Not So Small Claim

Small claims courts in Tennessee are called Courts of General Sessions. Under $25k; either party can appeal to Circuit Court and the case starts all over as if the General Sessions trial never occurred. Great for eviction and collections lawyers.

If a plaintiff appeals, their damages often magically increase, and the Circuit Court complaint is amended. No problem, pile it on!


But, what if a defendant appeals and the plaintiff then wants to bail on the litigation? Can the plaintiff voluntarily nonsuit in Circuit Court and vaporize the defendant’s appeal?

The Tennessee Court of Appeals says yes. A General Sessions appeal is to be treated as if it had originally been filed in Circuit Court. And, a plaintiff (with exceptions) can always nonsuit without permission from a defendant.

Read the opinion here.



OMG its OEM!

Stealing intellectual property is an American pastime. Music, software, ebooks, you name it—free is the right price. And mounds of shaming and litigation has done little to discourage the copyright abolitionists.

And then there is Joshua Christenson. He operated a website that offered discounted versions of Adobe software. These were not illegal copies, but actual Adobe products purchased from third parties.

Of course, Adobe was not happy about this. How could Christenson sell these products when the original license prohibited downstream sales?

So, Adobe filed suit. The only problem was that Adobe forgot to bring the actual licenses to the dance! Instead, it submitted license templates and testimony as to how Adobe routinely licenses software.

Christenson argued that he had every right to sell the software under the “first sale doctrine.” This statute allows someone who owns a particular copy to sell it to anyone they choose. Without this doctrine, I would be unable to add to my collection of Archies and Chipmunks recordings. Que triste.

But, to own something, there must be a sale, not a license. Adobe pounded a dent in the podium arguing this was no sale–just a license that prohibited downstream sales. And, that was probably right.

But, Adobe forgot to bring the licenses to the dance.

So, the judge agreed that Christenson met his initial burden of proving he owned the copies. The burden then shifted to Adobe to prove that Christenson was bound by its license.

But, Adobe forgot to bring the licenses to the dance. Christenson wins.

Adobe also asserted a trademark infringement claim. These can arise when someone illegally copies software and tries to pass it off as the real deal. But, what Christenson sold was the real deal–original Adobe software. Christenson 2, Adobe 0.

Here’s a picture of Christenson when he heard the good news:

laptop cartoon character with face hands

From reading the opinion, it appears that Adobe made litigation blunders. I have no idea why the licenses were not attached to the complaint, or why unfair competition claims were missing.

You can read the opinion here.  It is relatively short, and has nice discussions of the first sale doctrine and the fair use of trademarks. I think you can even download it in .pdf!

Redskins Run A Slant Pattern?

I had never heard of The Slants until the USPTO denied a trademark application seeking registration of their band name.  Applications can be denied if the USPTO deems a mark to be disparaging.

Would you say “no” to these dudes?


But, that is exactly what the USPTO did. In their opinion, the word “Slants” disparaged a substantial composite (not majority) of Asians in the context of contemporary attitudes.

And, that subjective, moving-target determination was made by a single trademark examining attorney.

On appeal, the Federal Circuit didn’t even address contemporary attitudes, or if the name offended anyone. Instead, it leapfrogged and ruled that Section 2(a) of the Lanham Act (disparagement) was facially unconstitutional because it violates the 1st Amendment.

This is how it works: The Slants chose their name to draw attention to and embrace their Asian heritage. Their choice was at least partially political speech. The examining attorney made a decision that the content of that speech was disparaging and offended people.

But, laws that target speech based on its content are—as they should be—presumptively invalid under the 1st Amendment. After all, is it not a bedrock of American law that one can speak even if people are offended? What’s America if we cannot freely call each other nimrods and wingnuts?

Now on to football.

The Washington Redskins trademark was cancelled because it was deemed by contemporary attitudes to be disparaging, just like The Slants. And, it was cancelled after decades of use and mounds of cash spent promoting, maintaining, and protecting the mark. However, the Redskins case is in a different court that is not bound by the Slants decision.

However, the USPTO may elect to punt the Redskins case anyways because its legal brief relies mostly on the 1981 McGinley case that held Section 2(a) was constitutional. But, the McGinley case originated in the Federal Circuit and was expressly overruled in the Slants decision. So, the USPTO is relying on a case that is now bad law!

I am sure both sides are huddling to see what’s next in their playbooks. But, many feel that the Slants decision will result in a Redskins end run and the cancellation will be reversed.

Anybody for crispy pig skins?


Photo courtesy of Toonie.



Las Tortugas

1.  slow-moving reptiles, enclosed in scaly or leathery domed shells into which they often retract their heads and legs.
2.  slow-moving mammals who sleep until noon and bathe infrequently, but who turtalised Sirius XM in Ca. District Court.

Here is a picture of each in their native environment:

Turtle          Musician

When you hear a song played on radio, you are hearing two copyrights: one for the composition, another for the recording of the composition. The latter is the sound recording copyright, and sound recordings created since 1972 are protected by federal copyright law.

The Turtles were a band with hits prior to 1972, most notably “Happy Together.”  Sirius has broadcast these sound recordings for years without paying royalties to the Turtles. Sirius claimed that no copyright arose for a pre-1972 sound recording, and no state law to the contrary trumped the federal statute.

So, the Turtles pulled an end-around and sued Sirius  in a California state court. After removal to the U.S. District Court, the Turtles were awarded summary judgment. The Court found that Sirius violated the public performance right for the sound recordings under California law. Whether Sirius unlawfully reproduced the sound recordings was left for the trier of fact.

This could start of a tidal wave of litigation. Here’s the opinion: Flo & Eddie v. Sirius XM.