Thursday, July 28, 2011

7th Circuit: Raised quilting pattern on toilet paper functional; trademark protection denied

In an entertaining opinion peppered with puns, the 7th Circuit affirmed the dismissal of Georgia-Pacific’s claims that the raised quilting patterns on Kimberly-Clark’s Cottonette brand of toilet paper infringed Georgia-Pacific’s alleged trademark rights in the raised quilting pattern of its Quilted Northern brand. The appeals court agreed with the district court that Georgia-Pacific utility patents and advertising touted the utilitarian benefits of the raised quilting pattern. The court was unpersuaded that the existence of design patents on the quilting pattern undercut what it viewed as clear statements in G-P’s utility patents about the utilitarian benefits of the quilting.

The case is Georgia-Pacific Consumer Prods. LP v. Kimberly-Clark Corp., No. 10-3519 (7th Cir. July 28, 2011).

9th Cir.: Keyword ads misleading; “splash screen” portal with bold disclaimer conditionally approved, Inc. v. Edriver Inc., No. 08-56518 (9th Cir. July 28, 2011), involved the folks who own (and also display several “[state]” domains that resolve to – a website that is designed to assist people in renewing licenses, buying car insurance, registering vehicles, drivers’ ed classes, dealing with traffic tickets, and other car-related issues. Competitors complained that’s domain names, which were prominently displayed in sponsored ads when Google users searched for certain government/vehicle related terms, fooled users into thinking that was a state entity and clicking on the links. The plaintiffs alleged that they lost revenues, such as click-through referral fees, because of the deception and sued under the false advertising provisions of the Lanham Act.

The 9th Circuit affirmed standing primarily because the parties competed for click-through referral revenues with overlapping service providers and because lots of people were tricked into thinking was a government entity. The 9th Circuit also affirmed conditionally approved the district court’s injunction requiring a “splash screen” that immediately appeared when users clicked on’s sponsored ads, and which clearly warned that was not a government website.  The 9th Circuit thought that requiring the splash screen in perpetuity implicated First Amendment commercial speech concerns.  It therefore remanded so that the district court could either (a) explain what conditions the defendant needed to fulfill to have the splash screen requirement lifted or, in the alternative, (b) simply enjoin the defendants from making false or misleading statements on their website.

As to money, the 9th Circuit refused to award profits because the plaintiffs produced no evidence of past monetary injury or causation. But the court remanded for a determination whether the plaintiffs should get attorneys’ fees, primarily because the court viewed the plaintiffs as having paid a lot of money to ameliorate a concrete harm to the public caused by’s deceptive practices.

(NB:  subsequent corrections to initial post made by strikethrough and underlining, except in the title, where Blogger doesn't permit strikethrough and underlining.)

Tuesday, July 26, 2011

7th Circuit: Decisions on Assignability of TM License; Originality of Architectural Plans

In In re XMH Corp., No. 10-2596 (7th Cir. July 26, 2011), an appeal of a bankruptcy court decision, Judge Posner held that the debtor could not assign an allegedly executory trademark license because the agreement was silent on assignability and trademark law’s default rule is that “trademark licenses are not assignable in the absence of a clause expressly authorizing assignment.”

In the architectural copyright case, the panel held that the architect failed to demonstrate that its designs were original (and therefore protectable) where they were based “for the most part” on its hotel-chain client’s prototype, and the few differences were “specifically requested by [the client] through written requests accompanied by graphic designs.” The case was Nova Design Build, Inc. v. Grace Hotels, LLC, No. 10-1738 (7th Cir. July 26, 2011).

Friday, July 22, 2011

Opinion styles and public perception of judicial legitimacy

Here’s a link to an interesting psychological research paper on people’s perceptions of the legitimacy of judicial decisionmaking. It has two basic conclusions. First, and not surprisingly, people tend to view decisions resulting in outcomes they agree with as more legitimate. And they don’t care as much about the reasoning when they agree with the outcome.

But the second finding has significant implications for how judicial decisions are written. The study assessed people’s views of the legitimacy of 4 kinds of written decisions: (1) a simple “party X wins” decision; (2) a decision giving one short reason why party X wins; (3) a decision listing several reasons favoring the victor, party X; and (4) a decision fairly setting forth each side’s arguments, acknowledging the difficulty of the issues presented, and then choosing party X as the victor because its arguments were, on balance, more persuasive.

In my 20 years of practice, I’ve seen several type (1) and type (3) decisions. I’ve seen fewer type (2) decisions, and fewer still examples of the most “legitimate” type (4) decisions. In fact, in the most significant (to me) appellate decision rendered in one of my cases, I very unsatisfactorily lost in a type (3) decision.

But this study – which concludes that further research is needed – certainly indicates that the judiciary could enhance its governmental legitimacy in the public’s eyes by issuing opinions that acknowledge both sides of an argument (where appropriate).

(HT to How Appealing for noticing the article)

UPDATE (8/5/2011):  Recently received a district court order denying a complicated 12(b)(1) motion I wrote concerning whether a DJ action actually raised a justiciable case or controversy.  It raised very subtle arguments.  The court basically ignored the complexities presented, significantly oversimplified our arguments, and wrote the opinion as if it were an easy decision (kind of like the appellate decision I referenced above -- a variation on the type (3) decision).  Nothing is more frustrating.  Rule against me?  Fine, I have no problem with that.  But at least accurately characterize my arguments and explain why you disagree.  Really, lawyers can handle an honest loss.       

Tuesday, July 05, 2011

8th Circuit Tom & Jerry, Wizard of Oz copyright decision

In an interesting decision, the 8th Circuit today largely upheld an injunction against AVELA (yes, the folks from the infamous Betty Boop case I previously blogged and wrote about) prohibiting it from selling certain items bearing reproductions of Tom & Jerry and characters from the Wizard of Oz. 

In Warner Bros. Entertainment, Inc. v. X One X Productions, No. 10-1743 (8th Cir. July 5, 2011), the films featuring these characters were copyrighted, but certain pre-film publicity photos and drawings of the characters were not.  The issue was whether, and to what extent, the public domain status of the pre-film publicity photographs and drawings of the characters immunized AVELA from reproducing both exact duplicates and tweaked reproductions.  The court's analysis focused on whether the tweaked aspects of the AVELA reproductions were derived from aspects of the characters developed in the films themselves.