation (including bonuses and raises)
-Documents reflecting changes in an employee's title or job
-Records of completed training or certifications
-Time and attendance records (if not tracked and maintained separately)
-Documents tracking time-off accrual and usage (if not tracked and maintained separately)
-Letter of resignation, if a voluntary departure
-Notice of termination, if an involuntary termination or layoff
-Documentation of reasons for termination or layoff
-Exit interview notes, if any
-COBRA notices, if applicable
-Notice of the employee's right to file for unemployment benefits, as well as date of termination of benefits (often required under state law)

As for documents that should be maintained separately from the general personnel file, those include:

-Medical Records - Employee medical records, which include reports from medical examinations required as a condition of employment as well as other medical information gathered in connection with leave requests, certifications of an employee's fitness for return to work after leave, requests for disability accommodation, and workers' compensation claims, should be maintained separately because they often contain information protected from disclosure under the anti-discrimination laws (specifically, the Americans with Disabilities Act (ADA) and state and local laws or the Genetic Information Nondiscrimination Act (GINA)). Medical records files should be maintained for each employee. Accompanying leave requests, accommodations requests, and workers' compensation claims may be maintained with the medical records, or in separate files.

-Form I-9s - The Form I-9, which demonstrates an employee's right to work in the U.S. under the Immigration Reform and Control Act of 1986 (IRCA) should be maintained separately from an employee's general personnel file because it makes it easier to collate the forms in the event of an audit. In addition, maintaining these forms separately helps an employer to avoid potential discrimination charges due to the age or national origin information contained on the forms. Form I-9s for all employees can be kept in one file.

-Payroll File - Employers should maintain IRS Form W-4 and other withholding forms, payroll deduction authorization forms, direct deposit authorizations, and wage garnishment information in a separate file. Maintain one file for each employee.

-Benefits File - Employers should also maintain benefits-related documentation separately from the general personnel file. These documents include enrollment forms, coverage waiver forms, flexible spending account forms, retirement forms, beneficiary designation forms, and COBRA paperwork (if applicable). Maintain one file per employee.

-Investigation Files & Legal Files - Documentation of an investigation, such as investigation of a complaint or misconduct, should be maintained separately from a general personnel file. Relevant disciplinary action or counseling may be placed in an employee's personnel file. Similarly, documents relating to any claim or lawsuit by an employee should also be maintained in a file separate from the general personnel file, as well as from any related underlying investigation file.

October 29, 2016

Week in Review

By Michael Smith

AT&T/Time Warner Merger Likely to Face Federal Communications Commission Review

The planned merger between AT&T Inc. and Time Warner Inc. (not Time Warner Cable) already is expected to face tough scrutiny from the Justice Department. Some lawmakers are now pushing for Federal Communications Commission (FCC) review as well. Time Warner owns dozens of FCC licenses, which cannot be transferred without the FCC's permission.


New FCC Rules Require Opt-In for ISPs to Share Personal Data

The FCC adopted new regulations requiring internet service providers (ISPs) to obtain affirmative consent from consumers before sharing consumers' personal information (e.g., browser history) with third parties. By contrast, the Federal Trade Commission regulations that apply to non-ISPs like Facebook and Google do not require "opt-in" by the consumer, except in the case of sensitive data like health or financial information. ISPs and other internet companies (including Google) oppose the regulations.


Judge Greenlights $10 Billion Civil Rights Action Against Charter Communications

A federal judge in California ruled that a class action against Charter Communications seeking $10 billion for alleged violations of §1981 of the Civil Rights act can move beyond the pleading stage. The complaint alleged that Charter discriminated against African American-owned media networks in granting cable licenses, and that Charter's executives made racist comments. The court found that the plaintiffs sufficiently alleged "continued stonewalling and provision of excuses [for refusing to carry African American-owned networks] that do not match up with Defendant's practices with non-African American-owned media companies."


Redstone Sues Ex-Girlfriends for Elder Abuse

Former Viacom chairman and courthouse aficionado Sumner Redstone sued two former girlfriends, alleging that they conspired to take his money by, among other things, persuading him to sell hundreds of millions of dollars in stock options and shares in CBS and Viacom in order to give them each a $45 million gift. Redstone alleged that he was forced to borrow $100 million to cover associated tax obligations because the women had "cleaned out [his] bank accounts."


Daily Fantasy Sports Websites Settle with New York State

FanDuel and DraftKings, the two leading fantasy sports companies,agreed to pay $6 million each to settle lawsuits brought by New York State, which claimed that the companies engaged in misleading promotional activities that misrepresented the likelihood of winning and the "addictive nature" of their games. They also agreed to include statistics about rates of user success and resources for gambling addiction in their marketing and promotional materials.


Russian Sports Minister Resigns in Wake of Olympic Doping Scandal

Yuri D. Nagornykh, Russia's deputy sports minister, was accused of coordinating a state-sponsored doping program that led to the suspension of nearly a third of Russia's Olympians at the Rio games. In July, the World Anti-Doping Agency (WADA) released a report finding that Nagornykh "held the chief responsibility of the execution" of the scheme at the 2014 Winter Olympics in Sochi. An investigation by the Russian prosecutor general's office is ongoing. Meanwhile, Russia's sports minister -- whose ignorance of the doping scheme is "inconceivable," according to the WADA report -- has been promoted to deputy prime minister for sports, tourism, and youth affairs.


Anti-Doping Agencies Demand Reform

Representatives of national anti-doping organizations from across the globe issued a joint statement listing reforms to WADA policies that they believe are necessary to restore confidence and fairness to sport, including a recommendation that antidoping decision makers not hold policy-making decisions.


The Rebirth of a Condemnation

Nate Parker, the writer/director/star of the movie "The Birth of a Nation," was charged with rape in 1999, when he was a wrestler at Pennsylvania State University (Penn State). Parker ultimately was acquitted, but Penn State's handling of allegations about Parker is under scrutiny. Tim Curley, a former university official being prosecuted for failing to report Jerry Sandusky's sexual abuse of children, was one of the officials who dealt with a trainer's complaint that Parker exposed himself to her. Prosecutors reportedly are considering whether these cases indicate a broader pattern.


Jury Finds That Penn State Defamed Assistant Coach

A Pennsylvania jury found that Penn State defamed former assistant coach Mike McQueary through statements made when it fired McQueary during the investigation into Jerry Sandusky's conduct. In 2001, McQueary reported what he believed to be sexual abuse by Sandusky. McQueary alleged that Penn State "threw [him] under the bus," and that he was unable to find a job because of the way the school portrayed him. The jury agreed, awarding him $7.3 million.


Court Order Could Keep Gophers Off Field

A woman who accused University of Minnesota football players of sexually assaulting her obtained a temporary restraining order against five players requiring them to stay away from her home and place of work. The woman works at the university's football stadium. The district attorney's office declined to prosecute, claiming insufficient evidence, but four of the players served three-game suspensions. The order, which prevented the five from playing in a game against Rutgers last Saturday, will remain in place until a hearing next Thursday, two days before the next home game.


$10 Million Painting Declared a Forgery

A celebrated painting thought to be the work of seventeenth century Dutch painter Frans Hals when it surfaced several years ago was declared a "modern forgery." Five years after brokering the private sale of the painting for $10 million, Sotheby's auction house returned the buyer's money in light of a recent technical analysis showing traces of twentieth century materials in the painting. It is unknown who the forger might be, but other pieces "discovered" by the same collector who surfaced the "Hals" painting are being sent in for testing.


Gallery Owner Accuses Alec Baldwin of Tax Evasion

Mary Boone, the art gallery owner Alec Baldwin sued for allegedly selling him the wrong painting, filed a motion to dismiss that lawsuit. The motion argues that Baldwin's claims are time-barred, and accuses Mr. Baldwin of fraudulently avoiding $16,625 in sales tax on the painting. Boone alleges that Baldwin had the painting shipped to his home in Los Angeles, and then back to his apartment in New York, to avoid paying New York State sales tax.


Playboy Wins Energy Drink Trademark Battle

A Chicago jury awarded Playboy Enterprises, Inc. $7 million in damages caused by defendants Play Beverages, CirTran Beverage, and CirTran Corporation for their continued sale of PLAYBOY-branded energy drink products after their license to do so had expired.


Warner Bros. Sues over Leaked Screeners

Warner Bros. sued Innovative Artists Talent and Literary Agency (Innovative Artists), accusing the talent agency of allowing "screeners" -- pre-release DVDs of movies, often provided to awards voters or reviewers -- of Warner Bros. films to be pirated. The complaint alleges that Innovative Artists would upload digital copies of the DVDs and make them available on a shared Google Drive account from which people inside and outside the agency downloaded copies.


Costner Sues Filmmaker for Trading on his Name

Actor Kevin Costner sued Kylin Pictures for breach of contract and fraud, alleging that the film company agreed to pay him and his production company millions of dollars and a share in the profits to be involved in the production of a film called "Shanghai Sojourners". Costner alleged that, after using his name to attract investors, Kylin dropped him from the production and refused to pay him.


Parted Puppet Partners in Spat over Parody

The writer and producers of "Thank You for Being a Friend," a puppet parody of the '80s sitcom "The Golden Girls," are suing Jonathan Rockefeller -- the co-writer of "Thank You for Being a Friend," alleging that he misappropriated the rights to the show to put on "That Golden Girls Show! A Puppet Parody," a nearly identical show now playing off Broadway. Rockefeller contends that the plaintiffs agreed that Rockefeller could mount another, competing show.


There is Good News About the Election

A nation can now rest easy. Superstar recording artist Justin Timberlake will not be prosecuted for posting a photo of himself inside a Tennessee polling station on Instagram. Calling a previous statement that Timberlake's actions were "under review" (taking a photo in a polling place is a misdemeanor in Tennessee) "incorrect," the Shelby County District Attorney General said her office had no intention of investigating the matter.


Lack of Documentary Evidence Sinks Two Recent Trademark Applications

Frankfurt Kurnit Klein & Selz Trademark & Brand Management Group

Business owners do not have to wait until they are actually using a trademark in commerce before seeking to register it with the Trademark Office. Instead, they may file an intent-to-use application by certifying that they have a good faith, bona fide intent to use the mark in commerce. But if another party questions a business owner's intent --- when the application is published for opposition or after registration --- the Trademark Trial and Appeal Board (the Board) will require documentary evidence showing the bona fide intent to use. Lack of documentary evidence can kill an application or a registration --- and set a business plan back. That's what happened to two recent applicants. Here's a summary.

In The Trustees of the Bonnie Cashin Foundation v. Stephanie Day Lake (http://ttabvue.uspto.gov/ttabvue/ttabvue-91213081-OPP-44.pdf) and Heineken Asia Pacific Pte. Ltd. v. Jonathan A. Claypool (http://ttabvue.uspto.gov/ttabvue/ttabvue-91220927-OPP-20.pdf), the Board reiterated that the test for bona fide intention includes whether there is documentary evidence of an intent to use. If an applicant cannot produce documentary evidence or explain why there is no such documentation, the Board will deny the application for lack of bona fide intent.

In Heineken Asia, the Board found no intention to use the mark TIGER SHARK on beer where the applicant admitted that he did not have any written plans to use the mark, produce the goods, or advertise the goods; he did not have any labels or packaging, marketing materials, intended consumers, or written business plans; and he did not have any employees or spend any money on the creation of the goods. The applicant's "simple mental memorized" business plan, research on the making of beer, and conducting of trademark searches and filing of trademark applications were insufficient to constitute a bona fide intention to use. In fact, the applicant's submission of multiple applications to register different trademarks, according to the Board, indicated that he did not specifically intend to use TIGER SHARK.

In Bonnie Cashin, the Board relied on similar facts to find no bona fide intention. The Board held that the applicant failed to produce any documents discussing her intention to use the trademark BONNIE CASHIN; failed to show that she had taken any steps to use the mark in commerce; and failed to determine the channels of trade, conduct consumer research, or develop any product designs or mockups. Although the applicant did produce some documents showing an effort to commercialize the mark, those documents were not persuasive. Some of those documents showed effort made by the applicant while she was still employed by the opposer and, so, represented the opposer's intent, not the applicant's. Other documents were not persuasive because they were dated after the application was filed, and so could not show the applicant's intent at the time the application was filed.

What these decisions mean

These decisions highlight the importance of documentary evidence showing a plan to use a trademark in commerce when the trademark application is filed. A failure to have this evidence can result in a trademark application being denied or a registration being cancelled. Even the most thorough business plan may not be enough. The evidence should be written and should reveal concrete steps taken by the applicant toward commercializing the trademark.

About October 2016

This page contains all entries posted to The Entertainment, Arts and Sports Law Blog in October 2016. They are listed from oldest to newest.

September 2016 is the previous archive.

November 2016 is the next archive.

Many more can be found on the main index page or by looking through the archives.