With the explosion of blogs, Facebook, Twitter, and the like, it is easier than ever for people to vent their frustrations and anger about each other and companies. And those messages can spread through the Internet at a remarkable pace, reaching thousands in a matter of seconds. This can be highly upsetting to someone disparaged by such a statement. However, not every utterance that someone takes offense to constitutes a legally defamatory statement. We are all free to share our opinions, regardless of whether it disparages an individual or a business, and regardless of whether it actually reflects the truth. Indeed, this is a bedrock principle of the First Amendment. What we cannot do is make false and disparaging statements of fact about another. While the line between an actionable defamatory statement and negative opinion is often difficult to ascertain, two recent court decisions shine helpful light on what we can and cannot say about another.

In the first case, a disgruntled tenant in a Chicago apartment complex posted the following statement on her Twitter page (I guess the cool kids call this a “tweet”): “Who said sleeping in a moldy apartment was bad for you? Horizon realty thinks it’s okay.” Horizon Realty did not take kindly to the statement and sued the tenant for defamation. The tenant’s attorney responded immediately by filing a motion to dismiss the case. The attorney argued that the tenant’s statement was not verifiable facts, but instead reflected her opinion. The attorney aptly summarized his argument as follows: “Even if [the tenant's] tweet were interpreted to mean Horizon realty thinks it’s okay to sleep in a moldy apartment, the statement merely reflects what [the tenant] thinks ‘Horizon realty’ thinks.” The court agreed and threw the case out, holding “the tweet non-actionable as a matter of law” (OK, so it’s not just the cool kids that call it a tweet).

In the second case, Courtney Love posted the following derogatory tweet (among others) about a fashion designer: “has a history of dealing cocaine, lost all custody of her child, assault and burglary.” This does not appear to simply reflect Love’s opinion, but instead disparaging statements of fact about the designer. Not surprisingly, the designer sued Love for defamation. Love’s lawyer also tried to have the suit dismissed, essentially arguing that Love’s statement was in the public interest and should be protected because, as her lawyer put it, Love should “be allowed to speak out when one believes consumers are being ripped off.” The court did not buy it and denied Love’s motion while also holding that the designer was likely to prevail at trial. So the moral of the story:  You can couch your derogatory statements as your opinion and be okay, but if you start attacking someone’s character with negative statements of fact, you might find yourself on the wrong end of a court judgment.

[This article originally appeared at The Huffington Post.]

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Early last month, outdoor apparel manufacturer the North Face sued college freshman Jimmy Winkelmann and his company, the South Butt, for selling a line of clothing that parodies that of the North Face. Winkelmann sells t-shirts, fleeces, and hats — many of which closely resemble the t-shirts, fleeces, and hats sold by the North Face — featuring a logo that mocks the North Face’s outdoor aspirations.

While the North Face logo is “a stylized silhouette of Yosemite’s Half Dome peak,” the South Butt logo, called the “half ass,” is a “stylized silhouette of a rump.” While the North Face’s motto is “Never Stop Exploring,” the South Butt encourages its customers to “Never Stop Relaxing.”

The earnest Winkelmann claims he came up with the clothing line in response to the North Face’s ubiquity at his high school.

Jimmy found this phenomenon to be rather curious given that his classmates were not of the exploring ilk, purportedly being the market targeted by North Face. He found the sudden collective movement by his peers to own North Face products to be symptomatic of the modern consumer culture. Thus, as an antithesis to North Face, The South Butt was born.

The last two weeks have seen a flurry of activity in the case. The North Face, which is represented by two prominent international law firms, is currently seeking a preliminary injunction that would shut down the South Butt until after the case is decided. The South Butt, which is represented by a St. Louis firm specializing in personal injury and securities cases, is moving to have some of the North Face’s allegations stricken from the case. But all this activity begs the question: Why did the North Face sue Winkelmann for his sophomoric clothing line in the first place?

As a trademark lawyer, I recognize better than many that trademarks are an important and integral part of our economy and that they need to be protected from infringement. That’s why courts have instituted careful tests to determine when parodies cross the line into trademark infringement. But even when a parody crosses that line, it’s not always a good idea to file a lawsuit. Every lawyer practicing in the Internet age knows that a party must carefully consider the publicity risks when instituting a lawsuit — especially one with facts that are as press-friendly as these.

Sure, the South Butt clothing line may inspire an initial guffaw, but it’s a one-note joke that is unlikely to outlive Winkelmann’s junior year. By suing Winkelmann, the North Face has given Winkelmann tremendous publicity — the lawsuit brought so many new people to the South Butt’s online store that the website crashed. And not only is the North Face’s lawsuit driving customers to the South Butt, it’s also alienating North Face’s own customer base. Does the North Face really want to inspire comments like the following from Winkelmann’s blog:

SUPPORTIVE MOM OF A COLLEGE STUDENT ALSO IN MISSOURI. HANG IN THERE! THIS IS SO GREAT… HEARD ABOUT IT ON THE NEWS THIS A.M. AND I AM GOING TO BUY ONE FOR EVERYONE IN MY FAMILY!

That’s at least one Mom who won’t be sending her college students back to school with backpacks from the North Face.

Putting aside whether the North Face made the right decision when it initiated this lawsuit, the North Face has not helped itself by taking several legal missteps along the way. First, the North Face has clearly taken the wrong tone in its legal papers. For instance, their Complaint reads like a PR brochure:

The North Face is a company built from the dreams of two young hiking enthusiasts. In 1966, they founded a small store in San Francisco where they designed and sold mountaineering equipment and apparel. They named their store “The North Face” — evoking a mountain’s north face, generally considered the most difficult face to climb.

This sort of press-friendly language is common in high-profile complaints — but the North Face took this way too far. This PR language only sets up the North Face as even more of a Goliath. Winkelmann, not to be outdone in the rhetoric department, has fired back:

The parties in this case are a subsidiary of a self-described “$7,000,000,000.00 plus powerhouse” and a college freshman. Plaintiff states in its Motion that Jimmy stands to lose “nothing more than profits.” Pursuit of the American Dream, freedom of speech, freedom of choice for consumers, and marketplace competition are all at stake.

Apparently Winkelmann can get carried away too.

But not only did the North Face’s papers take the wrong tone, they also had awful timing. According to Winkelmann:

Plaintiff’s filing of its Complaint on December 10, 2009 proved to be the most opportune time to file in order to generate the most pre-holiday media attention for Defendants during what is traditionally the busiest shopping season of the year. In effect, Plaintiff generated a market demand for The South Butt products.

Do these missteps mean the South Butt is likely to prevail in the case? At least the first round — the preliminary injunction hearing — will probably belong to the South Butt. As a general matter, courts dislike granting preliminary injunctions because injunctions can have devastating effects before any trial on the merits. For instance, the North Face’s requested injunction would shut down the South Butt for months, and the South Butt might never recover. Courts thus require a party seeking a preliminary injunction to show, among other things, (1) a threat of irreparable harm if the injunction is not granted, and (2) a likelihood that the moving party will eventually prevail on the merits of the case.

In trademark cases, irreparable harm is often presumed by the Court because of the nature of trademarks. But here the South Butt has a powerful argument that the presumption should not apply: although the North Face filed suit in December, it apparently knew about the South Butt products for months beforehand. This delay substantially undermines the North Face’s argument that it is now being irreparably harmed.

[This article originally appeared at The Huffington Post.]

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Back in college, my friends and I (like many other students with too much time on their hands) developed a love for the crudely-animated and oftentimes just plain crude, TV show South Park. Although this relationship of love should now more aptly be described as “friends with bennies” (i.e., I will call upon it once every few months or so when not much else is on), at times I have caught myself reminiscing about the good ole days.

One of my favorite episodes (and I’d like to think this is not just because I am an attorney) featured something called the “Chewbacca defense.” In the episode, a record studio hires Johnnie Cochran to defend it in a harassment lawsuit against Chef. At the conclusion of trial, Johnnie delivers the following closing argument:

… Ladies and gentlemen of this supposed jury, I have one final thing I want you to consider. Ladies and gentlemen, this is Chewbacca. Chewbacca is a Wookiee from the planet Kashyyyk. But Chewbacca lives on the planet Endor. Now think about it; that does not make sense!

… Why would a Wookiee, an eight-foot tall Wookiee, want to live on Endor, with a bunch of two-foot tall Ewoks? That does not make sense! But more important, you have to ask yourself: What does this have to do with this case? Nothing. Ladies and gentlemen, it has nothing to do with this case! It does not make sense! Look at me. I’m a lawyer defending a major record company, and I’m talkin’ about Chewbacca! Does that make sense? Ladies and gentlemen, I am not making any sense! None of this makes sense! And so you have to remember, when you’re in that jury room deliberatin’ and conjugatin’ the Emancipation Proclamation, does it make sense? No! Ladies and gentlemen of this supposed jury, it does not make sense! If Chewbacca lives on Endor, you must acquit! The defense rests.

In the end, Johnnie woos the jury with this charismatic, yet utterly nonsensical argument, and wins the case for the record company.

Now, while I appreciate the Chewbacca defense for its comedic value, my appreciation for it when used in actual litigation is much, much — indeed, radically — less. Hence my frustration when I saw the device being utilized in the recent high-profile case involving the alleged extortion plot by former CBS news producer Robert “Joe” Halderman against David Letterman. Dusted off and repurposed, the Chewbacca defense was now the “Tiger defense,” and was cited by Halderman’s lawyers as basis for dismissal of Halderman’s indictment on extortion charges. Allowing myself some creative liberties here, the argument sounded something like this:

… Ladies and gentlemen of this supposed grand jury, I have one final thing I want you to consider. Ladies and gentlemen, this is Tiger Woods. Tiger Woods is a championship golfer who had an affair with Rachel Uchitel. Uchitel kept evidence of the affair, but, by virtue of Woods’ payment, such evidence was never released. To date, no criminal charges have been filed against Uchitel, for extortion or any other crime. That does not make sense! But more important, you have to ask yourself: What does this have to do with this case? Joe Halderman offered to sell his story to David Letterman, and has been charged with extortion. Now think about it; that does not make sense! Look at me. I’m a lawyer defending an extortion plot, and I’m talkin’ about Tiger Woods.

[If you don't trust my summary or are simply curious, you can read the actual court filing here]

Readers, the Tiger defense does not make sense for multiple reasons, but respecting my word count restriction, I will limit my commentary to only three of them:

First, comparing extortionate conduct to something that is not extortion does not make sense. In order to constitute extortion, the law requires evidence of a threat which instills fear in the person threatened. Halderman, however, neither cites facts nor makes any suggestion that Uchitel communicated an actual threat to Woods demanding money in exchange for her silence (or some other quid pro quo), as Halderman is alleged to have done to Letterman by demanding $2 million to refrain from publishing information about Letterman’s affairs. Rather the facts reported are only that Uchitel announced a press conference, which was subsequently cancelled when Woods offered hush money and Uchitel accepted his offer. A person’s unilateral fear that unsavory details concerning his or her private life may later be made public by another does not render him or her a victim of extortion. It’s simply called having regret.

Second, relying on anecdotal evidence as grounds to support dismissal of an indictment does not make sense. The “evidence” supporting Halderman’s conclusion that Uchitel is not an extortionist comes exclusively from third-party news reports. Tellingly, Halderman’s briefing of the Tiger defense is littered with citation to sources including, but not limited to, thedailybeast.com, radaronline.com, and the Huffington Post. Whether or not these news sources contain accurate information is truly beside the point; it is impermissible for a court to recognize such information as fact. Thus Halderman would probably best be served by sticking to case, statutory or other legal authority in seeking a dismissal. After all, even the Chewbacca defense threw in a reference to the Emancipation Proclamation.

Finally, even if Uchitel’s conduct could be characterized as extortion, Halderman ignores a little something called prosecutorial discretion. Prosecutorial discretion refers to the fact that government prosecutors have nearly absolute and unreviewable power to choose whether or not to bring criminal charges, and what charges to bring, in cases where the evidence would support charges. Thus, even assuming a basis for criminal charges existed in the Tiger/Uchitel situation, the fact that local prosecutors elected not to pursue an extortion claim against Uchitel is no reason to conclude that Uchitel’s conduct was, ipso facto, not extortion. By Halderman’s logic, the next time a man holds his wife at knifepoint threatening to kill her, I’m guessing that man should assert the Charlie Sheen defense. Hopefully, even the late Johnnie Cochran would find humor in that.

[This article originally appeared at The Huffington Post.]

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In a society where parents fabricate the disappearance of their small child in the hopes of getting a reality television show, it should be no surprise that Erik Estavillo is seeking his fifteen minutes of fame as a serial litigant. However, given the limited and overburdened resources of our federal and state courts, let’s sincerely hope other “wannabes” don’t literally follow suit.

For those of you who watch the videogame industry, you may have heard of Estavillo as the eccentric (to be kind) UCLA grad who sued Sony Computer Entertainment of America last July for disabling his Play Station Network account for “trash talking” in the on-line game “Resistance: Fall of Man.” (If any of you know online gamers, you can only imagine the type of “trash talk” that led to the ban). Estavillo’s suit against Sony sought $55,000 in pain and suffering damages claiming, among other things, that Sony had violated his First Amendment right to free speech. Not surprisingly, a United States District Court judge dismissed Estavillo’s claims, ruling that the First Amendment did not apply to Sony’s online commercial network.

Apparently enamored with the media attention he received last summer, Estavillo has not only appealed the District Court’s dismissal of his claims against Sony, he is now on a litigation rampage against other big-wig videogame publishers. Indeed, Estavillo has just in the last two months sued Microsoft Corporation, Nintendo Of America, Inc. and Activision Blizzard on a whole variety of bizarre (or amusing as some gamers seem to think) claims premised on what he appears to believe is his inalienable right to play and enjoy videogames.

For example, on November 18, Estavillo filed a lawsuit against Microsoft in a United States District Court in Washington, D.C. In his pro-per complaint, Estavillo alleges that he woke up that day to “find his XBOX 360 had the infamous ‘red ring of death,’” which in layman’s terms means that it was no longer working. To support his claim for $75,000 in damages against Microsoft (which would obviously pay for hundreds of new consoles), Estavillo issued a trial subpoena to Bill Gates seeking testimony to establish the number and percentage of XBOX 360s that have experienced the “red ring of death” defect (a notorious problem with the XBOX 360 that has led Microsoft to extended warranties on the consoles).

In that same complaint against Microsoft, Estavillo also asserted an entirely unrelated claim against Nintendo for sending “an update via the Nintendo Wii console” which allegedly prevents players from using third-party software designed to enhance a player’s performance. Remarkably, Estavillo claims that the Nintendo update interfered with “his pursuit of happiness” as guaranteed by the Declaration of Independence. Who knew that the Declaration of Independence gave rise to a civil claim for interfering with one’s happiness? You can only imagine the number of lucrative/costly claims one has forgone and/or avoided in a lifetime.

Finally, Estavillo has most recently targeted Activision Blizzard — the maker of the wildly popular on-line game “World of Warcraft.” On November 24, Estavillo filed suit in California Superior Court claiming that the publisher has engaged in “deceitful” business practices by deliberately causing the “World of Warcraft” online game to proceed too slowly so as to collect greater subscription revenue. In this lawsuit, Estavillo has subpoenaed Winona Ryder and Depeche Mode founder, Martin Lee Gore, to provide testimony on his behalf regarding the “subject of alienation.” (If you are confused as to what this means, or how it could possibly be relevant to any claim Estavillo has against Nintendo, you are not alone.)

Although it is hard to know whether Estavillo is truly the agoraphobic, very depressed man he claims to be in his complaints (afflictions that he says began about two years ago), he certainly seems to be enjoying the media attention that has surrounded his litigation escapades. Indeed, a Google search of Estavillo shows that he has given a number of interviews and comments to the press. Moreover, Estavillo has now even launched his own website, EstaVideo, which includes videogame reviews, podcast interviews and a history of Estavillo’s legal endeavors in the videogame industry (for those readers that actually may be interested in checking it out, it can be found at estavideo.bravehost.com).

Although Estavillo stands zero chance of prevailing on any of his claims (and equally little chance of subpoenaing any of his famous witnesses), the real question is will Estavillo ever stop his nuisance, attention-seeking lawsuits? According to his website, Estavillo’s complaint against Activision Blizzard was the last lawsuit he will ever file. Let’s hope this declaration has more value than any of Estavillo’s frivolous claims. However, given how much this gamer seems to enjoy attention (and all the attention he has received), it is hard to imagine Estavillo will stop any time soon.

[This article originally appeared at The Huffington Post.]

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For years I’ve been itching to write an article, a blog, an email blast, a Facebook post — just something — to rant about the idiosyncrasies of patent law. I’m not talking about a scholarly, academic work; if you want to learn patent law in a nutshell, go read Patent Law In A Nutshell. Instead, I’ve wanted to write a piece explaining why it is that after years of litigating patent infringement cases, I understand the law fairly well but sometimes just don’t get it.

I’ve resisted writing these thoughts down, partly out of fear of exposing to my patent law brethren that, like Meryl Streep confessing to Amy Adams in the dramatic closing scene of Doubt, that “I have my doubts; Oh I have my doubts.” Nevertheless, having just read the recent decision in Perfect Web Technologies v. InfoUSA (Fed. Cir. 2009), I feel compelled to take a minute to rant.

By way of context, I began practicing patent law at a prominent L.A. firm as one of several lawyers on a team defending Hewlett-Packard against claims filed by Pitney Bowes alleging that virtually all of Hewlett-Packard’s laser printers, which incorporated a feature for smoothing print called “Resolution Enhanced Technology” or “REt,” infringed a Pitney Bowes patent. The case might seem a bit incongruous on its face. How was it that a company known primarily for postage stamp meters was suing HP — a world leader in the development and sale of laser printers — for infringing a laser printing patent? It turns out that, largely unbeknownst to the industry, engineers within Pitney Bowes tinkered with laser printer technology in the 1970s, and a series of patent applications led to the issuance in 1983 of the patent in suit.

Two aspects of the case stood out to me at the time. First, there was no evidence that HP’s engineers were aware of, let alone copied, Pitney Bowes’s patent when they designed their REt system (incidentally, even Pitney Bowes’s then management appeared unaware of its own patent for some time, as it did not file suit until years after HP began selling the accused printers). Second, there was no evidence that HP’s engineers copied any Pitney Bowes laser printer that utilized this patented technology, because Pitney Bowes never claimed to have sold such a laser printer.

Call me crazy, but as a young lawyer with no prior experience in patent law, I wondered how HP could be held liable for patent infringement if it had not copied the patent and had not copied a Pitney Bowes product. Actual copying is an element of a copyright infringement claim, so why would the law be any different here? Moreover, despite the law’s oddities and absurdities, perceived or real, it does tend to work out that we only hold people liable when they’ve done something “wrong” in the everyday sense of that word.

But alas, patent law did call me crazy. In spite of my misconceptions and the misconceptions of many people I’ve observed commenting on patent cases, copying is not an element of patent infringement. Thus, you might analogize patent law and patent infringement to a game of Monopoly. If by chance you land on “St. Charles Place,” and if it is owned by someone else, you pay. It doesn’t matter whether or not you knew the property was owned by someone else; it doesn’t matter whether or not you knew the perimeters of the property; and it doesn’t matter whether or not you intended to trespass. As a result, it is often highly misleading and erroneous to suggest that a company found liable for patent infringement “stole” or “ripped off” technology.

This all makes for a rather dangerous game when you factor in the risks. Defendants accused of patent infringement can be (and often are) hit with astronomical damages awards in the hundreds of millions of dollars, with recent verdicts exceeding $1 billion. Further, courts can permanently enjoin the accused infringer from selling its products up through the expiration of the patent. The risks were too high for HP — nearly its entire line of laser printers was potentially at risk–and so in a public settlement, it paid Pitney Bowes $400 million to buy peace.

With outcomes like this — the well-publicized case against Research In Motion is another example — I cringe a little when I hear patent law and the proliferation of infringement suits hyper-simplistically defended with platitudes about “rewarding invention.” Certainly, patent law can reward inventive effort, but not always. I struggle to comprehend how HP’s payment of $400 million to Pitney Bowes, or the verdict against RIM, rewarded invention rather than punishing it.

And indeed, much of patent litigation today is entirely divorced from the motivations of patent law; it is simply about making money for the sake of making money, with no associated public benefit. Today, there are companies (you’ve probably heard the term, “patent trolls”) whose entire business consists of shaking down accused infringers with “paper patents” — patents that were issued but have never been the subject of a product on the market. This makeshift industry is even becoming vertically integrated: law firms prosecute patent applications, law firms acquire the resulting patents, and law firms turn around and file infringement suits for their own financial gain. So the companies who are actually benefiting consumers by designing, manufacturing, and selling products — often without the slightest knowledge of these paper patents — are forced to pay a hefty ransom to save their business and keep these products on the market. This is how patent law frequently “rewards invention.”

The potential for injustice — at least I think it’s injustice — is compounded by the fact that patentees generally seek to obtain the broadest patent protection possible. Patent “claims” — the portion of the patent which serves to define the invention — tend toward obtuse language that describes the patented product in the most abstract, conceptual language possible. After all, the bigger we draw the boundaries of St. Charles Place, the more likely it is someone will land on it.

And many patented inventions are not “products” at all. The Supreme Court recently heard oral argument in Bilski v. Kappos, which concerns the validity and enforceability of “method” claims that are not tied to a particular machine. Although the USPTO rejected the patent application at issue in Bilski, there are examples of successful applications that would leave you scratching your head. At present, my favorite comes from the above-mentioned Perfect Web case. The patentee in that case applied for and obtained a patent to the following:

1. A method for managing bulk e-mail distribution comprising the steps:

(A) matching a target recipient profile with a group of target recipients;

(B) transmitting a set of bulk e-mails to said target recipients in said matched group;

(C) calculating a quantity of e-mails in said set of bulk e-mails which have been successfully received by said target recipients; and

(D) if said calculated quantity does not exceed a prescribed minimum quantity of successfully received e-mails, repeating steps (A)-(C) until said calculated quantity exceeds said prescribed minimum quantity.

I know, I know, this is all pretty technical stuff — I should use a semi-colon and parentheses here to indicate facetiousness — so allow me to use my years of legal training and patent experience to put this in plain English for you:

1. A method for sending emails where you:

(A) find a bunch of people you want to send an email to;

(B) send the email;

(C) see if everyone got your email; and

(D) if enough people didn’t get your email, send it again.

I’m not kidding. This company didn’t patent any technology behind computers, the Internet, or email delivery systems. Rather, they got a patent on the idea that if you send an email to a number of people, and some don’t receive it, you should send it again. Seriously, I think I infringed that patent claim yesterday when I emailed a Tiger Woods joke to my friends. Fortunately, the Court of Appeals for the Federal Circuit just affirmed a lower court decision declaring the patent invalid, so you should feel safe returning to your cutting-edge practice of sending emails to groups of people.

I could go on and describe my ideas for re-writing patent law to ameliorate some of this craziness, but you’ll have to wait for my book on the subject. Seeing as it took me 10 years to get around to writing a short blog post, I expect it’ll hit stores by 2025.

Until then, I’m adopting an “if you can’t beat ‘em, join ‘em” philosophy. I’m preparing to patent a method for blogging “comprising the steps: (A) matching a target recipient profile for blog readers with a particular target blog; (B) transmitting a writing to said blog readers on said blog; (C) calculating the quantity of comments received from said blog readers on said blog; and (D) if said quantity of comments do not exceed a prescribed minimum quantity of comments, repeating steps (A)-(C) until said calculated quantity exceeds said prescribed minimum quantity.” When my patent issues, the rest of you bloggers will just have to watch out.

[This article originally appeared at The Huffington Post.]

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Last week, San Diego Charger Shawne Merriman filed a lawsuit against reality television personality Tila Tequila. The filing was the latest move in an ongoing battle between the two which started in September of this year. The battle began with Tequila accusing Merriman of choking her after an alleged dispute between the two at Merriman’s home. Although Merriman was arrested at the time of the incident, the San Diego District Attorney declined to press charges. Tequila later sued Merriman in the San Diego Superior Court for a variety of claims arising out of the incident, including battery, intentional infliction of emotional distress and domestic violence. Her complaint not only described Merriman’s alleged acts of violence, but also provided colorful background regarding the dispute, contending that Merriman became angry when Tequila confronted him about his “personal drug use (steroids, ecstasy, pot), his violent behavior, [and] hearing that [Merriman] had slept with a minor . . .”

Tequila’s comment on the incident did not end with the filing of her complaint. She also went on somewhat of a publicity campaign against Merriman, allegedly posting negative comments about him on her website and making negative comments to the press. While Merriman will have to defend against Tequila’s allegations in the San Diego Superior Court, he apparently decided that doing so was not sufficient to remedy the harm he has allegedly suffered. Accordingly, staying true to the old sports adage that the best defense is a good offense, last Thursday Merriman went on the offensive. He filed a federal lawsuit against Tequila in which he alleges that Tequila has gone on a smear campaign, making false, unfounded and outrageous statements about Merriman in a plot to interfere with his business dealings. Merriman also claims that Tequila has infringed his intellectual property rights by, among other things, posting copyrighted pictures of Merriman on her website without Merriman’s authorization and infringing his “Lights Out” trademark.

While Merriman’s complaint alleges a number of claims, at first glance, it appears to be much ado about nothing. Based on the complaint, it appears that Tequila has in fact posted, without authorization, copyrighted pictures of Merriman on her website. According to the complaint, the copyrighted pictures accompanied a blog entry on the site which announced Tequila’s lawsuit against Merriman, and included the caption “SHAWNE SCARYMAN… I WILL SEE YOU IN COURT BABY SWEETIE POO BEAR HONEY BUN! LOL.” But will Merriman be able to establish damages as a result of the unauthorized use of the photographs? Merriman claims that Tequila used the pictures to drive consumers to her websites to purchase her goods and services. But it is hard to imagine a theory under which her posting of a random picture of Merriman under the quoted caption and an article about her lawsuit, with no mention of her products or services near the picture, led to more consumers buying her products.

Merriman’s trademark infringement claim is similar. Merriman alleges that Tequila has used his famous trademark “Lights Out” again for the purpose of attracting consumers to her websites. However, he does not provide any specifics as to how she used the trademark. I have seen articles quoting Tequila in which she has mentioned that “Lights Out” is Merriman’s nickname. Is that what Merriman is referring to?

Finally, the most remarkable thing about Merriman’s complaint may be what it doesn’t say. In the complaint, Merriman alleges that Tequila has repeatedly made “false, unfounded and outrageous statements” about Merriman on her website, to the press and/or to third parties, including false statements that “Merriman choked and attacked” her, that Merriman “sleeps with minors and forces them to take drugs,” that “illegal drugs are manufactured in Plaintiff Merriman’s home,” and that “Merriman took the drug ecstasy and ’smoked pot’ on the night/morning of September 5-6.” However, despite such accusations, Merriman’s complaint does not include claims against Tequila for libel or slander.

Under California Civil Code § 45, libel is defined as “a false and unprivileged publication by writing . . . which exposes any person to hatred, contempt, ridicule, or obloquy, or which causes him to be shunned or avoided, or which has a tendency to injure him in his occupation.” Slander is basically the same as libel, but based on oral not written statements. Given Merriman’s allegation that Tequila’s statements are false and given his allegation that, by making the statements, she has injured him in his occupation, a claim for libel and slander would seem an obvious choice, unless of course, Merriman believed that he could not prevail on such a claim. To prove libel or slander, a plaintiff must prove that the alleged statements which form the basis for the claim were false. Was Merriman concerned that he could not prove that? It does not appear that way given his complaint is full of allegations that the statements were untrue. So why not sue for libel and slander?

One possible explanation could be a concern that Tequila’s statements were privileged. Under California law, statements made in the course of judicial proceedings are privileged and thus cannot subject the speaker to liability. But, according to Merriman’s complaint, the statements were not simply made as part of the judicial proceeding (i.e., in papers filed with the Court or at related proceedings such as depositions or court hearings). To the contrary, the statements were allegedly made by Tequila to the press and other third parties and posted on Tequila’s website.

In the end, only Merriman and his attorneys know why Merriman chose to sue Tequila and whey he also chose not to assert claims for libel and slander. However, if the purpose of the complaint was to go on the offensive as a means of deflecting any negative publicity that Merriman may be receiving from Tequila’s original charges, was Merriman successful? Not only do his claims appear somewhat weak, but news of his filing of the complaint has undoubtedly led to further reporting of the original charges and accusations made by Tequila. Merriman is unquestionably a very talented football player, but it remains to be seen if the successful football strategy he has employed will translate to a successful legal (or public relations) strategy.

[This article originally appeared at The Huffington Post.]

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Q: When a writer sells the rights to his script to a production company, I understand that the writer no longer has the right to option his script to other production companies, even if he receives a better offer. That being said, does the writer lose all creative control once he signs his name on the dotted line? Can the production company go ahead and hire whatever director it wants and even change the entire tone of the script without the writer’s approval? Basically, what say does the writer have in a project once his script is sold?

A: The conventional wisdom in Hollywood is that, in film, the director creates his “vision,” but the writers are expendable and easily replaceable. As a result, if you are lucky enough to sell your script, the studio or production company can do whatever it wants with it.

When you sell your script, what you are really selling is the copyright to your creation (or, at the very least, the right to make audiovisual works derived from your script). Copyright vests the author of a work of expression (i.e., you) with the exclusive rights to do a number of things with his work, including the exclusive right to make other creations “derived from” the work (e.g., films). In other words, when you write a script, only you have the right to turn it into a movie. Of course, you probably do not have the money necessary to produce and distribute a feature film, so you must sell that right to a producer or studio that can. And no studio will buy that right without making sure it can make whatever movie it wants out of your script.

“When a writer sells the rights to his script to a production company, I understand that the writer no longer has the right to option his script to other production companies, even if he receives a better offer.” Correct. The production company will most likely acquire an option on your script, which is the exclusive right to purchase it outright, at a set price, within a certain time frame. Until the option expires, you cannot sell your script to someone else even if you receive a better offer.

“That being said, does the writer lose all creative control once he signs his name on the dotted line?” Usually, yes, because there is a difference between selling a literary property to a studio and being hired by that studio to work as a writer on the film. Once you sell the rights to your script, the studio owns it and can do what it wants with it. That will include hiring a screenwriter or screenwriters to write redrafts. If you are a professional screenwriter, the studio may (but is not obligated to) hire you to write another draft of the screenplay. The studio will own that second draft and all subsequent drafts outright, since they will be created as “works for hire” for the studio. If you are hired as a writer, the good news is that you will get more control over your script, and you will get paid for your writing services. The bad news is that the studio can—and often will—hire more writers after you in order to get the script it wants.

“Can the production company go ahead and hire whatever director it wants and even change the entire tone of the script without the writer’s approval?” Yes. Unless you have considerable clout, you will have zero say in crew or casting decisions.

Regarding changing the tone of the script, remember that you are selling the right to make an audiovisual work derived from your work. The studio, as purchaser of that right, may change your original script any way it sees fit. As a current example (out of thousands), consider the recent film The Blind Side starring Sandra Bullock. The film is a sentimental, feel-good tale of a poor youth being taken in by a rich family and “making it” through football. It is based on the best-selling nonfiction book The Blind Side: Evolution of a Game by journalist Michael Lewis (author of Moneyball and Liar’s Poker), a hard-hitting, journalistic account of the evolution of modern football from passing offenses and pass-rushing defenses to the cutthroat world of college recruiting. The tone of the film could hardly be more different from that of the book, but Warner Bros. paid Michael Lewis handsomely for the right to take whatever tone it wanted.

“Basically, what say does the writer have in a project once his script is sold?” Little to none, unless you are hired as a writer on the film, and even then, not much unless you have serious clout. But that’s the business. Truly, you are one of the lucky ones to have sold a script at all.

[This blog entry originally appeared at MovieMaker.com.]

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Britain’s Got Talent contestant-turned-singing sensation Susan Boyle sold just over 700,000 copies of her debut album, “I Dreamed a Dream,” during its first week of release, debuting at No. 1. According to her record label, Columbia Records, not only did Boyle have the best first week sales of 2009, but also the best-selling album debut by any woman in the Billboard SoundScan era. Boyle bested Eminem’s Relapse which scanned 608,000 in its first week earlier this year. By way of comparison, American Idol runner-up, Adam Lambert’s CD also debuted this past week and sold 230,000 units to take the No. 2 spot overall. Across the Pond, “I Dreamed a Dream” sold 410,000 copies in the United Kingdom, handily beating new CDs from established artists such as Rihanna and Lady GaGa.

Wake up, record companies. You want to sell CD’s and stop losing sales of albums to singles on iTunes and to young people who just steal the music anyway? Keep in mind that your adult contemporary audience likes to buy and own physical CD’s more than iTuning or stealing. They just need something good to buy, and they want to listen to enduring, well-crafted songs, and performers with potential longevity who can actually sing. And they like to go to concerts. Among the top 10 grossing concert tours for 2008 were Madonna (debuted in 1983), Celine Dion (1981), The Eagles (1972), Bon Jovi (1984), Springsteen and the E Street Band (1972), Neil Diamond (1966), The Police (1977) and Tina Turner (1961). Enduring artists singing well-crafted songs. Get it?

Granted, as they might say in England, Boyle’s album is not my cup of tea. But is the success of her album really a revelation? Six years ago, Norah Jones won a slew of Grammy Awards, including Best New Artist, Record of the Year and Album of the Year for her debut pop/jazz album, “Come Away With Me,” which rose to number one on the U.S. Billboard 200 Chart and sold more than 20 million copies worldwide. Two years later, Jones won again for Sunrise, including Record of the Year honors for “Here We Go Again.” Well-crafted songs from a performer who can sing, all the while sitting at a piano and playing it, rather than setting it on fire.

Pop quiz for the Record Companies: Who preceded Jones as Best New Artist? Why that was none other than the classically trained pianist Alicia Keyes, whose debut album, Songs in A Minor, also debuted at number one, going on to win five Grammy Awards in 2002, ultimately selling 12 million copies worldwide. And seven years later, Keyes is once again the toast of the town for her soaring vocals on Jay Z’s “Empire State of Mind.” Longevity.

Examining the Best New Artist list since Jones won in 2003, it becomes immediately apparent that the problems in the recorded music business can’t all be blamed on Napster. Except for 2007, when the honor deservedly went to country rocker Carrie Underwood, it is obvious that the recorded music business is promoting artists who are not destined for longevity or to sell whole CDs that will find their way to the check-out line. In 2004, Best New Artist honors went to the goth metal Christian band, Evanascence, whose debut album sold well but was followed by personnel departures over creative differences. In 2005, alternative rockers Maroon 5 won Best New Artist (beating Kanye West). Although popular as a touring band, the band’s two studio albums have sold somewhat modestly — a total of 15 million albums worldwide. 2006 honors went to the talented John Legend, but whose debut album sold only 3 million copies worldwide. In 2008, the soulful but self-destructive Amy Winehouse beat out Taylor Swift, and earlier this year, another British singer by the name of Adele won Best New Artist honors for her debut album “19,” which thus far has sold only 2.2 million copies, mostly as the result of her appearance on the Sarah Palin episode of Saturday Night Live.

Hey record companies, stop blaming the demise of your business on the Internet. Find us some great songwriters and some singers who can stick around, and the buyers will come.

[This article originally appeared at The Huffington Post.]

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Tiger Woods earned an estimated $105 million from sponsorships last year. Could his future earnings from endorsements be at risk? Not at present. Even with Tiger’s recent admission of marital infidelity, Tiger’s endorsees, Nike, Gatorade, Pepsi and Gillette, have all decided to stand with him (http://money.cnn.com/2009/12/02/news/companies/tiger_woods_sponsorships/ and http://www.reuters.com/article/domesticNews/idUSN3051777520091202).

Despite the fact that Tiger is likely to go into hiding until sometime next year, the story of his marital infidelity will be major news for the near future. The gossip websites have made it clear that they are actively searching for more women who claim to have had relationships with Tiger, and at least one gossip website claims they already know of several more women who are willing to claim they had affairs with the world’s most recognizable athlete. Is it possible that sponsors might have second thoughts about having Tiger promote their products? Is marital infidelity even a legitimate basis for cancelling an endorsement contract?

Given the number of athletes who are regularly involved in public scandals, any major endorsement contract is going to contain a morals clause. Typical morals clauses contain broad language allowing the endorsee to terminate the contract if the athlete engages in “acts of moral turpitude” or becomes involved in “any situation or occurrence involving fraud, moral turpitude or otherwise reasonably tending to bring the endorser into public disrepute, contempt, scandal or ridicule.”

But a contract involving Tiger Woods would not be a typical contract. There is no other athlete who has greater bargaining power than Tiger, and it is extremely unlikely that any contract involving Woods would contain a typical morals clause. The morals clauses in Tiger’s contracts probably require that he actually be convicted of a major criminal offense before the contract could be terminated (obviously his traffic ticket would not qualify). Indeed, those familiar with the terms of Nike’s endorsement contracts state that they require a felony conviction before the contract can be terminated. Thus, when the criminal allegations against Michael Vick became public in 2007, Nike was unable to terminate him immediately. Nike put Vick on suspension while the criminal case was pending, but formally terminated Vick’s endorsement contract when he pleaded guilty later that year.

But let’s assume that one of Tiger’s many attorneys and agents messed up and allowed a broad morals clause to find its way into one of Tiger’s many endorsement contracts. Could a spate of marital infidelity be enough to terminate a contract under a morals clause? There are few modern court cases involving enforcement of morals clauses because those accused of immoral conduct are unlikely to want air those allegations in a courthouse.

Most of the cases involving morals clauses are from the 1950s, when studios used morals clauses to discharge or suspend directors and screenwriters who were accused of being communists. As could be expected during the McCarthy era, courts held that the studios had properly discharged these individuals for violating morals clauses. But these clauses are of doubtful continued vitality. It’s highly unlikely that a modern court would be willing to authorize the termination of a contract under a morals clause for protected First Amendment activity.

There are no court decisions involving a termination under a morals clause for adultery. Most commentators have stated that to justify discharge under a morals clause, the employer must prove that the employee’s conduct would have resulted in actual losses to the employer if the employment continued. Thus, the endorsee would have to show that the alleged marital infidelity would have affected the endorsee’s bottom line. Given the popularity of an athlete like Tiger Woods, it would be difficult to prove that marital infidelity could actually affect an entire business. Tiger can rest assured that his millions of dollars in endorsement contracts are secure.

[This article originally appeared at The Huffington Post.]

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The internet is just beginning to buzz today regarding news that Microsoft has reportedly approached Rupert Murdoch’s News Corp. to discuss a deal whereby News Corp. would “delist” its websites from Google (and, most likely, other search engines that are not using Microsoft’s Bing search engine) in exchange for cash from Microsoft.

The Financial Times describes this as “offer[ing] a ray of light to the newspaper industry.” The popular liberal blogger Atrios disagrees, and cuts to the heart of the story with the following two sentences: “Basically Microsoft’s gonna pay people for the sole right to index their content. I’m guessing that aside from being a waste of money, I’m pretty sure ‘I won’t index you if you ask me politely not to’ is more of a courtesy than something arising out of genuine copyright claim fears.” As Atrios succinctly notes, there are basically two issues here: (1) Would such a deal be wise from a business perspective? and (2) Could Microsoft and News Corp. legally enforce such a deal against Google? I leave it to others more qualified than I to comment on the business wisdom of such a deal. Although Atrios proves that you don’t need to be an intellectual property lawyer to spot and comment on the copyright issues here, it probably won’t hurt to hear such a lawyer’s initial thoughts on some of the legal issues raised. So, here goes . . .

In a nutshell, Google and other modern search engines work like this — they constantly “crawl” through websites and copy all the text from those sites onto their own servers. Then, when you enter search terms into Google, Google searches its own servers, which contain copies of almost all public websites. Google then returns a list of results pointing you to certain websites with snippets of relevant copied portions of those websites. And that’s the issue: Google is copying other people’s content. Copyright law forbids the unauthorized copying of others’ content (of course, there are some nuances here as to what type of “content” is protected by copyright law — i.e., it must be “original” content — but set those nuances aside because they are not directly relevant to the issue here). So if News Corp. politely asks Google to stop copying its content, and Google ignores the request, Google will be engaging in the unauthorized copying of News Corp.’s content. And that folks is unquestionably a prima facie case of copyright infringement.

Again, however, you don’t need to be an intellectual property lawyer to know that we are not at the end of the analysis. You see, there is this little doctrine in copyright law called “fair use.” That doctrine provides that the copying of content for purposes such as criticism, comment, news reporting, teaching, scholarship or research is “fair” and is not infringement. The fair use analysis is case-specific and notoriously hard to predict — courts generally consider several factors in determining whether there is a fair use, including the purpose and character of the work, the amount of use, and the effect upon the market for the copyrighted work. So, would Google’s copying be a fair use? On that question, there is no clear answer. And a lot of lawyers may get rich because of it.

Based on a line of cases where appellate courts have held that search engines’ copying of images for indexing and search purposes is fair use, I would very tentatively predict that Google would come out on top if this issue actually gets litigated. But if this gets litigated, expect a big-time battle over every issue. For example, one of the most important issues will be who files a lawsuit first? Why does that matter? Because the party that files first generally gets to pick where they file, i.e., in which federal district court. And the fair use cases I have in mind are not from the Supreme Court; they are from the Ninth Circuit — the intermediate federal appeals court on the West Coast. Thus, those cases are only binding on the courts within the Ninth Circuit. Thus, Microsoft and News Corp. will want to file outside of the Ninth Circuit (in New York, for example, where News Corp. is headquartered). So, the first thing we may expect in any legal battle will be what lawyers call a “race to the courthouse” where Google will try to file first in the Ninth Circuit. Even if the case gets decided in the Ninth Circuit, however, Microsoft and News Corp. will still have some good arguments to get around the cases I have in mind. And even if they lose in the trial court and then in the Ninth Circuit, don’t expect them to give up. There is still the Supreme Court, and given the importance of these issues, I would expect that the Justices would likely give strong consideration to taking the case.

In short, if Microsoft and News Corp. go forward with a deal whereby News Corp. demands that Google stop indexing its websites, don’t be surprised if it leads to one of the most important copyright lawsuits in history. And don’t be surprised if the ultimate outcome of such a lawsuit shapes the future of internet search.

[This article originally appeared at The Huffington Post.]

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