U.S. Intellectual Property and
New Media Law Update
Volume I, Issue XXII - Monday, September 29, 1997
TABLE OF CONTENTS:
There Is Only One Playboy
(Visible or Invisible) On The Internet
Playboy Enterprises, Inc. v. Calvin
Design Label, Calvin Fuller and Calvin Merit (D.C. Cal., San Francisco
-Decided- September 8, 1997)
Incidental Use As Background
In A Television Show Can Be Copyright Infringement
Ringgold v. Black Entertainment
Television, Inc., Home Box Office, Inc. (Second Circuit - Decided- September
16, 1997)
It's Never Too Late To Sue
For Infringement
NEWSLETTER:
There
Is Only One Playboy (Visible or Invisible) On The Internet
Playboy Enterprises,
Inc. v. Calvin Design Label, Calvin Fuller and Calvin Merit (D.C. Cal.,
San Francisco -Decided- September 8, 1997)
Playboy Enterprises, Inc. ("PEI") owns federal
trademark registrations for PLAYMATE and PLAYBOY. Defendants are
using the domain name "playboyxxx.com" and "playmatelive.com." Defendants
also use "Playmate Live Magazine" and "Get it all here @ Playboy" on their
web page. Defendants also used PEI's trademarks in metatags on their
web pages. Metatags are hidden information (not visible on the web
page) which is used to help search engines locate particular web pages.
PEI moved for a preliminary injunction pending
outcome of the case and the Court did not spend much time in finding that
the likelihood of success, irreparable harm, and the balance of hardships
were all in PEI's favor. The Defendants were enjoined from using
the PLAYMATE or PLAYBOY trademarks or any other term or terms likely to
cause confusion, including "Playmate Live," "playboyxxx.com," or "playmatelive.com"
as Defendants' domain name, directory name or other computer address.
The Court included in its injunction a prohibition
of use of PEI's trademarks in metatags by Defendants. Thus,
the injunction protected against confusion resulting from a person searching
for PEI's website being directed to Defendants' site, although the person
never sees the mark. This appears to be the first reported decision
where metatag use has been enjoined.
The decision is available on-line at:
http://www.ljx.com/LJXfiles/playboy/playmateorder.html
Incidental
Use As Background In A Television Show Can Be Copyright Infringement
Ringgold v. Black Entertainment
Television, Inc., Home Box Office, Inc. (Second Circuit - Decided- September
16, 1997)
Plaintiff is a successful contemporary artist
who created and owns the copyright in a work of art entitled "Church Picnic
Story Quilt." While retaining her copyrights, the work itself is
owned by the High Museum in Atlanta, Georgia, which was also given a non-exclusive
license to reproduce the story quilt design as a poster and to sell these
reproductions. Thousands of copies of the poster have been sold since
the license was granted. While the license to reproduce poster copies
of the quilt have terminated, copies of the poster remain available for
sale.
Defendants produced a telephone sitcom series
called ROC concerning a middle class African-American family living in
Baltimore. In one of the episodes a poster showing the Plaintiff's
work was at least partially visible on the set for 26.75 seconds.
There was nothing in the dialogue, action or camera work which called attention
to the poster, per se.
Plaintiff sued alleging infringement of her copyright
because of the unauthorized use of the poster as part of the set decoration
for that episode. Defendant claimed that this half minute use was
either so slight as to be below the threshold for litigation (de minimis)
or fair use. The lower court granted Defendants' motion for summary
judgment and dismissed the complaint. The Second Circuit disagreed.
The Second Circuit in looking at the de minimis
prong of the defense, analyzed the number of seconds the poster was visible,
whether all or less than all of the poster was visible and the level of
focus. After analysis the Court felt that the poster was clearly
visible for a sufficient time not to be a de minimis use. The Second
Circuit, after a detailed analysis, also found that the use was not a fair
use since its use was not analogous to the examples of fair use found in
the statute, i.e., criticism, comment, news reporting, teaching, scholarship,
or research. See 17 U.S.C. 167.
This case must send a chill down the back of every
movie and television production company and advertising agency since it
would essentially require agreement of every author of every copyrighted
work which is clearly visible during a broadcast. We will have to
see if this reasoning is followed in other circuits.
The case can be viewed at:
http://www.law.pace.edu/lawlib/legal/us-legal/judiciary/second-circuit/test3/96-9329.opn.html
It's
Never Too Late To Sue For Infringement
Kason Industries, Inc.
v. Component Hardware Group, Inc., Peachtree Distributing, Inc. (Eleventh
Circuit - Decided- August 29, 1997)
Plaintiff manufactures and distributes commercial
refrigeration and food service equipment. Defendants copied the appearance
of Plaintiff's equipment. Plaintiff sued for trademark infringement
and unfair competition. Defendants claimed laches.
Plaintiff became aware of the infringement in
1986. A letter was sent but no further action was taken until the
present action was commenced in 1995. In the 1990's Defendant began
to copy additional items of hardware. No letters were sent or action
taken.
The Lanham Act does not have a statute of limitations
so one looks to the most clearly analogous state court statute of limitations
with regard to the question of laches. Below, the District Court
felt the most nearly analogous statute was Georgia's Fair Business Practice
Act which had a two year limitation. The Court of Appeals found that
the Georgia statute most analogous was that of the Georgia Uniform Deceptive
Practice Act which did not have a statute of limitations and then applied
the general four year statute of limitations governing injuries to personalty.
Among other things, the Court applied the Doctrine of Progressive Encroachment
to excuse the delay, i.e., where the Defendants began use of a trademark
or trade dress and then later directed its marketing and manufacturing
efforts such as to place it more squarely in competition with the Plaintiff,
the Plaintiff's delay is excused. Here, Defendants only became a
serious competitor for the copied goods recently, as it kept copying more
of Plaintiff's designs. The Court of Appeals ordered the District
Court to reevaluate the question of laches in view of its decision.
The District Court also denied a preliminary injunction. In view
of the rest of the opinion, the Court also sent this question down to be
reviewed by the District Court.
This decision can be viewed at:
http://www.law.emory.edu/11circuit/aug97/96-9157.opa.html
Passive Advertising On A
Web Page Held Not Enough To Obtain Jurisdiction Over A Foreign Entity
Weber v. Jolly Hotels,
et al. (D. New Jersey -Decided- September 12, 1997)
For a pleasant change of pace, this case arises
out of a slip and fall Plaintiff suffered while a guest at one of Defendant's
hotels in Italy. The Defendant, an Italian company, moved the Court
to dismiss the action for lack of personal jurisdiction. Although
the Court concluded that it does not have jurisdiction over the Defendant,
it did not dismiss the case but rather transferred the case to the Southern
District of New York in order to assure that the statute of limitations
would not bar this suit if jurisdiction was established in New York.
Defendants own and operate 32 hotels in Italy
and independent subsidiaries own and operate hotels in Holland, France,
Belgium and New York. Defendant does not conduct any business in
New Jersey. It does provide a web page on the Internet showing photographs
of hotel rooms, description of hotel facilities, information about numbers
of rooms and telephone numbers. Among other things, Plaintiff argued
there was general jurisdiction because Defendant's use of the Internet
was the equivalent to directly advertising in New Jersey. The Court
rejected this argument.
The Court noted that the likelihood that personal
jurisdiction can be constitutionally exercised is directly proportionate
to the nature and quality of commercial activity that an entity conducts
over the Internet. It divided the existing cases on jurisdiction
for Internet use into three categories. The first category includes
cases where defendants actively do business on the Internet. In those
cases personal jurisdiction is generally found. The second category
is where a user exchanges information with the host computer. In
such a case the exercise of jurisdiction is determined by examining the
level of interactivity and commercial nature of the exchange of information
that occurs on the web site. The final category involves passive
web sites. These sites which merely provide information or advertisements
to the users. The Court indicated that, in general, jurisdiction
should be declined in such situations because it would mean there would
be nationwide, indeed worldwide, personal jurisdiction over anyone and
everyone who establishes an Internet web site.
The Court found that, in this case, Defendant's
web page was of the third type and, as such, merely an advertisement, not
a means of conducting business. The Third Circuit has consistently
held that advertising in national publications does not constitute continuous
and substantial contact with the forum state. Similarly, the Court believed
that advertising on the Internet is not tantamount to directing at or purposely
availing oneself of the particular forum and, thus, exercising jurisdiction
over the defendant would violate the due process clause of the 14th Amendment.
This decision can be viewed at:
http://home.dti.net/bdpc/jolly.htm
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