New copyright troll tactic: Trademark infringement

Posted: April 22, 2012 by Raul in Lipscomb
Tags: , , , , , , , , , , ,

By Raul

As a part of the Third Massive Wave of the Copyright Troll Lawsuits (lawsuits filed at the close of December 2011 and continuing to the present) there has been a new wrinkle added, which are claims for trademark infringement. This post will take a look at the plaintiff behind this claim, the nature of the claim and whether or not it has any merit.

As a preliminary matter, a copyright troll asserting a trademark infringement claim is not, technically “new”: these claims have been previously raised when a Troll filed an Amended Complaint in an attempt to spread FUD or to paper over the fact that it has a problem with the underlying copyright. However, with these “John Stagliano, inc d/b/a Evil Angel Productions” complaints this is the first time we are seeing a sole trademark infringement claim being brought against Does.


Pornographer John Stagliano

John Stagliano a/k/a “Buttman” is a big time director, producer and distributor of pornography which does business as Evil Angel Productions, Inc. He is also a self-proclaimed Libertarian who fails to see the conflict between his philosophy of minimal government intrusion and using the judicial branch of our government to intrude into and terrorize ordinary citizens by his authorization. In other words, he is a hypocrite.

There have been approximately a dozen of these lawsuits (allegations are identical — porn titles can be different) filed across the country as of April 22, 2012 by the usual Trolls (Fiore, Kotzker, Hoppe and Lipscomb). For the purposes of this post, we will look at the first filed John Stagliano trademark complaint, which claims the infringement of its Evil Angel trademark filed in the United States District Court for the Middle District of Florida (embedded below). Mega Troll Michael Keith Lipscomb is the attorney of record for this lawsuit (3:12-cv-00337-HES-JRK) that involves the cute title “Occupy My Ass”.

 

Trademark infringement is based on the Lanham Act, which is a federal statute that regulates the use of trademarks in the world of commerce. It gives those who have registered their trademark with the Patent and Trademarks Office certain rights and remedies. One if these remedies is to sue for trademark infringement when, for example, Prada discovers a company that is selling counterfeit Prada handbags or Rolex uncovers a manufacturer of phony Rolex wristwatches. The Lanham Act provides for the issuance of injunctions to stop the manufacture or selling of counterfeit goods as well as statutory damages.

Stagliano’s complaint makes three separate claims under the Lanham Act:

  1. Infringement under Section 1114(1)(a) which gives a trademark holder the right to sue the counterfeiter of that trademark when used “in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive”,
  2. Contributory trademark infringement, which is inducing another to infringe on a trademark, and
  3. False designation of origin claim which is deliberately causing confusion at the origin of a product. Take as an example the counterfeit Prada handbag which has a label indicating it has been manufactured in Italy when, if fact, it was made in China.

So what is the fatal flaw to these claims? The complaint does not plead any specific facts as to how the Does sold, distributed or advertised any goods whatsoever. Also, since when is a porn flick a trademark?

In commenting on the trademark infringement claims of Patrick Collins, while denying the Troll leave to serve third party subpoenas Judge Legrome D. Davis of the Eastern District of Pennsylvania had this to say:

…we do note that “[f]or infringement of federally registered marks, what the Lanham Act requires is that the accused use be ‘in connection with the sale, offering for sale, distribution or advertising of any goods or services’ in a context that is likely to cause confusion, mistake or deception.” 4 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 23:11.50 (4th ed. 2011). Further, the accused use must constitute a “use in commerce” for a trademark infringement action to lie. See 15 U.S.C. § 1114(1).

Here, Plaintiff’s complaint baldly asserts that each of Defendant’s unauthorized uses of the PATRICK COLLINS and ELEGANT ANGEL marks will confuse consumers into purchasing Defendants’ goods or services, mistakenly believing them to be Collins’ goods and/or services. However, the complaint lacks any specific factual allegations that John Doe Defendants sold, distributed, or advertised any goods, much less goods bearing Plaintiff’s trademarks; or that Defendants have used Plaintiff’s trademarks “in commerce.” Instead, the facts alleged in the complaint show, at most, that all twenty-six (26) John Doe Defendants participated in a BitTorrent swarm to obtain a copy of Plaintiff’s movie. We harbor some doubt that these facts, even if true, support a claim of trademark infringement. See Ashcroft v. Iqbal, 129 S. Ct. 1937, 1949 (2009) (“Threadbare recitals of the elements of a cause of action, supported by mere conclusory statements” will not survive a motion to dismiss). As such, Collins’ trademark infringement claims do not give us good cause to permit Collins to subpoena John Doe Defendants’ ISPs.

Based on this Memorandum Order it looks as if Patrick Collins might be infringing on John Stagliano’s beloved trademark (Elegant Angel v. Evil Angel) and he should send his Trolls after Patrick Collins. That trademark infringement lawsuit would have more merit than the ones I have discussed here today.

Comments
  1. Erika says:

    I guess we’re all just speechless! Crooks keep pulling out of their ass the weirdest reasons for suing and extorting people.

  2. Anonymous says:

    This isn’t too surprising for people who’ve been following sites like Techdirt. Apparently there’s enough overlap between copyright and trademark law that judges are allowing cases to go forward on the grounds that the mere mention of something is a violation of trademark law, even for purposes of criticism (that fall under fair use). Trolls are, as usual, profiting off judges who are clueless when it comes to the Internet.

  3. Raul says:

    OK so my first post which is put together with much aid and support by SJD is widely commented on and this post….crickets chirping (to borrow a phrase from Pirate Hunter).

    Nonetheless I found it interesting and I wanted to post it to put this community on notice as to a new troll tactic that I did not think would last long. I also wanted to mock, Uber Troll Lipscomb, who I believe concocted this stupid cause of action.

    Well it looks as if in less than 2 weeks after that post the Stagliano dominoes are starting to fall, not by reason of my feeble little post, but because of judicial common sense http://ia601205.us.archive.org/4/items/gov.uscourts.mdd.201007/gov.uscourts.mdd.201007.9.0.pdf and http://ia701207.us.archive.org/15/items/gov.uscourts.mdd.201006/gov.uscourts.mdd.201006.10.0.pdf
    Granted in Maryland it is presently the Night of the Long Knives for troll lawsuits but I think all Stagliano trademark infringement lawsuits will be swiftly shut down to prevent further embarrassment to the trolls who are pushing them.

    • Lack of comments does not necessarily correlate with interest. I estimate that this post was read by about 1,500 people. Timothy Lee, an Arstechnica and Forbes author and Cato Institute scholar found this article interesting enough to tweet the link to his 4,300 followers.

      • Raul says:

        Wow! Had no idea but I get it now.

        • Raul says:

          BTW-in the second document embedded in my comment in which the troll cites a NJ K-Beech determination on the Lanham Act, that must have been written by Snookie’s Dad

        • :) I think I know what you are talking about, although I never in my life watched a single reality show. I watch a lot of movies, DVD/BD/Netflix streaming but don’t have a “regular” TV — cable or air. Last time I watched live TV was 9/11 2001: had to buy an antenna in a dollar store.

    • Does it make sense to write a short update? Maybe later…

      • Raul says:

        Let’s see if they start to collapse elsewhere which I think they should. All troll lawsuits in MD are headed for the crapper, it would be great if the first one outside of MD got crapped on.

      • Raul says:

        It is as if they have collapsed in a nanosecond.

    • Anonymous says:

      Awesome work Raul and thank you – your work is much appreciated and is of real value to many here. You rock, whether the cricket chirps or roars. 12-cv-01207 and 12-cv-01208 in MD took nosedives.

  4. Raul says:

    Same here but my wife and daughter are addicted to the stuff. While they view I chew on trolls.

  5. Raul says:

    Troll Hoppe’s last MD Stagliano suit is history: 12-cv-1209

    • Anonymous says:

      Oh yeah…

      John Stagliano, Inc. v. John Does 1-15 12-cv-02085 PAED Christopher P. Fiore – dismissed
      John Stagliano Inc. v. John Does 1-17 12-cv-02080 PAED Christopher P. Fiore – dismissed
      John Stagliano Inc. v. John Does 1-12 12-cv-02087 PAED Christopher P. Fiore – dismissed
      John Stagliano, Inc, v. John Does 1-16 12-cv-01207 MD Jon A. Hoppe – dismissed
      John Stagliano, Inc, v. John Does 1-14 12-cv-01208 MD Jon A. Hoppe – dismissed
      John Stagliano, Inc, v. John Does 1-6 12-cv-01209 MD Jon A. Hoppe – yep, dismissed
      John Stagliano, Inc. v. John Does 1-4 12-cv-02965 NYSD Jason A. Kotzker – dismissed
      John Stagliano, Inc. v. John Does 1-9 12-cv-00906 CO Jason A. Kotzker – threatened
      John Stagliano, Inc. v. John Does 1-14 12-cv-00905 CO Jason A. Kotzker – watching
      John Stagliano, Inc. v. John Does 1-5 12-cv-00907 CO Jason A. Kotzker – watching

      • Anonymous says:

        and:
        John Stagliano, Inc. v. John Does 1-14 12-cv-00337 FLMD in which Michael Keith Lipscomb, Esquire is substituted for Steven Eisenberg – one to watch

        • Raul says:

          I have no proof but do suspect that this moronic approach was the brainchild of Lipscomb and that the voluntary dismissals were drafted at his office. Just a hunch.

      • Raul says:

        Thank you for the update, a brief and stupid chapter in the “History of Copyright Trolling” a/ka and to borrow SJD’s term “Douchbaggery for Dummies”, is just about closed.

  6. Raul says:

    Stagliano domino theory in action: Stagliano v. Does 1-4 in the SDNY (case no. 12-cv-2965) has been withdrawn by Troll Kotzker http://ia601205.us.archive.org/21/items/gov.uscourts.nysd.394986/gov.uscourts.nysd.394986.8.0.pdf Funny how the form is identical to that of Troll Hoppe in MD http://ia601205.us.archive.org/21/items/gov.uscourts.nysd.394986/gov.uscourts.nysd.394986.8.0.pdf

  7. Sword of Damocles says:

    This is really funny. In the industry, Stagliano is known as “over the hill.” His stuff was hackneyed when it was new. It hasn’t aged well with time, and neither has John, obviously. Yet again, getting involved in a racket is how a has-been talent in this unique business turns coin when his product no longer will.

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