The Paradox of Illumination

I first heard about the paradox of illumination from Lee Loevinger, an extraordinary gentleman I was privileged to know professionally.  Lee was a multi-faceted, multi-talented, thought-provoking lawyer whose sage advice and stimulating ideas continue to resonate with those honored to have known him, and everyone else wise enough to read his work and the words he left behind.

In a nutshell, the paradox of illumination is extraordinarily complex, but simple to describe.  Much like Albert Einstein who, when asked about his theory of relativity and the notion that time is not constant, described it in personal terms: if a man is at dinner for 10 minutes with a beautiful woman, it seems like a fleeting instant; but sit on a burning hot stove for 10 minutes and it seems like an eternity :).

The paradox of illumination can similarly be described on a personal level.  Sit in completely dark room.  Really.  Completely dark.  What can you see?  Nothing.  You know little about your surroundings and can only sense your own body – in fact, you don’t even know how far your surroundings extend beyond your immediate sensations.

Now light a match.  The circle of illumination allows you to see a little of what is around you – but the perimeter and beyond are still dark.  Now light a candle.  The circle of what you can see illuminated by the light is larger than before, but the size of the perimeter beyond which you cannot see is also a lot larger than before.  The larger the light, the larger the area of illumination, but larger by far is the perimeter beyond which we know nothing.

The more we can see and the more we know and understand about the world around us, the larger the amount becomes that we don’t know.  In other words, as the circle of our knowledge grows, so does the amount of knowledge we cannot see and don’t know.  The paradox of illumination is the paradox of knowledge.  Perhaps that is why Michelangelo, when he was more than 87 years old, still said, “Ancora Imparo” (I am still learning).

Thought Leadership

Thought leadership is a state of being in which one or more individuals articulate innovative ideas – ideas that stimulate thought and are futuristic or leading-edge.

Thought leadership requires confidence and a willingness to share ideas in the form of insights and principles that inform and guide future considerations.

Thought leadership is often controversial. New or different ideas, like innovative technology, can cause evolutionary change, but can also create disruptive or revolutionary change.

Although not all thought leadership must be actionable, it is often the basis for a re-evaluation of existing pathways, and a guidepost for new roads ahead.

2016 Metamorphosis *

Legal Bytes will soon morph** and undergo a transformation***

Watch For It

*    Metamorphosis: A noticeable change in character, appearance, function or condition.

**    Morph: To undergo dramatic change in a seamless and barely noticeable fashion.

*** Transformation: A marked change in appearance or character, especially for the better.

A New Twist to Chubby Checker – Oh No, Not an App for That!

Chubby Checker, whose real name is Ernest Evans, is suing Hewlett Packard for trademark infringement. Chubby Checker, an iconic music entertainer, rose to fame when his song “The Twist” first reached No. 1 on the charts in 1960 and his appearances on the “Ed Sullivan Show” and “American Bandstand” helped spawn a national, if not international, dance frenzy. His 2008 song “Knock Down the Walls” reached the top of the dance charts and sparked a brief comeback for the music legend.

Ernest Evans Corporation, one of Mr. Checker’s companies, was originally granted trademark rights for the use of his name in connection with musical performances. Later, The Last Twist Inc., another of his companies, was granted trademark rights for “Chubby Checker’s” in connection with food products, based on the release of a line of snack foods.

The mobile “app” named “The Chubby Checker” – no, we couldn’t possibly make this up – ostensibly enabled users who downloaded it to calculate the size of a male penis based on the individual’s shoe size. The development shop named Magic Apps, now non-existent, had touted the international appeal of the app, noting “The Chubby Checker” allows calculations based on U.S., UK and European shoe sizes.

Lawyers for Mr. Checker had sent HP a cease-and-desist letter last September and apparently the app was removed from all HP or Palm-hosted websites later that month. In the lawsuit filed in the U.S. District Court for the Southern District of Florida, lawyers for Mr. Checker, now 71 years old, claim that “irreparable damage and harm” has been done to the entertainer’s name and reputation, are seeking an injunction, and are asserting claims of millions of dollars in damages arising from “The Chubby Checker” app that Hewlett Packard Co. made available on Palm mobile devices starting in 2006. You may recall that HP acquired Palm in 2010, and a year later opted to shutter the production of Palm hardware, although it continued to provide technical support to existing Palm users.

The suit alleges that purchasers of the app, as well as anyone simply browsing the webpage, had been misled into believing that Chubby Checker had endorsed the app, and that the use of his name would confuse users who might reasonably conclude the singer had some association with the app bearing his name.

The lawsuit alleges that the defendants made millions of dollars exploiting the name of one of the greatest musical entertainers of our time, and claims the “Defendants’ use of the name ‘Chubby Checker’ in its app is likely to associate the plaintiffs’ marks with the obscene, sexual connotation and images evoked by defendants’ app ‘The Chubby Checker.’” You can read the filing in its entirety right here at Evans, et al. v. Hewlett Packard Company, et al., Case 2:13-cv-14066-JEM.

The Advertising, Technology & Media Law Group at Rimon has lawyers with decades of experience in working with advertisers and agencies, marketing and promotional companies, online, mobile, and traditional, handling matters involving celebrity endorsements – good, bad and sometimes ugly. Let us know if you need us. Call me, Joe Rosenbaum, or any of the Rimon lawyers with whom you regularly work. We are happy to help.

U.S. Court Protects Middle Earth. Hobbits, Not Inmates, Take Over Asylum.

A United States District Court for the Central District of California has granted plaintiffs Warner Bros., New Line Cinema, MGM and Saul Zaentz – the motion picture studios and producer behind the forthcoming film "The Hobbit: An Unexpected Journey" – a temporary restraining order against Global Asylum (also known as The Asylum of Burbank), blocking the release of "Age of the Hobbits." The plaintiffs previously filed suit against Global Asylum (Warner Brothers Entertainment, et al. v. The Global Asylum, Inc.; CV 12 – 9547 PSG (CWx)), seeking an injunction against infringement and damages for trademark dilution, false designation of origin, copyright infringement, false advertising, unfair competition and violations of California’s Business and Professions Code. The Peter Jackson film, a motion picture adaptation of J.R.R. Tolkien’s classic book slated to open tomorrow, December 14, continues the successful "middle earth" franchise created by the success of The Lord of the Rings film series. The motion picture epic trilogy reportedly has gleaned more than $3 billion to date.

Asylum has a history of creating relatively low-budget films with parodied titles of Hollywood blockbusters (e.g., "Snakes On A Train," "Transmorphers: Fall of Man," "American Warships"). The studios pointed out these alleged parodies are always timed to coincide with release of each major motion picture counterpart and use "confusingly similar titles."

In granting the restraining order, Judge Phillip S. Gutierrez said the plaintiffs satisfied the legal standard requiring a plaintiff to demonstrate it has a valid copyright infringement claim, that there would be imminent danger to the plaintiff if the order is not granted, that the plaintiff would suffer more and that the order would advance the public interest. The judge’s decision specifically notes that: "The evidence of the advertising and promotion for ‘Age of Hobbits,’ as well as the media coverage the film has received, provides support for Plaintiffs’ contention that Asylum intended to deceive consumers by associating its movie with Plaintiffs’ works." You can read the Order in its entirety right here, Order Granting Plaintiff’s Ex Parte Application for a Temporary Restraining Order.

As always, if you need help or more information, contact me, Joseph I. Rosenbaum (joseph.rosenbaum@rimonlaw.com), or any of the Rimon lawyers with whom you regularly work.

Krakatoa: East of Java; Google West of Fair Use

Some of you may remember the 1969 disaster film, "Krakatoa: East of Java" (which, coincidentally ties nicely to a recent Useless But Compelling Fact topic). Well today, Legal Bytes is happy to alert you to the results of jury deliberations – yet another copyright law disaster – just unfolding out West (West Coast of the United States, that is). Just hours ago (and providing more evidence that confusion reigns and continues to increase under existing copyright law), the jury has rendered its decision in the copyright phase of yet another intellectual property trial relevant to the online and mobile world. As you may recall, just last month we reported another copyright flip-flop winding its way through the courts in our post entitled, Appeals Court Vacates Summary Judgment in Viacom v. YouTube.

Today, a jury in California, deliberating in a case brought by Oracle against Google and alleging that Google infringed Oracle’s Java copyrights, concluded that Google did use the Java interfaces, but couldn’t reach any conclusion if that was protected use under the copyright "fair use" exception ("fair use" is a defense to copyright infringement). The jury did find separately that Google infringed some of the Java code and used it in developing the mobile phone platform, Android. However, before Oracle celebrates prematurely, Judge William Alsup noted that because only a minimal amount of code was actually used, Oracle’s request for $1 billion in damages or some share of Google’s profits was essentially ridiculous, and that only statutory damages, ostensibly a relatively nominal amount, would likely be applicable.

Indeed, these cases bolster a growing argument that as digital technology and innovation move forward, current copyright law is either inadequate or irrelevant, or both. Legal Bytes will continue to monitor developments in this evolving and convoluted intellectual property dilemma. I encourage you to take a look at an opinion piece I wrote separately entitled, A Contrarian’s View of Copyright: Much Ado About Nothing. But that’s just my opinion; the jury’s verdict is fact!

If you would like further information or need help making sense of the legal issues arising in our digital online and mobile world, feel free to contact me, Joe Rosenbaum, or the Rimon attorney with whom you regularly work.

Appeals Court Vacates Summary Judgment in Viacom v. YouTube

Back in December of 2010, after a previous ruling against Viacom in the billion-dollar copyright infringement case brought by Viacom (Viacom Appeals Google/YouTube Ruling) Legal Bytes reported that three legal scholars filed a brief in support of Viacom’s appeal, stating that “the central issue in this case are the legal tests for contributory and vicarious liability for copyright infringement from the use of Internet sites – in this instance, the YouTube site – to reproduce and disseminate large amounts of copyrighted material without authorization from copyright owners.” The U.S. District Court had previously ruled in favor of YouTube and Google, holding them protected against claims of copyright infringement by the safe harbor provisions of the Digital Millennium Copyright Act.

Today, in ruling on the appeal, the U.S. Second Circuit Court of Appeals essentially breathed new life into Viacom’s case, remanding it back to the lower court and instructing the District Court judge to determine whether YouTube had knowledge of specific infringing material and willfully blinded itself to that knowledge.

The ruling vacates the District Court’s summary judgment against Viacom, noting the facts might be interpreted by a reasonable jury in a way that would not exonerate or exculpate YouTube from liability. In his opinion, U.S. Circuit Judge Jose A. Cabranes wrote: "We conclude that the District Court correctly held that the 512(c) safe harbor requires knowledge or awareness of specific infringing activity, but we vacate the order granting summary judgment because a reasonable jury could find that YouTube had actual knowledge or awareness of specific infringing activity on its website."

As we have over the years, Legal Bytes will continue to monitor developments in this complex, high stakes litigation involving significant intellectual property issues in our online and digital world. If you would like further information, feel free to contact me, Joe Rosenbaum, or the Rimon attorney with whom you regularly work.

Adwords Add Nauseum – What if the Jabberwock Wrote Blogs

The Adword Lawsuit

Now D (Defendant) buys competitor’s words from a search engine, you see.
What words do they buy? Just brands that are popular – with you and with me.
They buy words I might search for when I am looking for thee. 
When we search for P’s (Plaintiff) product, they also find me.
D’s product and brand pops up with such glee; a sponsored link for consumers to see.

Now P gets really mad, call the lawyers, they do,
P’s marketers scream loudly, "Go sue, yes, let’s sue."
So do what they might and do what they may,
The lawyers do sue, in court we shall have our day! 

But wait just a moment, says the court to party P,
In order to win, two things prove for me,
Did D "use the mark in commerce" for all the world to see
And can you prove that buyers, from deception and confusion are free?

Well maybe I can and maybe I can’t, says P not quite funny.
But Your Honor, you do know I’ve invested huge sums of money.
With branding and ads placed in time and in space, 
How can D be permitted to stand in my place? If a "mark" I invest in, an intellectual property right,
Surely you will protect my investment before calling it a night!

Not so, sayeth the court and much to Plaintiff’s fright.
‘Tis only deception we courts should set right.
The mark is intellectual and property we know,
But in "adword" competition, deception is as far as we go.
So P left the stage, bloodied but resolved to fight another day,
But so far and at this point, the Ninth Circuit says "no way."

 

The English Translation

Consider the case of Network Automation, Inc. v. Advanced Systems Concepts [No. 10-55840 (9th Cir. 3/8/11)]. Network Automation sells scheduling and management software under the brand name AutoMate. Its competitor, Advanced Systems Concepts, has a product called ActiveBatch. Now in 2009, Network Automation purchased keywords, including "ActiveBatch," from Google and Bing. When consumers searched for "ActiveBatch," the displayed results carried a sponsored link to Network Automation’s website. Naturally, Advanced Systems demanded Network Automation stop using its name as an advertising keyword, claiming the use infringed its intellectual property rights. Network Automation refused and Advanced Systems sued.

In order to prevail, traditional trademark law says Advanced Systems must show that the mark was "used in commerce" and that consumers of these competitive products are likely to be confused. I won’t bore you with the legal machinations leading up the ruling last week, but first the Ninth Circuit clearly joins the Second Circuit in stating the purchase of adwords is "use in commerce" for purposes of trademark law (the Second Circuit made a strong statement to that effect in Rescuecom v. Google Inc., 562 F.3d 123, 127 (2d Cir. 2009)). But what about the likelihood of confusion?

Here, Advanced Systems failed to convince the court that a "sophisticated" Internet consumer (the target consumer for this product) was likely to be confused by the keyword advertising strategy. "A sophisticated consumer of business software exercising a high degree of care is more likely to understand the mechanics of Internet search engines and the nature of sponsored links, whereas an un-savvy consumer exercising less care is more likely to be confused," the ruling states.

While intellectual property lawyers will themselves review the Ninth Circuit’s distinction between the Sleekraft factors used to determine likelihood of confusion (named from AMF, Inc. v. Sleekraft Boats, 599 F.2d 341 (9th Cir. 1979)) and those used in the Brookfield case (Brookfield Communications, Inc. v. West Coast Entertainment, 174 F.3d 1036 (9th Cir. 1999)), you should know the Ninth Circuit felt the right factors to consider in competitive adword cases are: strength of the mark, evidence of actual confusion, type of goods, the degree of care likely to be exercised by the purchaser, and the appearance of the ads and surrounding context on the screen displaying the results. 

But wait a minute. If the brand owner has invested significant time and money building brand recognition and a strong mark, shouldn’t it be entitled to protection? Put another way, if a trademark is intellectual PROPERTY, don’t I have the right to protect my asset and not give the alleged "infringer" a free ride on my investment? Well the Ninth Circuit seems to be saying "no, you don’t." 

The court reasoned that trademark law focuses on protecting the consumer (and correspondingly the trademark owner) from the likelihood of confusion. Even though, over the past decade (inspired by cases like Brookfield), companies sought to emphasize the "property" aspect of their marks – protecting their investment and asset value – this court feels that is not the right approach. With this ruling, the Ninth Circuit appears to dismiss the property or asset "value" and investment argument, and makes a fairly clear statement that the rationale for protecting trademarks and the basis of permissible legal action still remains consumer deception and confusion. "Did D ‘use the mark in commerce’ for all the world to see, and can you prove that buyers, from deception and confusion are free."

For these judicial combatants, it means Network Automation can keep advertising on search engines using keywords that include the name of Advanced Systems and its products. Want to read the case for yourself? You can download your own personal copy and read the entire Ninth Circuit decision in this case right here: Network Automation, Inc. v. Advanced Systems Concepts. Need help? Contact me or the Rimon attorney with whom you regularly work.

Digital Media – Recent IP Developments and More

On Thursday, February 10, 2011, Rimon’s own Emily Kirsch and Brad Newberg will be presenting a seminar entitled: Practical Implications of Recent Developments in Digital Media. The seminar will provide practical, real-world guidance to content owners and users, ISPs – actually, any enterprise with a website and content (that’s all of you, right?), speaking about the rapidly developing law of rights, responsibilities and liabilities arising from activity on the Internet:

  • Recent developments in safe harbor under the Digital Millennium Copyright Act
  • Copyright fair use and the Internet
  • Keyword search advertising
  • Morphing of trademark uses – what’s fair and what’s not – from metatags to invisible text

This CLE/CPD-eligible course (2.0 credits; Practice Skills and Knowledge) is available for attorneys (experienced and transitional) admitted in New York, New Jersey, Pennsylvania, California and Illinois, as well as in the UK. Those of you licensed in Delaware and Virginia, we can apply for you if needed – let us know. This course will only be presented LIVE in our New York office at 4 p.m., February 10; and since it will not be broadcast in either audio or video, you will need to be present to attend and get credit. 

Of course, a reception for the attendees will follow the course. How good is that – wisdom, credit and munchies! So if you are a client of the firm (or are willing to become one) and you want to register, don’t call me. Contact Anna Farhadian by email at afarhadian@rimonlaw.com or by telephone at +1 212 702 1399. 

If you would prefer to register directly, just select this REGISTER link to be taken to the registration page. See you there!

Amici Curiae Brief Filed in Viacom v. YouTube Appeal

In August we reported that Viacom intended to appeal the U.S. District Court ruling in favor of YouTube and Google in the billion-dollar copyright infringement case brought by Viacom (Viacom Appeals Google/YouTube Ruling). As you may recall, the federal court decided YouTube is protected against claims of copyright infringement by the safe harbor provisions of the Digital Millennium Copyright Act. If you have not yet read the original text of the District Court decision, you can read and/or download it from Legal Bytes (Federal Court Awards YouTube Summary Judgment in Viacom Copyright Infringement Case).

Regardless of your perspective, this continues to be a closely watched legal battle, with significant implications in the determinations made by the court – not only because of the stature of the parties, but also because the issues implicate so much of the content-related activity on the Internet and the interpretation of the seminal U.S. statute that applies – the Digital Millennium Copyright Act.

Earlier this week, three academic legal scholars filed a brief in support of the Viacom entities, stating that "the central issue in this case are the legal tests for contributory and vicarious liability for copyright infringement from the use of Internet sites – in this instance, the YouTube site – to reproduce and disseminate large amounts of copyrighted material without authorization from copyright owners." The brief presents interesting and thoughtful insights into the law of copyright and protection of intellectual property rights in this age of digital information and content. If you would like to read the brief, you can download your own copy right here: Brief of Amici Curiae Stuart N. Brotman, Ronald A. Cass, and Raymond T. Nimmer In Support of Plaintiffs-Appellants.

Legal Bytes will continue to monitor developments and post significant materials that we hope will stimulate your thinking, and increase your appreciation of the complexity of the issue and the stakes in this intellectual property battle. If you would like further information, feel free to contact me, Joe Rosenbaum, or the Rimon attorney with whom you regularly work.