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CBS/Paramount sues to stop Axanar

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mkstewartesq said:
See? This is why I don't understand why C/P - even in their perfunctory "maybe they'll fold" original complaint to Axanar - didn't include such easy-to-spot, easy-to-prove, easy-to-win slam-dunk claims such as trademark infringement. It's so much less a gray area than copyright and not subject to a "fair use" defense (fair use under trademark is a whole different ballgame, and not applicable to cases like these.)

FYI, trademark infringement lets you seek damages from someone who uses a similar mark on goods that are similar or related to the goods on which you use your own mark. The "wiggle room" that wins or loses cases is the parties arguing over "how similar is too similar such that consumers might be confused." Similarity is often in the eye of the beholder.

But look up above - the mark "klingon" on a toy spaceship or model kit for building toy spaceships.

Guess what - CBS has a U.S. federal trademark registration for "Klingon" for toy spaceships and model kits for building toy spaceships. The registration has been in effect for 21 years and is still in effect.

Exact same mark. Exact same goods. No wiggle room. No defense. Slam dunk for C/P.

Damages? Same measure as copyright- defendant's profits plus plaintiff's actual damages OR statutory damages. However, because the mark is exactly the same (not just "similar") to the registered mark and is being used on the exact same goods as (not just "similar or related to") the goods identified in the registration, this also - in addition to trademark infringement - constitutes use of a "counterfeit mark" under the U.S. Lanham Act, which means

- Triple Profits and Damages plus Attorneys' Fees- in cases of intentional and knowing use of a counterfeit mark or designation "the court shall . . . enter judgment for three times such profits or damages, whichever is greater, together with a reasonable attorney's fee . . . ."

or statutory damages up to $1,000,000 per counterfeit mark.

Sigh. I just do not frigging get why C/P didn't raise any of this in the original complaint when it's right there.

M
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Regarding trademark infringement, would they have to go after everyone then who infringed? With copyright, they can be selective. Is the same thing true with trademark?

If not, that maybe why they aren't going after Axanar for trademark infringement.
 
drt said:
I wonder if Richter would be named as a Doe? I'm not sure if it's standard language, but I noted the phrase "participating or assisting in any such activity whether or not it occurs in the United States" occurs a couple of times in the original complaint. And it seems like 75% of Prelude is just his CGI.
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Though the complaint doesn't specify VFX, its inclusionary language certainly makes it possible and likely to do so as the case moves forward.

I suspect Tobias may end up paying a professional price because of his association with Axanar, which is too bad. As long as he's associated with a project under this kind of legal cloud, he (and others like him) won't be getting any work from CBS or any Viacom-associated subsidiary, and that's not just corporate vindictiveness; it would actually create a legal conflict of interest.

Being in Germany may shield him from being named in the case since he's not subject to U.S. law, but the footage we know he has sent to Robert Burnett is certainly discoverable, and falls within the scope of Doe activity as described in the legal complaint. It also gives a lie to the claim made by the defense that any potentially infringing content has not yet been fixed in a tangible form. I think all that VFX footage meets that standard, in addition to the Vulcan Scene.
 
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Professor Zoom said:
Regarding trademark infringement, would they have to go after everyone then who infringed? With copyright, they can be selective. Is the same thing true with trademark?
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No. In fact, they would be doing far more damage to their trademark rights by letting this pass than in most cases.

It often gets bandied about that "you can be selective in copyright enforcement, but not in trademark enforcement". The first part is true, the second really isn't.

Trademark actually serves two purposes. One is to protect the trademark owner and the goodwill he has built up in his trademark. But the second- and arguably more important purpose is consumer protection - protecting a consumer, who has come to see a given trademark as signifying the quality of the goods on which the trademark is placed and would be harmed if that mark - or a similar mark - was placed on goods of a substandard quality and the consumer mistakenly bought the substandard product believing it was made by the "true" trademark owner. This is why the legal standard for trademark infringement looks at the issue from the consumer's point of view - a mark is infringing if it is "likely to confuse" a consumer into buying products not made by the "true" trademark owner.

This consumer protection aspect does place a duty on the trademark owner to police its mark or risk losing it - if you let a consumer come to rely on your mark as signifying a certain level of quality and you then let everybody else put your mark on their own shoddy goods, then you are abusing the public's trust in your trademark and should not be allowed to keep the trademark. But this does not mean that the trademark owner has to go after each and every potential infringer or risk losing his mark. As I said above, there is often a lot of wiggle room and subjectivity in trademark infringement analysis -a mark that I might see as "really similar", you might see as being different enough that people wouldn't be confused between the two. Same for "how similar or related the goods are". So it would be really inefficient both for society and the courts to force a business to spend money going after every "maybe"/"kinda similar" mark just because, if they didn't. their own mark might be in jeopardy.

But in this case - where there is no wiggle room or "arguable differences" between the marks or goods, and, in fact Axanar is using the exact same mark "Klingon" on the exact same goods as C/P uses it on - C/P not pursuing it would be the exact type of case where their trademark rights would most likely be stripped from them.

Putting it in simple terms: "C/P - you registered the mark Klingon for model space ship kits, you used it for over 20 years, and the public came to understand over 20 years that the term "Klingon" on a space ship model meant that they could buy with confidence knowing that it was a C/P product. And then someone else comes along and uses the exact same mark to sell their own model space ship kits, and you don't say "boo" - knowing full well that your past customers may likely buy them under a mistaken belief that the word "Klingon" indicates it's an authorized, quality C/P product just like the other "Klingon" model kits they bought from you for 20 years? Trademark cancelled."

M
 
mkstewartesq said:
No. In fact, they would be doing far more damage to their trademark rights by letting this pass than in most cases.

It often gets bandied about that "you can be selective in copyright enforcement, but not in trademark enforcement". The first part is true, the second really isn't.

Trademark actually serves two purposes. One is to protect the trademark owner and the goodwill he has built up in his trademark. But the second- and arguably more important purpose is consumer protection - protecting a consumer, who has come to see a given trademark as signifying the quality of the goods on which the trademark is placed and would be harmed if that mark - or a similar mark - was placed on goods of a substandard quality and the consumer mistakenly bought the substandard product believing it was made by the "true" trademark owner. This is why the legal standard for trademark infringement looks at the issue from the consumer's point of view - a mark is infringing if it is "likely to confuse" a consumer into buying products not made by the "true" trademark owner.

This consumer protection aspect does place a duty on the trademark owner to police its mark or risk losing it - if you let a consumer come to rely on your mark as signifying a certain level of quality and you then let everybody else put your mark on their own shoddy goods, then you are abusing the public's trust in your trademark and should not be allowed to keep the trademark. But this does not mean that the trademark owner has to go after each and every potential infringer or risk losing his mark. As I said above, there is often a lot of wiggle room and subjectivity in trademark infringement analysis -a mark that I might see as "really similar", you might see as being different enough that people wouldn't be confused between the two. Same for "how similar or related the goods are". So it would be really inefficient both for society and the courts to force a business to spend money going after every "maybe"/"kinda similar" mark just because, if they didn't. their own mark might be in jeopardy.

But in this case - where there is no wiggle room or "arguable differences" between the marks or goods, and, in fact Axanar is using the exact same mark "Klingon" on the exact same goods as C/P uses it on - C/P not pursuing it would be the exact type of case where their trademark rights would most likely be stripped from them.

Putting it in simple terms: "C/P - you registered the mark Klingon for model space ship kits, you used it for over 20 years, and the public came to understand over 20 years that the term "Klingon" on a space ship model meant that they could buy with confidence knowing that it was a C/P product. And then someone else comes along and uses the exact same mark to sell their own model space ship kits, and you don't say "boo" - knowing full well that your past customers may likely buy them under a mistaken belief that the word "Klingon" indicates it's an authorized, quality C/P product just like the other "Klingon" model kits they bought from you for 20 years? Trademark cancelled."

M
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Hm. There goes my theory of why copyright rather than trademark (to not have to go after fanfilms that are behaving)

I wonder why they chose this route then...
 
mkstewartesq said:
No. In fact, they would be doing far more damage to their trademark rights by letting this pass than in most cases.

It often gets bandied about that "you can be selective in copyright enforcement, but not in trademark enforcement". The first part is true, the second really isn't.
<snip>
But in this case - where there is no wiggle room or "arguable differences" between the marks or goods, and, in fact Axanar is using the exact same mark "Klingon" on the exact same goods as C/P uses it on - C/P not pursuing it would be the exact type of case where their trademark rights would most likely be stripped from them.

Putting it in simple terms: "C/P - you registered the mark Klingon for model space ship kits, you used it for over 20 years, and the public came to understand over 20 years that the term "Klingon" on a space ship model meant that they could buy with confidence knowing that it was a C/P product. And then someone else comes along and uses the exact same mark to sell their own model space ship kits, and you don't say "boo" - knowing full well that your past customers may likely buy them under a mistaken belief that the word "Klingon" indicates it's an authorized, quality C/P product just like the other "Klingon" model kits they bought from you for 20 years? Trademark cancelled."
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M.,

Can you bundle copyright infringement and trademark into the same case?
 
Professor Zoom said:
I wonder why they chose this route then...
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As I've always said (and @jespah said it before me) - it seems more and more likely the complaint we have seen was sent on the assumption that the copyright claims would be all that was needed to make a reasonable party fold up shop. Axanar, not being a reasonable party, did not do so. I would have to assume that now that things "got real", C/P will say "okay, you really want to play?" and let fly with the "sue you for everything under the sun" amended complaint they should have sent in the first place.

But we really won't know until the amended complaint is filed. Who knows - they may just double down on the copyright claims and make them more specific and still leave everything else off the table. That would surprise me given all of the other strong claims C/P could bring - but stranger things have happened.

M
 
carlosp said:
M.,

Can you bundle copyright infringement and trademark into the same case?
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Absolutely. In fact, where all of your claims arise out of the same factual scenario, courts would prefer - and in some cases require - that you bring all claims you have in one suit - the idea being that it is far more efficient for the court to resolve all disputes between the parties in one proceeding rather than have them stretch over years over multiple sequential lawsuits.

M
 
Hang on a minute. Pacer is charging people to see documents about CBS/Paramount's intellectual property suit during a suit about charging to create intellectual property? I knew it, this has to become at least a mini series.


Indysolo said:
PACER has updated.

First AMENDED COMPLAINT against Defendants All Defendants amending Complaint (Attorney Civil Case Opening),1 , filed by Plaintiffs Paramount Pictures Corporation, CBS Studios Inc(Jason, Jennifer)

https://www.pacermonitor.com/public...oration_et_al_v_Axanar_Productions,_Inc_et_al

Neil
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Indysolo said:
PACER has updated.

First AMENDED COMPLAINT against Defendants All Defendants amending Complaint (Attorney Civil Case Opening),1 , filed by Plaintiffs Paramount Pictures Corporation, CBS Studios Inc(Jason, Jennifer)

https://www.pacermonitor.com/public...oration_et_al_v_Axanar_Productions,_Inc_et_al

Neil
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Now we wait..............

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I skimmed most of the complaint but I think it's safe to say: Axanar's legal team has a lot of work ahead of them to try to fight this one. They wanted the list of their infringements? They got it. Alec might really want to consider settling.
 
My only worry, having seen it as well, is that New Voyages gets dragged into the lawsuit because of the last infringement / claim which was made in error by CBS and Paramount.
 
You can tell from the original complaint that they didn't want to destroy Peters. Now it seems the gloves have come off.

Peters may want to find a good bankruptcy lawyer!
 
BillJ said:
You can tell from the original complaint that they didn't want to destroy Peters. Now it seems the gloves have come off.
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I haven't had a chance to review the complaint. But based on some spoilers @jespah shared with me, I'd say "the gloves are only half off" - C/P for some unknown reason apparently isn't yet going after all of the really obvious egregious stuff we have been discussing, such as merchandising and so forth (unless they touch on ship models- as I said, I haven't reviewed it yet.) No trademark claims, etc. So, yes on "gloves coming off" but not the "wrath of God"/"let's end this right now" deluge that was readily at their fingertips and could have brought Axanar to a dead stop. This makes me doubt the depth of C/P's anger or resolve to shut down Axanar beyond just impeding the actual filming.

Looking forward to @jespah's blog post. I will look at the complaint a bit later, but doubt I will have much to add to her analysis.

M
 
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