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U.S. Intellectual Property and New Media Law Update
Volume I, Issue X - Monday, June 16, 1997

TABLE OF CONTENTS

JUDGE CUTS "FRESH KUTZ" INTERNET LINE
A&M Records, Inc., et al. v. Internet Site Known As Fresh Kutz, John Doe I, John Doe II, et al. - (District Court -Southern District of California - Decided- June 9, 1997)

MORTAL KOMBATANTS KILLED IN KOURT
Philip Ahn, Elizabeth Malecki, and Katalin Zamiar v. Midway Manufacturing Company, William Electronics Games, Inc., Nintendo of America, Inc., Sega of America, Inc., Acclaim Entertainment, Inc. - (U.S. District Court, Northern District of Illinois, Eastern Division - Decided -May 28, 1997)

ANOTHER DOMAIN NAME CASE
Teletech Customer Care Management (California) Inc., f.k.a Teletech Telecommunications, Inc. v. Tele-Tech Company, Inc., et al. - (U.S. District Court, Central District of California - Decided May 9, 1997)

AND STILL ANOTHER DOMAIN NAME CASE
ATravel Impressions, Ltd. and Empress Travel v. Stephen Kaufman, et al. (U.S. District Court, eastern District Of New York - Decided May 22, 1997)


JUDGE CUTS "FRESH KUTZ" INTERNET LINE
A&M Records, Inc., et al. v. Internet Site Known As Fresh Kutz, John Doe I, John Doe II, et al. - (District Court -Southern District of California - Decided- June 9, 1997)

Defendants have created and maintained an Internet site known as FRESH KUTZ whose sole purpose is the reproduction, distribution and exchange of unauthorized copies of copyrighted sound recordings. The Defendants boasted that they were the biggest such site on the Internet with new songs added every day. Not surprisingly, a number of major recording companies were less than thrilled with giving the public access to its new releases without charge. The complaint is founded purely in copyright law. The Plaintiffs were only aware of the site name, FRESH KUTZ, and not the individuals who maintained the site. Accordingly, the complaint is directed against a number of "John Doe" defendants. The complaint was filed on June 9, 1997, with an ex parte motion for a temporary restraining order which issued on June 10, 1997, barring the site and the John Doe defendants from copying, reproducing, duplicating, disseminating, distributing, selling or in any way exploiting any unauthorized copy of Plaintiffs' recordings or any copyrighted sound recordings.

The decision and temporary restraining order may be viewed at:

http://www.ipcounselors.com/amrecords.htm

MORTAL KOMBATANTS KILLED IN KOURT
Philip Ahn, Elizabeth Malecki, and Katalin Zamiar v. Midway Manufacturing Company, William Electronics Games, Inc., Nintendo of America, Inc., Sega of America, Inc., Acclaim Entertainment, Inc. - (U.S. District Court, Northern District of Illinois, Eastern Division - Decided -May 28, 1997)

Two of the Plaintiffs are black belts in various forms of marshal arts and the third has a degree in ballet and modern dance and is a professional dancer. Midway designs, manufactures and sells coin operated amusement games and licenses home videos including MORTAL KOMBAT and MORTAL KOMBAT II. Nintendo and Sega design, market and sell home video games based on MORTAL KOMBAT. Each of the Plaintiffs was used as a model for one or more of the MORTAL KOMBAT or MORTAL KOMBAT II characters. Plaintiff Malecki modeled for the character Sonia Blade for MORTAL KOMBAT, Plaintiff Philip Ahn modeled for the character Shang Tsung in the coin operated version of MORTAL KOMBAT II, and Plaintiff Zamiar modeled for three characters, Kitana, Mileena and Jade all appearing in MORTAL KOMBAT II.

All Plaintiffs signed a release form with Midway at the time of the video taping indicating that Midway could film each Plaintiff and use the Plaintiff's name or likeness in connection with the manufacture, design, advertising, promotion and sale and use of the coin operated video game. The agreement also made Midway the sole and exclusive owner of the Plaintiffs' copyrightable expressions, defining any such expressions as work-for-hire.

Plaintiffs filed a seven claim complaint against Defendants based on the unauthorized use of their respective name, persona and likeness in connection with home video, home computer and hand-held versions of MORTAL KOMBAT and MORTAL KOMBAT II. Defendants made a motion for Summary Judgment on all counts. Plaintiffs did not contest the motion as to the trademark and deceptive trade practices claims and the claims were dismissed, leaving only three claims: Claim 1 for the right of publicity; Claim 5 for alleged violations of the Copyright Act; and Claim 7 the common law Quantum Meruit count.

With regard to Claim 1, after reviewing the requirements for finding a right of publicity and comparing them to the Copyright Act of 1976, the court found that the federal Copyright statute has preempted the state law on the right of privacy, and, dismissed this count. With regard to Count 5 of the complaint, the copyright claim, Defendants claimed that their works were joint works. The Court found that Defendants had the final authority to decide the selection of the movements and poses which were being recorded during the video taping session as well as the authority to decide which frames of the video tape and in what manner and order the frames would be incorporated into the computer program. The court found that the "superhuman gyrations and leaps high into the air of the characters" are "fanciful products of the imagination of the creators of the source code." The court held that while Plaintiffs contributed their image and movement to the creation of the game "that contribution was transitory", i.e., not fixed in a tangible medium of expression not sufficiently permanent or stable to permit it to be perceived, reproduced or otherwise communicated for a period of more than a transitory duration, and found that it was Midway alone that translated the idea into a fixed tangible express entitled to copyright protection.

Finally, with regard to Count 7, Quantum Meruit, the Court found that since there was an agreement existing between the parties, i.e., the general release, there could be no claim for quantum meruit.

The decision can be viewed at:

http://www.ipcounselors.com/midway.htm

ANOTHER DOMAIN NAME CASE
Teletech Customer Care Management (California) Inc., f.k.a Teletech Telecommunications, Inc. v. Tele-Tech Company, Inc., et al. - (U.S. District Court, Central District of California - Decided May 9, 1997)

Plaintiff Teletech Customer Care is the owner of a federally registered service mark for TELETEC, Service Mark Registration No. 1,996,498. Teletech may be the largest provider of primarily in- bound integrated telephone and Internet customer care worldwide. Plaintiff has used the mark in commerce since 1982.

Defendant, Tele-Tech Company is a contractor providing engineering and installation services to the telecommunication industry. Defendant began using the name Tele-Tech with a hyphen in 1978. Defendant owns the domain name TELETEC.COM. As the Court noted, only one entity may use the domain name TELETEC.COM.

Plaintiff brought a motion for preliminary injunction. The Court, in balancing hardships, found that Plaintiff, being unable to use its TELETEC mark as part of its domain name created a hardship for Plaintiff but little hardship for Defendant who could concurrently use its mark Tele-Tech as a separate domain name. The Court found that there was a likelihood of success on the dilution count due to the fame of the TELETEC mark but found little likelihood of confusion with regard to trademark infringement. The court noted that Tele-Tech had only demonstrated initial confusion on the part of the users trying the domain name TELETEC.COM and finding Defendant's web site. The court held that "this brief confusion is not cognizable under the trademark laws." The court issued an injunction barring the Defendant from using TELETEC or TELETEC.COM but allowing use of Tele-Tech and TELE-TECH.COM on the Internet.

The decision can be viewed at:

http://www.ipcounselors.com/teletech.htm

AND STILL ANOTHER DOMAIN NAME CASE
ATravel Impressions, Ltd. and Empress Travel v. Stephen Kaufman, et al. (U.S. District Court, eastern District Of New York - Decided May 22, 1997)

Plaintiffs brought this action because Defendant used Plaintiffs' registered trademarks as domain names TRAVELIMPRESSIONS.COM and EMPRESSTRAVEL.COM and in a toll-free telephone number 1-800-367-7377 (1-800-EMPRESS). Plaintiffs moved for a preliminary injunction and NSI moved to dismiss as to it. The magistrate, to whom the matter was referred, denied Plaintiffs motions both with regard to use of EMPRESSTRAVEL.COM and the toll-free number and granted NSI's motion to dismiss.

The Defendant was a franchisee of Plaintiff. Under the franchise agreement the Defendant could only use the name "empress." Defendant began using the "800" number on its own. Plaintiff attempted to negotiate an agreement for it to acquire the number from Defendant but no agreement was reached and three years passed before the present suit was brought. The Defendant originally urged Plaintiff to obtain a web site but when they failed to do so, Defendant obtained its own web site. The magistrate found that there were serious issues relating to Defendants' use of the mark which would bar a preliminary injunction. Defendant pointed to the fact that the registration is for the word EMPRESS in stylized letters and capped by a crown and does not include the word "travel." In contrast, EMPRESSTRAVEL.COM is in plain letters. The franchise agreement required Defendant to advertise only under the Empress mark. Here the Court found that the potential for confusion was less than substantial and might, in fact, stem not from the use of the domain name, but rather from the franchise relationship itself. With regard to the toll-free number, the long delay in asking for the injunction indicates that there is no irreparable injury.

Finally, NSI moved to dismiss the complaint against it. In doing so, the magistrate noted that "given Plaintiffs' concession that NSI is merely a nominal party with no potential liability in this case, the burden and expense incurred by NSI to continue even a nominal party to this action and the thin rationale advanced by the plaintiffs for not including the phone company as a nominal defendant, this Court finds that the proposal to deposit the domain name registration with the Court and NSI's agreement to abide by the future ruling of the Court will adequately protect Plaintiffs' interests, and ensure compliance with any future orders of this Court regarding the domain name registration."

This decision can be viewed at:

http://www.ipcounselors.com/empress.htm

 

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