Paul Ceglia’s Facebook lawsuit might finally be nearing its end. It appears that new evidence has surfaced which may demolish any chances that Ceglia’s claims are true. It seems that Ceglia might be lacking in a crucial area of his…

Continue reading this article, and get more legal technology news and information, at FindLaw.com.

Technologist Cynthia Hsu

The Samsung/Apple legal dispute continues. Apple’s iPhone 5 is still unreleased and unannounced, but Samsung already has the product in its crosshairs. Samsung wants to block the iPhone 5 in South Korea once the much-anticipated phone is released. The company…

Continue reading this article, and get more legal technology news and information, at FindLaw.com.

Technologist Cynthia Hsu

Is Google Street View wiretapping? A Google Wi-Fi lawsuit says so. A federal judge has recently decided to proceed with a Google wiretapping class-action case, refusing Google’s request to dismiss the lawsuits. The lawsuits allege the Internet giant was illegally…

Continue reading this article, and get more legal technology news and information, at FindLaw.com.

Technologist Cynthia Hsu

Remember that clever New York teenager who was selling the white iPhone kits online – before Apple released the white iPhone? He was hit with a white iPhone lawsuit by Apple. Fei Lam, 17, got the idea to sell white…

Continue reading this article, and get more legal technology news and information, at FindLaw.com.

Technologist Cynthia Hsu

We’ve been covering the mass copyright infringement lawsuits being filed in the US over the past year or so. Most of them aren’t designed with the idea of actually taking anyone to court, but mainly to threaten people into “settling” (i.e., paying up) to avoid the lawsuit. A “concerned citizen” hoping to remain anonymous has taken the time to put together an amazingly detailed spreadsheet cataloging all of these lawsuits. He claims that he will continue to keep it updated. One stunning point from the data? Between January 1, 2010 and now, 99,924 “John Does” have been sued in this manner. If I don’t hurry up and publish this post, I imagine we’ll have already passed 100,000.

While many of the John Doe cases have been dismissed, the spreadsheet shows that 70,914 have not yet been dismissed, so there are plenty to go. When 100,000 people are getting sued anonymously by just a few firms, at what point do the courts and politicians realize that something is broken with the law?

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Techdirt Mike Masnick

Stories abound in the media about how lawyers abuse the legal process.  But judges do so as well—although perhaps not as frequently—and attorneys often can’t do much about it (at least not quickly).  Such was the case for a judge in Tennessee who was reprimanded by state authorities for “excessive delay” after waiting nearly 11 years to rule on a case. 

“Excessive delay.”  Ya think?  Not 11 weeks.  Or 11 Months.  But 11 YEARS.  Judge F. Lee Russell took a case under advisement in 1999 and didn’t rule on it until October of 2010—and only after he learned that he was facing discipline.  Absolutely unbelievable and inexcusable.  And needless to say, not very judicious.

It’s hard to believe he was only reprimanded and not forced to resign.  If a lawyer waited that long to do something (if that were even possible), not only would he rightly be sued for malpractice, but his disciplinary punishment would likely be far more severe than a mere reprimand. 

What’s most egregious is that Judge Russell apparently didn’t grasp that his behavior affected the lives of the litigants.  Most lawyers understand this all too well.  Waiting for a judge to issue a ruling is never much fun, but that’s precisely what the end result of litigation is all about.  As the old saying goes, “justice delayed is justice denied.”  But the adage was never intended to be applied to a ridiculous case like this.  Shame on this judge and on the Tennessee disciplinary authority for only giving him a slap on the wrist.  Objection!

I love it when tech giants battle over stuff, particularly in the legal arena.  When you have two parties with virtually unlimited resources and an unfettered willingness to spend money on lawyers, it makes for interesting reading … and hopefully for more interesting law at some point down the line.  We don’t always have such excitement in the Boston legal community.

Such is the case with Microsoft’s recent filing at the Trademark Trial and Appeal Board (“TTAB”) (of the United States Patent and Trademark Office) contesting Apple’s attempt to trademark the term “APP STORE.”  Microsoft argues that “APP STORE”  is “generic for retail store services featuring apps and unregistrable for ancillary services such as searching for and downloading apps from such stores.”  The company further contends that “APP”  is “a common term for mobile software applications, while “STORE” is a common term for a “place where goods are sold.” 

Following so far?  A generic term can’t be registered for use as a trademark because it refers to the actual product class of which a particular product is a member and therefore can’t be protected as a mark.  It would be like trying to register the term “VIDEO GAME” for video games or—for those of us over 40 who still remember video games’ predecessors—the term “PINBALL” to describe pinball machines.

Microsoft’s argument has merit and the company has a reasonable basis to contest the mark.  Of course, this doesn’t mean that Apple won’t win in the end, but it should be an interesting read when the TTAB decision come out—at least to us trademark lawyers.  (And the parties may then have the opportunity to fight it out in federal court.)  Needless to say, neither party suffers from a lack of resources to fight to the bitter end.  But they could settle too, if for instance, Apple lets Microsoft use the term to describe its own “App Store.”

There are numerous factors which the TTAB and a court can take into consideration when determining whether a mark is generic, including:  how the potential trademark owner itself uses the term; whether third parties use the term as a common name for their own products; what the dictionary definition is (if any) for the term as a common name for a particular type of product; whether there are other available terms to describe the common name for the products; the period of time in which the trademark has been in use; how the press and others use the term; and of course, the results of any survey evidence that either party introduces (which are usually subject to vigorous attack by the other party).  There are other factors too, but these tend to be the main ones for determining “genericness.” 

Without going into too much detail here, Microsoft does have some favorable evidence to support its claim, as does Apple.  While there are a ton of trademark cases that discuss generic marks, a 4th Circuit decision comes to mind, Hunt Masters, Inc. v. Landry Seafood Restaurant, Inc., 240 F.3d 251 (4th Cir. 2001).  In that case, the court found that the term, “CRAB HOUSE” to describe a restaurant that, uh, served crabs “is a generic term referring to a class of restaurants that serve crabs.”  It found:

Here, the meaning of the individual words is fairly clear. A crab is “any of numerous chiefly marine broadly built crustaceans,” while “restaurant” is one of the many definitions of the word “house.”  Webster’s New International Dictionary 1096 (3d ed. 1961). Other common words that are often used as synonyms for “restaurant” include bar, parlor, and shop. When preceded by a type of food, these words describe various classes of restaurants, such as ale houses, tapas bars, ice cream parlors, and coffee shops. Each term denotes a class of restaurant serving a particular type of food, just as”crab house” denotes a class of restaurant that serves crabs. 

The court also rejected the plaintiff’s survey evidence when assessing genericness.  So “CRAB HOUSE” was deemed to be unprotectable.  While there are a few factors that differentiate this case and some of its principles from what Microsoft is arguing at the TTAB (such as time frame related to evaluating genericness), given the abundance of legal precedent in this area, the company can reasonably argue that ”APP STORE” is a generic term (or a merely descriptive one) for a place that sells applications.  Much of the fight will be over the term “APP.”

Of course, as any intellectual property or technology lawyer will tell you, trademark law is a highly nunaced area of practice, so these cases can turn on distinctions that at times seem more imaginary than real—especially in a sector as fast-paced as technology.  We’ll just have to wait and see.

When I first heard about the Associated Press (“AP”) accusing Shepard Fairey, the artist who created the ubiquitous red and blue Obama poster emblazened with the word “HOPE,” for copyright infringement, the first thing I thought of was “fair use,” most notably the concept called “transformative use.”  The AP alleged that Fairey infringed its photograph of Obama when he developed his poster.

Then I read the story shortly thereafter about Fairey filing a “declaratory judgment” lawsuit in New York asking a federal court in Manhattan to “declare” that he was not infringing the AP’s photograph.  Fairey doesn’t deny that he based the painting on the photograph, but claims that it was a fair use, which is a defense against copyright infringement. 

Although I haven’t had a chance to read the complaint yet, transformative use is the principal part of Fairey’s defense.  And it’s a meritorious one that will make for an interesting legal analysis—assuming the case gets that far.  So what is “transformative use” exactly?  The Supreme Court addressed this issue most recently in Campbell v. Acuff-Rose Music, Inc. in 1994.  The Court described a transformative use as follows:

The enquiry here may be guided by . . . looking to whether the use is for criticism, or comment, or news reporting, and the like. The central purpose of this investigation is to see . . . whether the new work merely “supersede[s] 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; it asks, in other words, whether and to what extent the new work is “transformative.”  Although such transformative use is not absolutely necessary for a finding of fair use, the goal of copyright, to promote science and the arts, is generally furthered by the creation of transformative works. . . . and the more transformative the new work, the less will be the significance of other factors, like commercialism, that may weigh against a finding of fair use.  (emphasis added)

So the court will be focusing on to what extent Fairey’s painting adds something new to the original AP photograph, i.e., its “expression, meaning, or message” and thereby “transforms” it.  While a fair use analysis can be quite lengthy and complicated (and is very fact-specific), Fairey will certainly be able to make a credible argument that his colorful and abstract painting combined with the word “HOPE” alters and transforms the photograph’s meaning or message. 

In fact, it’s unclear to me exactly what message the original photograph would be communicating by itself.  Is Obama looking confident?  Reflective?  Poised?  Attentive?  Presidential?  It’s somewhat subjective and it will be interesting to see how the AP characterizes the picture’s message.  It’s really more a question of opinion, which works strongly in Fairey’s favor.  (And what does “hope” consist of anyway?)  So Fairey has a strong defense in this regard.  But one thing that I learned about litigation over the past 15 years or so is that it’s a very fluid and dynamic environment and can change rapidly.  Unforeseen things happen.

So in practical terms, what’s the lesson to be learned here?  Here’s the basic one:  Contacting a party or sending a cease and desist letter can be risky business sometimes.  In any type of infringement action—whether it’s patent, trademark, or copyright—notifying the other side that you believe it’s infringing on your intellectual property rights gives them the ability to go running into federal court and seek declaratory relief.  After all, you’ve just told them that a problem exists.

Your notification to them of possible infringement creates what’s called a “justiciable controversy” and can give them the ability and standing to go into court to seek a declaration that they’re not infringing, just as Fairey has done.  Of course, each federal circuit has its own rules as to what creates a justiciable controversy, so Massachusetts may use a different standard than another state—although the standards will usually not differ all that much.

So why is this a problem?  If you’re located in Boston, Massachusetts and the possible infringer is located in California, that party can now go into a federal court in California and file its action and get the “home field” advantage.  The court would very likely have jurisdiction over you.  So in addition to now having to hire counsel in California to defend yourself, you would also be forced to go there to give and take depositions and engage in other forms of “discovery.”  It can be very incovenient and expensive.  That’s the point.

This is why whenever somebody contacts me about either sending a cease and desist letter or is the recipient of one, it’s crucial to really sit down and strategize as to what your next move should be.  If litigation is a probable outcome and you’re dealing with a well-financed adversary, then it may be best to strike first and file an action in your home state where it would be most convenient for you.  (It’s been my experience, however, that many clients—especially those who have never been through the litigation process before—are somewhat leery of filing litigation first given its potential expense and duration.) 

Of course, these are general guidelines only and each situation will have its own facts and nuances that will dictate how best to proceed.  The practice of law doesn’t usually lend itself to easy answers, particularly where issues of infringement are concerned.  Many factors need to be taken into consideration.

So, Fairey did the smart thing.  Rather than wait and let the AP sue him—especially given the meritoriousness of his case—he struck first.  It will be interesting to see how things develop.  And it’s always possible that the case will settle before the court has a chance to rule.  In many instances, filing an action such as this is simply designed to show the other side that a person is serious about protecting his/her rights and that a compromise might be in everyone’s best interest.  But Fairey has a strong case.  We’ll have to wait and see.

Actually, this post is really about those brave souls who decide to sue the IRS, one of the most powerful agencies there ever was.  While I was in law school (which seems like a long time ago), I took a tax law class to learn a little bit—and I do mean a little bit—about tax law and our complicated tax code.  Here’s what I took away from the class: (1) I didn’t want to be a tax lawyer; and (2) Don’t mess with the IRS.  Duh.

While this blog usually addresses various legal issues in technology-related matters, I also like to address those brave souls who go the distance in litigation—especially against a government agency.  That is no easy task.  As someone who often finds himself in court and has fought agencies in the past, I found this brief article to be interesting, although not very surprising.   

It highlights the 10 most litigated tax issues and the less-than-optimistic results.  A few of the areas addresssed in the article include gross income, summons enforcement, deductibility of trade/business expenses, family status issues, and penalties for failure to file.  While only a relative handful of cases in each area went all the way through to the end, the amount of time a taxpayer won fully in 8 of the areas ranged from 0% (you can’t get lower than that) to a whopping 10%.  The taxpayer prevailed in issues involving the joint liability of spouses and penalties involving frivolous litigation 24% to 31% of the time.  This is only slightly more encouraging.

The article only discusses those cases that are litigated from start to finish.  It makes no mention of the many cases that, in all likelihood, settled at some point along the way.  Still, I applaud those individuals who do take a stand.  It was an expensive one to be sure, but they did it.  Agencies of all types and sizes usually (but not always) have little to lose by going the distance.  Most people will either tire or be unable to keep paying their lawyers to fight.  And for that select group taxpayers who did prevail, I especially salute you.  Sometimes, you just gotta do what you think is right.  What could be more American than that?