It is astonishing to think that Denny Chin has taken a full turn of the calendar without issuing an opinion. We welcome the opinion when he is ready … and we wish for that ‘ready’ to be sooner rather than later.

Some of us wonder if the adage ‘justice delayed is justice denied’ might be relevant.

The world of publishing will never be the same. The Google Book case has changed the topography.

General Shinseki, 34th Chief Staff of the U.S. Army, perhaps had the insight that applies to Denny Chin and his long forbearance from giving us an opinion, “If you dislike change, you are going to dislike irrelevance even more.”

There will come a time when the decision from Chin will be irrelevant. The facts and market are changing beneath his feet and beneath all of our feet. Let’s hope that an opinion comes before that time, when what he may have to is irrelevant to the issues in play.

Product placement and co-branding is normative, but here is a co-branding deal that demonstrates how a weekly drama can be synergistic for a “real life” issue driven campaign. The Tuesday night CBS drama, The Good Wife, is known by some audiences as the strong, long suffering, capable, working, lawyer wife show, with moral ambiguity.

This week it is notable for another reason. Just Say Now, a real life campaign for marijuana legalization, was featured as part of the plot where the politician running wanted to reach the youth vote and so took up medical marijuana as an issue. In an intersection of on-screen drama and real world issues, the Just Say Now name, logo and mock-web video was featured as part of the episode (presumably as part of an agreement between CBS and Just Say Now that granted permission for the use of Just Say Now’s trademarks).

The curse of an intellectual property attorney is that we can never “just watch the show” without thinking through the myriad of fascinating intellectual property issues and Tuesday’s episode of The Good Wife was no exception. Was there a license and/or co-branding agreement in place? Did it adequately protect the JUST SAY NOW trademarks? Did the product placement in a mainstream show threaten to dilute the JUST SAY NOW brand?

JUST SAY NOW is the proprietary trademark for a “real” movement and a wink to the old defunct anti-drug Nancy Reagan campaign (‘just say no’). The co-branding arrangement with CBS, while having the possibility of diluting the affiliation with the actual Just Say Now campaign, was, we believe a reasonable gamble because of the audience the TV appropriate would reach. Moreover, so long as the license agreement mandated that the show’s script did not disparage the mark, it would be a trade-off worth considering.

From a practical perspective, there are several key issues that must be properly considered and addressed before entering into a co-branding/licensing agreement. Despite the old adage, all publicity is not good publicity when it comes to protecting your trademarks and other intellectual property rights. Thus, co-branding/licensing agreements should be carefully vetted by a skilled intellectual property professional to ensure that the trademark and other intellectual property rights remain strong.

Separate and unrelated, Cobalt LLP will be hosting a seminar on Intellectual Property Issues of Medical Marijuana on March 24th. You are welcome to attend. Save the Date Card also here.

(N.D.Ca., Jan. 19, 2011)

Adobe sued Tony Kornrumpf of Lookout Mountain, TN, for $140,000. Kornrumpf sold a variety of pirated and education/OEM software through several eBay accounts and the web site “cyberpcs.” pursuant to the Copyright Act.

Mr. Kornrumpf defended and counterclaimed that the first sale doctrine was triggered and cited UMG v. Augusto; and alleged that Adobe should be barred from enforcing its copyrights on grounds that Adobe engaged in copyright misuse.

Northern District of California Judge, Claudia Wilkens, found that the First Sale Doctrine did not apply and that the allegations did not support a finding of copyright misuse:

“Although there may be circumstances that justify providing declaratory relief on a counterclaim for copyright misuse, Hoops has not presented them here. As explained below, Hoops’s allegations, even if true, do not establish that Adobe engaged in copyright misuse. ” (p. 7)

Tecnimed SRL v. Kidz-Med, Inc. (S.D.N.Y., Jan. 18, 2011)

Tecnimed is the manufacturer of a non-contact thermometer. Kidz-Med, Inc. had the exclusive right to distribute this non-contact thermometer. The complaint alleges that the defendants are now marketing and selling a competing non-contact thermometer despite the distribution agreement which prohibits the defendants from marketing and selling a competing non-contact thermometer for two years The plaintiff also alleges that the defendants are marketing their new product under a confusingly similar name with confusingly similar trade dress to the plaintiff’s product. The complaint alleges specific instances of confusion among consumers and cites a review on Amazon.com as evidence of such confusion.

The court held that an injunction is warranted; and, “Tecnimed will also derive benefit from a recall. At present, the Thermofocus directly competes against Kidz-Med’s product both in “brick and mortar” stores and over the Internet. Given Kidz-Med’s misleading promotional efforts and the high likelihood of consumer confusion, the harm resulting to Tecnimed from Kidz-Med’s continued sale of its product is likely to be substantial. Because consumers are likely to buy only one non-contact thermometer, a Kidz-Med sale obtained at Tecnimed’s expense will not be recouped in the future Accordingly, the Court finds that the balance of hardships favors a recall of the Kidz-Med product.” (p. 30)

The court found likelihood of success on the merits, irreparable injury; the balance of hardship in Plaintiff’s favor; and that the public would not be disserved by the issuance of the injunction. The court ordered both a recall and an injunction with bond posted in the amount of $130,000.

Cheffins v. Stewart, (D. Nevada, Jan. 20, 2011)

Be careful where you park your drivable sixty foot long Spanish Galleon. That’s the lesson here. La Contessa was the much beloved mobile, interactive replica of the 16th century Spanish Galleon.

Beginning in 2003, La Contessa was stored on a ranch with permission of the ranch’s life estate tenant. Stewart, through his company, was the owner of the ranch. In 2005, the life estate tenant moved off the ranch and abandoned her life estate. Stewart notified Burning Man that if La Contessa was not removed, it would be destroyed. In 2006, Stewart destroyed La Contessa by setting it on fire. The VARA theory was generated as a part of an effort to get legal redress. The trial court in Nevada threw the case out:

“A bus is a utilitarian object, the purpose of which is to move and transport people. La Contessa was built on top of a bus and retained the bus’ innate function of movement and transport. La Contessa was thus a functional object. Plaintiffs argue that simply including a bus as part of an art piece does not make that piece applied art, citing Carter, 71 F.3d at 83. Carter held that a sculpture incorporating applied art, as opposed to constituting applied art, is not barred from VARA’s protections. Id. While true that the mere incorporation of applied art would not render a sculpture ineligible for VARA’s protections, La Contessa did not merely incorporate a utilitarian object. By virtue of its retention of the ability to move and transport people, however slowly, it remained a utilitarian object and thus constituted applied art. In addition, to the extent Plaintiffs assert that La Contessa was not applied art because it was a venue for performances, such an object is also functional and would constitute applied art, as well. Accordingly, as La Contessa was applied art, it was not a work of visual art, and Plaintiffs are thus not eligible for relief under 17 U.S.C. § 106A. Defendant’s motion for summary judgment on Plaintiffs’ VARA claim will therefore be granted”.

To see La Contessa in 2003: http://laughingsquid.com/la-contessa-vs-the-whale-at-burning-man-2003/.

Agence France Presse v. Morel, (Jan. 14, 2011, S.D.N.Y.)

Agence France Press, Turner Broadcasting/CNN, ABC, Getty Images and CBS are suing Daniel Morel after Morel claimed that the news sites stole his images from Twitter immediately after the Haiti earthquake.

Twitter’s terms of service granted a license to use content only to Twitter and its partners. Moreover, AFP and TBS failed to establish that they were intended third-party beneficiaries of Twitter’s terms of service. Morel’s allegations that AFP knew that the images were his, disregarded his rights, and licensed Morel’s images to third-parties were sufficient to plead knowledge and inducement of infringement. Morel never uploaded images on Twitter. Instead, he used a third-party service called TwitPic, which says in its terms and conditions that the images posted remain the property of their owners. Morel used Twitter only to post a link to his TwitPic images. However the court held that Morel failed to allege facts supporting his claim that CBS had a direct financial interest in its affiliates’ exploitation of Morel’s images.

The Digital Millennium Copyright Act (DMCA) prohibits anyone from knowingly providing or distributing false copyright information with intent to “induce, enable, facilitate or conceal infringement.” Morel claims that AFP falsified and removed his copyright information from his images.

“Morel set forth a factual basis for alleging that AFP knew the copyright management information was false and intended to facilitate infringement,” Pauley wrote. In particular, an AFP editor viewed Morel’s images before AFP took identical images from Suero’s Twitpic feed. AFP also knew Morel was a professional photographer “and had no reason to believe Suero took the photos. However, AFP credited Suero without inquiry,” District Court Judge Pauley explained.

The court rejected AFP’s argument that it didn’t remove copyright management information (CMI) in violation of the DMCA. AFP says the DMCA stipulates that CMI must be removed from the photograph itself. But the DMCA “imposes no such requirement,” Pauley said. CMI includes information conveyed in connection with the work in question, and not just information on the work itself.

“It is implausible that a viewer of Morel’s photos would not understand the designation ‘Morel’ and ‘by photomorel’ appearing next to the images to refer to authorship,” Pauley wrote. Regarding Morel’s claim for violation of the Digital Millennium Copyright Act, the notations “Morel,” “daniel morel,” and “photomorel” fell within the scope of copyright management information under the plain language of the statute.

HyperQuest, Inc. v. N’Site Solutions, Inc. (Jan. 19, 2011, 7th Cir.) The Seventh Circuit affirms the trial court that held that a nonexclusive licensee lacked standing to lodge a lawsuit.

The case centered around custom software in the field of consumer automobile insurance that Unitrin Direct purchased from N’Site. In 2008, the plaintiff, HyperQuest, sued both N’Site and Unitrin Direct for copyright infringement alleging that the software Unitrin Direct purchased was a derivative work of the eDoc software; and for standing HyperQuest claimed to be an exclusive licensee from Safelite Group, Inc. of software called eDoc.

Following the chain of title to the eDoc software gets complicated. Quivox Systems granted N’Site Solutions, Inc. a non-exclusive license to certain copyrighted software that is used to process consumer automobile insurance claims. Quivox later fell on hard times and sold its assets to Safelite Group, Inc., which continues to own the copyright for the eDoc software. Eventually, Safelite granted rights in the eDoc program to HyperQuest; when it did so, the parties acknowledged the continued existence of the N’Site license and they agreed that Safelite itself would retain certain rights to use and develop the software.

This case had its origins in a dispute between N’Site and HyperQuest over the terms of these licenses. To make matters worse, at least from HyperQuest’s vantage point, N’Site sold the source code to its modified soft- ware to Unitrin Direct Insurance Company in 2006. HyperQuest filed suit on January 22, 2008, against both N’Site and Unitrin, asserting that each had infringed the copyrighted software. The district court concluded that HyperQuest held only a non-exclusive license and thus lacked statutory standing to sue and dismissed HyperQuest’s case with prejudice. Later, the court awarded attorneys’ fees and costs to N’Site and Unitrin in the amount of $134,958.42. HyperQuest has appealed, challenging both the conclusion that it was not an exclusive licensee (and thus, not entitled to assert a claim for copyright infringement) and the attorneys’ fee award. Unitrin cross-appealed from the district court’s decision to reduce the amount of the fees it had requested. The Seventh Circuit found no error and affirmed the lower court in its entirety.

Estate of Curtis v. Chambers and Globe Specialties, Supreme Court of Massachusetts, Case No. 10662 (Jan. 18, 2011)

Harold Curtis designed and produced unique and distinctive printed promotional and advertising materials used by automobile dealerships to conduct direct mail campaigns and advertise dealership sales events. In 2000, Globe was rebuffed by Curtis after Globe offered to license and distribute Curtis’ materials. Curtis grew angry when Globe and Chambers subsequently began selling promotional and advertising materials that ” “[t]o an ordinary observer … were substantially similar to those produced by Curtis,” and the Chambers defendants ceased doing business with Curtis. Curtis demanded in writing that the defendants terminate their conduct, but the demand was ignored. Because the promotional materials published and distributed by Globe Specialty for the Chambers defendants were used so often in the same marketing areas served by other Curtis automobile dealership clients, Curtis could no longer sell his promotional materials and services to the automobile dealerships in these marketing areas.” (1/18/11 Opinion)

The state trial court reviewed the 2006 complaint that included copyright and common law trade dress claims. The copyright claims were dismissed as the judge concluded that Curtis had “not registered any copyright for the advertisements at issue, and copyright registration is a condition precedent to bringing an infringement action.” (1/18/11 Opinion) The trial court also dismissed the trade dress claims as preempted by the copyright claims that were erroneously pled.

Curtis died, and his estate filed the appeal with the Massachusetts Supreme Court which affirmed both the dismissal of the copyright claims and the trade secret claims.

Barefoot Architect, Inc. v. Bunge, (3rd Cir. Jan. 14, 2011)

Defendant’s dream of building a home in the Virgin Islands is the genesis of this dispute. Bunge retained an individual architect who, later and before the litigation, became employed by Plaintiff to create that dream house’s architectural plans. But there was the usual archetypal falling out after Bunge claimed to have paid the agreed value for the plans, but no plan set was delivered by Plaintiff; instead Plaintiff demanded further monies. Bunge hired another architectural firm to complete the plans. Architect’s new employer, Barefoot Architect, sued Bunge; and, Bunge challenged Barefoot being the proper owner of the copyright of the architectural plan in dispute.

The individual architect and his employer, Barefoot Architect, signed a document confirming that the oral assignment took place and pointed to cancelled checks as evidencing the consideration of that copyright transfer.

The Third Circuit affirmed the trial court’s granting of Bunge’s motions for summary judgement and dismissing Bunge’s counter claims. The court held that the idea of a memorandum validating an earlier copyright transfer depended on the original transferring event actually having transpired. The court went on to point out that the memorandum of transfer could not simultaneously serve both purposes of proving that an oral transfer occurred and giving legal effect to that otherwise unenforceable transfer. The court further held that the checks cited by Barefoot Architects carried little evidentiary weight. In sum, the court concluded that the record contained nothing to show that Barefoot Architect purchased the copyright at issue.

This video was originally posted on law.com.

The Cobalt law firm believes in creating a sense of community for their employees by hosting a wine and cheese party every Thursday.

As the two cases below teach … it isn’t enough to assert copyright infringement when only the broadest themes are shared.

1. Estate of Adrian Jacobs v. Scholastic, 10. Civ. 5335, S.D.N.Y.

Paul Gregory Allen, Trustee of the Estate of Adrian Jacobs, sued Scholastic, Inc. in the Southern District of New York for copyright Infringement of expression of a 20-page book which included wizard competition. Jacobs authored the book “The Adventures of Willy the Wizard — No 1 Livid Land,” in 1987 in the United Kingdom. The differences between the two plots, tone and contextual points (‘look and feel’) cause the court to begin with analyzing the motion to dismiss with the FRCP Rule 12 standard of ‘plausibility’ as ‘more than a sheer possibility that the defendant has acted unlawfully.’
The court found ‘scant basis’ for finding substantial similarity; and that the allegedly infringing plot elements are not protectable elements. The court went on to find that the plaintiff had alleged similarities by selectively extracting various trivialities from each book, but random similarities scattered throughout the works do not amount to substantial similarities. Motion to dismiss granted ‘in its entirety’.

2. Buggs v. Dreamworks, CV 09-07070 C.D.Ca

A single copyright complaint alleging that defendant’s animated film “Flushed Away” is substantial similar to plaintiff’s screenplay, “Critter Island” a story of two cockroach gang leaders who occupy the same Harlem retirement home, but whose battle ends up in the sewer; love ensues; and the gang leader who falls in love, but finds his way with his love to paradise, Critter Island. In contrast, Flushed Away is the story of an entitled rat whose dream of privilege is foiled when he attacked by rats who come up from the sewer; the entitled rat is consigned to Ratopolis, a living hell, where that entitled rat falls in love, distinguishes himself and lives happily ever after with his new love.

The court found the two works are ‘substantially dissimilar’. Anthropomorphic pests who occupy the sewer at some point in the respective stories are not similar expressions but basic, unprotectable plot elements. The court went on to note that the plaintiff had asserted the assertions that the two works are substantially similar on other specific grounds, but the court finds that the plaintiff did not ‘demonstrate any concrete or articulable similarities’.

Motion for summary judgement granted in its entirety.

Amaretto Ranch Breedables v. Ozimals, Inc., 2010 WL 5387774 (N.D. Cal. Dec. 21, 2010).

The court in this case is also being asked to order Linden Research, the operator of Second Life, to stop complying with DMCA ‘Take Down’ demands (Section 512) until the merits of the case are determined by the court. But the real gravamen of the case is much more serious. On page one of the opinion, the court gives us a terse summary:

“The gist of the copyright dispute between the parties is whether Plaintiff’s virtual horses infringe on copyrights associated with Defendant’s virtual bunnies.”

Judge Charles R. Breyer granted the TRO and ordered Amaretto Ranch Breedables to post a $25,000 bond.

This case is a first to my knowledge where two copyright content claimants have engaged in serial DMCA Take Down demands so often that the take downs and re-postings are disruptive to the commerce of both. This is a strategy to watch how long the courts’ will have patience for this.

UMG Recording, v. Augusto (9th Circuit Opinion 0110104)

Troy Augusto d/b/a Roast Beast Music Collectibles did not infringe on copyrights held by Universal Music Group (UMG) when he sold promo “industry edition” CDs through the online auction site eBay, despite the presence of labels on the giveaway CDs warning that they should not be resold. Or so a three-judge panel of the 9th Circuit held today, affirming the trial court.

The opinion is an important one in helping us understand the metes and bounds of ‘consensual licensing operations’.

“UMG dispatched the CDs in a manner that permitted their receipt and retention by the recipients without the recipients accepting the terms of the promotional statements,” Judge William Canby wrote for the panel. “UMG’s transfer of unlimited possession in the circumstances present here affected a gift or sale within the meaning of the First Sale Doctrine, as the district court held.”

The court went on to distinguish this case from that of Vernor, making software a separate and distinct exception, in the otherwise generally enforceable First Sale Doctrine.

Two law professors, one at Case Western and one at U.C Hastings, intended to write a textbook about criminal law, but end up writing a lesson in misapplication of copyright law.

In McMunigal v. Bloch (N.D. Cal. 12/23/10), two law professors contract with Aspen Publishing to create a criminal law textbook, but the production of the manuscript for the book and the teacher’s manual becomes a process beleaguered with disappointment and missed deadlines.

After review of the counts to the complaint, Judge Susan Illston granted defendant’s motion to “the complaint with prejudice, finding after argument that leave to amend would be futile.”

The whole opinion is a great read, but the two relevant copyright points are how the court analyzes the parties’ tangle efforts to create separately copyrightable works; merge those into unity whole, a joint work; and then to attempt to separate the individual works back out into separable works.

Specifically, McMunigal and Bloch independently selected and edited cases, statutes, jury instructions, and scholarly excerpts and wrote original text, problems, and questions for their parts of the book. Once published, the book listed McMunigal and Bloch as the authors in alphabetical order and did not identify who authored which parts of the book. For that, the court found that a jointly authored work had been created, and not a collective work that the Plaintiff had asked that the court find.

The issue of dividing the separable works back out needed separate analysis as Aspen had taken an assignment of the work as a condition of the publishing agreement. In this, the court declined the invitation to partition joint copyright ownership into separable parts; and refused to give Plaintiff separate assignment based on a unilateral email to the defendant stating that he intended to own separate parts. The court admonished the plaintiff the he need to comply with the Copyright Statute to effect the separation; including getting a written assignment, in compliance with Section 204(a).

If that plaintiff wants relief, he’s got a considerable amount of homework to do before filing again, as the court commented that too much is missing in the allegation set to be cured easily, finding “leave to amend would be futile”.

https://wiki.mozzilla.org/Drumbeat/Attribution_generator.

Mozilla (noting that people who want to do the right thing and give attribution should be able to easily) has launched “OPEN ATTRIBUTE” which is a free and easy suite of tools that makes giving attribution easy and fast. It is only available for Creative Commons’ licensed content, but it’s so deliciously easy and straightforward that we may expect to see it expand to a wider category of works.

Another demonstration that people really do understand the incentive that drives some authors the right to be acknowledged; to have their work attributed to them and not someone else.

Joe Esposito, who blogs at “Scholarly Kitchen”, has a knack of distilling the influx issues in the tumultuous world of publishing. This most recent blog post is particularly helpful in making sense of the upheaval and seeing some patterns emerge.

To quote a bit:

“While one would be hard-pressed to find any publisher who does not view digital media as a central strategic concern, we have reached a critical point in the evolution of publishing – henceforth, no one who starts a new publishing company is likely to be thinking of the world of print.

New publishing entities from here on are almost certainly going to be Born Digital.
This is a big shift because print is, well, more than print; it’s also an entire ecosystem that has grown up around print. That means no more looking back to see which legacy customers can be grabbed, no fidelity to old partners or ways of doing business.”

And he then gives a useful comparison of the playbooks of the two: Digital Born and Born Again:

“… Compare the playbooks of the Born Again and the Born Digital publishers:

• Identifying A New Market. While Born Again publishers pay lip service to the idea of finding a new market, for the Born Digital, a new market is essential, as it puts them beyond the reach of the established and powerful marketing capabilities of the Born Again. In scholarly communications, one form this takes is the identification of new sources of purchasing power adjacent to legacy purchasers. For example, a Born Again publisher may concentrate on selling materials to academic libraries, while a Born Digital publisher may seek to cultivate faculty as customers.

• Thinking Globally. Although this is not a new outlook for journals publishers, many book publishers continue to operate on a national basis. This requires them to find a sufficient audience in their own territory, whereas a global program can bring in customers from many areas, thus making it easier to get to break even. Both Born Again and Born Digital publishers alike pursue global strategies today, but the Born Digital publisher has the advantage, as its global strategy is unimpeded by relationships forged in the print era.

• Selling Direct. The print world is full of intermediaries, from wholesalers to libraries that stand between a publisher and the end-user or reader. These intermediaries provide an essential role for print. But with low-cost digital distribution, disintermediation becomes possible. It’s much harder for a Born Again publisher to sell direct, as direct sales put a publisher into conflict with established distribution channels. A Born Digital publisher, on the other hand, has no legacy customers and thus no conflict.

• Using Pricing to Disrupt Legacy Expectations. As noted above, aggressive pricing can hamstring larger and better-resourced established publishers regardless of how forcefully they are pursuing their Born Again strategy. Born Again publishers typically try to charge as much as the market will bear, but Born Digital publishers will often charge the minimum necessary in order to build market share. A strategy based on price works best in direct-to-consumer markets.

• Identifying New Fields. This is an editorial issue: What are the growing areas to work in? Some fields are well-established and not likely to make room for newcomers. New fields may also be small and not deliver the return on investment that the Born Again publisher requires. But for the Born Digital publisher, all the negatives associated with a new field are transformed into positives, as there is not likely to be competition from established publishers.

• Investing in Print Infrastructure. Instructive is the example of Born Digital OR Books, founded by two veterans of trade publishing. OR (named for founders John Oakes and Colin Robinson) uses digital technology to bring books to market rapidly and has a network of suppliers for print on demand, but when an OR title gets hot and can benefit from the legacy distribution channels of trade publishing, the company licenses rights to established trade houses.

• Sizing the Organization. Born Digital publishers try to stay as small and lean as possible, as this gives them flexibility and the ability to underprice established publishers. When Born Again publishers attempt to attack their cost structure, they often fail, as they may cut out essential services that their legacy customers have come to expect from them.”

That 2011 is going to be an accelerated shake-up to the Born Again and the Digitally Born is a certainty.

Hard to believe that the last California statute prohibiting impersonation dates back to 1872. SB 1411, a bill passed last June, updates the law and makes malicious “e-personation” a misdemeanor punishable by up to a $1,000 fine and a year in county jail. It is codified at Penal Code Section 528.5.

More specifically, the new law makes unlawful to “knowingly and without consent credibly impersonate another actual person through or on an Internet Web site or by other electronic means … for purposes of harming, intimidating, threatening, or defrauding another person.” Emphasis Added. In addition to criminal penalties, the law expressly provides ground to bring a civil suit for compensatory damages, injunctive relief or other equitable relief to anyone who suffers damage or loss as a result of the online impersonation. Other states (like New York and Texas) already have similar laws on the books.

Practice Note: Attorneys who represent celebrities and victims of online harassment and identity theft will particularly want to know about this law, which adds to the arsenal of remedies against California impersonators. Also good to know: If you are dealing with imposters on Facebook, MySpace, Twitter, eBay or other prominent sites, you can usually get the fake account deleted fairly expeditiously by using the site’s take-down mechanism. Many sites now have such procedures in place, not only for DMCA purposes, but also to request deletion of abusive or fake pages.

Finally, it is important to note that the new California law only targets “credible” impersonators of an “actual person.” @ChuckNorris_ and @drtobiasfunke are probably safe.

Dear Mr. Olson,

We are in receipt of your letter (below) in which you demand that we cease or you will sue.

We are a law firm; and we are reporting news in our blog. Clearly is that stated under the category on ‘News’ as you acknowledge in paragraph two of your letter.

We acknowledge that your client has trademark rights. However, protection for trademark rights under the Lanham Act is limited to protection against another’s use of a designation to identify its business, or in marketing its goods or services in a way that causes a likelihood of confusion. Such trademark rights do not override First Amendment rights.

Wilcox v. Career Step (D. Utah 12/1/10)

Wilcox is the author of a medical coding course, and claims that Career Step (CS) is infringing Wilcox’s copyright. Career Step licenses the disputed medical coding course to various schools and colleges; and, in each instance Career Step requires that each student sign a contract that specifies that jurisdiction will be in Utah.

The court faced two motions one for lack of personal jurisdiction and another for a motion to dismiss on grounds of sovereign immunity from two of the schools which were also named as defendants.

The court granted the motion to dismiss for lack of personal jurisdiction stating that both WVS and Laramie knew the fact that CS was based in Utah. The agreement itself established several connections to Utah. First, the governing law of the contract was Utah law and the agreement arguably selected Utah as the venue of any suit involving the contract. Second, CS administered the Wilcox course from Utah. Third, the court concluded that Wilcox, a third-party to the relationship between CS and the moving defendants, could hale those defendants into a Utah court to litigate whether they violated Wilcox’s copyright in the course at issue. WVS and Laramie transacted business in Utah with CS and allegedly caused Wilcox injury in Utah. The moving defendants, two schools, reached into Utah to obtain the right to use the Wilcox course, which they knew was subject to claims of copyright and other intellectual property protection. Wilcox’s asserted harm related directly to defendants’ intentional choice of contracting with a Utah company to purportedly obtain a license to use the course. While the moving defendants may not have intentionally directed their activities toward Wilcox in Utah, they did intentionally make contact with Utah involving the Wilcox course. For these reasons, the court denied the motion to dismiss for lack of personal jurisdiction.

With regard to the state school’s motion to dismiss based on sovereign immunity, the court detailed the history of the law of sovereign immunity and then applied the facts of the case focusing particularly that the school is a state school with one hundred percent of that school’s funding coming from the state coffers. The court held that the 11th amendment doctrine of sovereign immunity applies in this case barring the copyright action against the school.