July 2008 Quick Links, Part I (IP Edition)

By Eric Goldman

Copyright

* Granger v. Gill Abstract Corp., 2008 WL 2791264 (S.D.N.Y. July 18, 2008). A title company admitted infringing the defendant’s copyrighted “rate calculator” by posting it to the title company’s website. The plaintiff demanded actual damages of $766 MILLION on the theory that the title company’s entire revenues were attributable to the rate calculator on the website. The court dismisses this argument as “preposterous.” Instead, the plaintiff admitted that its licensing rate is $500/year, so the court awards a maximum of $1,500 for three years of infringement, an amount that the defendant surely would have happily paid to settle before going to court if the plaintiff would have accepted it. Instead, this is great example of a dispute that had no chance of settling because the plaintiff’s demands were so out of this universe. For another example of irrational plaintiff damage demands faring poorly in court, see the Gregerson case.

* An update on Designer Skin v. S&L Vitamins. You may recall that S&L Vitamins lifted product shots from Designer Skins, and in the previous ruling, the court said that such copying isn’t fair use. However, in a July hearing, the court subsequently concluded that Designer Skin suffered no actual damages from the copying when S&L marketed legitimate Designer Skin goods using the images, netting the plaintiff zero dollars. An injunction may still be possible. Of course, plaintiffs in the future will try to register their product shots on a timely basis, positioning themselves for statutory damages and attorneys’ fees, so this ruling is helpful only in the cases where the registration isn’t timely.

* Chronicle of Higher Education: “When Web Sites Post Test Answers Online, Professors Worry”

* 11th Amendment geeks will be interested in the CRS on Infringement of Intellectual Property Rights and State Sovereign Immunity, July 23, 2008.

Trademark

* Nothing spoils a good birthday party like trademark concerns.

* Paul Levy informs us that the ABA IP Section has finally given up their pointless quest to opine on the keyword advertising issue.

* CafePress has settled a trademark infringement lawsuit by Hustler magazine.

* This month, several interesting trademark academic articles emerged:

1) Margreth Barrett, Finding Trademark Use: The Historical Foundation for Limiting Infringement Liability to Uses ‘In the Manner of a Mark’ Prof. Barrett does some historical sleuthing to determine the scope of trademark use in commerce” doctrine, and she offers a suggested multi-factor test for defining use in commerce in the future. I previously blogged on one of Prof. Barrett’s earlier papers on this topic.

2) Bill McGeveran, Rethinking Trademark Fair Use. Prof. McGeveran discusses trademark rules vs. standards and the interplay between the plaintiff’s prima facie case and the defenses.

3) Ken Port, Trademark Extortion: The End of Trademark Law. Prof. Port marshals some empirical evidence to argue that the quantity of trademark lawsuits is dropping but more trademark demands are settling on extortionate terms prior to a lawsuit being filed.