Category Archives: intellectual property law

Can the Estate of a Person Who is Deceased Enforce that Person’s Right of Publicity? Originally Published May 22, 2014

Marilyn Monroe passed away in 1962.  Her estate has zealously enforced her trademark and other intellectual property rights against those who would infringe upon it.  However, there are other common law rights that might apply, such as the right of publicity, which would likewise bar someone from using her name and likeness.  The question that was before the Ninth Circuit Federal Court of Appeals in August of 2012 was whether that right of publicity could be applied in Marilyn Monroe’s case.  Archives v. Monroe, 692 F.3d 983 (9th Cir. 2012).

The twist in that case was that the Court had to determine whether Monroe was a resident of New York or California at the time that she passed away. If she had been a resident of New York, she would have no right of publicity since that state does not provide for such a right after death.  If she were a resident of California at the time she passed away, she would have such a right since California amended its law to provide for Monroe’s estate in particular to be able to avail itself of that protection.

The case was decided based upon the legal concept of “judicial estoppel.” Simply put, that principle states that a party cannot take countervailing positions under certain distinct circumstances, such as those presented in this case. Specifically, the Court determined that Monroe did not have such a right since she was a resident of New York at the time that she was deceased. Although she had moved to California and committed suicide there, the estate had taken the position in previous cases that she was a resident of New York.  Therefore under a theory of judicial estoppel, the Court found the estate was not allowed to make a contrary assertion in this later suit just because it was more advantageous.

© 2014 Nissenbaum Law Group, LLC

Does the Federal Government Have Trademark Rights Enforceable by the Pentagon? Originally Published May 29, 2014

Does the federal government have trademark rights, and can those rights be enforced by the military? The answer is yes and yes.

In a recent New York Times article it was noted that the Marines have filed trademarks 68 times in the past year “for products like Guadalcanal sweatshirts, meant to evoke the World War II battle against the Japanese, and tip of the spear newsletters, named for the motto of the Marine Corps, First Light Armored Reconnaissance Battalion .”

These sorts of registrations are being driven by the fact that returning veterans are seeking to open businesses using terms that are confusingly similar to trademarks belonging to the military. One of the interesting twists is that just because a veteran is violating a military trademark, that does not mean that the military will automatically refuse to allow them to continue doing so. Sometimes the military will obtain licensing fees in return for allowing the trademarks to be used. In fact, as the article noted “since 2009 the Marines have collected $5.4 million in such fees, and last year their trademark’s office turned over $700,000 to a morale, welfare and recreation fund.”

© 2014 Nissenbaum Law Group, LLC

How Can An Expert’s Opinion Make or Break A Copyright Infringement Case?

How can a party determine if your expert’s opinion will adequately support your position?  In the recent case of Dash v. Mayweather, 731 F.3d 303 (4th Cir. 2013), [READ CASE HERE] the Court addressed this issue when it considered the adequacy of an expert’s opinion on damages.
In that case, Anthony Lawrence Dash filed a lawsuit against Floyd Mayweather and the World Wrestling Entertainment (WWE) claiming that Mayweather and WWE had committed copyright infringement after using Dash’s beat track without his permission.  All parties agreed that the use of his song did not increase the revenue after it was played at Wrestlemania XXIV and the August 24, 2009 TV show, RAW.  Dash v. Mayweather, 731 F.3d 303, 308 (4th Cir. 2013).  In light of that, the parties filed a joint motion requesting that the Court make a determination with respect to damages. 
Dash used an expert who determined that his damages were worth over one million dollars. The Court dismissed Dash’s case because it found the expert’s analysis to be too speculative.  In addition, the Court did not agree with the expert’s use of other artists, such as Fuel, Red Hot Chili Peppers and Snoop Dogg, who have licenses with WWE for the valuation of the license fees in Dash’s case.  The Court said that Dash needed to compare himself to other comparable artists. Since he had nothing to substantiate that there were comparable artists to which he could be compared, his claim failed. He never made a profit from the track used; he could not use establish the value of his license fees.
Section 504(b) of the Copyright Act [READ STATURE HERE] allows a copyright owner to obtain the owner’s actual damages and the infringer’s profits attributable to the infringed work.  However, it is necessary to offer sufficient evidence to meet the standard of proof.  The copyright owner has to show a reasonable nexus between the infringement and the defendant’s attributable profits. 
On this basis, the DashCourt ruled that he needed to show more than just the use of the copyrighted material.  Since he could not demonstrate damages in a manner that satisfied his burden of proof, his claim was not successful.

© 2014 Nissenbaum Law Group, LLC

The Second Phase of America Invents Acts Offers Important Provisions

The second phase to the America Invents Act commenced in September 2012. According to an excellent article in the New Jersey Law Journal entitled “In-House Counsel Prepare for Phase 2 of America Invents Act”,, this phase not only contains new methods for challenging patents, but places a greater emphasis on closely supervising existing patents. 
One of the most significant provisions of the second phase noted in the article is the right of third-parties to make early submissions objecting to an application. Any third party who disagrees with the issuing of a patent can submit past art, an existing patent or a printed publication of any sort to be considered by the
patent examiner. This provision could potentially help avoid litigation by allowing an objecting party to submit important information relating to their objection to the patent before it is issued.
Another vital addition to the AIA is a provision which permits third parties to demand an “inter partes” review of any patent issued. The article describes this as is a small hearing which allows current patent legitimacy to be challenged. The implementation of this provision is important because it streamlines and speeds up the process and places a statutory time limit on the review of patents (a ruling must be determined within one year of a patent’s issuance) A modification to the process of reviewing patents after they are issued is also part of the new law. Third parties are now able to request a post grant review of any current patent. Unlike inter partes review which is centered on existing published patent applications, post grant review is obtained after the grant of a patent and may be based on any source of invalidity. This review has a time limit as well; it must be requested within the first nine months of a patent being issued Id.
Another amendment to the AIA that will eliminate the possibility of litigation is that “patent owners will be able to request a supplemental examination of their issued patent. If the examination is granted, the owner can submit prior art to the USPTO that was not submitted in the initial patent application”.
Overall, the second phase offers cost and time effective alternatives to district court litigation. Nonetheless, in-house counsel needs to be aware of a few factors when executing the new provisions. Whether it is in their best interest to demand for any sort of review must be strategically considered. Shuchman also writes that timing must also be carefully contemplated.  Additionally, in-house counsel should stay vigilant and watchful over competitor and NPE patents.

Is an Interactive Website Responsible for the Unlawful Uploading of Copyrighted Materials by Its Users?

Should a website be responsible for all of the material that is uploaded by its users? Under what circumstances should a website be liable for direct and/or secondary copyright infringement?  
These questions were addressed in Viacom Int’l, Inc. v. YouTube, Inc., 676 F.3d 19, 26-28 (2d Cir. 2012). That case involved a claim against YouTube (“Defendant”). As all of us know, it enables users to upload and view video clips free of charge. Before users are permitted to upload their videos they have to register. The registration process includes a “terms of use agreement” which states that the user “will not submit material that is copyrighted…unless [he is] the owner of such rights or ha[s] permission from their rightful owner to post the material and to grant YouTube all of the license rights granted herein.” Id. at 28.
This case arose when users nonetheless uploaded infringing material in derogation of the terms of use agreement. When YouTube was notified about the presence of infringing material, it took steps to remove it from the site. Nonetheless, Viacom and Premier League (“Plaintiffs”) filed suit against YouTube alleging direct and secondary copyright infringement.
The District Court denied Plaintiffs’ motion and granted summary judgment to Defendant. The District Court explained that YouTube qualified for Digital Millennium Copyright Act (“DMCA”) safe harbor protection with respect to all claims. The DMCA states that an Internet Service Provider (which includes a site, such as YouTube that hosts posts from unrelated third parties) is immune from suit when all it does is host the content without the requisite degree of knowledge that it is infringing. Once it has that degree of knowledge, it must remove the material under a procedure that provides both the poster and the aggrieved party to address the dispute.
Plaintiffs argued on appeal to the Second Circuit that general awareness of the presence of infringing material on Defendant’s site made them ineligible to receive safe harbor protection. Defendant argued that general awareness of infringement was not enough to remove internet service providers from the protection of the DMCA. Rather, specific and identifiable infringements of individual items were required. 
Thus, the issue on appeal was whether “actual knowledge” under the DMCA safe harbor 17 U.S.C. § 512 requires a general awareness that there are infringements, or rather means actual or constructive knowledge of specific and identifiable infringements of individual items.
The DMCA’s Online Copyright Infringement Liability Limitation Act, establishes a series of four “safe harbors” that allow qualifying service providers to limit their liability for claims of copyright infringement based upon;

(a) “transitory digital network communications,”
(b) “system caching,”
(c) “information residing on systems or networks at [the] direction of users,” and
(d) “information location tools.”
 17 U.S.C. § 512(a)-(d).

In its holding, the Second Circuit analyzed § 512(c)(1)(A) which states that the safe harbor will apply only if the service provider:

(i) does not have actual knowledge that the material or an activity using the    material on the system or network is infringing;
(ii) in the absence of such actual knowledge, is not aware of facts or circumstances from which infringing activity is apparent; or
(iii) upon obtaining such knowledge or awareness, acts expeditiously to remove, or disable access to, the material;

The Court explained that § 512(c) requires knowledge or awareness of specific infringing activity. It focused on the fact that under § 512(c)(1)(A) knowledge or awareness alone does not disqualify the service provider. Rather, the provider that gains knowledge or awareness of infringing material activity retains safe harbor protection if, under § 512(c)(1)(A)(iii), it acts expeditiously to remove or disable access to the material. The Court concluded that the nature of the removal obligation itself contemplates knowledge or awareness of specific infringing material because “expeditious removal is possible only if the service provider knows with particularity which item to remove.” Id. at 30.
Ultimately, the Court held that YouTube was not liable for direct and/or secondary infringement. This is because “general awareness” was not enough to strip YouTube of its safe harbor protection. Additionally, the Court noted that YouTube took down infringing material in an expeditious manner when it did have “actual notice” of the presence of the infringing material.

What Intellectual Property Issues Will Arise if The NBA Sells ad Space on Its Uniforms?

In July 2012, Adam Silver, the deputy commissioner of the NBA announced plans to allow corporate logos on team jerseys.  If the plan is formally approved, the ad space will be 2.5-in.-by-2.5-in. and will be placed below the left shoulder. This would be significant because prior to this year, none of the American big-four sports (the NBA, MLB, the NFL or the NHL) had contemplated providing
ad space on their players’ uniforms. 

The decision to allow advertisements to be placed on NBA members’ uniforms could undoubtedly generate large revenue per annum, but a bigger concern will be the intellectual property disputes that could arise from the deal. 

Is there a likelihood that the venture could create sponsorship confusion for basketball fans? If more than one brand advertises on a single player’s uniform, could this create confusion over corporate association and dilute the brand?  These are all important questions to consider as this initiative proceeds to fruition.


© 2012 Nissenbaum Law Group, LLC

May The Look and Feel of the Tetris Video Game be Protected by The Copyright Act?

Is the look and feel of the Tetris video game distinguishable from the ideas of the game and therefore protectable? In Tetris Holding, LLC v. XIO Interactive, Inc., No. 09-6115 (D.N.J. May 30, 2012), the United States District Court for the District of New Jersey answered this question in the affirmative.

In that case, Plaintiff, Tetris Holdings, LLC sued XIO Interactive, Inc. (“Defendant”) for the Defendant’s marketing of the game called “Mino.”  Plaintiff alleged among other things, copyright infringement and trade dress infringement because the game copied many copyrightable aspects of its Tetris game.  Tetris identified the following fourteen (14) elements that were allegedly copied:

  1. Seven Tetrimino playing pieces made up of four  equally-sized square joined at their sides;
  2. The visual delineation of individual blocks that comprise each Tetrimino piece and the display of their borders;
  3. The bright, distinct colors used for each of the Tetrimino pieces;
  4. A tall, rectangular playfield (or matrix), 10 blocks wide and 20 blocks tall;
  5. The appearance of Tetriminos moving from the top of the playfield to its bottom;
  6. The way the Tetrimino pieces appear to move and rotate in the playfield;
  7. The small display near the playfield that shows the next playing piece to appear in the playfield;
  8. The particular starting orientation of the Tetriminos, both at the top of the screen and as shown in the “next piece” display;
  9. The display of a “shadow” piece beneath the Tetriminos as they fall;
  10. The color change when the Tetriminos enter lock-down mode;
  11. When a horizontal line fills across the playfield with blocks, the line disappears, and the remaining pieces appear to consolidate downward;
  12. The appearance of individual blocks automatically filling in the playfield from the bottom to the top when the game is over;
  13. The display of “garbage lines” with at least one missing block in random order; and
  14. The screen layout in multiplayer versions with the player’s matrix appearing most prominently on the screen and the opponents’ matrixes appearing smaller than the player’s matrix and to the
    side of the player’s matrix.

Id. at 5.

Defendant conceded that it blatantly copied the look and feel of Tetris so that it could make a similar game for the iPhone.  However, Defendant alleged that it was careful not to copy protectable aspects of the game.  Instead, it copied unprotectable elements such as the “rules, function, and expression essential to the game play.” Id. at 7.  Defendant argued that “not only are the ideas of Tetris (or the rules of the game) not protectable, but neither re the ‘functional aspects’ of the game or expressive elements relating to the game’s function or play.” Id. at 17.  However, the Court disagreed and stated that Defendant “cannot protect expression inseparable from either game rules or game function.” Id.

In its holding, the Court noted that the Plaintiff was conflating the doctrine of merger and the related doctrine known as “scenes à faire.”  The Court explained that merger exists when an idea and the expression of that idea become inseparable. Id. at 14.  In that situation, copying is allowed to prevent a copyright holder from obtaining a monopoly over that idea.  The Court went on to discuss how expressions that are so associated with a particular idea (scenes à faire) are also unprotectable by copyright law.  Id. at 15.  In Tetris, the Court felt that neither doctrine applied.

Evaluating screenshots of both games side by side revealed just how similar the two games appeared.
The Court stated:

Without being told which is which, a common user could not decipher between the two games.  Any differences between the two are slight and insignificant.  If one has to find
distinctions only at a granular level, then the works are likely to be substantially similar.
Reviewing the videos of the game play bolsters this conclusion as it is apparent that the overall look and feel of the two games is identical. There is such similarity between the visual expression of Tetris and Mino that it is akin to literal copying.

Id. at 26-27.

Ultimately, the Court granted summary judgment for Tetris Holding, LLC, as to the copyright infringement and trade dress infringement claims.   

What Are The Repercussions For Sites That Facilitate Internet Music Piracy?

Would a person walk out of a store and take a CD without having paid for it?  If so, we might not only conclude that they are a shoplifter, but also someone who has committed theft of copyrighted intellectual property.  Many individuals commit the equivalent of the latter kind of theft by the illegal download of a digital file of a recorded song. File sharing software makers such as LimeWire, Napster and Kazaa have made it easy for users to easily commit this offense by a click of a mouse.  However, beware; there are consequences for sites that enable this sort of conduct.

In 2006, The Recording Industry Association of America (“RIAA” or the “association”) filed a lawsuit on behalf of its member music labels against LimeWire, claiming that the music industry had lost a lot of money because LimeWire’s P2P software enabled users to share and make use of 11,000 copyrighted songs without paying a fee. The case was heard by the United States District Court, Southern District of New York. In 2010, the court ruled in favor of RIAA issuing a Permanent Injunction. RIAA, et al. v. Lime Wire, LLC, et al, 06 Civ. 05936 (Oct. 26 2010).  In evaluating whether an injunction was warranted the Court balanced four (4) elements:

1) irreparable injury;

2) whether or not there is an adequate remedy at law;

3) consideration of the balance of  hardships between the parties; and

4) whether the public interest would be disserved by the injunction

Id. at 5.

The Court concluded that RIAA faced irreparable harm because “it is virtually certain that [RIAA] will be entitled to an enormous damage award [] that will far exceed Lime Wire’s ability to pay.” Id. at 6.  Under the Copyright Act, a plaintiff is entitled to statutory damages from $750-$150,000, depending upon the circumstances of the infringement. Id. at 6; See 17 U.S.C. § 504(a)(2)-(c).

The Court found that a permanent injunction in addition to damages was necessary since the compensation for damages would only satisfy past infringement, not future infringement. Id. at 8.  The Court found that LimeWire’s widespread dissemination of its software left RIAA vulnerable to ongoing infringement by users and that this far outweighed any hardship to LimeWire by the injunction. Id. at 8.

Although the Court agreed that LimeWire induced copyright infringement, it did not agree with RIAA’s position on damages.  RIAA believed that it was owed the statutory allotment ($750-$150,000) per download, per song. Id. at 6-7.  That would have amounted to a penalty well beyond LimeWire’s resources. Id. at 6.  Ultimately, in May 2011, LimeWire made its settlement offer, and the case settled for $105 million in damages.

Businesses should take heed to the permanent injunction issued against LimeWire and the subsequent settlement amount of the lawsuit.  The issue of music piracy is serious and the music industry is being all the more active in fighting against copyright infringement.


© 2012 Nissenbaum Law Group, LLC

Should Appropriation Artists Be Protected By Fair Use?

Appropriation art, which involves an artist purposefully copying the work of another, has become a popular art form. But is it legal? The United States District Court for the Southern District of New York recently faced that question and determined whether appropriators are entitled to use the defense of fair use against a claim of copyright infringement. Cariou v. Prince, 784 F.Supp. 2d 337 (S.D.N.Y. 2011).

The plaintiff in that case, professional photographer Patrick Cariou (“Cariou”), had spent time in Jamaica over the course of six years. After gaining the trust of the Rastafarians, he had been permitted to take their portraits. In 2000, Cariou published a book of his photographs. The book contained those portraits as well as landscape photos he had taken around Jamaica. He testified that he was the sole copyright holder of the images that appeared in his book.

The defendant, Richard Prince (“Prince”), was a well-known “appropriation artist” who had shown his work at several museums. Appropriation art deliberately copies images and presents them in a new version or context. During an exhibit at a hotel in St. Barts between December 2007 and February 2008, Prince showed a collage entitled “Canal Zone (2007)” which included 35 photographs that had been taken from Cariou’s book. Prince painted over some portions of the photos. Some were used in their entirety, while others were only partially used. Prince intended to use “Canal Zone (2007)” as a means of introducing characters he intended to use in a planned series of artworks. Cariou eventually claimed that Prince had infringed on his copyright, but Prince asserted that his works were protected by the defense of fair use.

Cariou possessed undisputed ownership of valid copyright in the photos, which courts have held to be a copyrightable subject matter for more than 100 years. Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53 (1884). The Court then considered whether Prince’s use of Cariou’s copyrighted work should be protected as a type of fair use. When determining whether a particular use of a copyrighted work qualifies as fair use, courts will consider four factors:

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.

17 U.S.C. §107.

First, the Court considered the purpose and character of Prince’s use of the photos. It found its transformative content to be “minimal at best,” its purpose to be “substantially commercial, and interpreted Prince’s failure to obtain permission (and the co-defendant Gagosian Gallery’s failure to inquire as to whether Prince had obtained permission) to constitute bad faith. Cariou at 350-1. Thus, it determined that the first prong weighed heavily against a finding of fair use. Second, the Court found that Cariou’s photos were highly original and creative (as opposed to factual or informational). Thus, the Court held that the use of such works without permission also weighs against fair use. Id. at 352.

Third, the Court considered the amount and substantiality of the portion of Cariou’s photos used in Prince’s works. It found that, in the majority of his works, Prince appropriated central figures that went to the very heart of Cariou’s works, and that this factor also weighed heavily against a finding of fair use. Id. Finally, the Court found the fourth factor to also weigh against fair use because Prince’s secondary use “unfairly damaged the original market for [Cariou’s] [p]hotos and, if widespread, would likely destroy any identifiable derivative market for [them].” Id. at 353. Because none of the four factors considered supported fair use, the Court found that the defendants were not entitled to fair use as a defense. Id.

Prince is appealing the Court’s decision. This case may have a significant impact in both the art and intellectual property industries.


© 2012 Nissenbaum Law Group, LLC

Can impersonating someone and posting inflammatory comments about them on a fake Facebook page result in prosecution?

In November 2011, a Superior Court Judge sitting in Morristown, New Jersey refused to dismiss an indictment charging Dana Thornton with identity theft for impersonating her ex-boyfriend on a fake Facebook page and posting inflammatory comments about him. After an investigation by law enforcement, Ms. Thornton was indicted in August 2010 on one count of fourth-degree identity theft. She pleaded not guilty but if convicted she faces up to 18 months in prison.

The investigation originated when the Morristown prosecutor’s office was informed about a Facebook page that was set up without Lasalandra’s (Dana’s ex-boyfriend) permission. The prosecutor’s office then conducted an investigation and found that the Facebook page contained photos and personal information about Lasalandra. The page also contained comments made by Lasalandra in which he allegedly admitted using drugs, hiring prostitutes and having herpes. According to the prosecutor’s brief the posts included comments like “I’m a sick piece of scum with a gun” and “I’m an undercover narcotics detective that gets high every day.”

Ms. Thornton’s attorney defended by asserting that the indictment should be dismissed because identity theft does not include “electronic communications.” However, the Court disagreed and held that the law was “clear and unambiguous.” In other words, although the law did not specify the “means” by which the injury from identity theft might occur, that would not undermine the fact that a crime was committed.

Accordingly, the Court ordered that the lawsuit proceed.  It should be noted that the New Jersey legislature is reviewing an amendment that would specifically add electronic communications to the identity theft law. The proposed amendment can be viewed at:


© 2012 Nissenbaum Law Group, LLC