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Supreme Court interprets
copyright suit filing provision
Section 411(a) of the Copyright Act (17 U.S.C. § 411(a)) provides
that “no civil action for infringement of the copyright in any United
States work shall be instituted until...registration of the copyright
claim has been made....” In more than 200 decisions over 100
years, courts have interpreted § 411(a) to mean that a court did not
have subject matter jurisdiction until the copyright owner obtained a
copyright registration or, at the least, applied to receive one. “Sub-
ject matter jurisdiction” refers to a court’s statutory or constitutional
power to decide a case. The U.S. Supreme Court has now ruled that
registration is a precondition to filing a copyright infringement claim,
but courts do have jurisdiction to hear cases involving unregistered
copyrighted works.
In New York Times Co. v. Tasini, 533 U.S. 483 (2001), the Supreme
Court held that owners of online databases and print publishers were
required to obtain permission from freelance authors before includ-
ing the authors’ works in such electronic compilations. After Tasini,
a number of other suits by freelance authors were allowed to proceed
in a consolidated class action in the U.S. District Court for the South-
ern District of New York. Although the named plaintiffs in the class
each owned at least one registered copyright, the class contained
authors with unregistered works.
After more than three years of mediation, the parties reached a
reported $18 million settlement covering around 20,000 authors,
publishers and databases. However, ten freelance authors objected
to the settlement terms and asked the District Court not to certify the
class or approve the settlement. The court approved the settlement
and entered a final judgment based on the settlement terms. None of
the parties objected to the court’s jurisdiction over the case because
of the presence in the class of the authors with unregistered works.
The disgruntled freelancers appealed to the U.S. Court of Appeals
for the Second Circuit. The Appeals Court asked the parties to
argue whether § 411(a) deprived the District Court of subject matter
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A r n s t e i n & L e h r i n t e ll e c t u al P r o p e r t y n e w s l e t t e r
FTC applies endorsement guides
to bloggers
On October 5, 2009, the Federal Trade Commission (FTC) issued its
revised Guides Concerning the Use of Endorsements and Testimonials
in Advertising (16 CFR Part 255). Those Guides became effective on
December 1, 2009. They apply to any advertiser who uses endorse-
ments or testimonials to advertise goods or services, companies or
industries. They are intended as a basis for voluntary compliance by
advertisers and endorsers.
Under the Guides, an “endorsement” is “any advertising message
(including verbal statements, demonstrations, or depictions of the
name, signature, likeness or other identifying personal characteristics
of an individual or the name or seal of an organization) that consumers
are likely to believe reflects the opinions, beliefs, findings, or experi-
ences of a party other than the sponsoring advertiser, even if the views
expressed by that party are identical to those of the sponsoring adver-
tiser.” 16 CFR § 255.0(b). The Guides use the term “endorsements”
for both endorsements and testimonials.
The Guides define an “expert” as “an individual, group, or institution
possessing, as a result of experience, study, or training, knowledge
of a particular subject, which knowledge is superior to what ordinary
individuals generally acquire.” § 255.0(d).
Endorsements must reflect the endorser’s “honest opinions, findings,
beliefs, or experience.” However, they cannot convey any represen-
tation, express or implied, that would be deceptive if the advertiser
made it. § 255.1 (a), (b). An advertiser can only use an expert or
celebrity endorsement for so long as the advertiser has good reason
to believe that the expert or celebrity continues to hold the views
in the endorsement. An ad representing that an endorser uses the
endorsed product must be true at the time the endorsement was given.
§ 255.1(b), (c).
Advertisers and endorsers can both be held liable for false or unsub-
stantiated statements made in endorsements or for “failing to disclose
FTC Continued on Page 3
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COPYRIGHT Continued from Page 1
jurisdiction to approve the settlement. All of the parties argued that
jurisdiction existed. Nevertheless, the Appeals Court found that the
District Court had no jurisdiction to certify a class of claims arising
from unregistered works or to approve a settlement covering those
claims. In re Literary Works in Electronic Databases Copyright
Litigation, 509 F.3d 116 (2d Cir. 2007).
The parties petitioned the Supreme Court, which accepted the case
on the issue of whether § 411(a) restricted the subject matter juris-
diction of federal courts over copyright actions. In a unanimous de-
cision, the Supreme Court determined that § 411(a) did not deprive
a federal court of jurisdiction to hear and act on a case involving
unregistered copyrights. Rather, that provision “is a precondition to
filing a claim that does not restrict a federal court’s subject-matter
jurisdiction.”
The Court made a distinction between “true jurisdictional condi-
tions and nonjurisdictional limitations on causes of action.” The
test is whether the statute clearly states that registration “counts as
jurisdictional” and that Congress “ranked that requirement as juris-
dictional.” Where the requirement is located in a provision separate
from the statutory provisions giving federal courts jurisdiction to
hear questions involving federal law and copyright claims, it is less
likely to be jurisdictional. Also, § 411(a) expressly allows courts to
hear copyright cases without registrations in certain circumstances,
a further indication that registration cannot be jurisdictional.
The Supreme Court declined to decide whether § 411(a) is a man-
datory precondition to filing a copyright infringement suit. If it is,
a federal district court could decide on its own, without input from
the parties, that a case based on an unregistered copyright should
be dismissed. If it is not, the power to have the case dismissed
would rest in the hands of the party accused of infringement, who
could raise it as an affirmative defense to the suit or in a motion to
dismiss. It remains to be seen how the courts will treat the issue.
Source: Reed Elsevier, Inc. v. Muchnick, United States Supreme Court, No. 08-
103, March 2, 2010
“First Sale” doctrine no protection
for post-purchase confusion
Au-Tomotive Gold Inc. (“Auto Gold”), a producer of automobile
accessories, sold marquee license plates bearing actual VW badges
bought from a VW dealer. The badges were normally used as
replacements for those on VW vehicle hoods or trunks. Auto Gold
removed the prongs from the purchased badges, gold plated some
of them and mounted them on the marquee plates. The packaging
stated that the plates were not produced or sponsored by VW.
VW sent several letters demanding that Auto Gold cease using
VW’s trademarks but Auto Gold refused to do so and filed suit in
the U.S. District Court for the District of Arizona for a declaratory
judgment that it was not committing trademark infringement. VW
counterclaimed for trademark counterfeiting, infringement, dilution
and false designation of origin.
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The District Court granted summary judgment to Auto Gold, rul-
ing that the trademarks were aesthetically functional and therefore
not protected. The U.S. Court of Appeals for the Ninth Circuit
reversed, concluding that consumers buy the Auto Gold products
because of those products’ identifications with company brands,
making the products dependent on VW’s source identification. It
sent the case back to the District Court to consider Auto Gold’s
defenses, which included the “first sale” doctrine. Au-Tomotive
Gold, Inc. v. Volkswagen of America, Inc., 457 F.3d 1062 (9th Cir.
2006). The District Court rejected Auto Gold’s “first sale” and
other defenses and granted summary judgment and a permanent
injunction to VW.
On appeal for the second time, Auto Gold argued that the first sale
doctrine applied to the badges because it had purchased them from
a VW dealer and could legitimately resell them. The Ninth Circuit,
however, held that the first sale doctrine was no defense because
Auto Gold created a likelihood of post-purchase confusion among
non-purchaser observers who see the plates on purchaser’s cars.
The U.S. Supreme Court announced the first sale doctrine in Pre-
stonettes, Inc. v. Coty, 264 U.S. 359 (1924). Prestonettes bought
powder and perfumes produced and trademarked by Coty, incor-
porated the Coty powder into a cream and rebottled the perfumes
into smaller bottles. Prestonettes was allowed to compound or
change what it bought and to sell the modified or divided products.
It could also identify those products with a label that Prestonettes
was “not connected with Coty” and that the contents were Coty’s
but were “independently rebottled in New York,” because it was
exercising its rights of ownership and telling the truth.
The Ninth Circuit recognized that a producer’s power to control
the resale of its product does not extend beyond the first sale of
the product and that a purchaser could incorporate a trademarked
product into the purchaser’s new product. However, the Court held
that the first sale doctrine was no defense to trademark infringement
when it was likely that consumer confusion would arise, includ-
ing post-purchase confusion by non-purchasers. The Ninth Circuit
rejected that defense for Auto Gold’s license plates because once
the packaging with the disclaimer was removed, the general public
observing the plates had no indication that the plates were not as-
sociated with VW. The purchaser of the trademarked product does
not buy the right to become a free rider, profiting from a trademark
causing post-purchase confusion about the product’s origin. Ac-
cordingly, the injunction granted to VW was upheld.
The first sale doctrine has counterparts in copyright and patent law.
In 2008, the U.S. Supreme Court unanimously ruled that the patent
exhaustion doctrine (analogous to first sale) applied to patented
chipsets purchased from a licensed manufacturer and seller, al-
though the licensor tried to require the licensee to notify purchasers
that the license did not cover them. Quanta Computer, Inc. v. LG
Electronics, Inc., No. 06-937 (2008). In 1998, the U.S. Supreme
Court unanimously determined that the first sale doctrine applied
to copyrighted U.S.-made goods sold into foreign markets and im-
VW Continued on Page 3

FTC Continued from Page 1
material connections.” § 255.1(d). A material connection is defined
as “a connection between the endorser and the seller of the adver-
tised product that might materially affect the weight or credibility of
the endorsement” where “the connection is not reasonably expected
by the audience.” § 255.5. An example is the requirement that the
advertiser disclose to the audience for a television commercial that
the endorser was paid in exchange for the endorsement or would
receive a benefit for a favorable endorsement, where the endorser
is not presented as an expert or celebrity. This provision applies to
free samples given by advertisers to third-party bloggers to encour-
age favorable reviews of the product. The Guides require that the
advertiser tell the blogger to disclose “clearly and conspicuously”
that he or she received the free product from the advertiser and also
that the advertiser adopt procedures to monitor the blogger’s post-
ings.
Endorsements are not themselves competent and reliable scientific
evidence, so they cannot be used to substantiate claims about the
performance of an advertised product or service. However, the en-
dorsement is interpreted as a statement that the product or service is
effective for the purpose shown in the ad. Therefore, the advertiser
must have adequate substantiation to support claims made through
endorsements. § 255.2(a).
The Guides state that an endorsement relating the experience of one
or more consumers on a “central or key attribute” of the goods or
services will likely be interpreted by consumers as representing that
the endorser’s experience is representative of results consumers will
“generally achieve” with the advertised product or service in actual
use. If the advertiser does not have substantiation that the endors-
er’s experience is typical of what consumers will generally achieve,
the advertiser must “clearly and conspicuously” disclose the gener-
ally expected performance. It will not be enough in most cases to
use disclaimers such as “Results not typical” or “These testimonials
are based on the experiences of a few people and you are not likely
to have similar results.” § 255.2(b).
An ad presenting endorsements by people who are represented to
be “actual consumers” must use actual consumers or “clearly and
conspicuously” disclose that the actors are not actual consumers of
the advertised product. § 255.2(d).
The Guides provide that an expert endorser’s qualifications must
provide the expertise he or she is represented to possess. § 255.3(a).
The expert’s endorsement must be supported by the actual exercise
of his or her expertise and the expert’s evaluation must be con-
ducted at least as extensively as someone with the same degree of
expertise would normally conduct to support the conclusions in the
endorsement. The Guides also cover expert endorsements concern-
ing comparisons with competitors’ products and claims of superior-
ity. § 255.3(b).
Endorsements by organizations must be reached by “a process suf-
ficient to ensure that the endorsement fairly reflects the collective
judgment of the organization.” If the organization is represented as
an expert, it must use “an expert or experts recognized as such by
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the organization or standards previously adopted by the organiza-
tion and suitable for judging the relevant merits of such products.”
§ 255.4.
In the first investigation conducted under the new Guides, the FTC
determined that it would not pursue an enforcement action against
Ann Taylor Stores Corp. for providing gifts to bloggers who at-
tended a preview of the company’s Summer 2010 collection in
January 2010, to encourage them to post content about the event.
The FTC decision was based on several factors: (1 ) this was the
first such preview event Ann Taylor had conducted, (2) only a
small number of bloggers posted content about the preview, (3)
several of the bloggers disclosed that Ann Taylor had given them
gifts at the preview, (4) there was a sign posted at the preview tell-
ing bloggers to disclose the gifts if they posted comments and (5)
Ann Taylor adopted a written policy after the preview that bloggers
receiving gifts must be told that they must disclose the gifts in the
post. The FTC stated that it expects Ann Taylor to honor that writ-
ten policy and to take reasonable steps to monitor blogger compli-
ance with the obligation to disclose gifts.
The FTC investigation highlights the importance of having a
written policy applying to free goods or services provided to any
writers and the duty to monitor what those writers say about a com-
pany’s goods or services. The company can be liable for misrepre-
sentations made by such writers to the same extent as it is liable for
misrepresentations in its own advertising.
Source: Federal Trade Commission Letter of April 20, 2010, File No. 102-3147
VW Continued from Page 2
ported back into the U.S. Quality King Distributors, Inc. v. L’Anza
Research Int’l., Inc., 523 U.S. 135 (1998). The Supreme Court has
accepted a first sale case for the next term where copyrighted goods
were manufactured outside the U.S. and first sold overseas but
then were imported into the U.S. Omega S.A. v. Costco Wholesale
Corp., 541 F.3d 982 (9th Cir. 2009), cert. granted No. 08-1423,
April 19, 2010.
Source: Au-Tomotive Gold v. Volkswagen of America, United States Court of
Appeals, 08-16005, May 6, 2010
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Postal Service infringes copyright in Korean War Memorial sculptures
Federal law provides that an action in the Court of Federal Claims
can be brought “whenever the copyright in any work protected un-
der the copyright laws of the United States shall be infringed by the
United States.” 28 U.S.C. § 1498(b). That provision contains an
exemption from copyright liability “with respect to any copyrighted
work prepared by a person while in the employment or service of
the United States, where the copyrighted work was prepared as a
part of the official functions of the employee, or in the preparation
of which Government time, material, or facilities were used . . . .”
In a case brought under that provision by the sculptor Frank Gay-
lord, the U.S. Court of Appeals for the Federal Circuit has held the
government liable for copyright infringement for a postage stamp
containing an image of a number of Gaylord’s sculptures created
for the Korean War Veterans Memorial (the “Memorial”).
Gaylord won the competition to select a sculptor held by Cooper-
Lecky Architects, prime contractor for the creation, construction
and installation of the Memorial. The final design featured 19
stainless steel statues of foot soldiers in formation, known as “The
Column.” Gaylord created a number of models, incorporating
critiques and suggestions by Cooper-Lecky, members of the Korean
War Veterans Memorial Advisory Board (“VAB”) and the Com-
mission on Fine Arts (“CFA”). Gaylord obtained five copyright
registrations as sole author of the soldier sculptures, the last one on
May 1, 1995. He received $775,000 for the sculptures.
In 1995 and 1996, photographer John Alli took pictures of the
Memorial at various times of year and day. In January 1996, after
a snowstorm, Alli took numerous photographs of the Memorial and
the soldiers. Because Alli wanted to sell prints of his photos, he
sought out the copyright owner in the underlying work. Mr. Lecky
of Cooper-Lecky told Alli that he was the owner. Alli agreed to
pay an entity established by Lecky a 10% royalty on the sales of the
prints. Neither Alli nor Lecky contacted Gaylord.
In 2002, the Postal Service decided to issue a stamp commemorat-
ing the 50th anniversary of the Korean War armistice. It paid Alli
$1500 to use a photograph for the stamp. Alli also referred the
Postal Service to Lecky for permission to use the image but did not
mention Gaylord. About 87 million stamps were made, from which
the Postal Service received over $17 million in revenue. It also
sold the stamps to collectors and sold goods such as commemora-
tive panels and framed art featuring the stamp.
Gaylord sued Alli for copyright infringement in 2006 and Alli
settled with Gaylord for 10% of Alli’s net sales. Gaylord also sued
the government for copyright infringement in the Court of Federal
Claims for the Postal Service’s use of Alli’s photograph on the
stamp and other goods. The court held that Gaylord was the sole
author of the copyright to the sculptures and that The Column was
not an architectural work under the Architectural Works Copyright
Protection Act (“AWCPA”), which contains an exemption for pho-
tographs of buildings located in or visible from a public place. 17
U.S.C. § 120(a). However, the court agreed with the government
that use of the image on the stamp was a “fair use” under copyright
law, not an infringement. Gaylord v U.S., 85 Fed. Cl. 59 (2008).
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On appeal, the Federal Circuit concluded that Gaylord’s copyright
was valid, he was the sole author of The Column, the stamp copied
original elements of The Column and the government could not
establish that it had made fair use of the image on the stamp.
To evaluate a claim of fair use, courts weigh four factors: (1) the
purpose and character of the use, whether the use is commercial or
for nonprofit educational purposes; (2) the nature of the copyrighted
work; (3) the amount and substantiality of the copied portion to the
copyrighted work as a whole; and (4) the effect of the copy on the
potential market for or value of the copyrighted work. 35 U.S.C. §
107. If a use is “transformative,” altering the original work “with
new expression, meaning, or message,” a court is more likely to
find it was fair use.
The Federal Circuit focused on the purpose and character of the
stamp, not on Alli’s photograph, in determining that the use was
not transformative. As both the stamp and The Column shared the
same purpose of honoring Korean War veterans, the stamp did not
incorporate The Column into a larger commentary, criticism or
biographical work and it did not impart a different character to the
work, the stamp was not transformative of The Column.
The Court also found that the use was commercial in nature, the
underlying work was expressive and creative and a substantial
number of the soldiers in The Column were used in the stamp. The
only factor not weighing in Gaylord’s favor was the stamp’s low
impact on the value of The Column and potential market for deriva-
tive works, in that the stamp was not a suitable substitute for The
Column itself. Accordingly, the stamp was not a fair use.
Furthermore, the suggestions, comments and criticisms of Cooper-
Lecky, the VAB and the CFA did not amount to co-authorship
because they were not independently copyrightable contributions
to the work. Cooper-Lecky’s other features for the Memorial did
not appear in Gaylord’s copyright registrations or on the stamp.
Gaylord translated the competing and conflicting ideas, comments
and suggestions made by Cooper-Lecky, the VAB and the CFA into
his copyrightable expression of the soldiers.
Moreover, the government failed to rebut Gaylord’s prima facie
presumption of validity from the copyright registrations. Although
he included the language “fully approved” and “fully approved by
all federal commissions” in his description of the nature of his au-
thorship in some of his copyright applications, he was still the sole
author of The Column. Approval, noted the Court, like comment
and criticism, is not authorship.
Lastly, the Federal Circuit concluded that because it is not a “hu-
manly habitable structure” The Column does not fall within the
definition of an “architectural work” under the AWCPA, as it is
not “a building, architectural plans or drawings.” 17 U.S.C. § 120.
The Court sent the case back to the Court of Federal Claims to
determine a damage award for Gaylord.

Judge Newman filed a lengthy dissent, contending that the stamp
was a fair use of a photograph of “a public monument that was
designed and built with public money” and was “unambiguously
covered by the contract and statutes under which this Memorial was
built.”
Judge Newman relied on Walton v. United States, 551 F.3d 1367
(Fed Cir. 2009) for the conclusion that Gaylord was in the “service”
of the United States when he created The Column and that such
“service” was sufficient to exempt the government from infringe-
ment, whether or not government resources were used. However,
in Walton, a federal prisoner was paid by a government corporation
to create desk blotter calendars for government agencies, using
government-furnished computers as part of his assigned duties
within a government facility. As Gaylord did not use government
resources to create his statues the exemption does not appear to ap-
ply here, whatever “service” means.
Source: Gaylord v. United States, United States Court of Appeal for the Federal
Circuit, No 2009-5044, February 25, 2010
TTAB requires ordering
information in web page
specimens for goods
To obtain most federal trademark registrations, the mark must be
used in commerce on or in connection with the goods. The Lanham
Act defines “use in commerce” as “the bona fide use of the mark
in the ordinary course of trade.” 15 U.S.C. § 1127. For goods, the
mark must be “placed in any manner on the goods or their contain-
ers or the displays associated therewith or on the tags or labels
affixed thereto.” In contrast, an acceptable specimen of use for
services is use or display of the mark “in the sale or advertising of
services.”
The U.S. Patent and Trademark Office (“PTO”) has long required
that electronic specimens of use for goods (1) contain a picture
of the goods, (2) in close proximity to the mark and (3) provide
information necessary to order the goods. However, in a previous
decision, the U.S. Court of Appeals for the Federal Circuit called
that three-part test into question when it decided that a picture of
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the goods in an electronic specimen such as a web page was not
mandatory. In re Sones, 590 F.3d 1282 (Fed. Cir. 2009). The
Trademark Trial and Appeal Board (“TTAB”) has now re-empha-
sized the importance of the presence of ordering information and
indicated what form it should take.
Quantum Foods, Inc. filed an intent-to-use application for the
trademark PROVIDING PROTEIN AND MENU SOLUTIONS
for “processed meats, beef, pork, poultry and seafood sold in por-
tions; fully cooked entrees consisting primarily of meat, beef, pork,
poultry or seafood.” When its initial specimen of use was rejected
by the trademark examiner, Quantum Foods submitted a substitute
specimen consisting of a printout of a page from its web site. On
the page, the mark was displayed just above three pictures of meals
with meat products on plates. The examiner concluded that the
text under the three plates described a service that Quantum Foods
provided, namely, customized menu solutions, but did not describe
any of the goods listed in the application. Although the web page
would have been an acceptable specimen of use for services, the
examiner rejected it as a specimen of use for goods because the
examiner did not see “necessary ordering information or a web link
for ordering the goods.” Quantum Foods appealed that decision to
the TTAB.
On appeal, Quantum Foods argued that the web page did show
ordering information in that one of the four boxes with pictures ap-
pearing at the top of the page was labeled “For Foodservice” and if
a consumer put the cursor on that box a drop-down menu provided
a “Contact Us” link. Clicking on that link sent the consumer to a
customer service page containing the e-mail address and toll free
number for contacting Quantum Foods’ customer service depart-
ment, where orders for the goods can be placed. Quantum Foods
contended that the “For Foodservice” square was thus a “visible
web link to order the goods.” The TTAB refused to accept that evi-
dence because it was not submitted to the examiner prior to the ap-
peal but also indicated that the “Contact Us” web page was no more
than corporate contact information that might eventually result in a
sale but did not provide ordering information for the goods.
The TTAB agreed with the examiner that the web page did not con-
tain any instructions informing consumers that they would be able
to order the goods if they clicked on the “For Foodservice” box.
The TTAB noted that, even if a consumer using a link on a web
page in an electronic store was similar to a consumer in a brick and
mortar store seeing a shelf talker and taking an item to a cashier, the
web page at issue did not provide a link for ordering the goods. If
a web page merely gives information about the goods but does not
provide a means for ordering them, it is only promotional material
that is not an acceptable specimen of use of the mark for goods.
The offered specimen had no sales form, pricing information, offers
to accept orders or special instructions for placing orders on the
page. The web page had no information “normally associated with
ordering products via the Internet or the telephone.” The TTAB
concluded the web page offered as a specimen merely advertised
and informed the public about the company and its goods, without
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Celebrity allowed to pursue false endorsement claim
Celebrity product endorsements are often sought after but usually
require the celebrity’s permission to use his or her name or likeness
in association with a product and payment to the celebrity. When a
celebrity’s name or likeness is used impermissibly, the celebrity can
sue for false endorsement.
The U.S. District Court for the Eastern District of California has
allowed a false endorsement claim under § 43(a) of the Lanham Act
(15 U.S.C. 1125(a)) to proceed against AT&T Mobility. The con-
troversy concerned AT&T’s press release about a new emergency
preparedness service that mentioned General Charles Yeager and
his historic feat of breaking the sound barrier in a jet plane. Yeager,
a retired general in the US Air Force, gained acclaim during WWII
as a fighter pilot and later became famous as the first person to
break the sound barriers known as Mach 1 and Mach 2. He earned
a lifetime of aviation and speed records and used his fame to his
profit by speaking to organizations and charging for his endorse-
ments of products and companies.
AT&T’s announcement, issued without Yeager’s authorization,
read: “Nearly 60 years ago, the legendary test pilot Chuck Yeager
broke the sound barrier and achieved Mach 1. Today, Cingular
is breaking another kind of barrier with our Mach 1 and Mach 2
mobile command centers, which will enable us to respond rapidly
to hurricanes and minimize their impact to our customers.” It did
not contain Yeager’s picture or mention his name in any headline or
headings, nor did it offer any products or services for sale.
Yeager sued for false endorsement under the Lanham Act and
related California state law rights of privacy and commercial mis-
appropriation, alleging AT&T’s use of his name and identity in the
publication impaired his ability to negotiate representation agree-
ments with other cellular and wireless providers. AT&T argued
that the reference was noncommercial speech and both merely
incidental and a permissible fair use. An incidental use is use of a
name for purposes other than to take advantage of the reputation,
prestige or other value associated with a celebrity, in a “fleeting and
inconsequential” manner.
The Court determined that Yeager had an actionable interest
because his achievements in breaking the sound barrier were used
to attract attention to AT&T’s services by linking them to a public
concern, in a “carefully crafted” strategy to promote AT&T’s brand.
A company cannot rely on the First Amendment right to publicize
a matter of public interest where it uses a celebrity’s identity in
commercial speech. A publication need not offer products or ser-
vices for sale to be commercial speech if it was distributed with an
economic motivation to promote a company’s services. Use of Yea-
ger’s name was not merely incidental. AT&T intended to “make an
association between breaking the sound barrier and breaking new
barriers of disaster preparedness,” so that the public would “make
positive associations with” and “think highly” of AT&T.
Because Yeager alleged that the publication was an “advertisement/
promotional article” and that the reference to him was mislead-
ing and likely to cause confusion as to his affiliation with AT&T,
w w w. a r n s t e i n . c o m
there was a triable issue whether the use was permissible “nomina-
tive fair use” or an unauthorized implied endorsement. The Court
relied in part on Cairns v. Franklin Mint Co., 292 F.3d 1139, 1150
(9th Cir. 2002), in which the U.S. Court of Appeals for the Ninth
Circuit held that the nominative fair use defense protected the sale
of commemorative plates featuring the likeness of Princess Diana.
The nominative fair use defense applies where a defendant uses a
plaintiff’s mark to describe the plaintiff’s product for purposes of
comparing it to the defendant’s product. One of the tests for the
nominative fair use is that “the user must do nothing that would, in
conjunction with the mark, suggest sponsorship or endorsement by
the trademark holder.” Since Yeager alleged that AT&T’s refer-
ence to him was likely to cause confusion and deceive consumers
as to the affiliation between Yeager and AT&T, his allegations were
enough to defeat a motion to dismiss.
To what extent can the name or likeness of a deceased celebrity
be used in commerce? Does a celebrity’s right of publicity survive
death? The answer depends on where the celebrity was domiciled
when he or she died. In Cairns, the Ninth Circuit concluded
that heirs of Princess Diana had no right to sue for a violation
of California’s postmortem publicity statute because she was
domiciled in England at the time of her death and England did not
recognize any right of publicity, much less a postmortem right.
Florida’s right of publicity statute (Fla. Stat. § 540.08) gives a
transferable right of publicity that lasts for 40 years after death,
while Illinois (765 Ill. Comp. Stat. § 1075/30) provides postmortem
rights for 50 years after death. New York, however, does not
recognize a posthumous right of publicity.
Source: Yeager v. Cingular Wireless LLC, United States District Court for the
Eastern District of California, No. 2:07-cv-02517, December 7, 2009
Update on patent mismarking damages
On remand, the District Court awarded $6,840 in damages to
Bon Tool for patent mismarking, based on the full selling price
of the mismarked items rather than the profit margin (see Spring
2010 issue).
Source: The Forest Group Inc. v. Bon Tool Co., United States District Court
for the Southern District of Texas, No. H-05-4127, April 27, 2010

USE Continued from Page 5
showing an actual offer for sale and the opportunity and means to
complete an on-line purchase. Because the “Contact Us” link did
not take a potential customer to an order form, it was not a means
to order goods by mail or telephone but only location informa-
tion about the company. To constitute an acceptable point-of-sale
display associated with the goods, a web page must do more than
promote the goods and induce people to buy them – there must be
adequate ordering information provided so that the web page is
“calculated to consummate a sale.”
The TTAB acknowledged that the Federal Circuit in Sones specifi-
cally held that a picture was not a mandatory requirement for an
electronic specimen. However, the TTAB found that information
necessary to order the goods was a critical element in a web page
specimen for goods. The TTAB concluded that there must be a
way for a consumer visiting a web page to order the goods being
promoted for the page to serve as a specimen of use for goods.
Prior to 1992, the PTO did not accept a catalog page as a specimen
of use for goods, finding that catalogs were merely advertising ma-
terials. However, after a U.S. District Court characterized a catalog
page as a point-of-sale display associated with the goods, the PTO
created the three-part test described above and new categories
The Intellectual Property Practice Group counsels clients on matters related to the protec-
tion of trademarks, copyrights, domain names and trade secrets, including preparation and
processing of trademark and copyright applications, unfair competition, rights of privacy
and publicity, review of Web sites and advertising claims, and preparation and registration of
contest and game promotion rules.
Judith L. Grubner
312.876.7885
jlgrubner@arnstein.com
Ms. Grubner is a partner in the firm’s Chi-
cago office. She concentrates her practice
on intellectual property, specializing in
trademarks, copyrights, domain names
and sweepstakes, contests and game pro-
motions. Ms. Grubner is a speaker for the
Chicago and Milwaukee Bar Associations, the Midwest Society
of Professional Consultants and Society of Professional Journal-
ists. In July 2009 Ms. Grubner was named to the list of Lead-
ing Lawyers in Advertising & Media Law by Leading Lawyers
Network.
Misha J. Kerr
561.650.8486
mjkerr@arnstein.com
Misha Kerr is an intellectual property
associate in the firm’s West Palm Beach
office.
A r n s t e i n & L e h r i n t e ll e c t u al P r o p e r t y n e w s l e t t e r
7
of acceptable specimens for catalogs and for electronic displays.
Lands’ End, Inc. v. Manbeck, 797 F. Supp. 511 (E.D. Va. 1992);
TMEP §§ 904.03(h) and (i). In Sones, the Federal Circuit rejected
a “bright-line rule” requiring a photograph with every Internet
marketing specimen for goods because there was no requirement
that a product package in a store contain a picture of the goods. A
description of the goods sufficient to identify them was enough.
Given this more lenient position taken by the Federal Circuit
toward the picture requirement, it is no surprise that the PTO
has become stricter about the ordering information requirement.
Although “shopping cart” functionality has not previously been
required if enough information was present in the specimen to
order the goods in some other way, this case is an early warning
that examiners may be looking for such functionality in the future.
Specimens that only provide a list of distributors or the contact
information for the seller are likely to be rejected. This test for the
Statement of Use specimen will also be applied to the Declaration
of Use that must be filed between the fifth and sixth years after
registration and every ten years with renewal applications.
Source: In re Quantum Foods, Inc., Trademark Trial and Appeal Board, Applica-
tion Serial No. 78/960,554, April 15, 2010
Joel B. Rothman
561.650.8480
jrothman@arnstein.com
Mr. Rothman is a Florida Bar board certi-
fied Intellectual Property lawyer and a
partner in the firm’s West Palm Beach
office. Mr. Rothman represents individ-
ual and corporate clients in intellectual
property infringement litigation involv-
ing patents, trademarks, copyrights, trade secrets, trade libel
and related commercial matters. His litigation practice also
includes significant focus on electronic discovery issues such
as e-discovery management and motion practice relating to
e-discovery.
Ask about our flat fees
Arnstein & Lehr is committed to client service, including
alternative fee arrangements. Please ask us about our flat
fees for trademark and copyright tasks, a way we partici-
pate in the ACC Value Challenge.
| Summer 2010
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