Libya Loses Cybersquatting Case

 (Photo credit: Wikipedia)

In his 19-page decision last week in Libya & Embassy of Libya v. Ahmad Miski (Case No. 1:06-cv-02046), United States District Court for the District of Columbia Judge Reggie Walton sided with a domain name-holder, ruling that the North African nation failed to show "Embassy of Libya" or "Libyan Embassy" were entitled to trademark protection.

As reported by Legal Times, Libya sued Miski, executive director of the Washington-based Arab American Chamber of Commerce, for trademark infringement [15 U.S.C. secs.1125(a)(1)A,(B)] and violation of the AntiCybersquatting Consumer Protection Act [15 U.S.C. sec. 1125(d)]. The defendant in 2002 and 2003 purchased four domain names that combine the words embassy and Libya.

Judge Walton noted that the plaintiffs never registered the Embassy of Libya name for trademark protection, and failed to present evidence that the public was confused by the defendant's Web sites. Judge Walton held that the embassy's name was descriptive, rather than suggestive, and therefore, did not merit trademark protection. Descriptive names merely describe the essence of an entity, whereas suggestive names require consumers  to work harder to understand what the name or mark entails.

In ruling that Miski had done nothing illegal, Judge Walton wrote that the Libyan embassy also failed to show continuous use of its mark because it was unable to offer services during the 18 years that the U.S. imposed sanctions on the nation then ruled by Muammar Gaddafi, who was deposed and killed in a 2011 insurrection.

If you want to do business online with the Embassy of Libya, you have to go to www.libyausaembassy.com.

Barry Diller Sues BarryDriller

(Photo credit: Wikipedia)Pity the docket and courtroom clerks at the United States District Court for the Central District of California, who are trying not to confuse separate Barry Diller and BarryDriller lawsuits.

A little more than a week after a copyright and trademark infringement suit, Fox Television Services, Inc. et al. v. BarryDriller Content Systems Plc (Case No. 12-cv-6921), was filed in the federal court in Los Angeles (see "TUOL" post 8/14/12), along comes Barry Diller v. BarryDriller Content Systems Plc (Case No. 12-cv-7200). Diller, one-time head of Paramount Pictures and Fox and an investor in Aereo, a rival of the defendant that also streams broadcast television signals on Internet-enabled devices, has sued the defendant, which is owned by Alki David, for cybersquatting, alleged violation of his right to publicity, and for trademark abuse under the Lanham Act [15 U.S.C. sec. 1125].

As reported in The Los Angeles Times, THR, Esq. CNN.com and elsewhere, Diller accuses David's company of implying a false endorsement by him by adopting the name "BarryDriller."  The Complaint alleges the defendant is using his name in its business to: "(1) associate their service with Plaintiff and (2) mislead the public into believing that Defendants' service has been judicially sanctioned." The Complaint immodestly refers to the plaintiff as one of the best-known business leaders in the U.S. Diller is asking Judge Margaret M. Morrow for punitive damages and injunctive relief against the Defendant.

The concerned staff of "TUOL" hopes for the sake of the court's personnel that no litigation ensues over the Estate of comedian Phyllis Diller, as "TUOL" already has had its fill-er of Diller & Driller lawsuits.

Burberry Scores a Bogie in Federal Suit

(Photo credit: Wikipedia)Courtroom lawyers are accustomed to fighting in the trenches, but battling over trenchcoats is unusal.

In the United States District Court for the Southern District of New York, Judge Paul G. Gardephe is presiding over Burberry Ltd. & Burberry Group, PLC v. Bogart, LLC (Case No. 1:2012-cv-03491) in which the clothier is seeking declaratory judgment in a right of publicity and trademark infringement [15 U.S.C. sec. 1125] action involving the entity that owns the rights to Hollywood screen legend Humphrey Bogart.

As with seemingly every legal dispute nowadays, it all begins with Facebook. Burberry's Facebook page includes an historical timeline featuring famous people wearing its line of clothing, including actor Robert Mitchum, decked out in a trenchcoat worn in his tough-guy role from Out of the Past (1947) and actor Tyrone Power similarly attired from Razor's Edge (1946).

Currently missing is Humphrey Bogart wearing a trenchcoat that no doubt set Ingrid Bergman's heart aflame in Casablanca (1942). According to the plaintiffs' complaint, Bogart LLC allegedly fired off a cease & desist letter and sought damages for common law claims, right to publicity, a cousin of an invasion of privacy appropriation claim; and trademark infringement.

Presumably, the defendant's position would be that the clothier is capitalizing on Bogie's image without permission and that consumers would be confused over whether the since-removed image of the actor from the timeline constituted an endorsement of the product. As there is no specific line of "Bogiecoats" or ads marketing the actor, it would appear Burberry is asking the court for a ruling that it is within its First Amendment rights to acknowledge on its Web site that Bogart wore a trenchcoat in films, including Casablanca.

Under New York's right to publicity law, the nation's oldest, dating back as far as the Roberson case in 1902, a famous individual's image and persona may only be exploited commercially as a commodity during the famous person's lifetime. In California, however, where Bogart LLC is based, the right of publicity protection extends beyond the celebrity's death, so the case is no cakewalk for Judge Gardephe.  Fun fact: both Mitchum and Bogart donned their trenchcoats to play Raymond Chandler's detective creation Philip Marlowe in screen versions of The Big Sleep, though some 32 years apart. You're welcome.

Litigatin' Glitterati: George & Julia Bring Privacy Suit

In George Clooney & Julia Moder, known professionally as Julia Roberts v. Digital Projection, Inc., Beyond Audio, Inc. &  Does 1-20 (Case No. SC116851) filed last week in Los Angeles County Superior Court, two of Hollywood's most elite stars sued two companies for allegedly misappropriating their images.

The Hollywood Reporter's THR, Esq. blog reported exclusively on the filing of the 14-page complaint that includes counts alleging trademark infringement under the Lanham Act [15 U.S.C. sec. 1125], misappropriation [Cal. Civ. Code sec. 3344] and negligence against Georgia-based Digital Projection and Beyond Audio, a Canadian company.  Clooney and Roberts are seeking compensatory damages, triple damages, punitive damages, attorneys' fees and injunctive relief against the defendants for their purported use of the actors' images in advertising, marketing and promotional materials.

Actors need to protect their rights of publicity ("my face is my fortune" and all that), so the star-struck staff of "TUOL" is sympathetic to the plaintiffs. Also, anything that keeps George & Julia too busy to consider an Ocean's 14 sequel can't be a bad thing.

Paul Likes Courts, if not Government; Sues Anonymous Webbies for Libel

Image by Getty Images via @daylifeLibertarian  GOP presidential candidate Ron Paul may frown on government generally, though using federal court to litigate against 10 anonymous online supporters who uploaded attack videos on his behalf, but without his permission, apparently doesn't bother him.

Paul's campaign this week in San Francisco filed suit in the United States District Court for the Northern District of California seeking damages and injunctive relief against the zealous unidentified boosters. The complaint in Ron Paul 2012 Presidential Committee, Inc. v. John Does 1-10 (Case No. 12-cv-0240) includes counts alleging libel, defamation, false advertising and false designation of origin in violation of the Lanham Act [15 U.S.C. sec. 1125(a)].

As reported by paidContent.org., Paul's organization faces the high hurdle of proving actual malice in its defamation claim and daunting odds pursuing its trademark infringement count, but the candidate and his organization have been nothing if not surprising thus far in overcoming expectations.

The videos at issue in the lawsuit, entitled NHLiberty4Paul, disparaged now-former GOP presidential hopeful Jon Huntsman, taking aim at the former Utah Governor and U.S. Ambassador to China's  Mormon faith and connections to China. The Libertarian Paul's dogmatic devotion to personal freedom and government restraint is likely to be tested by the litigation once subpoenas targeting Internet Service Providers to identify the John Doe defendants begin flying out of the plaintiff's camp.

UPDATE: 'Twittersquatting' Plaintiff Drops Suit

Image via CrunchBaseLife settlement company Coventry First has withdrawn its subpoena to Twitter and voluntarily dismissed its lawsuit against anonymous tweeters (see "TUOL" 6/15/11), the ABA Journal Law News Now blog reports.

The U.S. District Court for the Eastern District of Pennsylvania case,  Coventry First, LLC v. John Does 1-10 (Case No. 2:11-cv-03700) alleged violations of the Lanham Act and the Anti-Cybersquatting Consumer Protection Act, along with common law claims of unjust enrichment and unfair competition, arising from sarcastic false tweets under the tag @coventryfirst.  Coventry First said it decided to drop the case after counsel for Public Citizen, which had sought to quash the subpoena to Twitter, revealed the pseudonymous tweeter was not an industry competitor. Public Citizen argued the plaintiff erred procedurally by serving Twitter with a subpoena before seeking court permission via motion to conduct early discovery.

More likely, dismissing the case without prejudice  is a face-saving measure by Coventry First, which faced an uphill battle supporting its claim that the fake tweets amounted to trademark infringement that might confuse consumers.

'Twittersquatter' Sued for Trademark Infringement

Image via WikipediaIn Coventry First LLC v. John Does 1-10 (Case No. 2:11-cv-03700), filed this week in the U.S. District Court for the Eastern District of Pennsylvania, a life settlement industry leader is suing anonymous pranksters who have false-Tweeted messages under the "@coventryfirst" moniker that hope for mass disasters to occur.

As reported by Reuters news service and PaidContent.org, Coventry First's complaint includes claims alleging unjust enrichment, trademark dilution, unfair competition, violation of the Anti-Cybersquatting Consumer Protection Act [15 U.S.C. sec. 1125(d)] and trademark infringement under the Lanham Act [15 U.S.C. sec. 1125(a)]. The plaintiff is going after the anonymous posters for approximately 14 offending Tweets.

Coventry First LLC is a player in the life settlement field, in which companies re-sell life insurance policies to investors who pay the premiums and collect the policy proceeds when the insured parties die. The unidentified Tweeters have been sending messages tinged with sarcasm to their approximate 10 followers noting that Coventry and its investor/clients maximize their profits from insured individuals dying before too many premium payments have been made.

Included among the Tweets that have gotten under the skin of the plaintiff are: "Horrible weekend, No plane crashes (they make a lot of money), no earthquakes," and "the faster people die, the more coventry first profits! not even cig companies want their customers to die as fast." 

Among the significant hurdles Coventry First LLC must overcome to prevail are showing that consumers are confused by the faux-Tweets to support its Lanham Act (trademark infringement) claim, a daunting task given the obviously jokey nature of the fake messages.  Also, the anti-cybersquatting statute arguably does not contemplate Twitter user names, but rather, "second level" domain names. Nor is it clear how the plaintiff plans to show the John Does at issue are commercially benefiting from the fake Twitter account.

It will be worth tracking whether this case adds anything to social media jurisprudence or if it just akin to Coventry First yelling out the windows of its corporate headquarters: "Get off of my lawn!"

Federal Judge Stays Order Identifying Anonymous Wikipedia Editors in Trademark Infringement Case

Image via WikipediaUnited States District Court Judge for the District of Colorado Christine Arguello this week stayed a magistrate's order that would have required  Internet Service Provider Skybeam to disclose the identities of anonymous Wikipedia editors who claimed Facconable USA Corporation sympathized with a terrorist organization.

In Facconable USA Corporation v. John Does 1-10 (Case No. 1:11-cv-00941-CMA-BNB), the plaintiff, part of the M1 Group owned by Najib Makati, Lebanon's Prime Minister, sued anonymous posters who submitted an entry on the company's Wikipedia page alleging that Facconable USA Corp.'s parent M1 Group "is purported to be a strong supporter of Hezbollah," according to Courthouse News Service.  The plaintiff's 9-page complaint includes counts alleging a trademark infringement violation of the Lanham Act [15 U.S.C. sec. 1125(a)], trade libel and violation of Colorado's Consumer Protection Act [C.R.S. sec. 6-1-101 et seq.].

A magistrate granted plaintiff's request for expedited discovery, ordering ISP Skybeam to reveal the IP addresses identifying the anonymous posters by June 3.  Skybeam, assisted by Public Citizen, sought judicial review of the denial of their motion for a protective order.

Judge Arguello granted a stay of the magistrate's order, relying on four factors: 1)the likelihood of success of the ISP's appeal; 2)whether irreparable harm would occur if the stay were denied; 3)the absence of harm to opposing parties if the stay were granted and 4)the risk of harm to the public interest. Judge Arguello concluded the anonymous posters' First Amendment rights to speak anonymously would be compromised if the magistrate's order went forward, whereas the only harm to the plaintiff in allowing the stay would be a slight delay of its litigation.

Well, doggies!: Elly May Clampett Is A-Suin' Dollmaker

Image by trainman74 via FlickrThe U.S. District Court for the Middle District of Louisiana is a long way from Beverly Hills, but this week, actress Donna Douglas, who starred as sexy, but naive Elly May Clampett for 274 episodes of CBS' cornpone comedy classic The Beverly Hillbillies (1962-1971), filed suit against El Segundo, Calif.-based Mattel for marketing an "Elly May Barbie" doll without her permission.

The case before U.S. District Court Judge Frank J. Polozola, Douglas v. Mattel (Case No. 3:11-cv-00297) includes claims alleging trademark infringement, violation of the Lanham Act [15 U.S.C. sec. 1051 et seq], violation of right to publicity and appropriation against the toymaker for including a photo of Douglas in character in its packaging. Her suit alleges the defendant made unauthorized use of her name, image and likeness of a "character closely identified with her."

Mattel created a series of "nostalgia dolls" from beloved tv series besides Elly May Clampett, including the late Elizabeth Montgomery's Samantha from Bewitched and Barbara Eden's Jeannie from I Dream of Jeannie. What, no Alice Kramden?

If the 77-year-old Douglas ultimately prevails, she should be able to purchase a lot of vittles.

UPDATE: Former Fla. Gov. Crist 'Byrned' by Copyright Infringement Settlement

Image by Getty Images via @daylifeFormer Florida Gov. Charlie Crist returned to the scene of the crime, as it were, appearing in a YouTube video apologizing to former Talking Heads frontman David Byrne as part of a settlement of the latter's copyright infringement suit against Crist for his campaign's unauthorized use of  Talking Heads hit song Road to Nowhere in a YouTube video attacking Crist's 2010 U.S. Senate opponent and eventual victor Marco Rubio (see "TUOL" post 5/26/10).

Byrne sued  Crist for copyright infringement and violation of the Lanham Act in the U.S. District Court for the Middle District of Florida (Case No. 8:10-cv-1187-T26) in May 2010, seeking $1 million in damages for the unauthorized use of his band's song.  Beyond the recorded apology, the terms of the parties' settlement were not disclosed.

It appears the plaintiff was successful in his goal, to borrow another Talking Heads song title: Give Me My Name Back. 

Federal Judge Says Twitter Impersonator May Be Liable to Real Tweeter

Image via WikipediaBird impressions may make you the life of some parties, but impersonating a Tweeter could expose you to liability under federal law, according to a judge in the U.S. District Court for the Northern District of Illinois.

As first reported by MediaPost.com, Judge Amy J. St. Eve declined to dismiss claims of violation of right of publicity and violation of the Lanham Act [15 U.S.C. sec. 1051 et seq.] in a case brought by an employee against her boss whom she alleges sent Tweets from her account while she was incapacitated. Construing the facts most favorably for the plaintiff in weighing the defendants' motion to dismiss, Judge St. Eve said the plaintiff has alleged "a commercial injury based on defendants' deceptive use of her name and likeness."

As marketing director for Chicago-based Susan Fredman Design Group, Jill Maremont heavily relied on social media to promote the interior designer, posting updates on Twitter concerning local designers and interior decorating and writing a blog about the company. Maremont suffered a brain injury after she was hit by an automobile and was incapacitated for roughly nine months, unable to Tweet because it made her dizzy.

While hospitalized, Maremont learned that her Twitter account was still being updated. She sued her employer, alleging her name and image were being used in a misleading way. The defendant counters that because the Twitter account was being used to promote her company, at most, she did the plaintiff's job without her permission.

Besides the claims raised in the case, an Internet law specialist contacted by MediaPost.com suggests that the defendant might face liability for privacy invasion under the federal Stored Communications Act [18 U.S.C. secs. 2701-2712].

Fake Celebrity Twitter accounts are commonplace, but this uncharted territory is on its way to being mapped by cases such as this.

Godzilla Tries to Stomp Honda in Court

Image via WikipediaTruth was stranger than science fiction this week in the U.S. District Court for the Central District of California where Godzilla was unleashed against an automaker.

In Toho Company, Ltd. v. American Honda Motor Co. et al. (Case No. 2:11-cv-01013-SVW-CW), the plaintiff, who distributed Godzilla (1954) and holds the rights to the famous Tokyo-trasher, sued Honda for trademark infringement. As reported by the Hollywood Reporter legal Web site, www.thresq.com, the plaintiff claims the defendant failed to obtain permission before having Godzilla make a cameo appearance in a Honda Odyssey ad that aired during the NFL playoffs last month.  According to Toho, Godzilla's stomp-on boosted sales of the minivan by 42 percent.

Ironically, the original Godzilla, which was released in the U.S. in 1956 with some added-in footage featuring "Perry Mason" star Raymond Burr as a reporter (who outweighed Godzilla), was directed and co-written by Ishiro Honda, no relation to the car maker, but evidence that Godzilla and Honda have a history.

Hulkster in Trademark Smackdown with Post Foods

Image via Wikipedia

In Terry Bollea v. Post Foods LLC et al (Case No. 8:10-cv-01161-VMC-TGW) filed last week in the U.S. District Court for the Middle District of Florida, 56-year-old former World Federation Wrestling champion Hulk Hogan is grappling with Post Foods, maker of  Cocoa Pebbles cereal, concerning a tv commercial over which Hogan (nee Bollea) alleges trademark infringement.

The commercial stars characters from the Flintsones fighting a blond,  muscular, mustachioed wrestler named "Hulk Boulder."  The wrestler dispatches Fred Flintsone and his neighbor pal Barney Rubble, but gets a whuppin' from Bam-Bam, Barney's steroidal child (though "TUOL" always suspected from Bam-Bam's features that he was the product of Fred and Betty Rubble making the "bed rock," so to speak). According to Bollea's suit, the Hulkster knockoff is depicted post-fracas as "humiliated and cracked into pieces with broken teeth with the closing banner, 'Little Pieces...Big Taste!'"

According to the lawsuit filed in Tampa, Post never sought or received permission from the plaintiff to use his likeness in the commercial. Bollea alleges he initially wrestled professionally under the name "Hulk Boulder" before WWF impresario Vince McMahon suggested the Irish moniker Hogan. The plaintiff further claims Post ignored his complaints last August and continued to air the commercial.

Hogan promotes his own line of food products, including Hogan Energy Drink and Hulkster Burgers, microwaveable chicken sandwiches and hamburgers sold at Walmart (Whole Foods for the overalls set). Hogan's seeks damages for the "unauthorized and degrading depictions in the Cocoa Smashdown advertisements."

"TUOL" doubts the animated depiction of the Hulkster in the Cocoa Pebbles ad could be more degrading than Hogan's own non-nutritious celluloid efforts, Suburban Commando and Mr. Nanny.

GOP Campaign Ads: Stick to Country & Western & Andy Williams

Cover of Little Creatures

David Byrne of Talking Heads,  the New Wave band that thrived in the '70s and '80s, is suing Florida Gov. Charlie Crist for allegedly appropriating the band's 1985 single Road to Nowhere in a campaign attack ad without permission or copyright licenses, according to Billboard magazine.

The suit filed in Tampa in the U.S. District Court for the Middle District of Florida (Case No. 8:10- cv-1187-T26(MAP)) demands $1 million in damages for Crist's alleged use of the song in a YouTube attack ad against his then-GOP  primary rival for the U.S. Senate race, Marco Rubio. Crist has since not only abandoned the Talking Heads tune, but also the GOP, and is running for Senate as an independent.

The suit alleges copyright infringement and also includes a violation of the Lanham Act count for purportedly implying Byrne's endorsement of Crist's candidacy. Coincidentally, Byrne's attorney also successfully sued the GOP in the U.S. District Court for the Central District of California for using Jackson Browne's Running on Empty during Sen. John McCain's presidential run without permission (Case No. cv08-05334) [see "TUOL" post 7/21/09].


Road to Nowhere appeared on the 1985 album Little Creatures, the band's sixth album. Other Talking Heads song titles No Compassion, Artists Only, and Give Me Back My Name, seem more apropos regarding the lawsuit.

GOP Gets 'Folked'-- Settles Jackson Browne Suit

Image by Getty Images via Daylife

Jackson Browne has settled his lawsuit against Sen. John McCain, the Republican National Committee and the Ohio Republican Party involving their use of his hit song "Running on Empty" during the 2008 presidential campaign without his permission.

Jackson brought suit in the U.S. District Court for the Central District of California on August 14, 2008, alleging copyright infringement, violation of the Lanham Act by implying his endorsement, and violation of his right of publicity through the use of his voice in a political advertisement (Case No. cv08-05334). In February, the Court rejected the defendants' motion to dismiss the suit, which they claimed chilled free speech and invoked the "fair use" exception to the copyright laws.

Neither side disclosed the settlement amount received by Browne, but the defendants issued an apology, which said in part: "We apologize that a portion of the Jackson Browne song 'Running on Empty' was used without permission."

The use by political campaigns of copyrighted music delves into murky legal ground delineating the respective reach of commercial speech and political speech. Browne, a political activist known for his opposition to nuclear power, insisted his suit was not a partisan attack against the GOP, but rather, an effort to enforce the intellectual property rights of artists.

Given the outcome of the election and the party's nominee, the GOP should have bypassed "Running on Empty" and selected from Jackson Browne's discography "The Pretender," " Redneck Friend," or "Doctor, My Eyes."