Blockbuster may not be able to rely on the what I learned in Kindergarten defense when it answers charges it illegally shared a plaintiff’s movie preferences with third parties. In a suit filed in Texas earlier this month, Cathryn Harris sued Blockbuster for sharing her rental history on Facebook.

The suit, which is currently seeking class action status, claims Blockbuster’s actions of feeding renters video choices to a news feed violate the Videotape Privacy Protection Act, (“VPPA”) which states in relevant part that a video tape service provider is liable under the VPPA if that provider knowingly discloses personally identifiable information without the renter’s “informed, written consent.” Harris contends the online “opt out” options she was given did not constitute her informed written consent as intended by the VPPA.

The sharing comes as a result of Blockbuster’s participation in the Beacon advertising program, which has received considerable attention and criticism from consumer activist groups and corporations over the past 18 months. Beacon is a form of “social advertising” that allows Facebook friends to see your purchases (as well as other transactions you make) through news feeds. After considerable controversy, Facebook changed the “opt out” provision to an “opt in” provision, so that users would not inadvertently share their personal information simply by accepting the use agreement. Even so, last year, Coca-Cola announced it would not be participating in the program, as did Overstock.com and several other companies, citing privacy concerns. For instance, research showed that participating companies were sending information to Facebook even for buyers who were not Facebook members. Although Facebook claims it deletes such information if and when it is received, many partner sites determined the program contained too many privacy problems for them to feel comfortable participating.

The VPPA was enacted in 1987. It is rarely cited and was clearly not created with the sort of digital transmission of private information in mind that happens today. In fact, the VPPA was enacted after Robert Bork’s video rental history was published during his Supreme Court nomination hearings.

Practice Note: Privacy policies are tricky things. Clients should be advised to create policies that they can follow. Any updates to a privacy policy, particularly ones that will change the way a user’s information is shared, should be highlighted in bold.

In a recent non-citable decision from the TTAB, the Board found that Applicant’s specimen for URBAN RENEWAL did in fact match the drawing page in its application, notwithstanding the mark’s use of URBAN RENEWAL in conjunction with the terms “at home.”

While making clear that each case involving specimens and drawing pages is highly individualized, the Board did provide some clues to how it navigates this area of the law. The Board first noted that a proper initial test involves looking at whether the mark as used on the specimen created a separate impression from the remaining terms featured. In this case, the Board found that even though the terms were contiguous in size and typeface, the existence of the term “at” created a sufficient division to create a distinct commercial impression. Moreover, although the Board did not expressly so state, it suggested that the generic nature of the second portion of the mark makes it less likely to be viewed as functioning as part of the trademark; rather consumers will see the “at home” component of the mark as a suggestion of where Applicant’s goods can be used. The Board also seemed to suggest that other terms might be substituted in place of the “at home” words, without changing the meaning of the mark as applied for, all of which favor Applicant’s registration of the mark. For instance, the words “at home” could be replaced with “at play,” without changing the mark’s meaning.

Practice Note: This firm notes wildly different applications of Trademark Rule 2.51 by different examining attorneys. That said, clients can increase their chances of registration by differentiating the mark component by using distinct and more prominent fonts for the mark components, and adding a TM just after the mark component to distinguish it from the common and usual noun that follows.

Last week, a district court in Maryland ruled that Tyson was not immune from false advertising liability based upon a United States Department of Agriculture (“USDA”) label ruling.

The flap over advertising came when Plaintiff competitors Perdue Farms and Sanderson Farms, alleged that Tyson had been running a series of consumer ads that contained the message “Raised without Antibiotics,” what Plaintiffs called an unqualified Raised without Antibiotics claim (“RWA” claim). Plaintiffs further alleged defendant was running ads with a similar, but qualified RWA claim, namely, “aised Without Antibiotics that Impact Antibiotic Resistance in Humans.” Plaintiffs complaint alleged the unqualified RWA claim was literally false on its face, and the qualified RWA claim was misleading and therefore false by implication. In fact, Plaintiffs claimed, the defendant’s chicken feed contained inophores which are in fact, antibiotics.

By way of background, the Food Safety and Inspection Service (“FSIS”) of the USDA originally approved the unqualified RWA claim, but quickly revoked the approval and informed defendant it could no longer use the unqualified RWA claim on its label. It was silent as to advertising, since the FSIS has no jurisdiction outside of labeling. It later approved defendants qualified RWA claim. In its moving papers, defendant crowed that because the statements were approved for use on defendant’s chicken labels, the pecking order had already been established: plaintiffs Lanham Act claims must be dismissed on the ground that the labels’ language was already approved by the USDA.

In denying defendant’s motion to dismiss on the unqualified RWA claim, the court held that defendant could not rely on a former position held by the USDA “to defend itself against allegations that it continues to run false and misleading advertisements carrying the ‘Raised Without Antibiotics’ language.” Regarding the qualified RWA claim, the court noted that both sides were winging it on cited case law, because it could find no cases that involved “whether a USDA-approved label insulates a company from allegedly false non-label advertising under the Lanham Act.” The court noted that while the USDA may have jurisdiction over chicken labels, it does not have congressional authority to regulate advertising. Accordingly, “a label approved by the USDA may nonetheless be false or misleading in other contexts.” Looks like defendant doesn’t have a leg (or thigh) to stand on.

Increasingly, teenage celebrities are being used by marketing companies to gain a competitive edge in the increasingly growing teen market share. USA Today Online reported today that several large retailers and merchandisers have signed teenage singers and actors to hawk their wares, including Fergie, who was recently retained to give the MAC Cosmetics “Viva Glam” line a boost, the 15 year old Sprouse twins from The Suite Life with Zach and Cody, and basketball’s Stephon Marbury.

Clearly, using these Hollywood “role models” is a strategy that works. The Zandi Group, a marketing research firm, indicates that teenage spokespersons are perfect for clothing and product lines directed at teens because teens already try to emulate celebrity style. Legally, however, using underage spokespersons to target minors can be tricky. While going after teenage dollars is relatively fair game, many young stars attract even younger consumers, including ‘tweens (those under 13), which can lead to problems with the major television networks, with self-regulatory agencies, such as CARU, and in some cases, with the FTC with parents. Many major networks have guidelines consistent with those at CARU that do not allow certain celebrity advertising during times when children under 13 are likely to be looking at television. The practice of Host Selling (airing commercials featuring a teen celebrity at the same time as the teen’s program is scheduled) is not allowed by most networks, and CARU’s self-regulatory guidelines also proscribe the message that buying a certain product will make a kid more popular among his friends or smarter in class.

Practice Pointer: Attorneys should remind their clients that while many teens have their own money, in many cases, that money comes from their parents, who frown upon hard-sell tactics. In particular, parents do not like to be nagged about the purchase of a product they feel is too expensive, compromises their child’s integrity, or is sexually provocative. Generally speaking, clients should use common sense about the type of promotion they engage teenagers to endorse.

Electrolux turned the tables on former distributor-turned-competitor Imig, Inc., which filed a complaint against the famous vacuum and home appliance company, for interfering with relationships with perspective customers. Electrolux filed several counterclaims, alleging that Imig copied Electrolux’s protected trade dress, copyright protected user manuals, and that Imig made false claims in its advertising.

The district court dismissed all of Imig’s claims on summary judgment, and found for Electrolux on copyright infringement and false advertising. The court found that Imig had copied the user manuals in violation of U.S. Copyright law. From a false advertising perspective, the court found that specific numerically based claims about the Imig vacuum’s superiority were false on their face, because the products did not actually meet those objective standards. The remaining counterclaims proceeded to trial. On March 31, 2008, the court issued its finding that Electrolux had not met its burden of establishing a protectable trade dress in its vacuum and therefore, did not find Imig liable.

The facts show that Imig, afraid that it would lose its distributorship of the Electrolux SANITAIRE brand, developed its PERFECT brand vacuum as a replacement. Discovery produced evidence of copying: in creating the PERFECT design, Imig referred its Chinese manufacturer to the specifications of the SANITAIRE line. It was also revealed that Imig’s patent attorney sent a letter to a patent research company noting his clients’ desire “to make a private label vacuum cleaner that is virtually identical in appearance” to defendant’s vacuum. The court also noted numerous visual similarities between the SANITAIRE vacuum and the PERFECT vacuum.

Notwithstanding Imid’s clear intent to copy, the court did not find liability. The court noted that Electrolux had not met its burden of establishing trade dress infringement. In order to establish trade dress infringement, the court wrote, a company must show that the product design is distinctive and that consumers are likely to be confused by seeing the distinctive trade dress on another product. The court held that the elements claimed by Electrolux were functional in nature, and that the company had not proved otherwise, despite Electrolux’s survey evidence showing consumers recognized the various elements of the vacuum as being uniquely from the SANITAIRE brand. The court also determined that secondary meaning had not been established, even though the product had been in use for several years. Addressing the issue of confusion, the court, citing Cadbury Beverages, Inc. v. Cott Corp. determined that Eletrolux had to show a “probability – not merely a ‘possibility’ – of confusion,” a burden that it also did not meet. Even with the victory on the copyright and false advertising claims, we’re guessing Electrolux thinks the decision, well, sucks.

Practice Note: One method of distinguishing trade dress elements is to use “look for” advertising tactics in marketing the products. If a product contains non-functional elements that truly distinguish the product, a company can generate recognition around those features by directing clients to look for them when they make a purchase. Such use may be more persuasive than survey evidence in making clear to both customers and competitors what elements of a design are trade dress.

If u cn rd ths, then you’re either over 50 and remember the old shorthand print ads, or you use your phone to text messages. Amazon continues to push the digital envelope, recently launching its Text-To-Buy program. Adding to its existing mobile phone program (launched last Fall), consumers can set up an account online and then text the UPC, ISBN number, or even a keyword to AMAZON” (262966), and make purchases.

Text-to-buy is likely to pick up speed over the next year, with online and brick-and-mortar companies expanding their clientele and extending their shopping hours by allowing consumers to text purchases, either for pick-up or delivery.

Practice Note: Clients who want to add mobile interaction to their online sites should update their privacy and terms of use policies. The federal CAN-SPAM Act applies to all mobile devices.

Question: When can you decide a trademark case based on a single factor? Answer: when the two marks share not a single common term.

Applicant, PAC Trading Group sought to register the mark PAC BOOSTER THE PERFECT SOUND for audio equipment. The mark was opposed by Ava Enterprises, Inc. on the grounds that it believed the mark to be confusingly similar to its registered trademark, BOSS AUDIOSYSTEMS. Applicant moved for judgment on the pleadings on the ground that Opposer could not even claim a “threshold of similarity” between its mark and Applicant’s mark. Opposer responded that the term BOSS and BOOSTER are “nearly identical because they both start with the letters “BO” and contains an “S;” and moreover, the goods are identical. Acknowledging the similarity between the goods, the Board nevertheless granted the motion.

The Board wasn’t buying the notion that BOSS and BOOSTER are nearly identical, pointing out the obvious: they don’t look alike or mean the same thing. The Board concluded that “notwithstanding the overlap of the respective goods, a likelihood of confusion cannot exist as a matter of law and that this case should be decided on the first du Pont factor as being dispositive.”

Practice Note: OK, I give up. Why exactly did Opposer file this action? As a threshold matter, a potential opposer should find at least one similar word (or similar sounding or meaning word) before bringing an opposition on the grounds of likelihood of confusion. That two parties sell the same goods is insufficient.

In an promotion that sounded more like a Wacky Packages spoof, Nestle promoted its new Butterfinger Comedy Network by making fun of its own brand. Claiming on April Fool’s Day that it was shirking the “clumsiness of the Butterfinger brand” and renaming its brand ‘The Finger,’ the promotion was designed to promote Yahoo’s YouTube alternative. The promotion includes links to local 7-Eleven stores where consumers can actually purchase the candy bar with the fake packaging.

Practice Note: Offering a rare product is a very good way to create stickiness on a website. In this case, in order to find out which stores are carrying the specially branded product, consumers must register with the site. Better than a sweepstakes, which only rewards a few winners, Butterfinger drives consumers to its website, and if consumers want the candy bar, they have to pay for it.

Appellants will get their day in court after all, and St. Paul Fire & Marine Insurance Company many have to pony up in the end. The case arises out of defense of two underlying lawsuits related to false advertising and trademark infringement. Raymond Manzarek, a founding member of the epic rock group The Doors began using the mark DOORS TOURING COMPANY in conjunction with music tours, as well as with various merchandise being sold on its website and at the concerts with the DOORS logo on it. Parents of the former band’s singer Jim Morrison, and Morrison’s widow sued the company for trademark infringement and trade dress infringement. Another suit, brought by former drummer John Densmore, alleged, inter alia, breach of contract, economic damage, and damage to Densmore’s reputation by either express or implied claims that Densmore was at best, The Unknown Solider, and at worst, not an integral part of The Doors legendary band.

Appellants tendered the lawsuit to their insurance company, which contained advertising injury liability. Tendering to the company, however, turned out not to be an Easy Ride to coverage: the insurance company promptly denied coverage and Appellants, determined to Break On Through the wall of denial, sued. The district court granted the insurance company’s motions to dismiss and appellants appealed.

Inching along in The Soft Parade toward reversing the lower court’s decision, the 9th Circuit stated that dismissal of the claim was premature, since the insurance company did not know exactly what items were being sold under the DOORS infringement, and by its own contract language, certain types of merchandise were expressly covered. The allegations by the former drummer relating to damage to his reputation, the 9th Circuit held, were sufficient to “raise the potential of an award of mental anguish or emotional distress damages.” No Back Door Man he, Densmore’s claims, if proved, could be covered under the policy.

Practice Note: With apologies to readers that this blogger will post anything up that references Jim Morrison, clients really should carefully read their media policies and other insurance coverage paperwork to make sure they are getting the coverage they believe they are paying for.

For years, health crisis centers for pregnant women have fought against rogue elements providing false information about abortion services. Using the Internet and phonebook advertising, anti-abortion groups pose as counseling centers and pretend to offer counseling and information services about abortion to pregnant women. In actuality, these groups direct viewers to fake sites that provide false information about abortion options, and provide counseling designed to persuade women to keep their unwanted babies, even when keeping the baby represents a significant risk to the mother’s health.

This month, women’s health centers are asking women to contact their congressperson about a bill recently introduced to “direct the Federal Trade Commission to prescribe rules to prevent deceptive advertising of abortion services.” The ”Stop Deceptive Advertising for Women’s Services Act” would provide special guidelines specifically related to how crisis centers would be able to advertise what they offer.

Practice Note: The bill seeks to tie the act to the already existing powers held by the FTC under Section 5 of The FTC Act, which regulates false and deceptive advertising. Even if the bill does not pass, under the current power, the FTC could independently go after these agencies for their deceptive ads.

The National Advertising Division of the Better Business Bureau has found that Wal-Mart’s claim that it saves Wal-Mart shoppers $2500.00 a year is misleading, and the self-regulatory organization has requested Wal-Mart discontinue the advertising campaign.

The Wal-Mart ad campaign claim is not based on the actual savings of Wal-Mart shoppers, but rather on a calculated number derived from a study it commissioned in 2005. The study in 2005 found that Wal-Mart’s advertising focus on low prices, had resulted in an actual overall price drop in consumer products of 3%. A 3% drop is roughly equal to $287 Billion, which means roughly $2500.00 per household. The statistic, therefore, represents the cost savings to every household, whether the consumer shops at Wal-Mart.

Practice Note: In any advertisement where a measurable statistic is used, the ad sponsor should be able to point to evidence supporting that statistic. Even when a statistic is numerically accurate, as it is here, if the implication is false, then the ad may be deemed false, too. The test for misleading advertising is not merely what is said, but what is implied by the statement.

Engadget came out swinging when it received a trademark infringement demand letter from Deutsche Telekom (which owns T-Mobile). The demand letter suggests that Engadget’s use of the magenta color for its “imobile” section is a violation of Deutsche Telekom’s trademark rights in the color magenta for T-mobile and requests the company stop using the color.

Engadget regularly receives mail from disgruntled companies, primarily pertaining to Engadget’s reviews of certain electronic products, but this letter made Engadget see, uh, magenta, and it responded by posting the letter on the website, and inviting its readers to comment. Moreover, the letter appears to have enraged the company sufficiently that now it is using its trademark in a way that actually could be confusing.

Practice Note: Posting of demand letters by their recipients is nothing new; indeed, this blog has made several references to the practice in the past. Nevertheless, it is a reminder to attorneys to advise clients that demands can be made public. The mere fact that a demand letter might be posted should not deter a client with strong rights, but it may color the tone of the communication. In addition, attorneys want to guide their clients through the legal elements of the claims asserted in a demand, as well as the ramifications of those claims in the court of public opinion. In some cases, if the rights held are thin and the potential backlash is significant, perhaps a well-placed phone call is warranted.

A district court in Georgia has found that a political activist’s use of the term “WAL-OCAUST” coupled with Wal-Mart’s familiar smiley face and recognizable letter and typeface style is fair use.

Defendant sells t-shirts, buttons and other merchandise containing the WAL-OCAST trademark to protest what he believes to be Wal-Mart’s massive contribution to unemployment and U.S. destabilization by shipping jobs overseas where labor is cheaper. The campaign also used terms like WAL-QAEDA. Wal-Mart alleged trademark infringement and dilution by tarnishment. Defendant claimed fair use.

Wal-Mart submitted survey evidence of actual confusion to bolster its position that the activist’s use of the mark confused consumers. The court rejected Wal-Mart’s survey evidence of actual confusion as unpersuasive and of “dubious value” because, among other things, the sample size was not significant, and the conditions that were used to get the results did not reflect actual marketplace conditions. The court found that while Wal-Mart did have recognizable trademark rights in WAL-MART, and the blue stylized lettering, it has failed to show consumers would be confused as to the origin of the products.

Regarding Wal-Mart’s tarnishment claim, the court found that if there was tarnishment, it was the result of satire. A tarnishment claim based upon satire is not actionable under the anti-dilution statute because the speech is protected under the 1st Amendment.

Practice Note: The court early on recognized the campaign as parody, but correctly noted that parody is not an absolute defense to trademark infringement; in a defense against trademark infringement where parody is an element, a party must still prove no likelihood of confusion.

A U.S. District Court in Nevada granted Plaintiff Paradise Canyon’s motion for preliminary injunction against Defendant Integra Investments for Integra’s advertising of its resort properties. The court found Defendant attempted to lure consumers into buying homes by creating a false impression of association with Plaintiff’s famous Wolf Creek Golf Club.

Paradise Canyon owns and operates the famous Wolf Creek Resort and Golf Club in Mesquite, Nevada. The club is renown for its golfing and has been featured as one of the “50 Toughest Courses” in the world. Plaintiff holds four trademark registrations in various classes that include the words WOLF CREEK. Defendant owns a 33 acre parcel of land adjacent to the golf club, which it had earlier attempted to name “Wolf Creek Estates,” but was enjoined from doing so by a court order. Defendant now calls its community Hidden Wolf, and has created advertising to entice buyers to the new development. One such advertisement begins, “WORLD CLASS GOLFING” and goes on to suggest that residents of Hidden Wolf can “play this amazing [Wolf Creek] course every day – just by stepping outside your door.” Various other ads reference the Wolf Creek Golf course by name and then suggest that Hidden Wolf provides access privileges to the famous club.

The court found that while the statements in the ads were not literally false (Defendant never stated it was part of Wolf Creek), the ads had a tendency to deceive potential buyers into thinking a Hidden Wolf home purchase came with golf privileges.

Practice Note: Clients should look critically at their use of third party trademarks in advertising. There are many ways in which defendant might have fairly used the WOLF CREEK. For instance, making an association with the town of Mesquite, which is home to the Wolf Creek Resort, and noting Hidden Wolf’s proximity to the resort, would likely have achieved the same marketing effect without raising the ire of Plaintiff.

Reuters is reporting that the well-known rock band Smashing Pumpkins has filed suit against Virgin Records, claiming that the record company sullied its image by associating it with a Pepsi/Amazon promotion.

According to the law suit, filed in Los Angeles Superior Court on Monday, March 24, 2008, the band claims Virgin used the band’s name, music and images in its “Pepsi Stuff” Promotion, which allows Pepsi drinkers to purchase selected merchandise. In the law suit, the Smashing Pumpkins claim that by using the Band’s image and music as part of the promotion, Virgin has falsely given consumers the impression that Smashing Pumpkins endorsed and was affiliated with the Pepsi Stuff campaign.

Practice Note: Promotions Sponsors must not advertise their promotion in such a way that they create a false sense of Sponsorship with a third party. For instance, while a Sponsor may list the brand name of the prize to be awarded, it may not be able to display a third party trademark or call special attention to that brand in its advertising.

Mallery v. NBC Universal, No. 07 Civ. 2250, 2007 U.S. Dist. LEXIS 88960 (S.D.N.Y., December 3, 2007)

Another “absurd” (the court’s words) claim that a Hollywood studio stole plaintiffs’ ideas for a hit show. And another reminder that not all copying amounts to actionable copyright infringement. That two works of fiction have similar plot, scenes or characters does not necessarily mean there is infringement.

Plaintiffs claimed that the TV show “Heroes” was “strikingly similar” to a novel, short film and painting series they created. “Heroes” is a show that borrows from comic book lore and tells the intersecting stories of a diverse group of individuals who discover they have superhuman powers. In the first season, the characters try to prevent an explosion that is set to destroy New York City, as predicted in paintings created by a character who can draw the future (like the one shown below).

Plaintiffs claimed that “Heroes” was similar to their works in a number of ways. They claimed that it contained characters who were “minorities” and had the ability to paint the future. They also claimed that the stories both featured paintings depicting New York buildings destroyed and predictions that were validated in a newspaper. Other alleged similarities included close up eye images, twin characters, and characters trying to stop tragic events.

The court granted defendant’s motion for summary judgment and held that any similarities between the works related to unprotectable ideas. Storylines such as a minority artist painting the future or heroes trying to stop a catastrophe are scenes à faire, that is to say elements that necessarily follow from the choice of storyline or situation and are not protected by copyright. The court also rejected plaintiff’s argument that the works had similar “total concept and feel.” It noted that any similarities were too abstract for a jury to find substantial similarities and that the two stories “differed in nearly every relevant way.”

This opinion follows a long-line of cases holding that similar stories and characters do not necessarily amount to copyright infringement; for example cases finding that a children’s book about a dinosaur zoo was not substantially similar to the film Jurassic Park, or that the character of Superman was not substantially similar to the TV show “Greatest American Hero.”

Dalton-Ross Homes, Inc. v. Williams, No. CV-06-1301-PCT-FJM, 2007 U.S.Dist. LEXIS 64135 (D. Ar. August 29, 2007).

This case highlights the crucial importance of registering works that copyright owners want to protect and enforce.

Plaintiff, a construction company, owned and registered the copyright in architectural floor Plan 1. A draftsman working for plaintiff prepared Plan 2, based on Plan 1, and Plan 3, based on Plan 2 (and, possibly, Plan 1). Defendants hired the same draftsman, who used plaintiff’s Plan 3 to prepare Plan 4 for defendants. Plaintiffs alleged that defendant’s Plan 4 infringed on plaintiff’s Plan 3, which was derivative of registered Plan 1. Plaintiff never registered its copyrights in Plans 2 or 3.

Dalton-Ross Homes’ Villa Del Mesa model
(”Plan 1″)

The court granted defendant’s motion for summary judgment, stating that copyright registration is a prerequisite to bringing an action in federal court for copyright infringement (17 U.S.C. § 411). A separate registration was required for Plan 3, the derivative work that was the subject of the action. Registration of the underlying original work was not sufficient to create jurisdiction in a lawsuit for infringement of the unregistered derivative work.

The court noted that copying an unregistered derivative work might give rise to liability based on infringement of the registered underlying work, if plaintiff can establish that defendant copied protectable elements of the original work. In this case, plaintiff merely argued that Plan 4 was derivative of Plan 3, which in turn was derivative of Plan 2, which in turn was derivative of Plan 1. Plaintiff never directly argued infringement of Plan 1. If it had done so, the result of the case may have been different.

Jacobsen v. Katzer, No. C06-01905 JSW, 2007 U.S. Dist. LEXIS 63568 (N.D. Ca. August 17, 2007)

This little case about model railroad software addresses a debated issue in the open source community: on what basis can open source creators sue people who misuse their work. This case seems to suggest breach of contract is an available remedy, but not copyright infringement. The case also deals with copyright law preemption.

Plaintiff developed model train software made available on this online community. Plaintiff’s work was subject to a standard open source software license permitting members of the public to make copies, distribute and make derivative works, providing they gave credit to the creators. Plaintiff alleged that defendants used plaintiff’s software to develop and fraudulently patent their own software for model train enthusiasts. Plaintiff sued on a number of counts and moved for a preliminary injunction to enjoin defendants from willfully infringing plaintiff’s copyrighted materials.

The court first held that plaintiff’s claims of unfair competition and unjust enrichment were preempted by federal copyright law, as both counts dealt “exclusively” with the misappropriation of plaintiff’s copyrighted files, a subject matter within the Copyright Act. To survive preemption the state claims must protect different rights than copyright rights. The state claims here did not add the required “extra element” to change the nature of the action or the rights secured under copyright law.

The court then denied plaintiff’s injunction, stating that plaintiff’s claims sounded in contract, not copyright. The court held that, implicit in a non-exclusive license like this one was a promise not to sue for copyright infringement. That is not to say that a licensor may never sue for copyright infringement, but they may only do so when the licensee exceeds the scope of the license. In this case, the license, like all open source licenses, was intentionally broad, closing the door to a copyright claim.

Debunking the myth that a group of attorneys can never agree on anything, 30 attorneys general recently sent a letter to the administrator of the federal Alcohol and Tobacco Tax and Trade Bureau, requesting that the organization investigate the aggressive marketing campaigns that surround the promotion of new energy drinks that mix caffeine and alcohol (a trend started by want-to-have-it-all professionals whose drink of choice is a Vodka and Red Bull cocktail).

The recent boom in energy-alcohol drinks, coupled with the super-sweet alcohol “soft drinks” is sparking a trend by consumers of drinking alcohol beverages designed to feel alcohol-free. If nothing else, the proliferation of drinks like Anheuser Busch’s Bud Extra, Miller Brewing Company’s Sparks, and other alco-energy drinks like Charge and Liquid Core, make clear that such drinks are speeding up the cash conveyor for large companies.

AGs nationwide are concerned that the aggressive position marketers are taking with these drinks, coupled with the “outlandish” health-claims related to the consumption of these energy-pops are misleading. Moreover, many AGs believe that the target market is underage drinkers. Slogans like “You can sleep when you’re 30” and references to “pulling an all-nighter,” appear, at least in the minds of the attorneys general, to be focusing on the under 21 crowd.

Practice Pointer: Even when a marketing campaign is legally sound, and regardless of the product, when companies engage in advertising that is directed at a younger crowd, they run the risk of having parents and watchdog groups complain if the message, however understated, suggests a behavior that is either illegal, or promotes unhealthy habits. Attorneys should advise their clients to be prepared for fallout when launching aggressive marketing campaigns.

Tiseo Architects, Inc. v. B &B Pools Serv. and Supply Co., No. 06-1819, 2007 U.S. App. LEXIS 17894 (6th Cir., July 20, 2007)

This case illustrates the long-standing, but sometimes forgotten, copyright principle: that one must first analyze whether the similarities between defendant’s and plaintiff’s works pertain to original elements of plaintiff’s work. If they do not, then there is no infringement.

First, the facts: B&B Pools hired Tiseo Architects to prepare design drawings for its store remodel; then later hired a new architect, Olson, to prepare the construction plans. Tiseo sued for copyright infringement.

The Sixth Circuit affirmed the lower court’s finding of no infringement. Even when works are very similar and access to plaintiff’s work is obvious, defendant’s work must be substantially similar to protectable elements of plaintiff’s work. Filtering out the unoriginal, unprotectable elements of Plaintiff’s plans (such as elements dictated by the client or zoning regulations), the court reached the logical conclusion: there are not a lot of ways for an architect to draw plans for an existing office.

Practice Tip: Practitioners should take care to fully analyze the elements of their infringement cases. The result in this case might have been different if Plaintiff had briefed the similarities between the protectable elements of the drawings, which, according to the Sixth Circuit Court, it did not do.