Friday, February 23, 2007











FOR IMMEDIATE RELEASE Contact: Clair S. Sassin

clair@sassinconsulting.com

703-820-6052, x1



Seventh Circuit Dismisses Appeal by Leo Stoller

Pure Fishing’s Assertions of Invalid Trademarks Upheld


(Washington, D.C. – February 23, 2007) – Last week the Seventh Circuit Court of Appeals dismissed the appeal of Leo Stoller against the outcomes of the trademark infringement case Central Mfg. Co. vs. Pure Fishing, Inc. The dismissal of Mr. Stoller’s appeal ends decades of trademark infringement lawsuits and oppositions of questionable factual foundation. By upholding the original conviction, the court validates Pure Fishing’s assertion that Mr. Stoller’s trademarks were invalid and that the injunction levied against him was just and fair.


On October 4, 2006, the federal district court in Illinois entered final judgment on all counts in favor of Pure Fishing, et al. Further, the district court declared the case to be “exceptional” under 15 U.S.C. § 1117(a) and ordered Mr. Stoller, Central Mfg. Co. and several other of Mr. Stoller’s wholly owned companies to pay Pure Fishing’s costs, charges and disbursements incurred in the action.

In addition, the district court:

(1) Ordered that US Trademark Registration No. 1,766,806 and the STEALTH mark for fishing bobbers was “lapsed, invalid, abandoned, unenforceable, and forfeit under federal and common laws;”

(2) Canceled each of the 33 STEALTH trademark registrations listed in the complaint;

(3) Held that there was no reasonable likelihood of confusion with respect to the mark used by Pure Fishing;

(4) Held that Mr. Stoller and his companies were liable for a prior sanction judgment in S Industries, Inc. v. Centra 2000, Inc., 1998 U.S. Dist. LEXIS 10649, 1998 WL 395161 (N.D. Ill. 1998) so as to allow execution against that judgment; and

(5) Enjoined Mr. Stoller and his companies from, inter alia, “dissipating, transferring, assigning, liquidating, or otherwise removing the trademark assets.”

In a rare decision, the Court further ordered that Mr. Stoller and his companies were “vexatious litigants” and barred them “from instituting any lawsuit or trademark opposition without prior leave of this Court pursuant to this Court’s authority under the All Writs Act 28 U.S. C. § 1651(a).” This injunction follows a sanction entered by the U.S. Patent and Trademark Office in July 2006 that prohibits Mr. Stoller from filing certain types of documents against trademark applicants for two years and requires that he use a lawyer for such documents thereafter.


In response to this district court judgment, Mr. Stoller filed an appeal to challenge the fairness of the sanctions and the cancellation of his STEALTH trademarks.


Over the course of these legal proceedings, documents and testimony revealed that Mr. Stoller was engaged in an average of 30-40 oppositions or trademark lawsuits each year since 1996. Conservative estimates place Mr. Stoller’s impact on the US economy for the last 11 years between $60-100 million in unnecessary legal costs to trademark applicants. Mr. Stoller’s personal bankruptcy case remains pending in Illinois (05 B 64075), and he continues to assert his Fifth Amendment right against self-incrimination against efforts by the court-appointed trustee to determine the scope and extent of his financial estate.


-- MORE --






Roylance, Abrams, Berdo & Goodman, L.L.P. (www.roylance.com) based in Washington, DC, served as lead counsel with Lance G. Johnson as lead partner; Banner & Witcoff (www.bannerwitcoff.com) of Chicago was the local firm.


Roylance, Abrams, Berdo & Goodman, L.L.P. specializes in protecting and defending the intellectual property assets, copyrights and trademarks for their clients. Known for innovative solutions, we use groundbreaking and

traditional legal strategies to provide a full range of services including litigation, licensing, trade secret matters and unfair competition to companies worldwide. We have extensive experience in proceedings before the U.S. Patent and Trademark Office and prevailed in the first-filed inter partes patent reexamination. Clients include Hubble Incorporated, Pure Fishing, Samsung Electronics, The American Farm Bureau, and XM Satellite Radio. Roylance, Abrams is headquartered in Washington, DC. For more information, visit www.roylance.com.


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Tuesday, June 14, 2005

Goodbye, Blogger

We stopped posting on Blogger in June, 2005. Please go directly to www.likelihoodofconfusion.com for our Word Press version.

Sunday, June 12, 2005

Likelihood of Revelation

The last week or so has been light on blogging, largely because of technological issues but also because of a slow week in topical news plus the occasional need to practice law around here.

It doesn't get better too fast because we will be out of the reality-based loop due to our office's observance of the Jewish festival of Shavuoth, the celebration of the Revelation that made the Jews the chosen nation. (Nice! Right?)

See you after shul.

Thursday, June 09, 2005

Taking the IP Train

The New York Times reported (yes, reg. req.) last week that New York's Metropolitan Transit Authority is scrambling to enforce trademark rights in its wide array of iconography, including the famous alphanumeric train symbols known to all New Yorkers.


Evidently powered by the MTA's burgeoning licensing program, it's not a bad idea. No question but that these and the many other powerful symbols used by the transit system are excellent communicators of source, quality and all those other trademarky things. The New York transit system, especially the subway, is an entire subculture unto itself. In other words, don't be surprised if there's some pushback on this new, and somewhat belated, attempt to kind of privatize, or revenue-ize, a world that generations of people think of as "everybody's" property. Of course, the libertarians remind us constantly, and accurately, that when something is everyone's property, it is ultimately treated like no one's property at all -- which "everyone" ends up paying for. Still and all, there is an interesting trademark policy issue in here somewhere. It's one thing to say that services aren't free and that even when, as in the case of the MTA, they succesfully address significant externalities, their costs should not be unduly disconnected from users. But it's another thing to say that, however revenue-starved, a public institution (in the broad sense of the word) such as the MTA should restrict the public, much less the bloggy, enjoyment of a public iconography such as the train number symbols and the image of the classic subway token.



In other words, if you get a C&D letter from the MTA, give me call, won't you?

Friday, June 03, 2005

Google and the Privacy Obsession

Google is the new horseman of the ever-approaching privacy apocalpyse, according to an article in Reuters. Why? Because Google lets you keep your email (on its Gmail service) "forever," though the article doesn't explain what exactly the privacy risk is there. And, being fundamentally in the business of aggregating, analyzing and mining data, it keeps search, IP and other logging data for a long time, too. What's the problem with that? Lauren Weinstein, of People for Internet Responsibility -- an organization whose slick, professional website suggests it has not done or even said all that much lately (though Weinstein's blog look somewhat active) -- tells Reuters, "There's really no good reason to hold onto that information for more than a few months. . . . [Google] seem[s] to think that because their motives are pure that everything is OK and they can operate on a trust basis. History tells us that is not the case."

Huh? Google doesn't have to justify its motives -- which it never claimed were pure; see their stock price, thank you -- and you don't have to trust Google at all. Just don't use it.

How long until some representative demagogues this one on Capital Hill?

Should the Reds Enforce Trademark on "Gulag"?



I try mightily to avoid purely political postings here, which would be off topic. But I have always been very bothered by the debasement of language and meaning in politics which, not incidentally, does find its way into my line of work. Likelihood of confusion and all that.

So forgive me this one -- pace Amnesty International, the question is, is any unpleasant experience a "gulag"? Via Instapundit, here's a suggested answer.

UPDATE: Dean Esmay collects gulagiana here.

Thursday, June 02, 2005

Enviro-Fascism in New Jersey: The New McCain Doctrine?

Drudge links to this AP story about a guy who bought a billboard, and may buy more, slamming New Jersey environmental regulators for preventing him from completing a development project. The billboard says, "Welcome to New Jersey. A horrible place to do business." "Money quote": "'At some point, we'll have to consider action against him,' [Environmental Protection chief Bradley] Campbell said, implying a potential legal fight."

WHAT? Has the FEC chipped off some of its expression-regulation power to the New Jersey Department of Environmental Protection now? It's not an entirely irrelevant question, because the news stories indicate that the businessman in question is feeling out governor-in-waiting Senator John Corzine about the issue. And it's not like it's Internet speech, so let the prior restraining begin!

I didn't call Mr. Campbell and ask for a clarification or explanation, which is what I would do if I were acting as a journalist here. I am not; I am only commenting on what appears to be an outrageous statement by an agency head. I'm confident someone from the intrepid New Jersey press corps will hunt this one down and scream bloody murder -- or get a clarification from DEP.

New Penumbra: "Internet Free Speech"

Glenn Reynolds links to an editorial in the Washington Times that urges "Free speech for bloggers," to which Glenn adds, "and everyone else." But while that caveat in his headline is appreciated, it does tend to get lost in the sauce. The key language pulled from the editorial by Instapundit is, "Unfortunately, no matter what the FEC decides, there's a chance that the days of unbridled political discourse on the Internet are nearing their end. . . . We encourage lawmakers to support the bills so that Internet free speech can advance unimpeded."

Why "unbridled political discourse on the Internet"? Why "Internet free speech can advance unimpeded"?

As I have said before, I think this is a terrible formulation, both rhetorically and legislatively. It allows Congress to buy off the for-the-moment influential blog medium while continuing to savage the Constitution for other media -- including, conceivably, as-yet undeveloped or unrealized media -- via the notorious McCain-Feingold anti-sedition legislation. The best thing the "Blogosphere" -- right, left and center -- can do in connection with this issue is refuse to be bought by a dubious, and prospectively temporary, carve-out for "Internet free speech" only.

Thursday, May 26, 2005

"Broadcast Flag" Flagged; First Down

Via Tech Law Advisor, Art Brodsky of Public Knowledge crows, and rightfully, that the DC Circuit has ruled that the FCC exceeded its jurisdiction with its the "broadcast flag" regulations.

Wednesday, May 25, 2005

Sewage Treatment

The issue of companies that technologically filter the sludge that oozes out of Hollywood in order to preserve a semblance of entertainment or enlightenment in that product line, while perserving other sensibilities, is bubbling up. We addressed it earlier; naturally, it's now being litigated. This is a fascinating topic and one that is addressed very thoroughly in an article in the New York Law Journal (registration required) by Stephen M. Kramarsky of Dewey Pegno & Kramarsky, a modest little shop in New York.

Here's the heart of the matter, put very well by Kramarsky:

Making copies of a movie and offering them for sale or rent, of course, is a plain violation of copyright law. To avoid this problem, editing companies buy multiple legal copies of each movie they offer so that they always retain a one-to-one ratio of 'cleaned-up' copies to originals. Some editing companies package the original DVD along with the edited copy -- sometimes in disabled form --so it is clear that each sanitized copy is backed up by a legitimately purchased original. Under this scheme, the editing companies argue that they cannot be doing harm to content owners. In fact, they assert that, by establishing a new audience for these movies, they are actually increasing revenues to the content owners. This argument ignores the fact that a copyright owner has the exclusive right to create and sell derivative works from its content. If a market exists for cleaned-up movies sold at a premium, the studios argue that it belongs to them, not the editors.

The other solution is the use of a hardware filter. Here, again, is a powerful excerpt on what's at stake:

In a now infamous display of the power of that technology a few years ago, one company showed a revised version of the "nude sketch" scene in "Titanic," in which Kate Winslet magically appeared, not naked as in the original, but demurely clad in a virtual corset. Hollywood, it appears, was not amused and some commentators have suggested that this demo was one of the sparks for the current litigation. But because masking and filtering occur inside the DVD player and do not result in any actual copying of anything, ClearPlay would seem to be in a better position to avoid an infringement claim than a company that sells edited copies. . . . the Family Entertainment and Copyright Act makes that intuition explicitly a part of copyright law.

Kramarsky suggests that while the copyright issues are a "close question" -- especially considering the new legislation -- the trademark dilution claims by the studios against the companies that sell repackaged, edited films aren't. I would tend to agree.

But the cultural issues being played out here are at least as interesting as the IP issues. There are people out there who want to see Titanic and who are even comfortable with a pretty young woman in a corset on the screen, just not a buck naked one. This is considered heresy, fundamentalism, in Hollywood. Hollywood's art demands nudity at this juncture (I guess; I didn't see the movie). Here the market is screaming, put a shmatteh on the young lady and we'll rent your video -- and this, Hollywood finds offensive. Because the scene, the art, just would not work with clothes on, you know? No sense telling a story about an ocean liner that hits an iceberg without a cute naked chick, is there?


Yes, Hollywood. That's the ticket: Move some chairs around on that deck...

Monday, May 23, 2005

Life Imitates the National Debate

Outgoing New York Times ombudsman Daniel Okrent writes about 13 Things I Meant to Write About but Never Did. A favorite, via Best of the Web Today:

Op-Ed columnist Paul Krugman has the disturbing habit of shaping, slicing and selectively citing numbers in a fashion that pleases his acolytes but leaves him open to substantive assaults. ... I didn't give Krugman ... the chance to respond before writing the last two paragraphs. I decided to impersonate an opinion columnist.

Don't ask the obvious question -- "Why didn't you write about it, Dan?", because, ho, ultimately he has, hasn't he? Believe me, for the Times, that's not a long delay before acknowledging the truth. Heck, I had to hit "refresh" a couple of times to make sure this wasn't a parody.

Yes, well, you'll forgive me for that. Hard not to think that our friend Bob Cox of the blog The National Debate ultimately had an effect on his sometime lunch companion. The two met shortly after the Times and Bob locked horns over the latter's posting of a Times "corrections page we'd like to see" that made the point -- a bit too realistically for the Old Grey Lady -- that for no good reason, misstatements of fact and other errors in Op-Ed columns are not corrected in the paper unless the columnist himself decides to make such a correction. (Not that the Times loses a lot of sleep over corrections.)

The Times screamed copyright infringement (they would have done better to claim trade dress infringement, but the DMCA works better for copyright bullies than trademark ones). Bob found himself a smart lawyer and, suitably hit on the nose with a rolled up New York Post, the angry doggie backed off. Cucumber sandwiches, and the founding of the Media Bloggers Association by Bob, followed.

While, not suprisingly, the Okrent column is tantalizing for what could have been, there were a couple of other nice nuggets. This one hit my particular vein:

I still cherish the First [Amendment]; I still think it's the cornerstone of democracy. But I would love to see journalists justify their work not by wrapping themselves in the cloak of the law, but by invoking more persuasive defenses: accuracy, for instance, and fairness.

Say it, Dan. Too little, not entirely too late; better than nothing, for sure.

It's Not the 20th Century Any More for Email Retention

Reuters "news service" "reports," astutely: "Where judges once were more likely to accept that incompetence or computer problems might be to blame, they are now apt to rule that noncompliance is an indication a company has something to hide." Especially if you're Morgan Stanley.

Chocolate Ice Cream with Chocolate Syrup

How else to describe a post (this one) that combines two of our favorite obsessions -- Google and fair use?

Business Week online reports that Google's announced plan to to scan millions of the world's books and make them searchable online is, not surprisingly, a little scary to some people. No, not the people who are afraid of free access to books and information. Rather, the people who are "all about" that very thing -- but who are a little worried about "free" in the economic, not the freedom, sense of the word.

According to Business Week, "In a May 20 letter, the Association of American University Presses (AAUP) blasts Google's so-called Print for Libraries program for posing a risk of "systematic infringement of copyright on a massive scale." Evidently, according to the report, a number of publishers have also expressed some concern. "We don't see how a for-profit company compiling this would be considered fair use," a spokesman for the Association of American Publishers -- the principal trade organization of the book publishing industry -- told Business Week.

Well. But it would depend in no small part on how much of a work is being made available on line (as the article notes), as well as on the development of third-party liability for hacking that leads to unauthorized access of infringing material beyond what Google anticipates making searchable, or accessible from search results.

It's getting to the point where we're taking the Googlization of the known world for granted. We shouldn't. It's an incredible phenomenon.

Friday, May 20, 2005

Fairness, Confusion Inversely Proportional

The Appellate Law & Practice blog wantonly beckons me via a gratuitous link to here (thanks!), in its discussion of a new Ninth Circuit opinion in the KP Permanent Makeup case -- the decision, having bounced back from the Supreme Court, now being reversed by the Circuit. The Anonymous Appealler focuses, in part, on the Circuit's suggestion that "likelihood of confusion is inversely proportional to fair use". That's certainly an interesting way to look at it, though as a "soft IP" man ("soft" modifying "IP," not "man") any time I hear terms like "inversely proportional" I reach for my revolver. Here are the marks, by the way, courtesy of the Ninth Circuit:



Now, I said "interesting," but I'm not so sure how much I love that formulation. (See how soft?)

Thursday, May 19, 2005

Grateful Defendant

The New York Law Journal reports online (registration required) that the Southern District of New York has, thankfully, put a rare brake on the copyright rent grab.


Credit: Extraordinary collection of Dead posters at Berkeley's D.I. King Gallery.

The defendant, Dorling Kindersley Limited is known to parents of young children for its incredible illustrated books on the kinds of things kids wonder about -- how ships work, what went on in medieval castles, and the like. Evidently the company has another side: Deadheads. It published an illustrated book about psychedelic icons the Grateful Dead and in it reproduced, in reduced size, seven classic Grateful Dead concert posters. So, of course, the original copyright holder, Bill Graham Archives, LLC, sued.

(Just take a moment to enjoy the irony of these 1960's countercultural .... er,

Credit: EROWID

"figures" ... or their namesakes, slugging it out over who gets to profit from all that peace, love and understanding... no, that's not quite right -- was it three days of peace and music? ... Wonder who gets the last laugh?)

Defendants argued that their use of the posters in the book was fair use under the Copyright Act. The court agreed. According to the Law Journal:

It found the images' chronological placement on a timeline transformative and . . . noted that the posters were isolated examples across the Grateful Dead's career path. Despite observing that the posters' prior publication favored plaintiff's position, the court determined that defendants' reproductions did not capture the essence of the original, full-size posters. The court found no substantial effect on the market for the original work since the transformative nature of defendants' use of the posters was outside the ambit of lost licensing opportunities.

This is a significant decision which we will hear more about, as is any decision that preserves a semblance of fair use. Could this affect other IP holdups that prevent journalists and others from reporting on bona fide historical events, even if they somehow implicate copyright? One can dream...

Monday, May 16, 2005

First Amendment Special

Jim Romenesko reports, to no one's surprise, that the public thinks there should be a link between freedom of the press and the quality of news reporting. (Hat tip to Michael Silence via Instapundit.) This becomes relevant again in the context of the Newseek debacle of late.

I can't say I agree. Newspapers, magazines, broadcasters and bloggers should be free from the risk of prior restraint to report wrong stuff. It would be a nightmare if some agency, whether it were government or otherwise, had to pass on the veracity of reporting before it went to press.

BUT. What the public perceives here is the commonsensical principle that with rights come responsibilities. Call 'em penumbras and emanations, if you don't know exactly where to find those responsibilities in the First Amendment. And besides the recognition of responsibility, the institutional press would probably do well to stop carping on its insistence of entitlement to special privileges not available to other members of the commonwealth, such as "press shield" laws. Any thought that the media are entitled to such special privileges because they are members of a special caste should be quite dead and rather deeply buried by now.

Blawg Review #6

David Swanner of the South Carolina Trial Law Blog does a terrific job with this week's Blawg Review. Just try it and see.

Friday, May 13, 2005

Good Job, Steve

As predicted in this space, Wired News reports that the publicity generated by Apple's ham-fisted exile of a new book about Steve Jobs from its own stores has resulted in such strong demand for the book that the publisher, John Wiley & Sons, has "doubled the print run and moved publication forward a month to May 16."