Courtweek was inspired by David Horrigan's On Trial column in The National Law Journal. These selections from On Trial appear here in The B-9 File because the column ran on page B-9. As with Courtweek, the goal of On Trial was to find serious legal issues, but present them in a manner that's at least somewhat entertaining.
Unless indicated otherwise, the copyright for these articles is ALM Media Properties, Inc.
by David Horrigan, The National Law Journal, December 14, 2001
In the late 1980s, an activity known as "dwarf tossing" became a popular attraction in certain taverns and recreational facilities around the country. Bars would hire dwarfs for these events, in which contestants who executed the best throw of the dwarf were awarded prizes.
This activity was not popular with everyone. Many citizens and advocacy groups opposed dwarf tossing, and the state of Florida banned the practice in 1989. Bars sponsoring dwarf-tossing events risk losing their liquor licenses under the law.
At least one dwarf feels that Florida's ban is an unconstitutional violation of his rights. Tampa, Fla., radio personality David Flood, known to listeners as Dave the Dwarf, has filed suit in U.S. District Court in Tampa in an attempt to have the ban overturned. Flood v. Bush, No. 8:01cv02261 (M.D. Fla. filed Nov. 28, 2001).
Flood -- represented by Michael A. Steinberg of Tampa's Michael A. Steinberg & Associates -- is suing Florida Governor Jeb Bush in his official capacity and Kim Binkley-Seyer in her official capacity as head of Florida's Department of Professional Regulation, which oversees the state's Division of Alcoholic Beverages and Tobacco.
According to Steinberg, the law, § 561.665, Florida Statutes, is unconstitutional on both equal protection and due process grounds.
From an equal protection standpoint, "the law is unconstitutional because it treats dwarfs differently than others," Steinberg said. The lawyer added that in Florida it is perfectly legal to toss taller people.
On due process grounds, Steinberg claims that the law is unconstitutionally vague. The statute bans activities that exploit or endanger the health, safety or welfare of those with dwarfism. Steinberg says that the alleged vagueness is problematic. "Is dwarf arm wrestling illegal?" he asked. He added that dwarf tossing "may actually enhance the welfare of a person with dwarfism by putting money in his pocket."
Steinberg agreed to take the case on a pro bono basis after his secretary heard Flood issue a request for a lawyer to take the case on his radio show.
According to the district clerk's office in Tampa, court dates are pending.
By David Horrigan, The National Law Journal, February 18, 2002
As the War on Drugs became a cornerstone of federal jurisprudence, seizures of personal property became commonplace. As the authorities attempted to enforce drug laws, and as they realized just how lucrative these seizures could be in funding the fight, their appetite for seizing items grew to include bonds, boats, houses and horse farms.
But alleged drug crimes weren't the only ones resulting in seizures, and not every seized item was what one might ordinarily expect. One such case is being litigated in the U.S. District Court for the Middle District of Pennsylvania. The seized item is what, during the impeachment of Bill Clinton, became known euphemistically as "genetic material."
In the early 1990s, Antonio Parlavecchio got 14 years for racketeering. As Parlavecchio did his time in a Pennsylvania federal prison, he and his wife, Maria, wanted children. Since conjugal visits were not allowed, they developed an alternate course of action.
According to court papers, the Parlavecchios hatched a plan with prison guard Troy Kemmerer. In exchange for cash, Kemmerer would smuggle cryogenic sperm kits and other items into the prison. Once Antonio had made a deposit, Kemmerer helped smuggle the kit out of the prison so that Maria could bring it to a New York fertility clinic and, eventually, to her obstetrician-gynecologist.
Authorities uncovered the plan, resulting in prosecutions of all involved. Maria Parlavecchio pleaded guilty to a misdemeanor charge of smuggling in the kits, toiletries and food, and was sentenced to a year's probation.
Once the case was over, she requested the return of the seized seminal fluid. The government refused. The parties are now litigating over possession of the sperm.
Through attorney Eugene P. Tinari, Maria Parlavecchio argues that, under Federal Rule of Criminal Procedure 41(e), she is entitled to request the return of her property and that it should be returned unless it is contraband subject to forfeiture or needed by the government for evidence. Tinari said that because the case has been adjudicated and is not being appealed, there is no evidentiary need for the semen.
His client also argues that it is not derivative contraband, either, because she was charged with providing prohibited objects, but "was not charged with any crime involving receiving seminal fluids from her husband." Even if the semen were contraband, Maria Parlavecchio argues, the court must conduct an equitable balancing test between her fundamental right to procreate and the government's law enforcement needs.
The government sees it differently.
"We consider the seized item to be fruits of the crime," said U.S. Attorney Martin C. Carlson of the Middle District of Pennsylvania. Asst. U.S. Attorney Wayne P. Samuelson added, "She admitted to bribing the corrections officer. There was a quid pro quo--the seminal fluid was part of the crime."
Noting in its opposition memorandum that "motions for return of property have been a relatively fertile ground for litigation," the government argued that Maria's claims were "barren of merit."
The government argued that, under prison regulations, the semen was, in fact, contraband because it was smuggled out without the warden's knowledge. In addition, it argued that even under an equitable-balancing analysis, the court should deny Parlavecchio's request because it would amount to the court rewarding her for her crime.
By David Horrigan, The National Law Journal, November 4, 2002
Next month, Christopher Todd Brown will try to get the U.S. Supreme Court to grant certiorari in an effort to establish what he considers a basic constitutional rightthe right to write “F--- You” to university administrators in his master's thesis.
In an opinion amended on Oct. 24, the 9th U.S. Circuit Court of Appeals held that Brown did not have a First Amendment free speech right to insert a “Disacknowledgements” section in his thesis where he extended the insults to university administrators and then-California Governor Pete Wilson. Brown v. Li, No. 01-55930 (9th Cir. 2002).
Brown was a graduate student at the University of California at Santa Barbara. In his materials science masters' thesis entitled, “The Morphology of Calcium Carbonate: Factors Affecting Crystal Shape,” Brown inserted the section in place of the customary acknowledgements section.
The university refused to confer his degree. However, Dean Charles Li informed Brown that his thesis would be approved and his degree would be conferred if he removed the offending material. Instead, Brown sued.
Brown argued, inter alia, that by withholding his degree, the university violated his free speech rights under both the U.S. and California constitutions. However, a U.S. district court rejected Brown's federal claims and granted the university's motion for summary judgment.
The 9th Circuit affirmed the district court on Brown's federal claims. Relying on the U.S. Supreme Court's 1988 opinion in Hazelwood School District v. Kuhlmeier, the court held that the university did not violate Brown's free speech rights by refusing to approve the “Disacknowledgements” section. the court said, “An academic thesis co-signed by a committee of professors is not a public forum, limited or otherwise.”
Although the 9th Circuit rejected Brown's federal claims, it remanded the case for determination of his state law claims, which were unaddressed by the district court. However, Brown's attorney, Paul Hoffman of Venice, Calif.'s Schonbrun, Desimone, Seplow, Harris & Hoffman, said he will ask for postponement of a Dec. 2 district court date to pursue review by the U.S. Supreme Court.
In wanting to go to the Supreme Court before pursuing the state claims on remand, Hoffman pointed to the dissent in the 9th Circuit's opinion. Noting that the 1st and 6th circuits have refused to apply Hazelwooda case involving high school studentsto college and university students, the dissent argued that university students such as Brown should be afforded greater constitutional protection.
University counsel Christopher Patti argues there is no circuit split. “The 9th Circuit took great pains to distinguish the casesthis is an academic case; those were extracurricular cases,” he said.
As for Brown, the experience has made him reconsider his career choice. “I think I'm going to law school.”
by David Horrigan, The National Law Journal, August 4, 2002
The makers of Barbie dolls have lost a high-profile trademark battle against the record company that produced the hit 1997 song “Barbie Girl.”
On July 24, the 9th U.S. Circuit Court of Appeals held that the song neither infringed nor diluted the Barbie trademark. It based its decision, in part, on First Amendment grounds.
The case was closely watched and clarifies First Amendment applications of the Federal Trademark Dilution Act.
Writing for a unanimous panel and commenting on the contentious nature of litigation that included barbed press statements by both sides, Judge Alex Kozinski closed with the admonition, “The parties are advised to chill.”
The 9th Circuit affirmed a district court's granting of summary judgment in favor of MCA Records, which released “Barbie Girl.” The court held that it had not infringed on Mattel Inc.'s Barbie trademark under the federal Lanham Act. Nor did the company dilute the Barbie trademark in violation of the trademark dilution act.
However, the court ruled in favor of Mattel on a defamation claim brought by MCA, which claimed a Mattel spokeswoman used the terms “bank robber,” “heist,” “crime” and “theft” to describe MCA's actions in producing the song. Mattel Inc. v. MCA Records Inc., No. 98-56453.
Danish Singers
The controversy began with MCA's 1997 distribution of the song by the Danish pop group Aqua. The song featured Barbie and her playmate, Ken, and included lyrics such as “I'm a blonde bimbo girl” and “Kiss me here, touch me there, hanky-panky.” As the court noted, “to Mattel's dismay, the song made it into the Top 40 music charts.”
The toy company sued MCA and the other companies involved in the song in the U.S. District Court for the Central District of California.
Mattel claimed that the song would create a likelihood of confusion in consumers, the standard for determining trademark infringement under the Lanham Act, 15 U.S.C. 1125 et seq. In addition, Mattel argued that the song violated the Federal Trademark Dilution Act, 15 U.S.C. 1125(c) because it diluted the Barbie trademark in two ways:
• By diminishing the trademark's capacity to identify the Mattel doll.
• By tarnishing the doll's good name, and thus the trademark, with risqué lyrics that were inappropriate for young girls, the target market.
In rejecting Mattel's infringement argument, the 9th Circuit relied on a 2d Circuit opinion in a suit involving Federico Fellini's movie Ginger and Fred.
The dancer and actress Ginger Rogers sued the makers of the film claiming that its title created the false impression that she was associated with it. The 2d Circuit ruled against her, holding that a title doesn't violate the Lanham Act unless it has “no artistic relevance to the underlying work whatsoever” or is explicitly misleading as to the source. Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989).
In following Rogers, the 9th Circuit held that “the use of Barbie in the song title clearly is related to the underlying work.” The court held also that the song title was not explicitly misleading.
'Noncommercial' Use
As for Mattel's dilution argument, the court conceded that MCA's use of the mark was dilutive. However, it noted that there are three exceptions to the dilution act's prohibition against trademark dilution: comparative advertising, news reporting and commentary and noncommercial use. The court held that “Barbie Girl” fell under the noncommercial-use exception.
Although the court noted that “MCA used Barbie's name to sell copies of the song,” it held the use was noncommercial because the song was social commentary on Barbie's image and the cultural values she represents. Thus, the court held, “Barbie Girl” fell under a constitutionally protected exception to the act.
MCA's attorney, Russell Frackman of Los Angeles' Mitchell, Silberberg & Knupp, noted that there was a “First Amendment thread throughout the opinion,” adding that the court used the legislative history to show that, in passing the dilution act, Congress didn't intend to stifle parodies such as “Barbie Girl.”
Mattel's attorney, Adrian Pruetz of Los Angeles' Quinn Emanuel Urquhart Oliver & Hedges, did not return a call seeking comment.
Trademark litigator Mark Stein of Miami's Lott & Friedland agrees with Frackman.
“Parody and satire have to be excluded,” Stein said, adding that if they weren't, the Federal Trademark Dilution Act would be invalid on First Amendment grounds.
by David Horrigan, The National Law Journal, January 14, 2002
Last January, Trooper R. Thompson of the Virginia State Police visited a Virginia Beach establishment known as the Fatty Shack. Upon entering the Fatty Shack, Thompson photographed several items he considered to be drug paraphernalia, including “bongs” and “roach clips.” A sign inside the Fatty Shack read: “Use of any inappropriate language such as bong, crack pipe, weed etc. you will be asked to leave.”
Brian Lee Morrison, the proprietor of the Fatty Shack, told Thompson that he would not sell a “water pipe” to anyone who referred to the device as a “bong.” Nevertheless, Thompson warned Morrison that he was selling drug paraphernalia, a violation of the law, and gave him a copy of Virginia's drug paraphernalia statutes.
Several months later, Thompson returned to the Fatty Shack, found that the store had not stopped selling the items in question, and had actually expanded its inventory. Thompson issued Morrison a summons for selling drug paraphernalia.
At trial, Detective Glen Michaels of the Virginia Beach Police Department was qualified as an expert witness in “the possession and use of marijuana, controlled substances and drug paraphernalia.” The trial court convicted Morrison of selling drug paraphernalia, and he appealed to the Court of Appeals of Virginia.
Morrison argued that he did not have the required scienter for conviction under the paraphernalia statute because he did not know that his customers would use his goods for illegal purposes. But the court upheld Morrison's conviction, holding that the Fatty Shack's sign about inappropriate language and a “4:20” sticker on one of the bongs--allegedly a 1960s reference to the appropriate time to smoke marijuana at the University of California at Berkeley--evidenced Morrison's knowledge of his customer's use of the merchandise. Morrison v. Virginia, No. 2953-00-1 (Va. Ct. App. Jan. 8, 2002).
by David Horrigan, The National Law Journal, October 8, 2001
Not unlike Porky Pig telling cartoon viewers, “That's all folks,” the 5th U.S. Circuit Court of Appeals has put an end (for now) to a dispute over spiraled ham that had spiraled out of control.
James P. “Pink” Logan Jr. had sued Original Honey Baked Ham Co. in the U.S. District Court for the Western District of Louisiana, claiming patent infringement and fraud relating to Honey Baked's use of his patented ham preparation technology [NLJ, Aug. 27]. Logan is the founder of Logan Farms Honey Glazed Hams, a company that now has stores in seven states and Puerto Rico. The stores sell a variety of meats and sandwiches.
Logan holds several patents for his method of spirally slicing meat products. Explaining the benefits of the method to potential franchisees, Logan Farms says, “Your customers will no longer have to settle for bologna-sliced slabs of meat that came from the freezer any longer. Instead, they can serve finely cut portions of meat that are visually appealing, easy to remove and make an elegant presentation at any time, for formal entertaining or informal parties.”
The Original Honey Baked Ham Co. of Georgia, which does business as The HoneyBaked Ham Co., is a heavyweight in the ham industry. Founded in 1957 by Harry J. Hoenselaar, the company has stores across the nation and in Mexico. HoneyBaked also takes pride in its pig-preparation process. Its marketing materials note that Hoenselaar “invented the final touch to his unique gourmet ham... the spiral slicing process.”
Ham-to-Ham Combat
In 1986, Hoenselaar's trust, the owner of HoneyBaked intellectual property, sued Logan Farms for trademark infringement. In Schmidt v. Logan Farms Inc., No. 86-CV-71876 (E.D. Mich.), HoneyBaked alleged that Logan Farms had infringed on its trademark by using the name “Honey Brand Ham.” The parties eventually settled the case out of court.
In the case decided by the 5th Circuit on Sept. 12, Logan v. Burgers Ozark Country Cured Hams Inc., No. 00-30652, 2001 U.S. App. Lexis 20309 (5th Cir. 2001), the appeals court affirmed the district court's grant of judgment as a matter of law in favor of HoneyBaked after a jury had awarded Logan more than $9 million in damages for Lanham Act violations and fraud. The dispute stemmed from HoneyBaked's use of Logan's spiral cutting technology.
In affirming the district court's vacatur of the jury's damages award, the appeals court, in part, relied on its prior decision in Texas Pig Stands Inc. v. Hard Rock Café International Inc., 966 F.2d 956 (5th Cir. 1992), known commonly as Texas Pig Stands II.
In Texas Pig Stands II, the court held that a plaintiff was not entitled to the defendant's profits in a trademark infringement case because the plaintiff had failed to show that the profits in question were the result of infringement of the mark. In Logan's action, the district court found that HoneyBaked would have sold the same amount of cold cuts regardless of the slicing method. While distinguishing Texas Pig Stands II from Logan because the former was a trademark infringement action and the latter a patent case, the circuit court nevertheless held that Texas Pig Stands II still applied.
The 5th Circuit also affirmed the trial court's denial of injunctive relief to Logan Farms for potential future Lanham Act violations. But the court also upheld the lower court's denial of judgment as a matter of law in favor of HoneyBaked on fraud and Lanham Act willful violation claims. As of press time, there was no word on whether this latest set of culinary combatants will take this ham war to a higher tribunal.
by David Horrigan, The National Law Journal, September 17, 2001
Anyone who has spent any amount of time in New York is undoubtedly familiar with Mister Softee. Mister Softee ice cream trucks cruise the streets of the city, delivering cool tasty treats to young and old alike. Authorized Mister Softee franchisees operate in 15 other states and the District of Columbia as well.
It seems, however, that Mister Softee is now engaged in a turf war. As reported previously in The National Law Journal, Mister Softee Inc. has filed a trademark and trade dress infringement suit in federal court, claiming that other ice cream vendors are using Mister Softee's honorific unlawfully.
Now that the case of Mister Softee Inc. v. Valdez has found a place on the docket in the U.S. District Court for the Eastern District of New York, there are new developments in this culinary conflict.
Among the defendants in Mister Softee's complaint are various individuals doing business in New York under monikers such as Master Softee, Mister Soft, Mister Cones and Mister Happy Time. Mister Softee claims that the alleged infringers are violating both the federal Lanham Act and the common law of unfair competition.
Mister Softee is represented by Jeffrey Zucker and Christina Kam Peterson of Philadelphia's Fisher Schumacher & Zucker and Lawrence Tartamella of Hauppauge, N.Y.'s Tartamella, Tartamella & Fresolone.
Peterson said that it is “somewhat challenging” to serve the defendants. These soi-disant softees and their proprietors are, after all, very mobile, so serving court papers is much more difficult than serving ice cream.
In its complaint, Mister Softee submitted photographs of one of its own trucks and photographs of trucks operated by the alleged infringers, including a truck operated by one of the four Mister Cones named in the complaint--Mister Softee refers to this mister as “Infringer No. 2.”
In addition to claiming that the alleged infringers dilute and infringe upon the registered “Mister Softee” trademark, Mister Softee claims that these allegedly vicarious vendors attempt to confuse the ice cream-buying public by copying Mister Softee's trade dress.
'Children of All Ages...'
In the complaint, Mister Softee maintains, “Children of all ages run to Mister Softee trucks to purchase their favorite treat when they see the distinctive Mister Softee trucks and hear the familiar sounds of the Mister Softee jingle.”
Mister Softee claims trade dress confusion due to the painting of the trucks-- white with blue trim at the bottom, Mister Softee's Conehead displayed prominently on the sides and back of the truck and menu titles in red, cursive letters.
Mister Softee is seeking a preliminary injunction enjoining Messrs. Happy Time, Cones, Soft, Frostee and the others from using the Softee trademarks or trade dress, claiming that Mister Softee will suffer immediate and irreparable harm should the court refuse to grant the injunction.
In addition, Mister Softee is seeking monetary damages from the defendants.
As of press time, no defendants had answered the complaint, according to the district clerk's office. As a public service to its ice cream-consuming readers, The National Law Journal will follow the litigation and provide updates as the case develops.