12 Christmas-themed legal matters that resulted in a written opinion Posted on December 25, 2015 by Larry Bodine By David Kluft of Foley Hoag LLP and originally published on JD Supra. It is often said Christmas is creeping ever-backwards, each year striving to begin its domination of our collective consciousness and consumer dollars at an earlier date. In the realm of litigation,Christmas creep manifests itself in part in the Yule-themed disputes that can occur at any time of the year, particularly in the areas of intellectual property and free speech. In order to get theTrademark and Copyright Law Blog into the holiday spirit, we’ve rounded up twelve Christmas-themed legal matters (“res” in Latin) that resulted in a written opinion during the last twelve months. Merry Christmas! The Allegedly Stolen Reindeer Cody Foster, a Nebraska Corporation, had a contract to supply Urban Outfitters with Christmas ornaments and other doodads. But in 2013, artist Lisa Congdon came forward and accused Cody Foster of stealing her designs. Urban Outfitters sought assurances that Cody Foster’s designs had been independently created, and asked to see the product development documentation. However, what Cody Foster presented in response to this request was “lacking and alarming,” according to Urban Outfitters, which terminated the parties’ agreement and refused to accept additional merchandise. Cody Foster filed suit in a Nebraska state court, alleging breach of contract, and the matter was removed to the District of Nebraska. In September, the parties’ cross-motions for summary judgment were both granted in part and denied in part. Rather than sort through the remaining issues before a jury, the parties settled in November. Cody Foster & Co., Inc. v. Urban Outfitters, Inc., Case No. 8:14-cv-00080 (D. Neb. Sept. 25, 2015). Santa Claus is Coming to Town In 2004, the heirs of composer J. Fred Coots sought to terminate the copyright grant of the songSanta Claus is Comin’ to Town. When Coots made the initial grant in 1934 to the predecessors of EMI Records, the 1909 Copyright Act was in effect, so the grant was for the first 28-year copyright term, set to expire in 1962. In 1951, Coots granted EMI his renewal term as well, another 28years, which meant that the work would enter public domain in 1990. But then things got complicated. In the Copyright Act of 1976, and again in the 1998 Sonny Bono Copyright Term Extension Act, Congress extended the applicable copyright term from 56 years to 75 years, and then to 95 years, and it also added non-intuitive rules regarding an heir’s termination rights. Further complicating things for the parties were multiple contracts and umpteen termination notices of disputed effectiveness, including one in 1981 that the parties agreed would be – but for unknown reasons was not – recorded in the Copyright Office. The District Court waded through this mess and determined that the parties’ rights were still governed by the 1951 agreement, and therefore the grant to EMI would last the full 95 years, until 2029. However, the Second Circuit reversed, holding that a 1981 agreement was the operative document. This means that the copyright will revert back to the heirs in 2016. Baldwin v. EMI Feist Catalog, Inc., 2015 U.S. App. LEXIS 17632 (2d Cir. 2015). The Flip Tree Balsam Brands brought patent, trademark and false advertising claims against Frontgate Marketing for selling artificial Christmas trees that allegedly infringed Balsam’s “Flip Tree” and its patented “pivot joint.” Balsam’s request for a TRO was rejected because it failed to provide sufficient evidence that it was the owner or the exclusive licensee of the patent-in-suit. The Court also was skeptical that the defendant’s “slotted hinge” mechanism was an infringement of the plaintiff’s “pivot joint.” Additionally, the Court found no evidence that Frontgate’s marketing, which included the admittedly untrue claim that its trees featured “patented” technology (in fact, the slotted hinge was not yet patented), was the cause of any irreparable harm to Balsam. Balsam Brands Inc. v. Cinmar, LLC, 2015 U.S. Dist. LEXIS 154075 (N.D. Cal. Nov. 12, 2015). Christmas Wishes from Mr. Foamer New Wave Innovations, a company that makes equipment for car washes, claimed priority usage of the MR. FOAMER trademark, and brought suit to enjoin the use of the name by a car wash in Florida. However, New Wave’s assertion of priority was based on a 2011 Christmas card sent to its customers, which depicted a cartoon character saying “Christmas Wishes from Mr. Foamer.” The 11th Circuit affirmed denial of the injunction, holding that, because the Christmas card was not announcing that Mr. Foamer was the company’s new name or a new product, it was not a use in commerce but a mere de minimis use of a cartoon character design. The Court also rejected New Wave’s argument, based on the Trademark Manual of Examining Procedure § 901.02, that the card qualified as a “seasonal” commercial use. New Wave Innovations, Inc. v. McClimond, 589 Fed. Appx. 527 (11th Cir. Fla. 2015). The Legend of the Candy Cane In December 2013, a first grader at Merced Elementary in West Covina, California, tried to hand out candy canes to his classmates on the last day of school before Christmas vacation, during a time set aside for the exchange of gifts. Each cane was accompanied by the “Legend of the Candy Cane,” a religious message linking the candy to the story of Jesus Christ, i.e., the “J” shape for “Jesus,” the red stripes symbolizing the blood shed on the cross, etc. The school stepped in and prevented the distribution of the candy canes (the student alleged that his teacher told him that “Jesus is not allowed in school;” the teacher flatly denies this). The child’s family complained that the candy canes were singled-out for exclusion and pointed to other seasonal messages – both secular and religious – that had made their way into the classroom during the exchange of gifts. In response, the school decided to level the playing field and announced that, next year (2014) at holiday time, the distribution of all such messages would be permitted before or after school, or during recess, but not in class. That wasn’t good enough for the child’s parents, who moved for an injunction ahead of the 2014 holiday season and argued that their child still would be singled out. The Court jumped right to the issue of irreparable harm and denied the motion, holding that the parents had failed to provide evidence of any likely harm since the new policy hadn’t even been implemented yet. The matter settled in 2015. I.M. v. West Covina Unified School District, 2014 U.S. Dist. LEXIS 171875 (C.D. Cal. Dec. 11, 2014). Sleep in Heavenly Peace The Inn at Christmas Place is a resort in Pigeon Forge, Tennessee where you can celebrate “Christmas every day of the year,” “Sleep in Heavenly Peace” on their branded mattresses at night, and visit Dollywood on the weekends. Just as the Inn was announcing its grand opening in 2006, a resident of Vietnam registered the domain, perhaps coincidentally and perhaps not. After the Inn caught wind of the registration, which was resolving to a website full of pay-per-click links to its competitors, it filed a complaint with the National Arbitration Forum pursuant to the Uniform Domain Name Resolution Policy. The registrant did not respond to the complaint and the panel found that the domain name was registered and used in bad faith, so the domain was transferred.Christmas Place, Inc., v. Pham Dinh Nhut, 2015 NAFDD LEXIS 143 (NAF Feb. 16, 2015). Merry Christmas, Ya Filthy Animal DT Fashions of Columbus, Ohio owns the registered mark YA FILTHY ANIMAL and does a brisk business selling t-shirts and other gear bearing the phrase “Merry Christmas, Ya Filthy Animal” on Etsy. This October, another company called The Dark Monkey filed an application with the USPTO to register MERRY CHRISTMAS YA FILTHY ANIMAL for clothing. The Dark Monkey then convinced Etsy to deactivate DT’s merchandise listings, allegedly claiming to own a registered mark in the phrase which, of course, was not true because the application had just been filed. DT Fashions filed suit and sought an order enjoining The Dark Monkey from making further such claims. The Dark Monkey did not appear, and the Court granted the relief requested. Movie buffs may note that the phrase itself does not originate from either company, but rather is a line from Home Alone 2. DT Fashions v. Cline, 2015 U.S. Dist. LEXIS 158894 (S.D. Ohio Nov. 24, 2015). Reyes Judicata ACEMLA, a music performance rights organization, filed a copyright infringement suit againstBanco Popular de Puerto Rico, claiming that the bank’s annual television Christmas specials (such as Queridos Reyes Magos) have been using ACEMLA’s copyrighted compositions without permission for two decades. The three-year limitations period had already run with respect to the older specials dating back to 1995, but ACEMLA argued that the claims were not time-barred because DVDs of those specials were still on sale at local branch offices of the bank. However, the Court was not impressed by ACEMLA’s evidence of this factual assertion, which consisted of a single unsigned affidavit, and granted summary judgment as to these claims. The claims related to the more recent specials, although not time-barred, were also dismissed on collateral estoppel grounds; it turns out that a few other Courts had already determined that ACEMLA holds only a non-exclusive license to the songs in question, and therefore has no standing to sue. ACEMLA de P.R., Inc. v. Banco Popular de P.R., Case No. 3:13-cv-01822 (D.P.R. Oct. 30, 2015). Ewe and Me, Charlie Brown Plaintiff Barbara McDonald brought copyright claims against the Pavilion Gift Company, a wholesale manufacturer of Christmas ornaments and other home décor. The parties had an arrangement whereby McDonald presented Pavilion with Christmas-themed gift designs, and she would receive a commission on the ones Pavilion decided to manufacture. She claims Pavilion breached the agreement and infringed her copyrights by using some of the designs without paying her. The Court made a side by side comparison of the parties’ respective works and determined that any similarities were insubstantial and limited to “basic ideas” not protected by copyright law, such as “a Santa Claus figure in a red suit,” a cherub with a lamb (called “Ewe & Me”), and a “Charlie Brown-style Christmas Tree.” The Court’s opinion, which granted summary judgment for Pavilion, includes an interesting chart with specific factual findings as to each of the 62 designs at issue.McDonald v. K-2 Industries, 2015 U.S. Dist. LEXIS 75205 (W.D.N.Y. June 10, 2015). Holiday Color Changing Glitterdome Figurines Sculpture Hua-Chen Pan, a Taiwanese designer, filed suit against Kohl’s Department Stores in the Southern District of Ohio, alleging that Kohl’s was selling knockoffs of his copyrighted work, Holiday Color Changing Glitterdome Figurines Sculpture (a Santa Claus figure with a snow globe for a belly). About a year after fact discovery ended, the Court allowed Pan to take two additional depositions, during which Pan learned that Kohl’s employees received annual training about how to avoid copyright infringement. Kohl’s refused to produce the training materials, and Pan moved to compel, arguing that such materials would have been responsive to its prior document requests. However, when the Court asked which document request, Pan equivocated and did not provide any further detail other than point vaguely to his entire set of 28 numbered document requests. The motion to compel was denied, and the defendant’s motion for summary judgment is pending. Pan v. Kohl’s Department Stores, Inc., 2015 U.S. Dist. LEXIS 92001 (S.D. Ohio July 15, 2015). Christmas Tree Alarm Marc Rasschaert invented a trunk-mounted Christmas tree alarm that measures the water level and alerts you when the tree is getting too dry. A Patent Examiner rejected most of Rasschaert’s claims, finding that the key components of the device were already disclosed in two prior patents for similar devices, including one water alarm system disguised as a Christmas ornament. ThePatent Trial and Appeal Board affirmed with one exception, that exception being that the mounting straps for the device were not disclosed in the prior art’s use of VELCRO® brand fasteners. Ex Parte Marc Rasschaert, 2015 Pat. App. LEXIS 9229 (Patent Trial & App. Bd. Sept. 11, 2015). A Pox On Both Mangers Since the 1950’s, a group of Santa Monica residents has been putting up a life-sized multiple-scene nativity display in Palisades Park during the Christmas season. This group was incorporated in 1983 as the nonprofit Santa Monica Nativity Scenes Committee. In 2003, the City of Santa Monica decided to open up the opportunity to use the park for Christmas-time displays to anyone, not just the Committee, but as a practical matter nobody else was interested. In 2011, however, that disinterest changed when a number of (allegedly organized) atheists applied to put up their own displays. Buried in applications, the City’s staff rolled up their sleeves and put together a lottery system to allocate the available space, which resulted in unanticipated expenses for the City and an atheist domination of the park that year. In 2012, both the Committee and the atheists vowed to game the system by flooding the lottery with even more applications, so the City declared a pox on both mangers and banned all such displays from the park. The Committee filed suit and argued that, by disallowing the Christmas display, the City was essentially endorsing an anti-Christian view, thereby violating the Establishment clause of the First Amendment. The Central District of California disagreed and denied the Committee’s request for an injunction. The Ninth Circuit affirmed, holding that the ban was content neutral and narrowly tailored to serve a significant governmental interest, in this case the interest of avoiding the expense and effort of administering the lottery every year. Santa Monica Nativity Scenes Committee v. City of Santa Monica, 784 F.3d 1286 (9th Cir. 2015).