Copyright infringement claims can often be reduced to a formula. In instances where the copyright infringement is less obvious and direct, a copyright owner asserts both a valid copyright registration and a theory of how access occurred and then conjectures that because of the substantial similarity between the two works, it may be concluded that defendant’s work infringes. Such a formula is the basis of a copyright complaint filed this week in the Eastern District of New York by a fine art book designer against Urban Outfitters and its subsidiary, Anthropologie. The copyright registration upon which the case relies was effective February 13, 2009, well after the date of alleged infringement. That’s a problem because the Copyright Statute explicitly prohibits the plaintiff from recovering attorney’s fees or statutory damages when the copyright registration is obtained after infringement.

Here are the facts: Purgatory Pie Press attended the fall 2008 Artists Book Fair in New York. Visiting their booth, an Urban Outfitter representative signed the guest book with effusive praise. According to the complaint, the Urban Outfitter representative was “observed surreptitiously taking pictures using small digital cameras and mobile telephone cameras.” But there is no clarity as to whether the surreptitiously taken pictures were of the disputed work.

The complaint includes a blend of claims, not just copyright. Other claims include unfair competition as well as trademark dilution, which is particularly interesting as there is no assertion that the work at issue rises to the level of a trademark.

The prayer for relief includes a demand for attorney’s fees and damages in the amount of $150,000 (the upper statutory damage limit.) This will be hard for the Plaintiff to obtain given that their post-infringement registration bars both attorney’s fees and statutory damages.

This is a complaint by an angry artist who obviously feels ripped off and is seeking orderly revenge. Unfortunately, there is little likelihood of getting more than an injunction and perhaps some modest, actual monetary damages given the late filing of the copyright application and the absence of the image at issue having been used as a trademark. It is a complaint that expresses the emotion, but fails to have many teeth.

Practice tip: Register those copyrights early and often. Having a registration in hand before an infringement occurs empowers the complaint, making it more fierce. The Copyright Statute favors the proactive.

Commentary: “What do I care about what some narcissistic idiot had for breakfast? Twitter is the dumbest thing I’ve seen on the Internet so far.” That’s the response I got from an attorney after I mentioned how much I rely on Twitter.

His most recent exposure had been the friendly Twitter war between CNN host Larry King and actor Ashton Kutcher, but his grand daughters each had accounts, so he was all too familiar with inane comments about cute boys and lunchroom antics, and thought that’s all there was. He was shocked to discover many in the non-celebrity, over 40 crowd were actually using it, and reaping benefit.

I won’t go into detail about how Twitter works, except to say the site allows you 140 characters to micro-blog a single thought. Neither will I delve into the numerous macro-blogs that at least partially credit Twitter for successful political events done on short notice. I will say this: Increasingly, Twitter is being used by busy professionals to aggregate information in one place rather than spend time surfing the web to find it. The last thing I need is another website to check, but Twitter has become the ultimate lazy attorney’s reference, because other people do my research for me and serve it up in one place.

For instance, my first morning stop at work (after tea) is my Twitter page, where I follow legal bloggers (for case law updates), news tweets, sports, and grocery stores (for coupons – like I said, “one stop shopping”). Sure, I get the occasional “tweet” about what someone had for breakfast, but the benefit having what I need in one place outweighs the inconvenience – if any – of an occasional social tweet (and lightens my day).

Companies like Whole Foods use the micro-blog site to drive traffic to their own website and alert shoppers to specials. Organizations like CNN simply feed breaking headlines; the company does not even post a link (not enough room). I’m up to date in 5 minutes and spend more time on the articles and issues I really want to understand. If I wanted to, I could even find my congressperson (I don’t). Parents even get some benefit out of it (I’ll leave it to the reader to figure out why).

I’m not worried that Twitter is going to become a bastion of moral decay either. There are always bad actors in any environment (except of course the legal profession). Already, sites like Tweeting Too Hard and Curse Bird are curbing behavior. Moreover, because I pick and choose what I want to see, I don’t have to look at anything that offends me: unlike an RSS or other news feed, I can turn off and on who I follow at any time.

Social media still has some kinks to work out legally. For instance, should employers have policies about what people say on Twitter when they’re on or off the clock? Should an attorney representing a client try to “friend” an adverse party to get access to statements? Can service of process be affected on Facebook. To be sure, we’re in the gold rush phase of the technology. But the sky is not falling, and if Barbara Boxer can tweet, you’re late to the party.

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A new website has launched whose purpose is to connect potential buyers and sellers of trademarks. Trademarks are words, signs or symbols used by businesses as a source identifier of goods and and services. Trademarks are valuable not only for the consumer goodwill they engender (see, MCDONALD’S, GOOGLE, BMW, HBO), but also as a barrier to market entry of similar products (or services) with confusingly similar trademarks.

According to its press release:

USTrademarkExchange.com was launched earlier this month as a dedicated trademark sales portal . . . Owners can list and promote their registered trademarks, while potential buyers including investors can easily search through a variety of available trademarks in one location.”

Sounds like a great idea, right? Hmmm, not so fast. There are a few basic, but important concepts worth noting. When a trademark is assigned (ownership transferred) from one party to another, the purchasor generally succeeds to all of the previous owner’s rights (e.g., dates of first use, etc.). However, a maxim of trademark law states a valid trademark assignment must include the goodwill of the business. What is goodwill?

A trademark stands for a certain standard of quality. The mark symbolized that level of quality that the public has come to associate with the products bearing the mark. That said, an assignee (or purchasor) of a trademark must be sure she has the implements necessary to maintain this quality. If she does not, the trademark becomes separated from its goodwill. When goodwill does not accompany the mark, the assignment may be called an assignment in gross or a naked assignment. Generally speaking, an assignment without goodwill is invalid.

It is too soon to tell how USTrademarkExchange.com intends to handle its trademark assignments and how potential buyers and sellers will see the benefits of their respective bargains. Like many things in life, “an ounce of prevention is worth a pound of cure.” When it comes to assigning or purchasing trademarks, conferring with competent trademark counsel is always a good bet.

PBM Products, LLC, which makes infant formula for big box stores like Kroger, WalMart, Sam’s Club, and Target, sued Mead Johnson, claiming the Enfamil maker made false statements regarding its ENFAMIL baby formula.

Mead Johnson’s new direct mail campaign states ”Enfamil LIPIL’s unique formulation is not available in any store brand.” Worse, the suit claims, defendants display a picture of a blurry rubber ducky, implying that customers who give their babies anything other than Enfamil may endanger their child’s vision and brain development. In fact, PBM claims its product is identical to the defendant’s product, according to the lawsuit, which can be downloaded here.

Mead Johnson has been entangled with PBM in the past (and lost), both in litigation, and through challenges at the National Advertising Division (“NAD”). Mead Johnson has also been before the FTC after failing to comply with the NAD decision. Paul Manning, PBM’s CEO, claims that Mead Johnson has twice before made similar false claims, and in both instances, the court banned the company from making more false advertising claims about its products and forced Mead Johnson to make corrections to its advertising.

This lawsuit seems to be ruffling feathers throughout the regulatory world. NAD, the self-regulatory agency which works with advertisers to correct advertising problems without litigation, made the following statement: “NAD is incredulous that after two compliance proceedings, with the second compliance proceeding making explicit that any noncompliant advertising would result in a referral to the appropriate government agency, that the advertiser would disseminate advertising that clearly does not comply with NAD’s decision.” Might we be headed for a three strikes law for marketing?

Practice Pointer: Marketers must be kept “in check” to make sure they are not going beyond ‘puffing’ to sell a product. Over time, a brand (and worse, a company) will lose credibility in the consumer world if no one believes the claims being made. Moreover, if companies would rather avail themselves of the less expensive and less public venue of self-regulatory proceedings believe self-regulatory decisions will be ignored, they are likely to move towards the state and federal court systems to quiet bad actors. When reviewing advertising, always request evidence for the claims being made. While lawyers cannot dictate what their clients will ultimately do, they can help guide companies toward being good corporate citizens.

One last point. This case underscores the importance of looking at an advertiser’s claims from many perspectives. PBM’s suit is focused on the claim that Mead Johnson is the only formula company with an essential formula. The FTC and NAD appear to be more focused on the issue of whether the formula – whatever it is – actually improves brain development.

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