Pattishall IP Blog

September 27, 2012

Publication of Noelia’s Secret Wedding Photos Not Fair Use, Ninth Circuit Finds

Filed under: Copyright, First Amendment, Litigation — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 4:10 pm

By: Seth I. Appel

The Ninth Circuit Court of Appeals held that a gossip magazine’s publication of photographs of a secret celebrity wedding did not constitute fair use under the Copyright Act.  Monge v. Maya Magazines, Inc., 688 F.3d 1164 (9th Cir. Aug. 14, 2012).

Noelia Lorenzo Monge, the Puerto Rican pop singer and model known to the world as Noelia, married her manager, Jorge Reynoso, in January 2007.  The couple attempted to keep their marriage a secret to maintain Noelia’s image as a single sex symbol.  Only the minister and two chapel employees witnessed the wedding ceremony.  For two years Noelia and Reynoso succeeded in keeping their marriage a secret, even from their families.

In the summer of 2008, Oscar Viqueira, a paparazzo who worked as a driver and bodyguard for Noelia and Reynoso, discovered a memory chip containing photographs of the wedding night.  Viqueira sold the photos to Maya Magazines for $1,500, without Noelia’s or Reynoso’s permission.

Maya published three photos of the wedding ceremony, and three additional photos from the wedding night, in Issue 633 of TVNotas Magazine.  Until then, the photos had been unpublished.  The TVNotas cover headline stated:  “The Secret Marriage of Noelia and Jorge Reynoso in Las Vegas.”  The photo spread inside referred to the “first and exclusive photos of the secret wedding.”  Issue 633 was the first time the public learned of the wedding – including Reynoso’s mother, who berated her son for getting married without telling her.

Noelia and Reynoso promptly registered the copyrights in five of the photos and then brought suit against Maya for copyright infringement.  The Central District of California granted summary judgment in favor Maya based on fair use.  2010 WL 3835053 (Sept. 30, 2010).  The Ninth Circuit reversed.

Fair use is an affirmative defense to copyright infringement.  The fair use doctrine, the Ninth Circuit explained, presumes that unauthorized copying has occurred but protects such copying under certain circumstances.  Section 107 of the Copyright Act enumerates four factors for courts to consider in evaluating a fair use defense:

(1)       the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

(2)       the nature of the copyrighted work;

(3)       the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

(4)       the effect of the use upon the potential market for or value of the copyrighted work. (more…)

September 10, 2012

When Does the First Amendment Trump Trademark Law? 11th Circuit Adopts Rogers v. Grimaldi Test

Filed under: Constitution, First Amendment, Litigation — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 2:08 pm

By Janet Marvel, Partner

In 1989, the Second Circuit adopted a balancing test to weigh the value of an artist’s First Amendment rights against the value of trademarks depicted in the artist’s work.  Rogers v. Grimaldi, 875 F.2d 994 (9th Cir. 1989).  In June of this year, the 11th Circuit adopted essentially the same test in University of Alabama Board of Trustees v. New Life Art, Inc., 683 F.3d 1266 (11th Cir. June 11, 2012).

Some Background

In Rogers v. Grimaldi, 875 F.2d 994 (9th Cir. 1989), Ginger Rogers sued over an Italian film titled “Ginger and Fred,” which was about two cabaret performers who imitated Ginger Rogers and Fred Astaire.  Ms. Rogers alleged violations of her rights under the federal trademark statute (the Lanham Act) and of her right of publicity under state law.  The district court dismissed the claim and the Second Circuit affirmed.  The court stated that enjoining the distribution of artistic works does not violate the First Amendment where the public interest in avoiding consumer confusion outweighs the public interest in free expression.  For movie titles, the court stated that unless the title had no artistic relevance to the underlying work or was expressly misleading, no injunction should issue.  Other courts have adopted similar tests, including the Sixth Circuit, in ETW v. Jireh Publishing, Inc., 332 F.3d 915 (6th Cir. 2003), where the court permitted defendant’s use of Tiger Woods’ name on the inside flap of an envelope containing an art print featuring his image, and in the narrative description for the print.  See also ESS Entertainment 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095 (9th Cir. 2008) (scene in a video game featuring trademark of plaintiff’s entertainment club did not infringe plaintiff’s trademark rights).

The Crimson and White

In University of Alabama Board of Trustees v. New Life Art, Inc., 683 F.3d 1266 (11th Cir. June 11, 2012), the University sued an artist who, for over thirty years, had painted and sold images of plays in University of Alabama football games.  The parties had entered into various licensing agreements, apparently licensing some University of Alabama logos, among other things.  In 2002, the University demanded that the artist take a license for all of his works because they depicted University uniforms in the colors crimson and white, which the University stated were its trademarks.  The artist declined, arguing that he did not need a license to depict University trademarks within his images.

The court separately considered the parties’ respective rights in calendars, and large-size paintings and prints, and “mundane products,” comprising such things as “‘mini-prints,” mugs, cups, flags, and towels. (more…)

March 1, 2012


Filed under: First Amendment, TM Registration — Tags: , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 2:32 pm

By Janet Marvel, Trademark Attorney

On February 27, 2012, the Trademark Trial and Appeal Board issued its precedential opinion in Research in Motion Limited v. Defining Presence Marketing Group, Inc. and Axel Ltd. Co., Opposition No. 91181076,[1] refusing registration of CRACKBERRY because it is likely to be confused with and to dilute RIM’s famous BLACKBERRY mark.  Defendant’s (“Axel”) main defense was that CRACKBERRY parodied BLACKBERRY.  Axel’s parody defenses failed, perhaps primarily because, according to the Board, Axel competes directly with RIM, rather than simply making a commentary on the BLACKBERRY product.

The Board summarily dealt with Axel’s parody defense to likelihood of confusion, noting that in federal court “the protective penumbra of free speech may well support the premise that members of the public have a right to use words in the English language to interest and amuse other persons.”  However, the Board only has power to bar registration, not use.  Thus “[t]he First Amendment claim is not as strong as with issues of restraint on use.”  In addition, “[t]he center of balance changes even further when the risk of confusion of source, affiliation, approval, or endorsement by the source of the known expression outweighs the newcomer’s claim to the right to adopt and register a humorous moniker.”  The Board concluded that – at least for the purpose of registration – “likelihood of confusion will usually trump any First Amendment concerns.”  The Board then had no trouble finding that the DuPont factors supported the conclusion that CRACKBERRY was likely to be confused with BLACKBERRY.

The TTAB also found that CRACKBERRY is likely to dilute BLACKBERRY.  Again, Axel hung its hat on the parody defense.  Again, it failed.  The Board first noted that the parody exclusion in the federal dilution statute, 15 U.S.C. 1125(c), by its terms does not apply to defendant’s use of its mark “as a designation of source for the person’s own goods or services.”  Axel obviously used CRACKBERRY as a mark.

However, the Board held that the statutory language does not end the analysis.  The Board quoted the famous parody case Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252 (4th Cir. 2007), explaining: “Like the Fourth Circuit, the Board will assess the alleged parody ‘as part of the circumstances to be considered for determining whether the [opposer] has made out a claim for dilution by blurring.'”  In finding dilution by blurring, the Board considered it persuasive that Axel itself did not create the parody – instead it adopted a term already in common parlance.  Perhaps more importantly, the Board noted that Axel’s CRACKBERRY services are closely related to those of RIM.  Thus, if CRACKBERRY was a parody at all, it was not a very good one.

Axel operates an online retail store under the CRACKBERRY name, where it sells electronic handheld devices among other things that, the Board found, “are quite closely related” to RIM’s BLACKBERRY devices.  The CRACKBERRY site uses “the Blackberry mark as if their own source identifier.”  This likely was Axel’s undoing.  While the site may include a chat room for BLACKBERRY users, sale of goods on the site no doubt ended any “joke” Axel was trying to make of the CRACKBERRY name, and put it squarely in competition with RIM’s BLACKBERRY products and services.

*     *     *

Janet Marvel is a partner with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, a leading intellectual property law firm based in Chicago, Illinois.  Pattishall McAuliffe represents both plaintiffs and defendants in trademark, copyright, and unfair competition trials and appeals, and advises its clients on a broad range of domestic and international intellectual property matters, including brand protection, Internet, and e-commerce issues.  Ms. Marvel’s practice focuses on litigation, transactions, and counseling in domestic and international trademark, trade dress, Internet, and copyright law.  She co-authored the Fifth Edition of the Trademarks and Unfair Competition Deskbook, recently published by LexisNexis.

November 22, 2011

First Amendment Right To Anonymous Speech Trumps Right To Discover Identity Of Blogger Alleged To Have Infringed Copyrighted Works of Art Of Living Foundation

Filed under: Constitution, Copyright, First Amendment — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 1:02 pm

Categories: Copyright, First Amendment, Constitution

Tags: First Amendment, Discovery , Phillip Barengolts

by Phillip Barengolts, Trademark Attorney

“Skywalker’s First Amendment right to anonymous speech outweighs the need for discovery at this time.” Art of Living Foundation v. Does 1-10, No. 10-cv-05022 (N.D. Cal. Nov. 9, 2011).[1]  This statement and the decision in Art of Living Foundation has significant consequences for intellectual property owners pursuing claims against defendants hiding behind privacy services, pseudonyms, or using other identity blocking methods – an increasingly common obstacle to enforcing intellectual property rights.

But first, a few words about the parties.  The Art of Living Foundation (“AOLF”) is an international “educational and humanitarian” organization dedicated to teaching the spiritual lessons of “His Holiness Ravi Shankar.”[2]  Technically, the plaintiff in this case is the U.S. branch of AOLF.  The defendants, who go by the pseudonyms “Skywalker” and “Klim,” write blogs that criticize AOLF.  Allegedly, they are disgruntled former participants in AOLF.

After filing a complaint for defamation, trade secret misappropriation, trade libel, and copyright infringement, AOLF sought expedited discovery to learn the true identities of Skywalker and Klim.  The magistrate in the case granted this request and AOLF issued subpoenas to Google and Automattic – the companies that host the defendants’ blogs.  AOLF’s stated purpose for the subpoenas was to serve the complaint upon the defendants.  The defendants made special appearances through counsel to move to quash these subpoenas, among other motions that ultimately left only the copyright and trade secret misappropriation claims pending.[3]


April 9, 2010

Supreme Court Justice John Paul Stevens to Retire: An Important Contributor to Copyright, Trademark, and First Amendment Law Steps Aside

Filed under: Copyright, First Amendment, Pattishall — Tags: , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 10:41 pm

by Uli Widmaier, Trademark Attorney

Earlier today, Associate Justice John Paul Stevens informed the President of his intention to resign from the U.S. Supreme Court at the end of the current term.  It is with utmost respect and admiration that we consider his contributions to the development of intellectual property and Internet law.

A close personal friend of former Pattishall McAuliffe managing partner, Beverly Pattishall (1916-2002), Justice Stevens has written some of the most influential decisions in these areas.  Undoubtedly, the most famous of these is his majority opinion in Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417 (1984), which defined the law of contributory copyright infringement for decades to come.  Universal challenged Sony’s sale of home videotape recorders on the ground that purchasers could use the devices to infringe content providers’ copyrights by copying television programs.  The facts of the case ensured that the decision would guide the interplay of technology and copyright law through the tumultuous growth of the Internet.  Sony was a complex and hotly contested case, decided 5-4 with a powerful and lengthy dissent by Justice Blackmun.  Nevertheless, its holding can be distilled into a simple but immensely influential formula: selling a technology that may enable third parties to infringe existing copyrights does not give rise to liability for contributory copyright infringement if the technology is “capable of commercially significant noninfringing uses.”  Id. at 442 (emphasis added).  Speaking through Justice Stevens, the Supreme Court found that Sony’s Betamax videotape technology indeed was capable of such uses; therefore Sony’s sale of Betamax equipment did not constitute contributory copyright infringement.  Id. at 456. (more…)

February 16, 2010

Defamatory "Tweet" Complaint Dismissed

Filed under: First Amendment, Internet — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 5:43 pm

By Alexis Payne, Esq.

On January 27, 2010, the Circuit Court of Cook County dismissed a property manager’s defamation claim against a disgruntled tenant over a Twitter post.  The tenant, Amanda Bonnen, posted the following “tweet”[1] on Twitter to vent her frustration with Horizon Realty, her property manager: “Who said sleeping in a moldy apartment was bad for you?  Horizon realty thinks it’s okay.”  Horizon Realty alleged it sustained $50,000 in damages as a result of the disparaging post, despite the fact that Ms. Bonnen’s Twitter account only had twenty followers.[2]

Ms. Bonnen filed a motion to dismiss the case, contending that her tweet statement was not a verifiable fact and instead was merely her opinion.  In an unpublished opinion, Judge Diane Larson agreed, finding that “the tweet was non-actionable as a matter of law,” and dismissed the complaint with prejudice. (more…)

November 6, 2009

Online Service Provider’s Ownership of User Content Held Not to Eviscerate CDA Immunity

Filed under: First Amendment, Internet — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 3:37 pm

by Ian J. Block, Trademark Attorney

Online service providers that claim ownership of user-generated content can breathe easier because a court recently confirmed the broad scope of immunity available under the Communications Decency Act of 1996 (“CDA”).  In Finkel v. Facebook, Inc., 2009 N.Y. Slip Op. 32248 (N.Y. Sup. Ct. Sept. 15, 2009), a New York state court held social-networking giant Facebook immune from defamation liability by virtue of the CDA.  The court rejected plaintiff’s argument that CDA immunity should not apply because Facebook’s terms of service claim ownership of the content created by its users.

The CDA Immunizes Online Service Providers from Liability for Content Created by Third Parties

The “Good Samaritan Immunity” provision of the CDA, 47 U.S.C. § 230(c), grants online service providers immunity from liability for content found on, or taken down from, their networks.  Immunity here is sweeping, insulating service providers—such as Facebook, Craigslist, Twitter, and others—from liability created by third-party (i.e., user) content.  The statute explains that: “No provider or user of an interactive computer service shall be treated as the publisher or speaker of any information provided by another information content provider.”  Id.  The statute’s grant of immunity explicitly preempts contrary state laws, such as state defamation and invasion of privacy claims.  See 42 U.S.C. § 230(d)(3). (more…)

September 21, 2009

Ninth Circuit Rules That Paris Hilton May Proceed with Her Right of Publicity Claim Despite Hallmark’s Free Speech Challenge

Filed under: First Amendment, Right of Publicity — Tags: , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 8:35 pm

by Phillip Barengolts, Trademark Attorney

Companies must be careful when considering the use of a person’s image, likeness or other identifying material for commercial purposes without that person’s permission because many states protect a person’s “right of publicity” through statute or the common law.  Thus, unauthorized use can result in liability for damages.

California in particular has a long history of protecting celebrities’ commercial publicity rights.  It also has codified its citizen’s right to be free from meritless lawsuits filed merely to chill their First Amendment rights so that they may comment upon matters of public interest.  These two rights came into conflict when Hallmark decided to use Paris Hilton’s face and her catch-phrase “That’s hot” on one of its birthday cards – shown below.  The inside of the card reads, “Have a smokin’ hot birthday.”


June 23, 2009

District Court Rules That Copyright Act Violates First Amendment

Filed under: Copyright, First Amendment — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 1:00 pm

by Jake Linford, Trademark Attorney

In copyright litigation in the District of Colorado, the district court ruled that Section 514 of the Copyright Act violates the First Amendment because the First Amendment right to freely use works in the public domain outweighs the government’s interest in complying with an international treaty.  Section 514 restores U.S. copyright protection to foreign works that entered the public domain because the foreign owner failed to observe copyright formalities.  The government claimed that Section 514 was necessary for U.S. compliance with the Berne Convention, a copyright treaty to which the U.S. is a party.  The plaintiffs, who all made use of foreign works that had fallen into the public domain, claimed that restoring copyright protection violated both the First Amendment and the Copyright Clause of the Constitution.

Initially, the district court ruled against the plaintiff on both the First Amendment and Copyright Clause claims.  The Tenth Circuit affirmed dismissal on the Copyright Clause claim, citing Eldred v. Ashcroft, a Supreme Court decision which held that Congress has power under the Copyright Clause to extend the duration of copyright for both new and previously created copyrighted work.  However, the Tenth Circuit ordered the district court to reconsider the First Amendment claim. (more…)

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