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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.

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Service of Process by Facebook? Not Just Yet!

Back in 2009 (yes, 2009), Legal Bytes reported that the British High Court agreed to allow the service of a court order to an individual through Twitter (see, British High Court is for the Birds? Actually, for Twitter!). In that same article, we noted an Australian Supreme Court Judge allowed service of legal papers through Facebook. Increasingly, U.S. courts are confronting similar questions.

New York law, for example, has an enumerated set of mechanisms by which one can effect service of process. But the law also notes that if the enumerated methods are impracticable, service can be made “in such manner as the court, upon motion without notice, directs." In other words, if you are trying to sue someone in New York and none of the traditional methods works, you can petition the court and request some other method, and, assuming the court agrees, that will be effective to constitute service of process. But the standards remain high for the use of social media and other technology-enabled mechanisms. Witness the recent decision by the U.S. District Court for the Southern District of New York, in Fortunato v. Chase Bank USA (11 Civ. 6608), which in June of last year, denied the bank’s petition to allow service of process using Facebook.

The case started when Lorri J. Fortunato (Lorri) sued Chase, alleging that another person fraudulently opened a Chase credit card account in her name and incurred debts without her knowledge or authorization. When the debt went unpaid, Chase initiated collection proceedings against Lorri. In 2009, Chase obtained a default judgment and in 2010 began proceedings to garnish her wages – a process by which Chase eventually collected the full amount of the default judgment. But Lorri claimed she never lived at the address at which Chase attempted to serve her notice of the action and, during the course of the lawsuit, Chase discovered that Nicole Fortunato (Nicole), the plaintiff’s estranged daughter, had opened the account in her mother’s name, listed her address in the account application, and made the charges – the amount Chase ultimately received from garnishing Lorri’s wages.

Chase requested, and was granted permission, to bring Nicole into the case as a third-party defendant, but despite hiring an investigator to locate her, Chase was unable to determine exactly where Nicole lived. The investigator did, however, find a Facebook profile that was believed to be hers, and so Chase petitioned the court to allow it to effect service of process on Nicole in a number of ways, among which were service through Facebook and a message to the email address listed on the profile page.

Although the court did conclude that Nicole’s pattern of "providing fictional or out of date addresses” made service of process upon Nicole using traditional methods impracticable, the court went on to reason that Chase had not been able to assert "any facts" that could substantiate, among other things, that the Facebook profile was actually that of the Nicole Fortunato in this particular case. The court noted anyone can create "a Facebook profile using real, fake, or incomplete information," so how could they be sure it was the person they intended to serve! Feel free to read the Court’s Memorandum Opinion & Order (PDF) yourself.

The lesson from this and other cases so far: Whatever method of service of process is requested, one must be able to substantiate, with some degree of certainty, that the person intended to be served is likely to receive the summons and complaint and, thus, be apprised of the pendency of legal proceedings involving that person. Social media and technology, wired and wireless, is turning the legal world upside down. If you want to remain upright or need to know more, feel free to contact me, Joseph I. Rosenbaum, or any of the attorneys at Rimon with whom you regularly work.

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State Tax Update: States Can Be Taxing in a Digital World

Please join Rimon lawyers Dan Dixon and Kelley Miller Thursday, January 31 at Noon EST (9 a.m. PST; 11 a.m. CST) for "Clouds, Codes, and Crunching Numbers: An Update on Current Multi-State Tax Developments in the Taxation of Electronic Goods and Services." Participants will hear about the latest state developments and trends, including affiliate nexus, “Amazon” legislation, states’ tax treatment of various digital products, software, cloud computing, web-based & web-hosting services, information services, data processing, and sourcing rules for digital goods and services transactions. Don’t miss this timely teleseminar!

Registration link: Click here to register for this seminar.

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Mobile Money, Mobile Risk – The Future of ePayment Systems

Earlier this week, the editorial staff of the UK-based publication e-Finance & Payments Law & Policy, interviewed Joseph I. Rosenbaum, New York-based partner and Chair of Rimon’s global Advertising Technology & Media law practice, in connection with its cover story for the January 2013 issue. The stimulus for the initial story was the release late last year of a report by the U.S. Federal Deposit Insurance Company (FDIC) regarding the risks attendant to the growth and evolution of the mobile payment industry, and the use of mobile contactless payment technology by consumers and merchants in routine purchase transactions (e.g., NFC, Bluetooth, RFID, SMS, Wi-Fi, and WAP enabled devices generally.)

While the cover story is still in the process of being edited for publication, the editorial staff felt that publishing the full interview separately was itself newsworthy. So follow this link and you can read the full text of the e-Finance & Payments Law & Policy interview with Joseph I. Rosenbaum, partner at Rimon LLP.

You can also read the FDIC report, issued in its Supervisory Insights – Winter 2012 release, right here: Mobile Payments: An Evolving Landscape.

Of course, if you need help or more information, contact Joseph I. Rosenbaum (joseph.rosenbaum@rimonlaw.com), who also leads the ATM Mobile Marketing initiative, or feel free to call upon any of the Rimon lawyers with whom you regularly work. We are happy to help.

Frank Lloyd Wright

“The two most important tools the architect has, are the eraser in the drawing room and the sledge hammer on the construction site.”

Frank Lloyd Wright (born Frank Lincoln Wright) (1867 –1959) was an American architect, interior designer, writer and educator, who believed in designing structures in harmony with humanity and the environment, so-called “organic architecture.”

Robert F. Kennedy

“Few will have the greatness to bend history itself; but each of us can work to change a small portion of events, and in the total of all those acts will be written the history of this generation.”

Robert Francis “Bobby” Kennedy (1925–1968) was a senator from New York and attorney general of the United States. A noted civil rights activist, he was the younger brother of President John F. Kennedy.

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2012 Thank You 2013

This is the time of year when many of you are celebrating holidays, spending time with family, friends and loved ones, bidding farewell to the end of 2012, and celebrating the coming of a New Year – 2013. A time when many of us take a moment to reflect on the year gone by and perhaps wonder what the New Year will bring. There are people who have touched us and with whom we’ve gotten closer; those who we have missed and resolve to try to be better than we were this past year; and perhaps a few we might like to forget. We also pause to remember some who are no longer with us and take comfort in knowing that by remembering them, we keep their spirit – all we have learned from them and all they have meant to us – alive. As 2012 comes to an end, we all should reflect on the friendships and experiences that helped us grow, and take a moment to thank those who have helped us get through tough times, and those who have shared the joys of good ones.

For me it’s a time to resolve to keep doing some of the good things I’ve done this past year, and to try to do some things better next year. As the year draws to a close, it also gives me an excuse to say thank you and express appreciation to all those who have enriched my life. If you are reading this, you are part of my audience, part of the fabric of my professional life; and like the threads of that fabric, you have helped me weave the patterns and textures you read in these digital pages. I am grateful for your readership and in some cases, your friendship. I am always appreciative when you take a moment to read and maybe gain some insight, while being a little entertained. Thank you.

I especially want to thank a few people at Rimon like Erin Bailey and Lois Thomson and Rebecca Blaw who make this blog happen. These are the people you don’t see, but I do – they help make Legal Bytes come alive. They are awesome and amazing, and there aren’t sufficient words to express how grateful I am – especially when they get my email that says "please can we get this posted ASAP." Thank you so much. You make it look easy and I could not do this without you!

I would also like to thank Carolyn Boyle at the International Law Office (ILO) – the force behind motivating me to push content into the U.S. Media and Entertainment Newsletter; and while I can take credit for the substance and nagging my colleagues to contribute, without her, the thousands of readers who enjoy the links and insights would be waiting far too long. Thank you.

So as the year comes to a close and we look forward to the next, let me express my appreciation and gratitude to each of you. You motivate me to keep this interesting and exciting – even when I get lazy about posting. My best wishes to each of you, your families, friends and loved ones, for a wonderful holiday season and a terrific new year, filled with health, happiness and success.

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2012 Season’s Greetings & Happy New Year 2013

This is the time of year when season’s greetings, holiday and new year’s wishes, regardless of religion, culture, ethnic background or heritage, fill the air. A period when we spend lots of time and attention on cards, gifts, attending or hosting parties, dinners and otherwise gaining the 10 pounds we resolve to lose in the new year. I don’t want to ruin those traditions, so among the flurry of well-wishers, holiday revelers, frosty noses and smiling faces, let me join with others and wish you an enchanting and joyous holiday season, and a healthy, happy new year filled with wonder, challenge and excitement.

As many of you know, in years past I use to agonize over gifts to clients, colleagues, family and friends. A number of years ago, rather than sending people trinkets they never want or need; rather than feeling guilty I’ve forgotten someone or perhaps given the same thing I gave last year or, worse – gave you the gift you gave me!!! – I started my own tradition of sending a personalized note and making a contribution to a charitable organization of my choice in honor of family, friends, colleagues and acquaintances, and in memory of those we have lost. In that spirit, as I have done for some, I have made a donation to the St. Jude Children’s Research Hospital, and this year it seems somehow to be even more meaningful. Perhaps it is my way – my attempt – to find ways to let our children know there is more good than evil in the world. That good people don’t give up; won’t give up. That the battle may never end, but we will never resign ourselves to the way it is; never stop believing it can and will be better. At a time when so many of us might feel helpless to comfort each other.

To help, we need to find ways to make a difference – one step at a time. I know we can’t all change the world. But we might just be able to change a life or two or three. Yes, it’s corny. So what? We are already cool and so hip. We speak to each other in "tweets" and text messages, in language that accommodates the limitations of the technology – OMG that is sew kewl! So for the record, I’m OK with being traditional. Perhaps a little old-fashioned. We talk about random acts of kindness as if it were only a bumper sticker. Why be kind? Why help others? Why give? Not just this time of year, but as a part of who we are. Part of who we should be. Part of who we need to be to change the world.

Sure, maybe the homeless man will spend it on a beer – but maybe not. Yes, it’s true that someone may be embezzling money from the battered women’s shelter – but maybe they are not. What if – yes what if, each of us shows a little faith and kindness to others less fortunate – those who have so little. What if taking a moment to care pays more dividends than we care to believe; more than we know. The real inconvenient truth is that we often use failure as an excuse not to give or to help others who have less. Think about every person we honor because of their selfless dedication to helping others. We admire them not because they gave; we honor them because they never gave up. They don’t seek rewards or even recognition. They keep going, even when it seems impossible to make a difference. Our heroes often have little themselves, yet they give unselfishly to others. Adversity. Challenge. Humiliation. Their belief in helping others is steadfast. Beat them down, they get up and go on.

This year, we have been confronted by unspeakable images of horror – man’s inhumanity to man. I feel helpless to comprehend the tragedy in Newtown, Connecticut. Helpless against unimaginable sorrow. But we have also seen people caring for each other. As a community. The prayer vigils and outpouring of love and support in the hearts and minds of so many across the nation and the globe continues unabated. Don’t stop. When the cameras leave and the news coverage moves on – there are people who will still need your help, your love and support. We have seen or heard about natural disasters with unparalleled fury. But we have also seen the firefighters, ambulance personnel, emergency medical services, and so many others routinely risk their lives, no matter what the conditions, to rescue and save the lives of others – far too often at the risk of their own. And then there are the small acts of kindness, caught on camera unbeknownst to the good Samaritan – the image of a New York City police officer, giving shoes to a homeless man, shoes bought with his own hard-earned money.

Each of us should make a little more of an effort to help others. To give to those who are less fortunate, the thoughtfulness and help we would hope someone might give us if we needed it. Yes, even if we are not sure they will use it wisely or turn their lives around. Yes, even if we are disappointed or skeptical. Even if we are sure they won’t appreciate it. Have a little faith – this isn’t about religion. It is about tolerance and understanding and a willingness to accept that we may not know why some people are what they are, but we can help nonetheless. I don’t pretend to be a paradigm of virtue. I have walked past my share of homeless people, huddled in corrugated cardboard boxes, pretending to look the other way – avoiding their eyes so I’m not shamed into giving them a few dollars. But as I realized last year and each year that goes by, I spend more on a newspaper subscription or Starbucks or the new smart phone, than I am willing to give someone who is hungry or cold or alone . . . . . and I feel terrible. So now I’ve started to go back to those homeless, often helpless people – maybe not often enough, but when I do I feel better. It feels right. I like that feeling. Stupid me, I still don’t do it often enough. My father did, rest his soul. I should have learned from him. Hopefully it’s not too late. So I’m starting to pay more attention to what he never said, but always did. I’ve gotten better – but only a little. In this age of digital miracles, when communicating across the globe is as simple as the push of a few buttons, let’s not forget the miracles that happen face to face, person to person. The gift of kindness and compassion; of charity and community; of helping the needy and giving hope to the hopeless. This coming year, I will try again to be better. I will keep trying. I will also try to keep in touch in a more meaningful way and take the time that you need. Time is a precious gift. Something I value when it is given to me.

I also value the diversity of wonderful people I’ve come to know and care about over the years and throughout the world – you know who you are, and if you aren’t among those I’ve met, just send a signal and say "hello" – please. There is so much I still have to learn from each of you and so much we have to share with each other. So to family and friends, colleagues and acquaintances, clients and adversaries, those who know me far too well and those who don’t have a clue how they got on this email list, let me close by wishing each of you health, peace, comfort and joy this holiday season and in the year ahead. May those who love you come closer and those who dislike you forget why. Most of all, I wish all of you the extraordinary feelings of inner warmth and goodness that come with helping another . . . maybe changing another person’s life for the better . . . a person to whom you owe nothing and who expects nothing from you. Think what the world would be like if we all did that.

Warm regards for the holidays and best wishes for the new year. Sincerely,

– Joe Rosenbaum