IP Law Chat -- Hendricks & Lewis, intellectual property, trademark, copyright and technology attorneys

The Central District of California dealt a heavy blow to Carol Burnett's challenge to the Family Guy's parody of Burnett's "Charwoman" character, dismissing her claims for copyright infringement and violations of the Lanham Act without leave to amend and declining to exercise supplemental jurisdiction of her state law claims.

In an episode of the Family Guy entitled "Peterotica," the "family patriarch" entered a porn shop with friends, noting that the shop was cleaner than expected.  In response, one of the friends explained that "Carol Burnett works part time as a janitor" and the scene shifted for less than five seconds to an animated figure resembling Burnett's "Charwoman" character mopping the floor next to some blow-up dolls, a rack of "XXX" movies and a curtained room with a sign above it reading "Video Booths."  As the character mops, there was a "slightly altered version of Carol's Theme from The Carol Burnett Show" playing.  The scene then switches back to the "patriarch" and his friends after which the friends make two remarks relating to Carol Burnett and her parents.

Carol Burnett then sued for copyright infringement, violation of the Lanham Act, violation of California's statutory right of publicity and common law misappropriation.  In response, the defendant filed a motion to dismiss Burnett's claims, also bringing a motion to strike Burnett's state law claims under California's anti-SLAPP statute.

Although Judge Pregerson noted how "distasteful and offensive" the segment was to Carol Burnett, the Court had no difficulty concluding that the parody was protected fair use, which precluded both her copyright infringement and Lanham Act claims.  The Court did not, however, rule on the defendant's motion to strike Burnett's state law claims, instead choosing to decline to exercise supplemental jurisdiction over those claims and therefore denying the motion to strike as moot.

In concluding its opinion, the Court offered some comments on its view of the broader import of the case:

To some extent this dispute is indicative of just how far the "new media" has come from the "old media."  The old media harkens back to days when crude jokes and insensitive, often mean spirited, programing was perhaps found in live night club performances but was not present on television.  In the new media, any self imposed restraint essentially has been eliminated.  Public figures, such as Ms. Burnett, are frequent targets of parodies and crude innuendo.  As Ms. Burnett well knows, it takes far more creative talent to create a character such as the "Charwoman" than to use such characters in a crude parody.  Perhaps Ms. Burnett can take some solace in that fact.
However, the law, as it must in an open society, provides broad protection for the defendant's segment.

• Send To A Friend
• Print This Article
• Comments
• Trackbacks

• The Seattle Trademark Lawyer is keeping tabs on the litigation over the publicity rights of Jimi Hendrix.
• In a case involving libel, foreign judgments and personal jurisdiction, check out the Second Circuit's decision in Ehrenfeld v. Mahfouz.
• William Patry discusses the Supreme Court's decision overruling Conley v. Gibson at The Patry Copyright Blog.
• Ron Coleman at Likelihood of Confusion gives a good lesson on How Not to Build a Brand.  Got that cease and desist yet?
• The New York Assembly has passed legislation that would, among other things, make it a class E felony to disseminate "violent and indecent video games" to minors.  According to the summary of the bill, the justification for the bill is that "[p]sychological experts have concluded that there is a connection between playing violent video games and violent behavior[.]"
• People were talking about a Macmillan exec's rather lame attempt to "teach Google a lesson" by taking two of Google's laptops from the company's booth at Book Expo America in New York, which apparently was intended to reflect the exec's feelings about Google Book Search.  Lawrence Lessig, ars technica and others weighed in on the discussion.

• Send To A Friend
• Print This Article
• Comments
• Trackbacks

The Second Circuit issued a decision yesterday in which it found that the FCC's policy of sanctioning so-called "fleeting expletives" was arbitrary and capricious because the policy represented a significant departure from the FCC's previous positions and the FCC failed to articulate a "reasoned basis" for the change in policy.

The case arose after Fox Television Stations challenged the FCC's notices of liability against it for two broadcasts which the FCC claimed violated its indecency regime.  The two Fox programs at issue were the 2002 and 2003 Billboard Music Awards in which Cher, in an acceptance speech, used the "F-word" and presenter Nicole Richie used both a variation of the "F-word" and a curse word in reference to cow excrement.

In finding that these programs were indecent and profane, the FCC concluded, in relevant part, that it did not matter that the use of the expletives was "fleeting" and "isolated" and held that repeated use of expletives is not necessary for an indecency finding.  It was the FCC's rejection of the "fleeting" and "isolated" nature of the use of the expletives that the Second Circuit took issue with, noting that previously, "the FCC had consistently taken the view that isolated, non-literal, fleeting expletives did not run afoul of its indecency regime."

Although Fox, CBS, NBC and various amici raised a number of challenges to the FCC's decision, because the Second Circuit found the FCC's decision to be arbitrary and capricious, it declined to "reach any other potential problems with the FCC's decision."  Nevertheless, the Second Circuit noted that it was "skeptical that the Commission can provide a reasoned explanation for its 'fleeting expletive' regime that would pass constitutional muster," and went on to provide some "observations" on that topic.

It is a very detailed opinion (53 pages including the dissent) on a topic I have always found particularly interesting and troubling from a First Amendment perspective, especially given the fact that, as the Second Circuit noted, "it is increasingly difficult to describe the broadcast media as uniquely pervasive and uniquely accessible to children."

• Send To A Friend
• Print This Article
• Comments
• Trackbacks

• The son of the great Walter Matthau won a legal battle with the William Morris Agency this week involving the agency's alleged right to commissions from payments received in connection with Mr. Matthau's employment contracts.  You can read the California state court's opinion here.
• And another interesting opinion from the California state courts in which the Los Angeles Unified School District argued that the City of Long Beach and its city attorney were not "persons" under the California Public Records Act and therefore were not entitled to request admittedly public documents under the Act.
• For all the WoW fans out there (and I know there are one or two of you), Blizzard Entertainment reportedly announced that it is suing Peons4hire, one of the so-called "gold spammers" who send in-game messages to players advertising their power-leveling and gold selling services.  According to the announcement, which was posted on one of the WoW forums, "the operators of Peons4hire have been asked to immediately cease all in-game spamming efforts" or face "further legal action."  I'm still trying to get my hands on a copy of the complaint.  You can see the post and learn more about Blizzard's efforts to reduce gold spamming at the WoW website.
  
• I can't top William Patry's description of the recent Ninth Circuit opinion involving copyright and other claims brought by the daughter of Orson Welles in connection with Citizen Kane so I won't even try.  But see here for a copy of the Ninth Circuit's opinion.
• According to The FOIA Blog, the Society of Professional Journalists was trying to unmask the senator who placed a secret hold on FOIA legislation pending in the Senate and SPJ thinks it may have succeeded.
  

• Send To A Friend
• Print This Article
• Comments
• Trackbacks

This week got away from me but I did manage to take note of a few interesting Chatlines:

• What is "fair use"?  Good question.  Marybeth Peters talks about the issue in an interesting article at ars technica.  Hat tip to Rebecca Tushnet at the 43(B)log.
•  And continuing the copyright theme, Mark Helprin at The New York Times opines about perpetual copyright.
•  Interesting decision (technically issued last week) by the Western District of Washington finding, among other things, that the plaintiffs lacked standing to assert claims under the CAN-SPAM Act.  Hat tip to the TechKnowledgy Blog.
  

• Send To A Friend
• Print This Article
• Comments
• Trackbacks

Michael Atkins at Seattle Trademark Lawyer has an interesting post about a case in the Western District of Washington in which the Court declined to enter a stipulated protective order.  Although there may be a growing disenchantment among the courts with these type of blanket protective orders, it has surprised me how often courts have approved those orders particularly when they have included provisions allowing documents to be filed under seal.  There are undoubtedly situations in which protective orders are appropriate and necessary but I have to agree with Judge Bryan that "they should be narrowly drawn, the presumption being in favor of open and public litigation."

• Send To A Friend
• Print This Article
• Comments
• Trackbacks

Throughout the week, there are any number of interesting events, opinions, legal (and non-legal) news items, and discussions that I simply don't have the time to write about at any meaningful length and still get my actual work done.  So, I'm going to endeavor to point out some of these tidbits each week in a (not very creatively) named feature "Random Chatlines."  Here goes, hope you enjoy!

• Topping the list, the Ninth Circuit's opinion in Perfect 10, Inc. v. Google (hopefully more on later), in which Perfect 10 claimed Google infringed its copyrighted photos of nude models.
  
• Does copying another attorney's complaint constitute copyright infringement?  It's an interesting, albeit not earthshaking, topic that popped up a number of places this week including The WSJ Law Blog, The Trademark Blog, and Techdirt.
• "Massage interviews"?  Indeed, check out The Official Google Blog.  I think I have a suggestion for a new hire at the firm.......
• Personally, I thought it was good news this week that Comcast confirmed that it will be dropping Microsoft's television software from its digital cable boxes in Washington in favor of other software used by Comcast customers in the rest of the country.  Check out the story in the Seattle P-I for more details.
• And back on the legal front, an interesting case from a California appellate court involving the IMDb website in which the court affirmed the order striking the plaintiff's complaint on an anti-SLAPP motion by IMDb.

• Send To A Friend
• Print This Article
• Comments
• Trackbacks

In a rather fractured opinion, the Ninth Circuit denied immunity under the Communications Decency Act, 47 U.S.C. § 230(c), to Roommates.com, LLC, concluding that, at least in regard to some of the website content, Roommates.com was an "information content provider" and therefore may be subject to liability for publishing materials on the website.

The case, Fair Housing Council of San Fernando Valley, et al. v. Roommates.com, LLC, began when two housing councils sued Roommates.com for allegedly violating the Fair Housing Act and various state laws.  The District Court found that the housing councils' Fair Housing Act claim was barred by the CDA but the Ninth Circuit disagreed, at least in part, in a lead opinion written by Judge Alex Kozinski.

The Ninth Circuit characterized the question before it as whether Roommates.com was "responsible, in whole or in part, for creating or developing the information" on the website, in which case it would become a "content provider" and would not be entitled to CDA immunity.  The Court apparently had no problem concluding that Roommates.com was a content provider in connection with the questionnaires it asked users to complete because it created or developed the forms and answer choices.

The Court then turned to "the more difficult question" of whether Roommates.com was also a content provider subject to liability "for publishing and distributing its members' profiles, which it generates from their answers to the form questionnaires."  Given this characterization of the question, it is probably not surprising that the Court concluded that Roommates.com was also a content provider in this context because it "categoriz[ed], channel[ed] and limit[ed] the distribution of user's profiles," thereby providing "an additional layer of information that it is 'responsible' at least 'in part' for creating or developing."

Finally, the Court concluded that Roommates.com was entitled to CDA immunity for publishing the content provided by its members in the "Additional Comments" portion of the profiles because that portion posed only an "open-ended question" that suggested "no particular information that is to be provided by members."  In a separate opinion, Judge Reinhardt dissented from this portion of Judge Kozinski's opinion, arguing that Roommates.com was not entitled to CDA immunity for publishing this content.  Judge Reinhardt expressed a fairly unfavorable opinion of the "Additional Comments" portion of the website, stating that from "a subjective perspective, Roommate's site is designed so that users will express illicit preferences in their 'Additional Comments.'"

Judge Ikuta also weighed in with a separate opinion expressing disagreement with one portion of the Court's lead opinion specifically as it related to binding Ninth Circuit precedent which she stated resulted in "robust immunity under section 230(c)."

With three opinions, the case offers a lot to mull over.  For more commentary on and analysis of the Ninth Circuit's opinion, see  Decision of the Day, The Volokh Conspiracy and the Technology & Marketing Law Blog.

• Send To A Friend
• Print This Article
• Comments
• Trackbacks

The Electronic Frontier Foundation filed suit against "paranormalist" Uri Geller (apparently also known as, according to the complaint, Uri Geller Freud), in the United States District Court for the Northern District of California on behalf of Brian Sapient, a member of the "Rational Response Squad."  According to the complaint, Uri Geller is a well-known performer who claims to have psychic abilities that he apparently uses to, among other things, bend spoons with his mind.

Brian Sapient, as part of the Rational Response Squad's activities attempting to debunk what it contends are irrational beliefs and theories, posted a portion of a NOVA video called "Secrets of the Psychics" on YouTube that apparently challenged Geller's "performance techniques."  Geller responded by demanding that YouTube take down the video under the DMCA, which YouTube did.  It is not clear how much of the NOVA video was posted on YouTube but according to the complaint, only three seconds of the video is subject to a copyright owned by Geller or the company of which he is a director and controlling shareholder, "Explorologist Ltd."

The complaint alleges that Geller and Explorologist Ltd. misrepresented that the NOVA video infringed their copyright and seeks, among other things, a declaration of non-infringement.

To read a copy of the complaint check out the EFF's website.

• Send To A Friend
• Print This Article
• Comments
• Trackbacks

The name doesn't exactly roll off the tongue but then again, how often does creativity and government intersect?  Washington Governor Christine Gregoire recently signed into law an amendment to Washington's Public Records Act, RCW  42.56, that creates a "Public Records Exemptions Accountability Committee" to review the exemptions to public disclosure "to determine if each exemption serves the public interest."  Given the number of exemptions, the committee has a lot of work ahead of it.  And good news for the concept of open government, all committee meetings are to be open to the public and the committee "must consider input from interested parties."

Hat tip to The FOIA Blog.

• Send To A Friend
• Print This Article
• Comments
• Trackbacks

The news on the Trademark Protection Act passed by the Utah Legislature earlier this year is that it likely will not be enforced when it goes into effect today.  This news came after Utah lawmakers met, one might argue rather belatedly, with high-tech execs who aired their concerns about the law.  Eric Goldman at the Technology & Marketing Law Blog weighs in on the news here.  Hat tip to Techdirt.

• Send To A Friend
• Print This Article
• Comments
• Trackbacks

John Welch at The TTABlog discusses another victory by Google, Inc. at the TTAB, this time against the mark BLOGLE.  As he points out, the numbers that Google offered up in support of the "fame" factor are "staggering."  I don't know which is more amazing, the 300 million visitors per day or the explosive growth in revenue over just four years.

• Send To A Friend
• Print This Article
• Comments
• Trackbacks

A long-standing dispute between the two daily Seattle newspapers--the Seattle Post-Intelligencer and The Seattle Times--that are run under a Joint Operating Agreement has been settled, at least for now, with the result that Seattle will continue to enjoy two daily newspapers.

For coverage of the settlement and background on the dispute:
From the Seattle P-I
From The Seattle Times
From the Committee for a Two-Newspaper Town

• Send To A Friend
• Print This Article
• Comments
• Trackbacks

I highly recommend checking out Eric Goldman's March 2007 Quick Links, Google Edition and March 2007 Quick Links Part 2 at the Technology & Marketing Law Blog.  As usual, well worth the read.

• Send To A Friend
• Print This Article
• Comments
• Trackbacks

Given the often staid practice of law, it's hard to resist a fart joke particularly when it appears in the context of a well-written, yet smartly funny discussion of, among other things, copyright law penned by Judge Diane P. Wood of the Seventh Circuit.

The dispute in JCW Investments, Inc. v. Novelty, Inc., No. 05-2498 (7th Cir., March 20, 2007) arose in the context of competing farting dolls.  On the one hand was Pull My Finger Fred, described by Judge Wood as a "white, middle-aged, overweight man with black hair and a receding hairline, sitting in an armchair wearing a white top and blue pants."  When you squeezed Fred's extended finger he, rather unsurprisingly given his name, farts and makes, according to the Seventh Circuit, "somewhat crude, somewhat funny statements" about his bodily noises.  On the other hand was Fartman, described as a "white, middle-aged, overweight man with black hair and a receding hairline, sitting in an armchair wearing a white tank top and blue pants."  As with Fred, when you squeeze Fartman's extended finger, he emits both farts and jokes about those farts, two of which jokes were the same as those cracked by Fred.

But unfortunately for Fartman, his farts and jokes were no laughing matter for Tekky Toys, the manufacturer of Fred.  Tekky Toys sued Fartman's maker, Novelty, Inc. for copyright infringement, trademark infringement, and unfair competition, eventually winning on all of the claims with an award of lost profits, punitive damages (under state unfair competition law) and more than $575,000 in attorneys' fees.

In affirming the judgment of the District Court, the Seventh Circuit dealt handily with Novelty's claim that the District Court had protected too much of Fred in the context of Tekky's copyright infringement claim, extending protection not only to the expression of the idea of Fred but also to the idea or common elements known as scenes a faire, which are "incidents, characters or settings which are as a practical matter indispensable or at least standard, in the treatment of a given topic."  The Seventh Circuit disagreed, concluding that it was not the idea of a "farting, crude man" that was protected but rather Tekky's particular embodiment of that concept in the form of Pull My Finger Fred.

It seems to me that Novelty had a tough row to hoe as its president apparently testified in deposition that when Novelty creates a new item, they "try to copy---or try to think of some relevant ideas" and further admitted that his idea for Fartman was based on Fred, whom he had seen in a showroom of a manufacturer of the Fred doll.

William Patry at The Patry Copyright Blog also has an interesting and thorough discussion of Pull My Finger Fred vs. Fartman.

• Send To A Friend
• Print This Article
• Comments
• Trackbacks

With the Second Circuit's recent decision in ITC Ltd. v. Punchgini, Inc., No. 05-0933-cv, the Ninth Circuit (some might argue unsurprisingly) stands alone among the federal appeals courts in recognizing the so-called "famous marks doctrine" under federal trademark law.  The famous mark doctrine provides an exception to the territoriality principle that a trademark has a separate legal existence under each country's laws and that ownership of a mark (even a famous one) in one country does not automatically confer the exclusive right to use that mark in another country.  But the famous marks doctrine recognizes an exception to this principle "for those foreign marks that, even if not used in the United States by their owners, have achieved a certain measure of fame within this country."

ITC held a federal registration for the mark "BUKHARA" for restaurant services that it used in connection with two restaurants in New York and Chicago.  But ITC closed the New York BUKHARA restaurant in 1991, followed by the cancellation of the franchise BUKHARA restaurant in Chicago in 1997.  Since that time, ITC admittedly has not owned, operated or licensed any restaurant in the United States using the BUKHARA mark.

Meanwhile, in 1999, the defendants decide to open an Indian restaurant in New York City and apparently thought "Bukhara Grill" seemed like a fine name.  Notably, each of the individual defendants had previously worked at ITC's New York Bukhara restaurant or the Bukhara restaurant in New Delhi.  ITC, however, wasn't particularly pleased about the defendants' name choice or the decor of their restaurant and sued them for, among other things, federal trademark infringement, unfair competition and false advertisement as well as parallel claims under New York common law.

As to the claims asserted under federal law, the Second Circuit had no good news for ITC.  It first affirmed the District Court's conclusion that ITC had abandoned its registered BUKHARA mark for restaurant services as well as its corresponding order that the registration be canceled.  Then, in a detailed discussion, the Second Circuit declined to join with the Ninth Circuit in recognizing the famous mark doctrine noting that although a "persuasive policy argument" could be advanced for recognizing the doctrine, that alone "is not a sufficient ground for its judicial recognition, particularly in an area regulated by statute."  And finally, the Second Circuit affirmed the District Court's conclusion that ITC lacked standing to assert a false advertising claim under the Lanham Act.

Happily for ITC though this isn't baseball and despite three strikes, all may not be lost for ITC.  The Second Circuit concluded that it could not determine the propriety of the District Court's dismissal of ITC's parallel state unfair competition claim because that determination depended on whether New York recognized the famous mark doctrine as a matter of state law.  Therefore, the Second Circuit chose to certify the following question to the New York Court of Appeals:  "Does New York common law permit the owner of a famous mark or trade dress to assert property rights therein by virtue of the owner's prior use of the mark or dress in a foreign country?"  If New York does recognize the famous mark doctrine, the Second Circuit also asked the New York Court of Appeals to indicate the scope of that doctrine.

Rebecca Tushnet also has a good synopsis of the case at the ever thorough 43(B)log.

• Send To A Friend
• Print This Article
• Comments
• Trackbacks

Much has already been said (mostly bad but some good) about the Trademark Protection Act recently adopted by the Utah Legislature, which, according to the Act's general description, "establishes a new type of mark, called an electronic registration mark, that may not be used to trigger advertising for a competitor and creates a database for use in administering marks."

Whatever the merits of the legislation, the debate over the pros and cons of the Act has demonstrated the power and reach of blogs (if that still needed to be demonstrated) with even the Act's sponsor, Utah Senator Dan Eastman, taking to the blogosphere to defend the Act from its critics (or "the fringes" as he rather uncharitably characterizes them).  See here for an interesting critique of the Senator's defense from Eric Goldman of the Technology & Marketing Law Blog.

Check back for more on the Utah Trademark Protection Act as events unfold but for now, see here for the letter from the Electronic Frontier Foundation, Professor Eric Goldman and others to the Utah Attorney General asking him to stay implementation of the Act pending further investigation (hat tip to Martin Schwimmer at The Trademark Blog).

• Send To A Friend
• Print This Article
• Comments
• Trackbacks

Welcome to IP Law Chat, where I plan to focus on legal news about trademarks, copyright, technology, media and whatever else strikes my legal fancy and that I can tie into one of these areas of the law.  Look for discussion of recent cases and IP news as well as links to informational and news items.  I'm very excited about joining the discussion of IP-related legal issues and news that was begun by a number of excellent IP blogs and am looking forward to what I hope will be both an interesting and educational adventure.

• Send To A Friend
• Print This Article
• Comments
• Trackbacks