Tag Archives: court

A tale of two CITIs…

It seems that everyone who has a computer today has written about the lawsuit between Citicorp and All Citi Pawn, a New York pawn shop.  CNN Money may have been the first to write about it, with this story:

In the suit filed last week in Brooklyn federal court, Citigroup alleges that in using the same Citi abbreviation and red arc as its banking subsidiary, Citibank, All Citi Pawn has infringed on their trademark. Citigroup is seeking all of the business’ profits since it adopted the All Citi name.

“What can I tell you? Its crazy. They’re going wild for a little art that I put up. Theirs is a moon shape, mine is a V-shape, but I’ve already taken it down,” pawn shop manager Bob Kay told CNN.

[…]

“It is important for Citigroup to know that no one is trading off their name – they need to protect their intellectual property.” [said Trademark attorney Michael Feign].  Feigin went on to say, however, that removing the offending logo should resolve the case. According to Kay, it has not.

Marty Schwimmer has the full text of the complaint here.

What’s surprising is that most of the commentators–and even reporters—are complaining that this is somehow a frivolous exercise for Citi.  CNN lead off its article with “You would think that Citigroup had enough on its plate these days, but that hasn’t stopped the financial behemoth from filing a copyright [sic] infringement suit against a Brooklyn, New York, pawnshop over a similar logo….”   And even Mr. Schwimmer titled his blog post “Your tax dollars at work.”

In defense of Citi, this is not a bad case. According to the allegations in the complaint, the owner of All Citi Pawn started using the offending name, and registered its allcitipawn.com domain name well after CITIBANK became famous.  Second, Citibank attached some promotional materials showing the logo that All Citi Pawn used.  It included a logo that looked a lot like Citibank’s.  A quick trip to the Wayback Machine at the Internet Archive (http://www.archive.org) retrieved this logo at the http://www.allcitipawn.com website:

The logo of All Citi Pawn

The logo of All Citi Pawn

Compare that to Citi’s logo:

The registered logo from the big CITI.

The registered logo from the big CITI.

According to the Wayback Machine, the first appearance of anything on allcitipawn.com was in 2007.   So we have a small pawn shop in New York independently choosing to modify the word “City” to “Citi” in its business name, and coincidentally use a sans-serif font in blue, with a red roof instead of a red arch?  That screams bad intent to appropriate the goodwill of the senior user (and its mark, previously adjudged to be famous).  The word is the same; the logo is nearly identical; to the extent that a pawn shop and a bank both make loans on collateral, the services are quite similar.  This is not overzealous trademark prosecution; this is what a responsible trademark owner should do to police its mark and keep it distinctive.

The fact that Citi may be in dire financial straits right now doesn’t mean that it shouldn’t continue to protect its brand and logos, especially when the marks and goods are so similar.  It’s certainly worth a couple of thousand dollars to draft a complaint (it shouldn’t take more than that; my guess is that the associate charged with drafting the complaint already had plenty of examples from which to model) and a couple hundred dollars in filing and service fees.  It’s certainly no million dollar office renovation.

Here’s what happened (as alleged in the complaint):    All Citi Pawn, instead of consulting trademark counsel, adopted the name in 2007 (or thereabouts) not in an attempt for people to believe that Citibank was opening a pawn shop, but rather for customers to see the logo and think “cute,” and maybe to get customers to think that All Citi Pawn was as stable and honorable as Citi (*smirk*). Citi attorneys found the website. They sent a cease-and-desist letter. All Citi Pawn, instead of consulting trademark counsel, thought, it’s just the word “Citi,” and our inverted “v” is different from their semicircle, so screw ’em, they won’t do anything else. And–whoops!–they did something else.  Now all of the business community is in an uproar just because Citi wants to protect whatever goodwill remains in their brand.

And now to the infuriating part of the CNN report:

“…but that hasn’t stopped the financial behemoth from filing a copyright infringement suit against a Brooklyn, New York, pawnshop over a similar logo.

[…]

“Citigroup is seeking all of the business’ profits since it adopted the All Citi name.”

First, there is no allegation of copyright infringement in the complaint.  This is a matter of trademarks, CNN! And if a business reporter for CNN doesn’t know the difference between trademarks and copyrights….

Second, Citigroup isn’t seeking all of All Citi Pawn’s profits.  In the WHEREFORE clause of the Complaint, Citi seeks:

D (1) All of defendant’s profits, gains and advantages derived from the unauthorized appropriation of Citigroup’s good will in its service marks as part of defendant’s name, to identify defendant’s services and products…. (emphasis added).

This pleading is appropriate and correct for willful trademark infringement. Citi is not asking for all of the defendant’s profits, but all profits that flow from the use of Citigroup’s names and logos.  That’s a much, much smaller pool (and almost impossible to prove).

I’m not usually one to valiantly defend the big, bad bank from a bit of bad publicity, but I think in this instance, Citi’s gotten an unfair shake.

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Filed under Law, Trademarks

In seeking mandamus writ, what are the record companies afraid of?

As I discussed yesterday here, Judge Nancy Gertner of the District of Massachusetts agreed to allow web “narrowcasting” of an oral argument on the motions regarding the constitutionality of various provisions of the Copyright Act filed by a defendant (and his Harvard Law Professor attorney) in a file sharing copyright infringement case before her.  Her opinion (pdf) contained a well-reasoned decision to break with the federal court tradition of excluding cameras in the courtroom.

Now, as reported by the blogs from Wired, attorneys for the record companies have filed a motion (pdf) for a stay of the order pending their request for a writ of mandamus to the First Circuit.  In other words, the record companies are so scared of the oral argument they’re going to file an emergency motion with the First Circuit Court of Appeals (the court that reviews Judge Gertner’s decisions) asking for an order prohibiting her from allowing a third-party to use the camera and audio feeds already in the courtroom to narowcast the oral argument online.

All I can say is, What are they so scared of?  As Judge Gertner pointed out in her opinion, the RIAA and record companies for a long while now have claimed that they can’t use everyone who illegally file shares copyrighted music, but they can try to publicize their lawsuits to effect some “general deterrence”– persuade others not to share music illegally because of the threat of being sued. At the same time, many in the on-line world have an extremely negative view of the record companies and the RIAA.  You’d think that they would (reluctantly) welcome the idea that the cyber-community would be able to hear their side of the story, at least as it relates to the constitutionality of these statutes.  Certainly there aren’t issues of confidentiality here (meaning that the record companies will be discussing confidential trade secrets or other secret information as part of their oral argument); this is almost pure legal argument.  So now, they look like real weasels who are so afraid of any public exposure (except the limited press of “we won” after the conclusion of a case) that they will file emergency motions to avoid being heard and seen on real time.  Because it’s oral argument, there will be no testimony presented, and thus the ultimate decision and outcome should not be affected by the presence or absence of the narrowcast.  If the narrowcast won’t have any likely affect on the outcome, why would the record companies spend at least $30,000 on this writ of mandamus (maybe even $100,000)? What are they so scared of?

  • Are they afraid that Judge Gertner, a left-leaning, pro-individual kind of jurist, will read them the riot act?  I find that hard to believe.  Even if she doesn’t like the record companies, any reasonable jurist (especially a district court) is extremely hesitant to declare federal law unconstitutional without strong appellate court support.  So far, the Copyright Act has withstood just about every constitutional challenge levied against it. She may ask tough questions, but on the law, the record companies have to know they have the upper hand.
  • Are they afraid that there will be some sort of crowd reaction by the people in the gallery (most of whom, I would guess, would not be sympathetic to the record companies) and/or that the crowd may be more likely to make a scene on camera, which may be embarrassing?  Perhaps, but that also doesn’t give Judge Gertner the benefit of the doubt that she will control her own courtroom.  There aren’t too many federal judges I know that would stand by and allow a spectator to even bring a newspaper into the courtroom, much less applaud, protest, or say one single word, before the Courtroom Security Officers and the U.S. Marshals are sicked on them like hungry predators.
  • Are they afraid that people will record the stream and then re-edit it to make misleading videos?  Once again, that would be a difficult thing, considering the low level streaming (anyone could easily spot edits).
  • Or, are they just afraid that their lead attorney will say something he or she regrets at the hearing, and it will be blasted all over the country? I don’t think so, because if there’s one thing I know about trial attorneys, it’s that a firm ego is necessary for the job… if you go in doubting yourself, you’ll be a trainwreck.
  • Are they afraid that it will further undermine their reputation in the U.S.?  Probably not.  If anything, as I mentioned before, it would give the record companies a chance to present their side–uncensored. And, if the Judge rules in the record company’s favor (particularly regarding the constitutional issues) it will give the skeptics in cyberspace an opportunity to understand the foundation of the ruling.

So, I’m completely befuddled.  Anyone else have any thoughts?  Leave a comment.

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Filed under Copyrights, Law

Real CourtTV– Judge Nancy Gerner allows live streaming of oral argument

As reported by ComputerWorld here, United States District Judge Nancy Gertner has agreed to allow a streaming webcast of an oral argument occurring on January 22 in Capitol Records v. Alaujan and Sony BMG Music Entertainment v. Tenenbaum.  The oral argument is on Mr. Tenenbaum’s Motions to Amend Counterclaims, opposition to the record companies’ Motion to Dismiss the Counterclaims, and a Motion for Joinder of the RIAA.  Mr. Tenenbaum, a Boston University Ph.D. candidate, has been accused of using peer-to-peer file sharing to download music.  He got an attorney– Charles Nesson, professor of law at Harvard and of the Berkman Center for Internet and Society.

Because the proceedings on January 22 are only oral argument, the Court reasoned, “narrowcasting” the proceedings will not influence the performance of any witnesses or testimony. And, because the record companies hope to discourage illegal file sharing through general deterrence built up from the publicity of lawsuits across the country, the Court was “curios” as to why the record companies objected to the motion.  Therefore, the Court reasoned:

The public benefit of offering a more complete view of these proceedings is plain, especially via a medium so carefully attuned to the Internet Generation captivated by these filesharing lawsuits.

The Courtroom View Network (CVN) will create the narrowcast using the cameras (likely to be fairly low-res security cameras and monitors) already installed in the courtroom, and the Berkman Center will rebroadcast on http://cyber.law.harvard.edu.  I’ll be tuning in to hear Professor Nesson’s arguments regarding the constitutionality of the fines potentially imposed by the Copyright Act, as well as the Digital Theft Deterrence and Copyright Damages Improvement Act of 1999.

(A copy of the PDF decision of the Court is here.)

In addition, kudos to Judge Gertner for being brave and allowing this narrowcast. I’m generally not a huge fan of cameras in the courtroom, especially during trials, as I do believe that it intimidates jurors, affects witness testimony, and may cause grandstanding by judges and attorneys (especially those who see a trial as “free attorney advertising” or judges who are subject to reappointment through popular-vote elections).  But oral argument, particularly in circumstances like this, is a different kettle of fish.  I’m excited to see how the record company attorneys respond.

United States Ditrict Judge Nancy Gertner for Supreme Court?

United States Ditrict Judge Nancy Gertner for Supreme Court?

I first heard of Judge Gertner during the early Blakely/Booker era in 2004 and 2005. She was a pioneer in reacting to the decisions, and has become a sentencing expert.  She’s also a blogger.  She’s a Yale grad, appointed to the bench by President Clinton, and has been very outspoken on a number of civil and criminal justice issues. I would think a jurist of her caliber would be a perfect Supreme Court nominee for President-elect Obama, especially if Justices Stevens, Souter, or Ginsburg were to retire soon.  She’s brilliant, thoughtful, progressive-leaning (in a literal, as well as political, sense–how many other judges have blogs and allow webcasting?), and, as a district judge, she brings insight to the court about the day-to-day practicalities of jurisprudence that no other sitting justice currently has. She may suffer, though, from “too much information-itis,” as with some other long-time Supreme Court hopefuls, just because she’s said too much about too many topics that may seriously frighten center-leaning Democrats and Republicans. But both her future–and this oral argument–will be something to watch.

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Filed under Copyrights, Law, Uncategorized