Leaked Sony Emails and the NFL’s Continued Suppression of Concussion Dangers

At the beginning of September, Sony Pictures Entertainment released a trailer for Concussion, a movie that paints a scathing picture of how representatives of the National Football League (NFL) attempted to cover-up and discredit the research of Dr. Bennet Omalu, who discovered chronic traumatic encephalopathy (CTE).

CTE is a degenerative brain disease that leads to a significant number of “neurological symptoms including risk-taking, aggression,” depression, and progressive dementia. Research shows that repetitive concussions in contact sports result in the release of destructive proteins that cause widespread neurodegeneration, neuron death by apoptosis, and brain atrophy. In turn, this can lead to Alzheimer’s and CTE, which “progressively rob individuals of their memory, judgment, and ability to function.” Boston University researchers found CTE present “in the brains of 76 of the 79 deceased former NFL players they examined, an alarming percentage.” Further research and data have estimated that “for athletes whose college sports careers began between 1956 and 2008, anywhere from 50 to 300 of them per year will be diagnosed with [CTE].”

Shortly after the release of the trailer, emails leaked from Sony showing they altered the movie to protect themselves from the NFL. The emails between Sony executives, the director, and others discuss “how to avoid antagonizing the NFL by altering the script and marketing the film more as a whistle-blower story, rather than a condemnation of football or the league.” The emails also reveal that Sony worked with the help of an NFL consultant to ensure the movie would avoid “kicking the hornet’s nest.” Most revealing were several emails that stated “‘unflattering moments for the NFL’ were deleted or changed,” which took “‘most of the bite’ out of the film” in attempts “to make the movie appear less threatening.” Additionally, the film “blames individuals, not the system,” which dilutes the “blatant culpability of the [NFL] for its 130 years of knowledge and denial regarding brain risk and casualty among” all players. Given the NFL’s record, one sports writer suggests the timing of the leaked emails is all too convenient as the emails weaken the credibility of the film to the NFL’s advantage.

This is not the only time film producers caved to fear of retaliation or pressure from the NFL. In 2013, ESPN dropped out of production with Frontline on the documentary League of Denial, a documentary which focuses on the NFL’s “response to the dangers of head trauma,” after being persuaded by the NFL to do so. In 2004, the NFL successfully pressured the Walt Disney Company, which owns ESPN, to end “a hard-hitting television series on the sports network that delivered an unsavory depiction of professional football players.” Soon the new HBO show Ballers may have to face similar pressures. The show depicts current and former fictional football players going through troubles with drug addiction, debauchery, and medical issues arising from taking too many hits. HBO’s parent company, Time Warner, has goals of expanding its live sports coverage by purchasing a contract for Thursday night football games. However, they may have to rethink Ballers if they want to secure a deal with the NFL for those games.

Besides this battle on the silver screen, similar battles are being played out in court. A lawsuit against the National Football League Players Association (NFLPA), the players’ union, was brought to a federal court in Missouri alleging “fraud, civil conspiracy, and negligence arising from the failure of the NFLPA to properly warn players of the risks of head trauma.” The case was dismissed in August 2015 because it was not timely filed. The court found the claims were “barred by the federal Labor Management Relations Act” (LMRA), which contains a six-month deadline for suits brought under the LMRA.

Meanwhile in 2013, over 4,000 former NFL players brought more than 200 suits against the NFL over injuries related to head trauma, and accused the NFL of covering up the dangers of such injuries. The suits were collectively brought before U.S. District Judge Brody in Philadelphia. “The players claim that the league knew that concussions and other trauma could lead to long-term health problems and that it committed fraud by misrepresenting the dangers of repeated hits to the head.” The suit was settled in April 2015 and was celebrated as a win for the players; however, it is anything but. The “NFL certainly wins on financial terms,” only having to pay out about $1 billion to players over the next 65 years, while their estimated annual revenue is at $10 billion. While the case started out as concussion litigation framed as a CTE lawsuit, it progressively “transformed into a cognitive disorder settlement, all but eviscerating future awards [for] CTE.” The settlement covers diseases including Alzheimer’s, Parkinson’s, severe dementia, and amyotrophic lateral sclerosis, none of which require “getting hit in the head.” The settlement not only “forecloses any future awards for CTE,” but it “is designed to limit and deny compensation to former players suffering from CTE, failing to compensate [for] the severe, life-ruining mood and behavioral symptoms associated with the disease, and only providing cash payouts to the families of players who have died and subsequently been diagnosed with the disease between” January 2006 and April 2015.

An estimated 200 players opted out of the settlement agreement in order to continue their fight against the NFL. They claim the NFL avoided the discovery process by settling, and only through the discovery process can light be shed “on what the NFL knew, and when [they] knew . . . about the long-term risks concussions posed to its players.” Additionally, 90 players filed an appeal to the settlement to the U.S. Court of Appeals for the Third Circuit in mid-August stating that the settlement “neither recognizes nor compensates the majority of players suffering long-term consequences of brain trauma . . . because of how the NFL and the class attorneys have constructed [the settlement].” The brief filed states that analysis “reveals a systematic design to exclude most (players) from participation and reduce payments to the small group who meet arbitrary criteria.” Players classify the settlement as unfairly favoring “currently injured retirees over those merely exposed to head trauma, and left a potential 19,000 players who have yet to be diagnosed with neurological diseases without a remedy.” The Third Circuit has yet to set a date for hearing the case or rendering a decision, as those who have filed an appeal have until September 30th to submit responses.


1. Bonnie Prescott, Beth Israel Deaconess Medical Center: Scientists Develop Antibody to Treat Traumatic Brain Injury and Prevent Long-term Neurodegeneration
2. Patrick Hruby, Vice Sports: Will Smith’s ‘Concussion’ Doesn’t Have A Happy Ending, And Neither Does The Real-Life NFL
3. Ken Belson, N.Y. Times: Sony Altered ‘Concussion’ Film to Prevent N.F.L. Protests, Emails Show
4. Dave Zirin, The Nation: The NFL Must Be Loving the Misleading Sony Hacker Leaks on the Film ‘Concussion’
5. Brian Steinberg, Variety: Could HBO’s ‘Ballers’ Make Odd Bounce for Time Warner?
6. Mike Florio, NBC Sports: Concussion lawsuit against NFLPA dismissed
7. Ken Belson, N.Y. Times: A Court Test for Suits About Head Trauma
8. Philip Victor, Aljazeera America: NFL concussion lawsuit settled, but no clear winner
9. Paul Anderson, NFL Concussion Litigation: The Latest Wave
10. Travis Waldron, Think Progress: The NFL’s Concussion Settlement Is Approved, But Its Problems Are Far From Over
11. David Steele, Sporting News: NFL concussion settlement settles nothing, brain-injury group says
12. Jonathan Stempel, Reuters: Former NFL players object to concussion settlement
13. 24-7 Press Release: NFL Concussion Lawsuit Settlement Currently in the United States Court of Appeals for the Third Circuit

Kenneth J. Costa is a second-year law student at Benjamin N. Cardozo School of Law and a Staff Editor of the Cardozo Arts & Entertainment Law Journal. He is an active member of the Intellectual Property Law Society and the Cardozo Startup Society.


Looted Cubaism: Premature hopes of restitution thanks to détente in Cuban American hostilities

Recent claims of conciliatory Cuban-American relations have dominated the news and the illusions of those with personal or commercial hopes for the island. This new dialogue has led families harmed and impoverished by the looting and nationalization of property after the Cuban Revolution of 1959 to seek legal advice concerning the restitution of their stolen treasures.

There is strong precedent for this. It happened in “Eastern Europe and in the Soviet Union during the communist Era,” and “at the hands of the Nazis before and during World War II.” The Nazi regime saw the biggest confiscation of art in human history, involving “one-fifth of all of Western art then in existence.” Cuba’s was not as severe, and it did not have the same destructive undertones, but the assets (including “land, homes, businesses,” and private collections of art) expropriated without compensation during the early years of the Cuban Revolution are estimated at more than $50 billion.

The question is, how did this happen and is it possible to fix? Uncertainty surrounds the Cuban political climate and even under the best possible outcome it may be a while for the legal structure of the island to be able to handle these claims, and much longer for there to be willingness to right their wrongs. It took nearly half a century for post-Nazi and Soviet European nations to understand the difficulty behind restitution and to willingly commence it. Some nations still stand behind their claims of independent sovereignty and there is little to be done for the illegal activities they perpetuated on their citizens.

Cuban-American Relations

The United States and Cuba have always had an interesting bond. Analysis of the dynamic between the two nations has led even queer theorists to envision Cuba as “[p]laying a role in the U.S. imaginary as a sort of trophy mistress … the near colony and certain feminine complement the United States relied on….[The liaison] evidenced U.S. supreme dominance in the Caribbean.”

The Platt Amendment of 1903 allowed for U.S. intervention in Cuban affairs and in 1926 U.S. companies owned 60% of the Cuban sugar industry. The Batista years brought cooperation and an influx of American corporations and wealth, alongside alleged corruption and the Revolution of 1959 led by Castro.

Following the Revolution, the Cuban government began seizing U.S. properties and businesses. Within a year Castro had seized between $1.5 and $2 billion of American assets in the island. This breach led to severe contention between the two nations and the establishment of sanctions towards the island which have escalated ever since, with mild, wavering signs from Washington to end the embargo during and after the Clinton presidency.

In May of 2015 Cuba was officially removed from the States Sponsors of Terrorism list and most recently the U.S. announced new rules to “further ease trade, travel and investment restrictions with Cuba,” all part of President Obama’s plan to rehabilitate the mutually beneficial relationship.

Nationalization in Revolutionary Cuba

In the 1960s, “specialized Cuban government teams sealed the homes of wealthy exiles and took away paintings, antiques and jewelry…. One wealthy family … lost an art collection valued at up to $60 million…. [Including] more than a dozen works by Spanish impressionist Joaquin Sorolla and a Michelangelo pencil drawing…. The Cuban government says it now owns works like that because they were abandoned.”

Some of the possessions were kept in Cuban museums such as el Museo de Bellas Artes, in Havana, Cuba. Others were auctioned, disbursed to corrupt officials, and later smuggled to Europe when money was tight, especially during el periodo especial, after the fall of the Soviet Union, when these sales were an easy way to accumulate capital. “Some are still piled up in warehouses in Havana.” During this period, paintings began to disappear from Cuban museums and to make their way to auction houses and scatter around the world, damning the prospects of restitution.

Art Restitution

Art restitution is difficult not only because the perpetrators are sometimes unwilling to give the property back. While this does play a big role, many countries that have been subject to looting and have experienced regime change “have focused on passing new laws and issued directives for state run museums on the identification and return of art works stolen during the Nazi era.”

Most of the issues stem from locating the art that was confiscated. Even when governments are willing to find and return these works it is a daunting feat. What inhibits restitution is the physicality of art, its easy transport and mobility, as well as its aesthetic desirability and its investment potential.

What makes Cuban restitution that much more difficult is the exilic recourse many Cubans were forced to take after the entry of Castro and in subsequent generations.

‘There is a very difficult situation with Cuban art, because many families left their valuables with other family members, thinking the revolution was going to last only a few months,’ said Ramon Cernuda, a Miami gallery owner who specializes in Cuban art. ‘Then at some point, some of these people got rid of things. It is a very complicated process — not as simple as the World War II confiscated material, because it is not as clear-cut.

There was a plan for Nazi looted art, much of it was “destined to fill the Führermuseum that Hitler was planning to build in Linz, Austria.” There was an order to the madness, a directive; the Cuban plunder knew no allegiance, Cuban poverty and salient corruption has excommunicated art from its owner to fulfill necessities. “One of the problems faced by those seeking the return of their property is that there are few records documenting the nationalisations [sic] and the subsequent sales of works abroad.”

The difference with the Nazi confiscations is that the Nazi regime was never recognized as an official government by the U.S. and the Allies, “there is a long standing policy that all acts taken by the Nazis were revoked, nullified and disavowed by subsequent German governments.” But what happens with a recognized form of government such as a Communist regime is up in the air. Some countries that have transitioned have implemented strong restitution opportunities and others have not. Some have transitioned but not “explicitly disavowed the prior politics.” Because these acts of looting are considered “Acts of State” against Cuban citizens, the U.S. government cannot interfere.

The fight for restitution involving countries that have ceded and cooperated has not been easy, and Cuba still seems hesitant towards change. White House officials have “accused Havana of dragging its feet on such changes for fear of losing its grip on the state-run economy and Cuban society. Castro’s government, while working to improve ties, has repeatedly made clear that full normalization will require complete lifting of the embargo and the return of the U.S. naval base at Guantanamo Bay on the eastern tip of the island.”

This does not resonate compromise. Transition may take a while, and even when it does, recalcitrant Cuban officials are unlikely to remorsefully disavow their prior politics. Hope lies in a restitution commission, but uncertainty and doubt as to the future of Cuban politics plagues the expectations of art lawyers. “The current government maintains that abandoned work… have become the rightful property of Cuba. Efforts to reclaim such works are likely to be met with protracted legal battles.”

For now Cubans can start envisioning their lost property, gathering documents, imagining its potential location, and registering their claims with the Art Loss Register in hopes of ringing bells when their lost treasures rear their heads in the art market.

1. Mari-Claudia Jimenez, Restituting Looted Cuban Art, 19 Ass’n for the Study of the Cuban Econ., Cuba in Transition, 140, 140 (2009), http://www.ascecuba.org/c/wp-content/uploads/2014/09/v19-jimenez.pdf.
2. Id.
3. Id. at 142.
4. Id.
5. Id. at 140.
6. Id. Countries like Hungary, Poland, the Baltic Republics, and Russia “hinder the restitution process in many ways, ranging from biased applications of EU and local laws restricting export of ‘cultural patrimony’.” Id.
7. CYNTHIA WEBER, FAKING IT: U.S. HEGEMONY IN A “POST-PHALLIC” ERA 1 (Univ. of Minn. Press; 1st ed. 1999).
8. HUGH THOMAS, CUBA: THE PURSUIT FOR FREEDOM 336 (Harper & Row; 1st ed. 1971).
9. Matt Spetalnic, et al. Obama Chips away at Cuba embargo, discusses efforts with Raul Castro, REUTERS, (Sept. 18, 2015), http://www.reuters.com/article/2015/09/18/us-cuba-usa-trade-idUSKCN0RI1EF20150918?feedType=RSS&feedName=topNews
10. Alistair Bell, Despite détente, search for art looted in Cuba could take years, Reuters, (Jan. 7, 2015), http://www.reuters.com/article/2015/01/07/us-cuba-usa-art-idUSKBN0KG0FJ20150107
11. Supra note 1, at 143. “Jesús Rasado, the former registrar of the Museo de Bellas Artes, has said that of the 50,000 to 55,000 works of art in the museum, 60–70% were confiscated from their owners after the revolution.” Id. “The Museo de Artes Decorativas de la Habana itself is housed in a neo-classical mansion that used to belong to the Gómez-Mena family, and its collection is largely made up of the Gómez-Mena’s antique furniture, Chinese porcelains, artworks and art objects.” Id.
12. Id.
13. David D’Arcy, Cuba refuses to return seized art despite thaw in relations with US, THE ART NEWSPAPER, (Feb. 23, 2015), http://old.theartnewspaper.com/articles/Cuba-refuses-to-return-seized-art-despite-thaw-in-relations-with-US/36940
14. Supra note 1, at 143. “A painting by Jean-Léon Gérôme, ‘Entry of the Bull,’ which was part of the Museo de Bellas Artes’ collection of European paintings…. sold at Christie’s London for £330,000 in 1990.” Id.
15. Supra note 1.
16. “To this day, more than 100,000 artworks stolen by the Nazis have still not been located, and thousands more have been located, but have still not been restituted to their rightful owners.” Id.
17. See Scott Reyburn, Christie’s Has Art World’s First $1 Billion Week, NY TIMES, (May 13, 2015), http://www.nytimes.com/2015/05/14/arts/design/art-auction-sales-at-christies-top-1-billion-this-week.html?ref=topics. “Laurence D. Fink, chairman of BlackRock Inc., the world’s biggest asset-management company, who on April 21 pronounced in a conference in Singapore that contemporary art, as well as real estate in cities such as New York and London, had usurped gold, as a store of wealth.”
18. Celestine Bohlen, Reclaiming Art Caught in the Cuban Revolution; In Cases Reminiscent of Looted Nazi Art, Émigrés Trace Fate of Their Collections, NY TIMES, (June 6, 2002), http://www.nytimes.com/2002/06/06/arts/reclaiming-art-caught-cuban-revolution-cases-reminiscent-looted-nazi-art-emigres.html?pagewanted=2
19. Supra note 1.
20. Supra note 12.
21. Supra note 1, at 143.
22. Id.
23. See Supra note 1, at 144. Where “nationalizations undertaken by the Communist governments of these countries have not been explicitly rejected and nullified by the current governments of those countries and there has not been a complete regime change which would make clear that those acts have been nullified, then those official acts of state many not be questioned by the courts of other countries.”


Texas hedge fund manager and founder of Hayman Capital Management, J. Kyle Bass, has riled up the pharmaceutical industry. Bass formed the Coalition for Affordable Drugs, an organization that is the lead petitioner in several challenges to Orange Book-listed patents—a list of approved drug products with therapeutic equivalence evaluations (i.e. generic drugs)—which he believes have little value other than to drive up the prices of prescription drugs. Bass and the Coalition filed 36 Inter Partes Review (IPR) petitions by challenging patents and betting against the company’s stocks. The patent reviews were created by the 2011 America Invents Act as a quick and easy way for anyone to challenge certain patents outside of the federal court system. As expected, this has drawn complaints from pharmaceutical companies, some calling Bass a “patent troll.” As a result, Celgene, a pharmaceutical giant, filed for sanctions claiming Bass is led by economic motives and using the process as a form of extortion. If allowed to move forward, the pharmaceutical companies argued, for-profit groups like Bass’ would use patent reviews as an investment strategy or demand payment in return for dropping challenges.

However, in a big blow to the pharmaceutical industry, a tribunal of the U.S. Patent and Trademark Office (USPTO) denied the sanctions stating that an economic motive is not “an abuse of process.” The Patent Trial and Appeal Board held:

Profit is at the heart of nearly every patent and nearly every inter partes review. As such, an economic motive for challenging a patent claim does not itself raise abuse of process issues. We take no position on the merits of short-selling as an investment strategy other than it is legal, and regulated.

As a result, Bass can continue his crusade challenging patents. Although Bass has admitted he does have financial interests as a motive, his strategy also functions to keep pharmaceutical companies from extending their patent monopolies to maintain high drug prices. As a result, his methods can save consumers significant amounts of money in the long run. This is especially important with the rise of pharmaceutical drug prices and most recently, the outrageous price surge of the anti-infective drug, Daraprim, from $13.50 per pill to $750 by Turing Pharmaceuticals and its Chief Executive Officer, Martin Shkreli. Democratic presidential candidate Hillary Clinton called on Shkreli to lower the costs and began airing a new ad in Iowa and New Hampshire to “crack down” on abuses by pharmaceutical companies.

Consequently, the USPTO has proposed revisions to the practice and procedure rules that apply to IPR challenges. In its filing with the patent office, Acorda Therapeutics argued that Congress never intended the IPRs to be used by hedge funds to affect stock prices.

While Bass continues his work, he still has an uphill battle ahead of him as the board declined to initiate a formal review for three of his patent challenges, including his challenge to Biogen Inc.’s multiple sclerosis pill Tecfidera and Acorda Therapeutics Inc.’s drug Ampyra.


1. Andrew Chung, Hedge Fund Manager Kyle Bass Escapes Sanctions in Drug Patent Case, Reuters (Sept. 28, 2015), http://www.cnbc.com/2015/09/28/reuters-america-hedge-fund-manager-kyle-bass-escapes-sanctions-in-drug-patent-case.html.

2. Julia La Roche, Kyle Bass Scored a Huge Win in His Big Short Strategy, Business Insider (Sept. 25, 2015), http://www.businessinsider.com/no-sanctions-for-kyle-bass-ipr-2015-9.

3. Courtenay C. Brinckerhoff, PTAB Refuses To Sanction Kyle Bass, National Law Review (Sept. 28, 2015), http://www.natlawreview.com/article/ptab-refuses-to-sanction-kyle-bass.

4. Andrew Chung & Bill Berkrot, Biogen Patent Survives Challenge by Hedge Fund Manager Bass, Reuters (Sept. 2, 2015), http://www.reuters.com/article/2015/09/02/us-biogen-patent-idUSKCN0R21RL20150902.

5. Joseph Walker, Hayman Capital’s Kyle Bass Vows to Continue Drug-Patent Challenges, The Wall Street Journal (Sept. 3, 2015), http://www.wsj.com/articles/hayman-capitals-kyle-bass-vows-to-continue-drug-patent-challenges-1441320971.

6. Sam Frizell, Hillary Clinton Goes After Pharmaceutical Industry Abuses in New Ad, TIME (Sept. 28, 2015), http://time.com/4053191/hillary-clinton-pharma-abuse/.

7. Susan Decker & Caroline Chen, Will Kyle Bass’s Drug Patent Gambit Pay Off? He’ll Soon Find Out, Bloomberg (Aug. 21, 2015), http://www.bloomberg.com/news/articles/2015-08-21/will-kyle-bass-s-drug-patent-gambit-pay-off-he-ll-soon-find-out.

Justine Park is a second-year law student at Benjamin N. Cardozo School of Law and a Staff Editor of the Cardozo Arts & Entertainment Journal. She is looking forward to a career in patent and intellectual property law.

Initial Interest Confusion Is Still Kicking in the Ninth Circuit

It looks like Amazon.com (Amazon) and Multi Time Machine (MTM) may be going to trial, as the Court of Appeals for the Ninth Circuit recently reversed a district court’s summary judgment in a trademark infringement suit against Amazon. In a split decision, the appeals court found that a jury could conclude the online marketplace has created a likelihood of confusion based on the theory of initial interest confusion. This decision is a controversial one, as a number of legal scholars, not to mention courts, have rejected the initial interest confusion doctrine.

At issue in this suit is the operation of Amazon’s online search engine. MTM manufactures MTM Special Ops watches, which are “tactical” military style watches. Amazon does not sell MTM’s watches on its website. However, if a consumer were to type “MTM Special Ops” into the site’s search engine, Amazon’s response would fail to notify that it does not carry MTM goods. Instead, it would again list “MTM Special Ops” directly below the search field, which would still show the terms “MTM Special Ops.” The results would display various watches which look similar to those of MTM. In other words, the consumer’s search will come up with a number of watches being sold by MTM’s competitors.

MTM argued consumers might be initially confused into believing MTM has a connection with one of the competitor brands whose watches appear in the results. The Ninth Circuit explained, “[a]s a result of this initial confusion, MTM asserts [a consumer] might look into buying a [competitor’s] watch, rather than junk the quest altogether and seek to buy an MTM watch elsewhere.” In other words, because Amazon’s search engine fails to inform consumers that the site does not carry MTM watches, those seeking that particular brand may be less likely to search for its watches on other sites, as they are confused into thinking they are still getting an MTM product. Therefore, MTM insisted, Amazon’s use of the MTM trademark may confuse consumers, thereby leading them to purchase competitor’s products.

While the district court determined that the use of MTM’s trademarked name on Amazon’s site did not create a likelihood of confusion, the Ninth Circuit found a jury could reasonably conclude otherwise based on the doctrine of initial interest confusion. In Playboy Enterprises Inc. v. Netscape Commc’ns Corp., the Ninth Circuit defined initial interest confusion as “customer confusion that creates initial interest in a competitor’s product.” Thus, initial interest confusion is not about a customer being confused about the source of a particular good at the time of purchase. Rather, it occurs earlier in the process. Even if the initial confusion is mitigated before a purchase is made, the alleged infringer may still be held liable. As explained in Playboy Enterprises, Inc., initial interest confusion is problematic because “[a]lthough dispelled before an actual sale occurs, initial interest confusion impermissibly capitalizes on the goodwill associated with a mark and is therefore actionable trademark infringement.”

In its decision, the Ninth Circuit cited to an expert report stating that Amazon’s search results are “ambiguous, misleading, and confusing.” Based on this, the court found a reasonable jury might expect consumers to be confused as to why MTM products do not appear in the search results since Amazon does not announce to customers it does not carry any MTM goods. The court noted that Amazon’s competitors, Overstock.com for example, clearly indicate to its shoppers that there is no product matching a search for “MTO Special Ops.” These sites do, however, go on to list products of MTM’s competitors. The court also concluded that “a reasonable jury could infer that the search results will cause shoppers to wonder whether a competitor has acquired MTM or if the competitor is otherwise affiliated with or endorsed by MTM.” In its conclusion, the court emphasized that MTM may ultimately be unable to prove trademark infringement through initial interest confusion. However, the court found there were genuine issues of material fact, thereby warranting a trial.

The Ninth Circuit’s decision can be considered a controversial one, as the doctrine of initial interest confusion has been rejected by a number of federal courts. Those courts that have remained willing to apply it have done so “in an uneven fashion.” The Ninth Circuit has gone especially far by allowing a jury to decide on the initial interest confusion claim.

Supporters of the initial interest confusion doctrine argue it is important in preventing “bait-and-switch” tactics that use a trademark holder’s name and goodwill to help sales. However, critics of the doctrine have argued that “it does not have a foundation in trademark law principles and it is often used as a short cut to finding liability without rigorously analyzing whether there is a likelihood of confusion.” The dissenting judge pointed out there was no evidence that anyone had purchased a watch on Amazon under the mistaken notion that it was in some way affiliated with MTM. He then stated “to establish likelihood of confusion, MTM must show that confusion is likely, not just possible.”

It will be interesting to see how this case proceeds, as it is uncertain whether or not the parties will go to trial. Reports indicate Amazon has requested a new hearing. If Amazon’s request is denied, it will be important to observe how other courts respond to the Ninth Circuit’s decision. Even if this case does not inspire other circuits to begin applying the initial interest confusion doctrine, online marketplaces should beware of the message their search engines might be sending.

Kerrijane Wennberg is a second-year law student at the Benjamin N. Cardozo School of Law and a Staff Editor of the Cardozo Arts & Entertainment Law Journal. She is looking forward to a career in trademark and copyright law.

1. Multi Time Machine, Inc. v. Amazon.com, Inc., No. 13-55575, D.C. No. 2:11-cv-09076-DDP-MAN (9th Cir. July 6, 2015).
2. Id.
3. Patrick J. Concannon, ‘Initial Interest Confusion’ Trademark Doctrine Still Has Legs in Ninth Circuit, IP LAW BULLETIN (Aug. 16, 2015), http://www.iplawbulletin.com/2015/08/initial-interest-confusion-trademark-doctrine-still-has-legs-in-ninth-circuit/?utm_source=feedburner&utm_medium=feed&utm_campaign=Feed%3A+iplawbulletin+%28IP+Law+Bulletin%29?utm_source=Mondaq&utm_medium=syndication&utm.
4. Multi Time Machine, Inc., No. 13-55575 at 3.
5. MTM SPECIAL OPS, http://www.specialopswatch.com/ (last visited Sept. 3, 2015).
6. Multi Time Machine, Inc., No. 13-55575 at 3-4.
7. Id. at 4.
8. Id. at 4-5.
9. Id. at 5.
10. Id. at 5.
11. Playboy Enters., Inc. v. Netscape Commc’ns Corp., 354 F.3d 1020, 1025 (9th Cir. 2004).
12. Multi Time Machine, Inc., No. 13-55575 at 9.
13. Peter Sullivan, Pushing the Envelope on Initial Interest Confusion Claims-Multi Time Machine, Inc. v. Amazon, TRADEMARK & COPYRIGHT LAW (August 31, 2015), http://www.trademarkandcopyrightlawblog.com/.
14. Playboy Enters., Inc., 354 F.3d at 1025.
15. Do Amazon.com’s Search Results Constitute Trademark Infringement?, THE NATIONAL LAW REVIEW (Aug. 27, 2015), http://www.natlawreview.com/article/do-amazoncom-s-search-results-constitute-trademark-infringement.
16. Id.
17. Multi Time Machine, Inc., No. 13-55575 at 6.
18. Id.
19. THE NATIONAL LAW REVIEW, supra note 14.
20. Multi Time Machine, Inc., No. 13-55575 at 22.
21. Sullivan, supra note 13.
22. Id.
23. Id.
24. Id.
25. Multi Time Machine, Inc., No. 13-55575 at 32.
26. Id.
27. Wendy Davis, Court Urged to Deny Amazon New Hearing in Battle over Search Results, THE DAILY ONLINE EXAMINER (Aug. 13, 2015, 1:09 PM), http://www.mediapost.com/publications/article/256140/court-urged-to-deny-amazon-new-hearing-in-battle-o.html.

Are Threats Made on Social Media a True Threats Exception to the First Amendment?

As the popularity of social media continues to grow, people are increasingly using it to express themselves. While expressing oneself on social media sites is a documented right as per the First Amendment, what is less clear is whether threats made on social media are permitted under the First Amendment, or whether they constitute the “true threats” exception that serves as a limitation on First Amendment rights. Put differently, at what point are threats made on Facebook no longer a rant, but a true threat that is not covered by one’s First Amendment rights?

In a recent major Supreme Court case, Elonis v. United States, Anthony Elonis posted various items on his Facebook page that sounded like threats about injuring his “estranged wife, police officers, a kindergarten class, and an FBI agent.” He argued that they were just rap lyrics that he “intended as artistic and fictional.” He claimed to be using rap as a “‘therapeutic’ medium” through which to vent his frustrations.

In all of the cases leading up to Elonis v. United States, many legal experts said that true-threat cases have failed to provide clear guidance, as there has been much disagreement among lower courts. However, as a New York Times article indicates, in Elonis v. United States, the Supreme Court had the opportunity to clarify whether the “true threats” exception to the First Amendment applies to threats made on Facebook, Internet and social media.

The key question for the Court to decide was how to instruct the jury. Should the jury be told that Elonis was guilty only if he had the purpose of putting the alleged targets in fear of criminal attack – the required mens rea? Or should the jury be told that Elonis was guilty so long as “a reasonable person would foresee” that the targets would perceive the statement as seriously expressing an intent to criminally attack them (a “negligence test”)? Each of these questions focuses on what level of mental culpability, or “mens rea,” is required to justify criminal punishment.

To figure this out, the Court had to interpret two bodies of law. First, it had to decide what mental state is required by the federal threats statute, 18 U.S.C. §875, which bans transmitting “in interstate or foreign commerce” (which includes the Internet, telephones, the mail, and many other means) “any communication containing any threat to kidnap [or injure].” Second, it had to decide what mental state is required by the “true threats” exception to the First Amendment, since it’s only the existence of this exception that makes the federal threats statute constitutional. And, as in all such situations, the criminal defendant would get the benefit of the higher mental state (the one more demanding on the government).

The federal trial court in this case concluded that the “reasonable person” negligence test was sufficient both under the federal statute and under the First Amendment true threats exception. The court of appeals agreed, as have most other circuit courts of appeals. But the Ninth and the Tenth Circuit courts of appeals concluded that, under the First Amendment, speech can’t be punished as a true threat unless it’s said with the purpose to put in fear, and that therefore the federal threat statute must be interpreted the same way (as must any other state or federal threat statutes, if they are to be constitutional). The Supreme Court agreed to hear the case, largely to resolve this disagreement among lower courts.

The Supreme Court decided that the federal threats statute would be satisfied by a showing that the speaker had the purpose of putting the target in fear (mens rea), or that he knew the target would be put in fear (the “knowledge test”) — the defendant’s counsel had conceded at oral argument that such knowledge would indeed satisfy the federal statute.

The Court decided that the federal threats statute would not be satisfied by a mere showing that a reasonable person would foresee that the statement would put the target in fear (the Court thus rejected the negligence test).

The Court expressly declined to reach the First Amendment question, because their ruling led to the conviction being reversed on statutory grounds (though there would likely be a retrial, if the prosecution so wishes). “Given our disposition,” the Court said, “it is not necessary to consider any First Amendment issues.”

Justice Thomas, who would have upheld Mr. Elonis’s conviction, said the majority’s approach was unsatisfactory. “This failure to decide,” he wrote, “throws everyone from appellate judges to everyday Facebook users into a state of uncertainty.”

But isn’t the Supreme Court’s decision not to rule on First Amendment issues a veneer of sorts? Is it really possible to draw the line between the federal threats statute and the true threats exception to the First Amendment when the consequences are identical? Granted, the Supreme Court required either a purpose to threaten or actual knowledge that the target of the threat will feel threatened in order for it to be criminalized under the federal threat statute, but aren’t they by default ruling on the “true threats” exception of the First Amendment? By not criminalizing Elonis, they are in effect allowing social media threats to be made even if a reasonable person would foresee that the statement would put the target in fear as per their First Amendment rights. Moreover, it is only because of the true threats exception to the First Amendment that the federal threat statute is constitutional altogether!

Whether or not the poster of the threat would be criminalized under the First Amendment true threats exception if they did indeed have the purpose to put the target in fear remains unclear, however, what is crystal clear is that a poster of a threat which a reasonable person would foresee as putting the target in fear does NOT fall within the true threats exception of the First Amendment, and remains covered under one’s First Amendment rights. Even the Supreme Court of the United States cannot disguise that.

Elonis v. United States, 135 S.Ct. 200 (2015).

Adam Liptack, On the Next Docket: How the First Amendment Applies to Social Media, The New York Times, June 30, 2014,

Eugene Volokh, The Supreme Court doesn’t decide when speech becomes a constitutionally unprotected “true threat”, The Washington Post, June 1, 2015, https://www.washingtonpost.com/news/volokh-conspiracy/wp/2015/06/01/the-supreme-court-doesnt-decide-when-speech-becomes-a-constitutionally-unprotected-true-threat/

Adam Liptack, Supreme Court Overturns Conviction in Online Threats Case, Citing Intent, The New York Times, June 1, 2015, http://www.nytimes.com/2015/06/02/us/supreme-court-rules-in-anthony-elonis-online-threats-case.html

Erik Nielson & Charis E. Kubrin, Will Top Court Challenge Prosecution of Rap, CNN, June 23, 2014, http://www.cnn.com/2014/06/23/opinion/nielson-kubrin-prosecution-of-rap/

Elana Herzog is a second-year law student at Benjamin N. Cardozo School of Law and a Staff Editor of the Cardozo Arts & Entertainment Law Journal. She is an active member of PILSA and looks forward to a career in public interest.

Forever 21, Forever Problematic: Forever 21 is Slammed with yet Another “Copycat Design” Trademark Infringement Lawsuit

Adidas recently filed a lawsuit against Forever 21, Inc. and Central Mills, Inc., in which Adidas claims that Forever 21 and Central Mills allegedly infringed Adidas’s famous three-stripe trademark. The lawsuit was filed in federal district court in Portland, Oregon, where the German sportswear giant’s North American headquarters are located.

In a complaint filed on August 17, 2015, Adidas America, Inc., a Delaware corporation, and Adidas AG, a foreign entity, demanded a jury trial in the suit against Forever 21, Inc., a Delaware corporation, and Central Mills, Inc., a New York corporation. Adidas alleged the following claims against Forever 21 and Central Mills: counterfeiting, trademark infringement and dilution, unfair competition, and deceptive trade practices.

In the complaint, Adidas argued that “[d]efendants’ apparel is not manufactured by adidas, nor are Defendants connected or affiliated with, or authorized by, adidas in any way. Defendants’ merchandise is likely to cause confusion, deceive the public regarding its source, and dilute and tarnish the distinctive quality of adidas’s Three-Stripe Mark.”

The complaint provides two images of Forever 21 apparel that Adidas claims are examples of confusingly similar or identical imitations of the Adidas Three-Stripe mark.

In Adidas’s complaint, the company states that it “owns numerous incontestable federal trademark registrations for its Three-Stripe Mark for apparel and footwear, and adidas has invested millions of dollars building its brand in connection with the Three-Stripe Mark.”

Adidas also claimed that Forever 21, as well as retailer Central Mills, “intentionally adopted and used counterfeit and/or confusingly similar imitations of the Three-Stripe Mark knowing that they would mislead and deceive consumers into believing that the apparel was produced, authorized, or licensed by adidas, or that the apparel originated from adidas.”

However, Forever 21 is not a stranger to lawsuits. Forever 21 has a history of being embroiled in a variety of legal controversies. The fashion company has faced trademark lawsuits from other fashion brands that claim that Forever 21 is copying their designs. In fact, Forever 21 is way too familiar with being involved in legal battles. The company has faced lawsuits for employment discrimination and labor violations.

The fashion company has also been the subject of more than 50 copyright lawsuits from prominent designers (including Anna Sui, 3.1 Phillip Lim, Gwen Stefani, and Diane von Furstenberg) for allegedly stealing their designs. Diane von Furstenberg sued the retailer, arguing that Forever 21 copied four of her dresses.

Susan Scafidi, Professor and Academic Director of the Fashion Law Institute at Fordham University School of Law, said that Forever 21’s “design is swathed in mystery” and that “it probably looks a bit like a crime scene, with the chalk outlines of the garments they’re copying.”

So in addition to a jury trial, what does Adidas want from Forever 21? Adidas wants Forever 21 to immediately and permanently end all manufacturing, sourcing, importing, selling, promoting, distributing and marketing of the allegedly infringing garments, and deliver the garments to Adidas so that they can be destroyed. Adidas also seeks damages that could possibly be in the millions of dollars.

It is widely known that Forever 21’s powerful legal team is hired by the company to swiftly settle lawsuits similar to Adidas’s.

Sherry Wilson is a second-year law student at Benjamin N. Cardozo School of Law and a Staff Editor of the Cardozo Arts & Entertainment Law Journal. She is particularly interested in intellectual property law and administrative law.


1. http://www.documentcloud.org/documents/2290000-adidas-v-forever-21.html#document/p20
2. http://www.oregonlive.com/playbooks-profits/index.ssf/2015/08/adidas_accuses_forever_21_and.html
3. http://koin.com/2015/08/19/adidas-portland-sues-forever-21-over-branding/
4. http://jezebel.com/5822762/how-forever-21-keeps-getting-away-with-designer-knockoffs
5.  http://fortune.com/2015/04/02/forever-21-slapped-with-transgender-discrimination-lawsuit/
6. http://www.nj.com/passaic-county/index.ssf/2014/07/forever_21_still_exposing_workers_to_hazardous_conditions_at_north_jersey_locations_feds_allege.html#incart_m-rpt-1
7.  http://www.styleite.com/news/forever21-copy-designer-clothing/
8. http://www.elle.com/culture/celebrities/g2815/designer-lawsuits-614883/?slide=7
9. http://www.theguardian.com/lifeandstyle/2011/jul/17/forever-21-fast-fashion-america
10. http://www.thefashionlaw.com/adidas-files-suit-against-forever-21-for-copying

Greenpeace[ful?] Harm to Cultural Property

The Nazca lines are a celebrated example of cultural property. Located in the Nazca Desert in southern Peru, the Nazca lines are a series of ancient designs called “geoglyphs” that were created by removing small, reddish pebbles to expose the white ground underneath. These designs were created by the Nazca culture between 400 and 650 AD, and were recognized as a UNESCO World Heritage Site in 1994. The designs include animals, trees, and flowers. Moreover, the unique climate of the Nazca Desert has allowed for the natural preservation of these early forms of art: since the area is relatively isolated and windless, the designs have remained naturally intact. As such, Peru has taken care to further preserve the Nazca lines. In doing so, the nation has voiced environmental concerns, and has stringently regulated access to the area. For example, “[e]ven ministers and presidents have to seek special permission [to visit] and wear special footwear to access the grounds.”[1]

In December 2014, climate change talks were held in the Peruvian capital of Lima. Greenpeace took the opportunity to illegally visit the Nazca lines and use yellow fabric letters to inscribe “Time for Change! The Future is Renewable. Greenpeace” next to one of the iconic images of a Nazca hummingbird. In doing so, the group of activists allegedly removed 1,600 km2 of the surface next to the hummingbird.[2] This display can be seen from an airplane descending into Lima, so Greenpeace used the letters to catch the attention of those attending the climate change talks. In doing so, Greenpeace seriously offended both Peruvians and art appreciators alike. Not only was their entry illegal, but also they did not use the special footwear when traversing the delicate landscape. The incident also sparked a heated legal debate about preservation of cultural property, as well as prosecution and extradition. Continue reading Greenpeace[ful?] Harm to Cultural Property

3D Print Week, New York Fashion Show, and the Effects Consumer 3D Printing Will Have on Online Counterfeiting in the Fashion Industry

Fashion designers do not necessarily use a pencil, paper, needle, and thread anymore. In fact, some do not use any of these materials at all. This week (April 13-17th 2015), in New York City, MecklerMedia launched their highly anticipated “3D Print Week NY.” The event has drawn companies and 3D printing enthusiasts from all around the world, and has been recognized as the largest 3D printing event in history.[1] As part of 3D Print Week NY, the 3D Print Fashion Show showcased top 3D print designers’ original works displayed to the public for the first time.[2] The show itself featured both men’s and women’s apparel and accessories and featured designers such as Andy O’Mara, Bradley Rothenberg, Francis Bitonti, Melinda Looi, and Paul Redmond.[3] In recent years, 3D print designs have become some of the most talked about fashion designs to take fashion week.

In March of 2013, designer Michael Schmidt partnered with architect Francis Bitonti, and 3D printing company, Shapeways, to design the “world’s first fully articulated 3D printed dress.”[4] According to the designer, the dress was designed entirely on an iPad, refined via Skype, rendered digital, and printed in seventeen parts on a 3D printer EOS P350.[5]  The dress, worn by American burlesque dancer Dita Von Teese at a private event in New York, received much attention from the international high-end fashion community.[6] Later, at Paris Fashion Week, Dutch designer Iris Van Herpen became the first to incorporate 3D printed pieces into her Haute Couture runway collection.[7] Continue reading 3D Print Week, New York Fashion Show, and the Effects Consumer 3D Printing Will Have on Online Counterfeiting in the Fashion Industry