Monday, June 30, 2014

Quashing a John Doe Subpoena To Protect Your Privacy?

Nope.  Malibu Media owns a library of adult films (and the associated copyrights) and sells access to its members for a monthly (or yearly) fee.  80,000 users per month access its films without paying using sites like BitTorrent.  So there is a fair amount of litigation throughout the federal courts where Malibu Media seeks recovery for copyright infringement.  Through its investigations, Malibu can find out the IP address of the alleged infringer, but needs to get to a person to figure out whom to sue.  So they sue John Doe, and file a motion asking for permission to serve a subpoena prior to the Rule 26(f) scheduling conference (as it's not possible to serve a defendant, let alone have a case management conference, if you don't know who the defendant is).  A plaintiff in such a circumstance must show good cause for issuing a subpoena.  Courts routinely find good cause exists when Plaintiff's makes:
(1) a prima facie showing of infringement,
(2) there is no other way to identify the Doe Defendant, and
(3) there is a risk an ISP will destroy its logs prior to the [Rule 26(f) conference].
quoting UMG Recording, Inc. v. Doe, Case No. 08-193 (N.D. Cal. Sept. 3, 2008).  Malibu met that standard here and received permission to serve the subpoena to the ISP.

John Doe anonymously filed a motion to quash the subpoena, arguing that: (1) the ISP can't identify the actual infringer, it can only identify whomever pays for the IP address; (2) such techniques by plaintiffs like Malibu are "Bad Investigation Techniques;" and (3) identifying the information allows "Plaintiff to Pursue Abusive Litigation."

The problem with these arguments was they did not deal with the means for quashing a subpoena spelled out in Rule 45, which requires a Court to quash a subpoena when the subpoena: (1) does not allow reasonable time to comply; (2) violates certain geographic restrictions; (3) requires disclosure of protected information; or (4) subjects the recipient to undue burden.  The Court is also permitted (but not required) to quash a subpoena: (1) to protect a person from disclosing a trade secret or other confidential information; or (2) to protect from the disclosure of an expert's opinion.

Here, John Doe's argument didn't fall into these exceptions so the Court could not (and did not) quash the subpoena.

Motion to quash subpoena, denied.
Malibu Media, LLC v. Doe, Case No. 2:14-CV-154 (M.D. Fla. June 24, 2014) (Mag. Mirando)

Thursday, June 26, 2014

Is "Pods" generic for promoting self storage goods and services?

We'll have to let the experts opine on that question.  U-Haul is using the words "pod" and "pods" on its website to attract web traffic.  PODS Enterprises, Inc. ("PEI") owns a number of federal trademark registrations for PODS (and associated designs).  See Registration Nos. 2,365,848, 3,011,459, 3,666,828, and 3,689,446.  PEI sued U-Haul for trademark infringement.  (U-Haul has sought cancellation of the four registrations).

In its defense in the litigation, U-Haul is arguing that "pods" is generic for portable containers used in transportation and storage of goods.  (As you'll likely recall, generic trademarks are no trademarks at all.  The test generally followed is the primary significance test; i.e. what is the primary significance of the mark in question in the minds of the consuming public -- to identify the goods or the producer of the goods?  If it identifies the goods, the mark is generic.  If its primary significance is to identify the producer, the mark is not generic.)  The most widely used survey to resolve genericness issues is known as a Teflon survey:
A Teflon survey first establishes whether the respondent grasps the distinction between comon names (airline or automobile) and brand names (American Airlines or Chevrolet), and then asks the respondent to categorize a number of terms as common or brand...
See also E.T. Browne Drug Co. v. Cococare Prods., Inc., 538 F.3d 185, 195 (3d Cir. 2008).   Here, U-Haul's expert designed a Teflon survey "to determine whether U.S. consumers who are likely to use moving and storage services understand the principal or primary significance of the terms 'pods' and 'pod' in the context of moving and storage to be a brand or proprietary name or, alternatively, to be a common or generic name."

The expert testified that the relevant consuming public was those people "likely to use moving and storage services."  But the survey (of 694 respondents) was only conducted on people who had actually  moved in the past few years or those that were expecting to move within the next year.  PEI believed the survey methodology was flawed for 2 reasons.  First, it included too few people because it did not include people who were likely to use storage services over the next year (it only included those likely to move over the next year).  Second, the survey included too many people because it included respondents who intended to move without using a moving or storage company.  PEI challenged the expert's methodology as flawed, and called on the Court as gatekeeper to exclude the expert under Daubert.

The Court dispensed with the motion quickly:
The general reliability of Teflon surveys cannot be questioned, given their wide acceptance.  See In re DaimlerChrysler AG, Serial No. 74/734,869 (TTAB July 26, 001) ("The so-called ‘Teflon survey’ is widely accepted in determining whether a term is generic.”); Anheuser–Busch Inc. v. Stroh BreweryCo., 750 F.2d 631, 639 (8th Cir.1984) (characterizing a Teflon survey as “properly conducted”); Invisible Fence, Inc. v. Fido ‘s Fence, Inc., No.3:09–CV–25, 2013 WL 6191634 (E.D.Tenn. Nov.26, 2013) (accepting a survey that “generally” complies with Teflon ). Rather, PEI perceives multiple technical deficiencies in Dr. Wood's survey, including an improper universe of respondents and improper questioning.
Such technical deficiencies go to the weight of Dr. Wood's opinions, not their admissibility.
Motion to Exclude Expert, Denied.
Pods Enterprises, Inc. v. U-Haul International, Inc., Case No. 8:12-cv-1479 (M.D. Fla. June 12, 2014) (J. Whittemore)

Saturday, June 21, 2014

Permanent Injunction For A Willful Copyright Infringer?

Nope.  Injunctions do not automatically flow after a finding of infringement, even where infringement is willful.  Yellow Pages Photos sued Ziplocal and Yellow Pages Group for unauthorized usage of YPP's photos.  YPP produces and licenses images for use in advertising.  Ziplocal was formerly a licensee of YPP and YPG created and produced advertisements for Ziplocal.

YPP prevailed at trial, convincing the jury that defendants had willfully infringed its copyrights.  Specifically, the jury awarded $100,001 against Ziplocal for breach of contract, willful copyright infringement of 123 works, and contributory copyright infringement of 123 works.  The jury also awarded $123,000 against YPG for willful copyright infringement of 123 works.  After the jury trial, YPP sought both prejudgment interest and a permanent injunction.

To obtain a permanent injunction, you must show: (1) irreparable harm; (2) damages do not adequately compensate you for the harm; (3) the balance of hardships justifies an injunction; and (4) the public interest is best served with an injunction.  Even though you've established willful infringement, you must still prove these four factors.  The problem for YPP was that it had testified that money was enough to compensate for its injury and that it hadn't made any new sales in years:
Looking at the factors of irreparable harm and inadequate remedy at law, the Court concludes that Plaintiff has not shown that it will likely suffer irreparable harm in the future such that the damages already awarded by the jury will not adequately compensate for any losses. At the time of trial, and according to its sealed financial records, Plaintiff had not secured new customers since 2009. As the income from Plaintiff's photos and licensing revenues declined, Plaintiff did not obtain new customers, although Plaintiff's principal continued to attempt to market the photos and entered into negotiations to sell licenses to no avail. Without a new market or income stream derived from photos or licenses for approximately five years, Plaintiff is unable to show that it would be irreparably harmed by loss of income.

In addition to the lack of irreparable harm, Plaintiff's principal's testimony supports a finding that damages provide an adequate remedy at law, thereby negating the necessity of entering permanent injunctive relief. Plaintiff's principal testified that a monetary award would compensate him for Plaintiff's losses in the market. The Court concludes that the jury's finding of willful infringement on the part of both Defendants and ensuing damage award, provides an adequate remedy at law for Plaintiff's losses.

The Court did, however, award prejudgement interest ($17k against Ziplocal and $22k against YPG).

Permanent Injunction denied; prejudgment interest granted.
Yellow Pages Photos, Inc. v. Ziplocal, LP, Case No. 8:12-cv-755 (M.D. Fla. June 18, 2014) (J. Lazzara)

Wednesday, June 18, 2014

REDSKINS - Trademark Cancellations

Sure, this is a blog about Florida IP issues.  But everyone is talking about this decision.  You can read the decision here and you can read about it in a number of places (Sports Illustrated, Washington Post, New York Times, Tampa Bay Times, etc.)  If you've read enough of those articles, you know by now that the decision impacts Pro-Football, Inc.'s right to have registrations for the challenged REDSKINS marks, not whether or not the team from Washington can use the name.  And you've probably already read that the team from Washington intends to continue using the name and will challenge the trademark decision.

So why post this decision here?  What makes this an interesting IP development in central Florida?  You'll have your answer if you turn to page 17 of the decision.  You know from reading the decision that the challengers needed to show 2 things to cancel the registrations under 15 USC 1052(a) for disparaging persons or bringing them into contempt or disrepute: First, the Board must determine what is the meaning of the trademark at issue as it is used in commerce -- i.e. what is the meaning of REDSKINS as used by Pro Football.  And second, is the meaning of the marks one that offends Native Americans.  (As to this second inquiry, it's interesting to note that the test is not whether a majority of Native Americans would be offended, but rather would a "substantial composite" of Native Americans be offended (at the time of registration)).

So what's on page 17?  To show the first element (the meaning of the mark as its used), the Board showed the team from Washington's usage of the mark (and how it maintained a Native American meaning). And to do so, the Board relied on  Doug Williams - former Tampa Bay Buccaneers quarterback.  Thus, Tampa plays a key part in this decision, and justifies writing about it here.

Blackhorse v. Pro-Football, Inc., Cancellation No. 92046185 (TTAB June 18, 2014)

Tuesday, June 10, 2014

Can A Non-Exclusive Trademark Licensee Sue for Trademark Infringement?


Hollywood Collectibles had a license to manufacture knives in connection with the trademark RAMBO.  (The knives were replicas of the knives in the first three Rambo movies.)  Hollywood Collectibles granted a sublicense to Master Cutlery.  After the fourth Rambo movie was released,  Hollywood again obtained a license to manufacture replica knives, and again granted a sublicense to Master.  Both sublicenses to to Master expired in 2010.  The parties attempted to negotiate another sublicense, but that did not work out.  Hollywood formally terminated the sublicense in 2012.

Master continues to manufacture replica knives, so Hollywood sued for (among other things) trademark infringement.  Master moved to dismiss for lack of jurisdiction, as Hollywood didn't have standing:

Lanham Act's cause of action for infringement of a registered trademark, 15 U.S.C. § 1114(1), is available only to a “registrant” of the trademark at issue, a term the Act defines as extending to the actual registrant's “legal representatives, predecessors, successors and assigns.” 15U.S.C. § 1127. Under some circumstances, an exclusive licensee has standing to pursue a trademark infringement action. See, e.g., Drew Estate Holding Co., LLCv. Fantasia Distribution, Inc., 875 F.Supp.2d 1360, 1366 (S.D.Fla.2012) (citing cases). However, in both of the licenses obtained by Hollywood Collectibles, the licensor retained the right to manufacture and sell Rambo knives for promotional and other purposes .  As a nonexclusive licensee, Hollywood Collectibles lacks standing to pursue a trademark infringement claim.
Motion to dismiss granted with prejudice.

Hollywood Collectibles Group, LLC v. Master Cutlery, Inc., Case No. 6:14-CV-176 (M.D. Fla. May 22, 2014) (J. Presnell)