Copying Another Attorney’s Legal Brief is Not Fair Use

On September 13, 2016, the U.S. District Court for the Central District of California ruled that an intellectual property attorney had failed to show his copying of another’s legal brief was fair use.

Plaintiff Newegg, Inc. had been sued for patent infringement in the Eastern District of Texas, and Defendant Ezra Sutton represented Newegg’s codefendant Sakar International, Inc. in that litigation. Newegg and Sakar prevailed and subsequently moved for attorneys’ fees and costs. The district court denied the motion, and both parties separately appealed to the Federal Circuit. Prior to filing their opening appellate briefs, Newegg and Sutton agreed that Newegg would provide Sutton a draft of its brief only if Sutton agreed in writing that he would not copy any excerpts of Newegg’s draft and would use it only for reference and resource purposes. Then, one day before Newegg filed its brief, Sutton filed a brief on behalf of Sakar that was virtually identical to Newegg’s draft brief. Newegg sued Sutton for copyright infringement.

On Newegg’s motion for partial summary judgment, the issue before the court was whether Sutton’s copying constituted fair use of Newegg’s draft brief. The court analyzed the four statutory fair use factors: (1) the purpose and character of the use; (2) the nature of the copyrighted work; (3) the amount and substantiality of the copyrighted work used; and (4) the degree of harm to the potential market.

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Trademark Infringement Suit Against Kanye West Precluded by the First Amendment

The U.S. District Court for the Southern District of New York recently dismissed a trademark infringement complaint against Kanye West on the ground the claims were precluded by the First Amendment.

In 2008, plaintiff Michael Medina created a two-person Latin band called “Loisaidas.” The band’s name originated from the fact that Medina and his bandmate were from Manhattan’s Lower East Side, and “Loisaidas” is the Spanish slang for “lower east siders.” Medina obtained trademark registrations for LOISAIDAS covering a variety of goods related to music audio recordings and music videos.

In 2015, Kanye West and co-defendant Damon Dash created eight episodic short films containing various musical elements about a violent turf war for control of the Lower East Side’s drug business. The films were collectively titled “Loisaidas” and used the logo below, which shows the word “Loisaidas” stylized as a skyline, above a handgun:


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Tiffany Awarded $8.25M In Punitive Damages For Costco’s Sale Of Counterfeit Rings

On October 5, 2016, a Manhattan civil jury awarded Tiffany $8.25 million in punitive damages for Costco Wholesale Corp.’s sale of rings falsely identified as brand-name “Tiffany” rings. This ruling came on the heels of the jury’s earlier award of $5.5 million in compensatory damages for Costco’ unlawful profits dating back to 2007.

The case arose out of Costco’s marketing and display of non-Tiffany-brand solitaire diamond rings proximate to signage reading “Platinum Tiffany” and “Round Diamond Ring,” or “Platinum Tiffany” and “Round Brilliant Solitaire Ring.” Tiffany alleged that Costco did not use the “Tiffany” trademarks in its online advertising, making it difficult to detect its activities through Tiffany’s normal trademark policing procedures. Upon learning of Costco’s in-store activities in December 2012, Tiffany immediately objected and subsequently filed suit in February 2013.

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