9th Cir. Trademark Ruling Favors 'The Great Pretender'

 (Photo credit: Wikipedia)

The United States Court of Appeals for the Ninth Circuit this week in Herb Reed Enterprises LLC v. Florida Entertainment Management Inc. (Case No. 12-16868) reversed a Nevada trial court ruling that barred vocalists from using the name of '50s & '60s powerhouse R & B group, The Platters, without permission.

The three-judge appellate panel reversed and remanded the trial court's injunction in the trademark infringement suit, holding: "the likelihood of irreparable harm must be established--rather than presumed as under prior 9th Circuit precedent--by a plaintiff seeking injunctive relief in the trademark context."

The original Platters, featuring Herb Reed, Tony Williams, Paul Robi, David Lynch and Zola Taylor, churned out numerous hits suitably descriptive of the present litigation, including Only You, I'm Sorry, Helpless, You're Making a Mistake and It Isn't Right.  Band Manager Buck Ram assumed the rights to The Platters name in the late '50s under an entity called Five Platters Inc., the 9th Circuit decision noted, which in 2009 were transferred to the defendant company owned by Larry Marshak.

Lawsuits challenging the ownership rights of The Platters name were brought in California and New York reached opposite conclusions, with the former siding with original band member plaintiffs and the latter concluding Five Platters Inc. ("FPI") was the legitimate trademark holder before the FEMI acquired the rights.

FPI sued Herb Reed in Florida in the '80s and the case settled, with Reed retaining the right to perform under the name Herb Reed and The Platters. After his death, Reed's company was granted an injunction by a Nevada court that agreed FPI's use of The Platters was confusing to consumers eager to see Herb Reed and The Platters.

In overturning the injunction, the 9th Circ. cited two recent Supreme Court decisions that concentrated on the "likelihood of irreparable harm" standard. So much for The Platters' 1959 hit's claim: One in a Million.

In Legal 'Twist,' Federal Judge Keeps Chubby Checker Trademark Suit Alive

Cover of Chubby Checker

"Let's Twist Again," is the battle cry of 71-year-old Rock 'n Roll legend Chubby Checker after United States District Court for the Northern District of California Judge William H. Alsup last week ruled Checker (nee Ernest Evans) may pursue a $500 million trademark infringement claim against defendants Hewlett-Packard and Palm, Inc.

The case, Ernest Evans et al. v. Hewlett Packard Company & Palm, Inc. (Case No. 3:13-cv-02477-WHA), was brought in the San Francisco federal court in February 2013, by Checker over a smart phone app called Chubby Checker that purportedly enabled users to gauge a man's genital size based on his shoe size.

The South Carolina native best known for early '60s hits including The Twist, Pony Time and The Hucklebuck, sued out of concern his stage name would be forever-linked to obscene images, according to a New York Daily News article written last February. The defendants deny any involvement in the creation of the app allegedly developed by Magic Apps, but removed it from HP and Palm-hosted sites in September 2012.

The lawsuit claims the plaintiff received no compensation for the app's alleged unauthorized use of the Chubby Checker moniker and blames the defendants for allegedly endorsing the app and misleading consumers.  Both sides are actively engaged in settlement negotiations, according to a joint case management status report filed by the parties this month with the court.

The devoted staff of "TUOL" is tempted to exercise its puerile sense of humor by pointing out Checker's recordings include Limbo Rock, The Fly and Birdland, but instead, will just put on its Blue Suede Shows (size 18, app lovers) and walk away from the whole thing.

Costume Bawl: Times Sq. Furrry Panhandlers Pose 1st Amendment Problem

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Times Square street performers cloaked in familiar costumes and the First Amendment are upsetting tourists and unflappable New Yorkers with aggressive panhandling and antisocial behavior, the Associated Press reports.

Dora the Explorer, the Statue of Liberty, Super Mario, Mickey & Minnie Mouse, Elmo, Cookie Monster and Spider-Man are among the Times Square denizens who pose for photos in hopes of receiving payment. Unfortunately, according to the AP story, in recent months a Cookie-Monster costume-wearing 33-year-old Osvaldo Quiroz-Lopez was charged with assault, child endangerment and aggressive begging for allegedly pushing a two year old, while someone dressed as Elmo was not tickled when he was ordered to perform two days of community service for disorderly conduct that included an anti-Semitic rant. Who knew Sesame Street was such a tough neighborhood?

City councilors are hamstrung because they perceive folks merely walking around in a costume in Times Square as First Amendment protected activity. Indeed, court challenges halted police who were ticketing street performers who lacked proper tax documentation. Police can issue tickets carrying $60 fines if the furry posers block traffic, sell merchandise without a permit or demand money for being photographed, so there is some recourse if, for instance, Mickey & Minnie start acting Goofy. Still, any enforcement must be content-neutral to withstand a First Amendment challenge.

Neither Disney nor Sesame Street has given its blessings to the street performers for donning costumes that resemble the characters whose ownership rights belong to the companies, but as a practical matter,  mobilizing big-ticket law firms to round up the decidedly not deep-pocketed street performers for a trademark infringement suit isn't economically feasible.

The hard-working staff of "TUOL" grew up in the metropolitan New York area and has seen characters a lot scarier than Dora the Explorer roaming around in Times Square.  As the saying goes, freedom of speech comes at accost.

Timelines Trademark Suit Marches On Toward Trial

Image via CrunchBase

Trial is slated for April 22 in Timelines, Inc. v. Facebook, Inc. (Case No. 11-cv-06867) as United States District Court for the Northern District of Illinois (Eastern Division) Judge John W. Darrah this week denied Facebook's summary judgment motion in the trademark and copyright infringement suit.

According to reports by Bloomberg News and PCWorld.com, Judge Darrah wrote: "At this stage in the proceedings, it is not unreasonable to conclude that as to this group of users, 'timeline(s)' had acquired a specific meaning associated with Plaintiff."

The six-year-old Chicago-based Timelines, Inc. unveiled Timelines.com in 2009 and registered trademarks Timelines.com and Timelines for its site that enables users to organize sporting events, historical occurrences and scientific advances, among other events, chronologically. The plaintiff sued Facebook in 2011 after the Menlo Park, Calif.-based social network created a profile redesign dubbed Timeline that chronologically organizes users' personal history.

Facebook filed a summary judgment motion, offering a fair use defense to the infringement claims and contending that the plaintiff's registered marks were generic and not descriptive enough to warrant federal protection. Judge Darrah noted that the plaintiff had more than 1,000 users and had invested millions of dollars in its Web site in ruling that Facebook "has failed to demonstrate, as a matter of law, that the marks are generic."

Mark of the 'Z' Meets Mark of the 'C' in Zorro Suit

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Zorro ("The Fox"), the fictional heroic alter ego of foppish California nobleman Don Diego de la Vega battling oppressors in the Spanish colonial era, has entertained readers and viewers in stories, movies and television for nearly a century.

This month, the swashbuckling hero portrayed in film by actors including Douglas Fairbanks Sr., Tyrone Power, George Hamilton and Antonio Bandaras, and in a Disney tv series by Guy Williams, starred in a lawsuit filed in the United States District Court for the Western District of Washington. In Robert W. Cabell v. Zorro Productions, Inc. et al., the author of a musical based on the swordsman filed a complaint seeking declaratory judgment, cancellation of federal trademarks, injunctive relief and monetary damages.

Cabell alleges his 1996 musical tribute, Z--The Musical of Zorro, is based on Zorro creator Johnston McCulley's The Curse of Capistrano (1919) and Douglas Fairbanks Sr.'s silent classic The Mark of Zorro (1920).  According to his Complaint, reported by Courthouse News Service and THR, Esq., Cabell secured licensing for performance of his musical in Germany (nothing like multiple stabbings and shootings to get German audiences whistling as they leave the theater), but was purportedly confronted with threats of litigation by Zorro Productions, Inc. head John Gertz.

In support of its claim that Zorro has entered the public domain, Caball's Complaint cites a federal judge's footnote in a 2001 case from the United States District Court for the Western Division of the Central District of California, Sony Pictures v. Fireworks Entertainment (156 F.Supp.2d 1148 (2001)), that states: "It is undisputed that Zorro appears in works whose copyrights have already expired, such as McCulley's story, 'The Curse of Capistrano' and Fairbanks' movie, 'The Mark of Zorro.'"

The plaintiff's Complaint alleges the defendants have "fraudulently obtained federal trademark registrations" for various Zorro marks and "built a licensing empire out of smoke and mirrors." Long-time favorite fictional heroes, from Tarzan (see "TUOL" post 2/17/12) to Sherlock Holmes (see "TUOL" post 2/19/13) have been the subject of intellectual property lawsuits in recent times.

Rather than consume precious court time, "TUOL" suggests the parties settle their dispute with epees--the Z-Man would have wanted it that way.

Intellectual Property Infringement for Dummies

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United States District Court for the Southern District of New York Judge Laura Taylor Swain this week in John Wiley & Sons, Inc. v.  Carina Bowers et al. (Case No. 12-civ.-0540-LTS) entered a default judgment and granted a permanent injunction against two individuals who downloaded ebooks on Biztorrent.

According to a post on the Torrentfreak.com blog, the defendants were assessed $7,000 in damages apiece for copyright and trademark infringement for downloading the plaintiff's "For Dummies" books, specifically, Photoshop CS5 All-in-One for Dummies and Herb Gardening for Dummies.

John Wiley & Sons aggressively is pursuing alleged infringers, having filed more than a dozen Biztorrent-related lawsuits against multiple defendants since 2012. Hacking for Dummies and Cooking Basics for Dummies are among other ebook titles allegedly illegally downloaded.

Libya Loses Cybersquatting Case

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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.

'Streaming Mad' Fox Files Copyright & Trademark Suit Against BarryDriller

(Photo credit: Wikipedia)An offensive against television streaming services was launched last week in the United States District Court for the Central District of California via a four-count, 17-page complaint, Fox Television Services, Inc. et al. v. BarryDriller Content Systems PLC (Case No. 12-cv-6921), that alleges copyright and trademark infringement.

According to accounts by CNN Money and THR, Esq., the plaintiffs claim the signal of  KTTV, Fox's Los Angeles affiliate, is being streamed by the defendant without permission. The complaint alleges the defendant is capturing live broadcast programming and then copying the programming and streaming it over the Internet where the public may view it on Web-enabled devices.

The plaintiffs are seeking monetary damages and injunctive relief against the defendant streaming service, which set up shop on August 7 under the aegis of Alki David. BarryDriller charges users $5.95 monthly to transmit the free tv signals to subscribers' personal antennas.

On the East Coast, free tv broadcasters and content owners are waging war against the digital  tv streaming service Aereo (one of whose financial backers is media maven Barry Diller). A New York judge rejected an injunction request against Aereo in a case that turns, in part, on the issue of whether Aereo's one-on-one streaming transmittal to an individual's miniature antenna constitutes public broadcasting.

UPDATE: Federal Court Knocks Out Facebook Trademark Suit Against Foreign Porn SIte

(Photo credit: Wikipedia)As noted in the previous post, Facebook has been going through a tough stretch. Let it never be said that The Unruly of Law is above piling on and kicking a litigant when it's down.

United States District Court for the Northern District of California Judge Jeffrey White last week dismissed Facebook's trademark infringement suit against a Norwegian adult Web site for want of personal jurisdiction. In Facebook, Inc. v. Thomas Pedersen & Retro Invent (Case No. 3:10-cv-04673), Facebook sought entry of a default judgment, attorneys' fees of more than $80,000, litigation costs exceeding $13,000 and a permanent injunction against the defendants, operators of Faceporn, the self-described "number one socializing porn and sex network."

In October 2010, Facebook initially sued Faceporn in a 10-count complaint, alleging, among other claims, trademark infringement and trademark dilution. [See "TUOL" post 11/3/10.] According to the paidcontent.org Web site, Facebook, which owns 10 trademarks and has another 17 pending, is dogged in its pursuit of companies that deign to use face or book in their names.

Judge White adopted the recommendation of U.S. Magistrate Nathaniel Cousins's 10-page ruling that Norway, not California, would be the proper forum for Facebook to pursue its claims because the defendants were not subject to personal jurisdiction by the court. The court relied on the three-pronged "effects" test to determine personal jurisdiction as set forth in the Supreme Court decision in Calder v. Jones, 465 U.S. 783 (1984), which requires the plaintiff to show the defendant: 1)committed an intentional act, 2)expressly aimed at the forum state, 3)causing harm the nonresident defendant knew would likely be suffered in the forum state.
Applying Calder, Judge White said Facebook failed to show Faceporn's California viewer base (an estimated 250 users) was an integral part of the defendant's business model and profitability and thereby, establish personal jurisdiction. The court did not see Faceporn as being in direct competition with Facebook.

At times such as these, at least Facebook has millions of "friends" on whom it can lean.

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.

Burroughs Co. Sues Comic Book Publisher that Apes Tarzan

Image via WikipediaIn Edgar Rice Burroughs, Inc. v. Dynamic Forces Entertainment, Inc. et al., filed this week in the United States District Court for the Southern District of New York, the family-owned business that holds the copyrights to Edgar Rice Burroughs' literary icons, Tarzan and John Carter, has sued a comic book publisher and entertainment company for publishing unauthorized works based on the characters.

Defendants Dynamic Forces Entertainment and Dynamite Entertainment have yet to respond to the 33-page complaint that includes 10 counts, ranging from claims of trademark infringement [15 U.S.C. sec. 1114(1)] and unfair competition [15 U.S.C. sec. 1125(a)] to copyright infringement and deceptive trade practices. As reported by the Law Blog of The Wall Street Journal (http://blogs.wsj.com/law/), the suit initiated by ERB, Inc., a company created by the author in 1923, 27 years before his death, that is owned principally by his grandchildren and great-grandchildren, alleges the defendants' Lord of the Jungle and Warlord of Mars comic book series infringe on Burroughs' Tarzan the Ape Man and John Carter of Mars. ERB is based in Tarzana, California (no, seriously).

Dynamite Entertainment, which was founded in 2005, publishes licensed franchise comic book series adaptations based on famous literary figures, including Sherlock Holmes, Dracula and Zorro. Time will tell whether the defendant this time slipped on a banana peel by purportedly "aping" the lovable vine-swinging lug who has appeared in books, comics, television series and nearly 90 films.

"Me process server, You sued."

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.

Online Shop Sites Liable for 'Active' Promoting of Fake Goods, Euro High Court Warns

Image via WikipediaeBay and other online shopping sites can't skirt trademark infringement claims if they have an "active role" in hawking counterfeit products, a full panel of the European Court of Justice ("ECJ") in Luxembourg has ruled.

Since 2007, cosmetics and beauty giant L'Oreal has locked horns with eBay, the world's largest online auction site, when the Paris-based company turned to the ECJ by linking lawsuits filed in France, Belgium, Spain and the United Kingdom, according to articles in The Independent and The Guardian. L'Oreal blames eBay for the sale of counterfeit goods on its Website as well as the sale of "parallel imports" (imported L'Oreal products not aimed at the European market). eBay argues that it should not be accountable unless it fails to act after a trademark holder notifies it of an infringement.

In a ruling that resonates in the world of e-commerce, the ECJ said national courts may order eBay and such companies "to take measures intended not only to bring to an end infringements of intellectual property sites, but also to prevent further infringments of that kind,"  The Guardian reports. The ECJ said European Union trademark rules are applicable to sales offers and advertisements involving trademarked goods outside EU countries once "it is clear that those offers are targeted at consumers in the EU."

L'Oreal complained that by paying for keywords from Internet referencing services, such as Google's AdWords, that correspond to the cosmetics company's trademarks, eBay was directing users "toward goods that infringe trademark law, which are offered for sale on its Website."  Although the ECJ said liability may attach if the online shopping site takes an "active role" in promoting sham goods or fails to remove goods upon notice that the sales are unlawful, eBay and its competitors are not liable merely for permiting its customers to display signs corresponding to trademarks.

'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!"

Facebook Sues Adult Networking Co. in Trademark Case

Image by Getty Images via @daylifeIn Facebook, Inc. v. Various, Inc. et al (Case No. 4:2011-cv-01805), filed last month in the U.S. District Court for the Northern District of California, social networking giant Facebook sued an adult networking service for trademark infringement, unfair competition and cybersquatting.

Judge Saundra Brown Armstrong will hear the case in which Facebook is alleging that Various, Inc., and subsidiaries, including Traffic Cat, Inc. and GMCI Internet Operations, Inc., are capitalizing on the plaintiff's brand with its Facebookofsex.com Website.  Facebook claims the defendants' Website includes a blue "Like" button and a blue band at the top of each page, which creates confusion among site visitors and tarnishes Facebook's reputation, according to the Complaint.

Federal Judge Throws the 'Book' at Facebook in Trademark Suit

Image via CrunchBaseU.S. District Court for the Northern District of California Judge Ronald M. Whyte has dismissed Palo Alto, Calif.-based social networking colossus Facebook's trademark infringement suit against Illinois company Teachbook for lack of personal jurisdiction.

The case, Facebook, Inc. v. Teachbook.com, LLC (Case No. 10-cv-03654-RMW) was brought Aug. 12, 2010, by Facebook, which alleged trademark infringment and trademark dilution by Teachbook, a social and professional networking site for teachers. Facebook claimed the use of the generic "BOOK" by a competitor social networking site would confuse consumers and dilute its brand. Facebook alleged jurisdiction and venue were proper because the defendant intentionally infringed on its trademark, causing it to suffer injury in its district.

The court noted that Teachbook's trademark clearance search produced 31 entities using "BOOK" formative marks for interactive computer services, including 10 companies that pre-dated Facebook. In concluding Teachbook neither permits California residents to register on its site nor competes with Facebook for the hearts and minds of Californians, Judge Whyte relied on the three-pronged "effects test" developed by the U.S. Supreme Court in Calder v. Jones, 465 U.S. 783 (1984). Under Calder, the court gauges whether the defendant: 1)committed an intentional act, 2)expressly aimed at the forum state,  3)causing harm that the defendant knows is likely to be suffered in the forum state.

Judge Whyte ruled against Facebook because it failed to show Teachbook's conduct was "expressly aimed" at California. A tip of the hat to the always informative Internetcases.com Website for reporting on this case, which seems more about hubris than trademark.

Out-of-Control 'Situation' in Florida Court 'Confrontation'

Image by Getty Images via @daylifeThe "reality" facing U.S. District Court for the Southern District of Florida Judge Paul C. Huck is that he must preside over a trademark infringement case involving an awful "Situation" certain to lead to a horrible "Confrontation."

The case, MPS Entertainment, LLC v. Robert M. Fletcher & Frank Sorrentino (Case No. 1:11-cv-21765), was brought by 29-year-old Michael "The Situation" Sorrentino, a cast member of MTV's Jersey Shore reality series since 2009, against his dear old Dad, Frank "The Confrontation" Sorrentino, concerning TheConfrontationSite.com, poppa's Website. As dutifully reported by E!News and NBC, among other media outlets, the plaintiff  alleges the defendants are exploiting his fame, appropriating his image and likeness on their Website without his permission, and engaging in unfair competition, all of which is disparaging his reputation, if such a thing is possible.

The elder Sorrentino's Website is rife with rants about his son's alleged financial abandonment of his family and contains profanity-laced tirades against junior. Sorrentino senior is threatening to write a tell-all book about his son's behavior entitled Confrontation with Situation (don't look for it in the Great Books series).

The case is more likely grist for the publicity mill than bound for the legal annals.  The staff of "TUOL" is withholding judgment until it hears from the spouse/mother, Mrs. Frank "The Mortified" Sorrentino.

Utah Federal Judge Tosses Corp.'s Trademark Suit on 1st Amendment Grounds

Image via WikipediaThe U.S. District Court for the District of Utah this week in Koch Industries, Inc. v. John Does 1-25 (Case No. 2:10-cv-1275-DAK) cited First Amendment safeguards for unidentified environmental advocates who used the Internet to perpetrate a media hoax on plaintiff Koch Industries, Inc., as the basis for dismissing the company's lawsuit against the anonymous jokesters.

In an 18-page memorandum of decision and order, U.S. District Court Judge Dale A. Kimball dismissed the plaintiff's claims, including trademark infringement, cybersquatting and unfair competition, against the anonymous defendants who constructed a false Website and issued a phony press release last December alleging that Koch was going to fund environmental groups and had shifted its corporate position on climate change.

Judge Kimball also ordered the plaintiff not to use any of the information it already had obtained via subpoena to the company that unknowingly hosted the pseudo-Website to identify the defendants, holding that allowing Koch to do so would violate the First Amendment political speech and anonymity rights of the defendants.

The unidentified members of Youth for Climate Change were represented in the lawsuit by the nonprofit Public Citizen Litigation Group.

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.

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.