According to an Associated Press report, Hans Klok, a magician, was successfully sued by a former assistant, Magician Rafael van Herck, and fined €12,205 ($16,725) by a Dutch court for performing a routine in which he fights with a stubborn butler, first apparently reaching through his body to grab a glass of water off a tray, then smacking off his head momentarily.

Klok argued that the tricks are known, and had been performed by Siegfried & Roy in Las Vegas. But the court ruled Van Herck’s combination is unique.

COMMENT

Apparently the grounds for the payment was copyright infringement.

Although a magician myself, I haven’t been following the international magic scene for some years now and don’t know either performer.

I find the case interesting as back when I was running the patent department of Seligsohn et Gabrieli, one of Israel’s oldest IP firms, I published a serious of articles in a monthly magic magazine, Club 71, now rebranded as the Magician, on how the various types of intellectual property; patents, designs, trademarks, trade-secrets and copyright, impact on the conjuring world.

Arnan Gabrieli, the head of the firm and a leading Israel litigator wasn’t sure that there was copyright in a magic routine. My position was that a magic routine (not the “how” but the “what”) was a dramatical performance and thus copyright protected. It seems from this case, that I was right.

Magicians have a funny internal code of ethics. Most magic shops won’t accept the return of a trick found to be unsuitable by the purchaser as they consider the purchaser now knows the secret. However, the secret is rarely a secret in any real sense, as it is generally published in books and magazines, some of which may be in public libraries or sold via regular bookshops. The secret was not the magic stores to sell.

I perform for family and friends, hospitals and charities, but have stopped attending magic society meetings, since I find the field stiflingly boring and magicians amongst the least creative people I come across. The dress codes and routines are all so retro. Very little seems to have changed since Hoffman.

That’s not to say that all people coming into the office for advice regarding their inventions have actually created something new.

Having mentioned Club 71, I note that the magic shop that put out the magazine, Repro, had a much fairer policy and would refund money for mistaken purchases, but not for used flash paper.

Magicians have been in the courts before. Ironically, a 12,000 Euro fine for a case that gets picked up by the associated press is good value for money.  It’s the sort of thing that both magicians could have collaborated on to get the publicity. Now there’s a thought.

A second fitness club called Switch, based in Netanya used her picture to promote their club. The photo was run in 4 or 5 editions of the local paper and one street hoarding.  Guvrin and PhysiKal sent a cease and desist letter and requested that Switch stopped using the picture and pay NIS 590,000 damages.

Switch took the picture down immediately and agreed to pay statutory damages of NIS 20,000 for copyright infringement.

A year later, Guvrin and PhysiKal sued Switch and owners Shermeister and Frankel for copyright infringement, moral rights infringement,  unjust enrichment, passing off, and damage to Guvrin’s privacy. They also requested a public apology from the defendants and an injunction against further usage of the picture.

Judge Amiram Binyamini accepted that there was copyright infringement, but ruled that the advertising campaign should be considered as a single incident and awarded maximum statutory damages of NIS 20,000 under the Old Law (pre 2007). He accepted that the copyright in the picture was indeed owned by the client, i.e. the fitness club, but ruled that the moral rights were owned by photographer who wasn’t a plaintiff, therefore dismissed the moral rights claim.

As to the tort of Passing Off, although damages of up to NIS 100,000 could be awarded, Judge Binyamini ruled that the plaintiff was entitled to damages under either Copyright Infringement or Passing Off, but not both. In view of the short time period that the campaign ran and the different geographical location of the two clubs,  he saw no reason to increase the damages for Passing Off beyond the NIS 20,000 already awarded for Copyright Infringement.

As to Unjust Enrichment, Binyamini ruled that the plaintiffs had failed to show that the defendants had attracted members as a result of the activity. At best, they had saved themselves the cost of a stock photo under terms of non-exclusive use, which was a saving of perhaps tens of dollars, and thus negligible in light of the NIS 20,000 already awarded.

Since Hadas Guvrin had used her picture to promote fitness clubs herself, privacy wasn’t an issue either.

As four years had passed since the infringement, Judge Binyamini declined to order a public apology. He also felt the permanent injunction was unneccessary since the defendants had stopped using the picture immediately, and considered it requested merely to send the case to the District Court, but saw no reason not to issue it.

He noted that the defendants had offered NIS 20,000 at the outset, and taken down the picture immediately, so there was really no reason for the case to go to court. Furthermore, the defendants had offered to allow the case to be decided under Section 79a of the civil procedures, without evidence being heard, but the plaintiffs had insisted otherwise. Nevertheless, since the defendants had offered some fairly ridiculous defences as to why there was no copyright infringement and had insulted Ms Guvrin in one of the newspapers, he awarded a further NIS 10,000 legal fees.

the case: T. A. 1637/08 Hadas Guvrin and PhysiKal Events LTD. vs. Switch Fitness Club, Roei Shreimester and Israel Frankel before Judge Dr Amiram Binyamini, Tel Aviv District Court, 9 October 2011.

COMMENT

This seems to be a balanced ruling and Judge Binyamini is correct, the case was a waste of the court’s time. With a lot of daily commuters from Netanya to Ramat Gan, I am not convinced that the different geographical locations is important, but the judge is correct, that there was no evidence of actual damage.

The new Israel Copyright Law 2007 entered the Statute books on 25 November 2007 and came into effect six months later in May 2008.

Prior to May 2008, the Copyright Ordinance of 1911, inherited from the British Mandate, was the copyright regime in effect in Israel. The Ordinance underwent some amendments over time and there have also been some creative case-law.

Under the Copyright Ordinance of 1911, statutory damages were limited to NIS 10,000 per infringing event. For willful infringement, double damages of NIS 20,000 could be awarded.

Under the new law however, damages of up to NIS 100,000 per infringing event may be awarded. According to the transition provisions (Clauses 78 to 79) the new law may be enforced for creative works predating its entering into effect  if the infringing act took place after the law came into effect. Thus an act that took place in 2005 or 2006 that was the cause of a suit filed in 2009 or 2010 would be tried under the old act. The statutory damages, per infringement are limited to NIS 10,000 to NIS 20,000.

Or so we thought…

Two cases regarding the manufacture of children’s watches were filed in 2008 and combined and tried by the Tel Aviv Magistrate’s Court. The watches feature Marvel and DC Comic Book characters including Spiderman, Superman and Batman. Because the events took place in 2006 the authorized licensees for the characters and the comic book publishers sued for statutory damages of NIS 10,000 to NIS 20,000 under the 1911 copyright ordinance.

(It should be noted that the plaintiffs sued, as an alternative grounds for damages, the statutory damages under fair trading laws, but it is clear that where there is a specific statutory damage, as for copyright infringement, this is the grounds for damages that apply).

In her ruling, Presiding Judge Channa Inon acknowledged that the correct law to apply depends on when the infringing actions took place. What is surprising is that after deciding that there were three infringing events per plaintiff, and not enough evidence to assess actual damages, she awarded damages of 3 x NIS 100,000 under the new copyright law, i.e. NIS 300,000 (almost $87,000) each, to Marvel and to DC Comics.

Perhaps the plaintiffs were awarded Super damages as befits superheroes?

The cases: T.A. 35389/08 DC Comics vs. Polo Publicity and Trade LTD. and T.A. 35390/08 Marvel Comics vs. Polo Publicity and Trade LTD.

Red Hat is an open-source software company that provides programs for the Linux operating system. The company is the world leader for Open Source and their software product is called Fedora.

The firm has a registered trademark in Israel, number TM 133565-133567 for a logo showing the mystery man, a face under a fedora.

Another firm, called Start Commercial, provides open source software solutions and consulting. They had used a logo including a face under a fedora, which was taken down at Red Hat’s request. Since they had a second logo including a Fedora, Red Hat were not satisfied and filed suit claiming registered trademark infringement and famous mark infringement.

Additionally, Eddy Nig (Nick), a blogger identified with Start Commercial, uses a photo of himself wearing glasses and a fedora.

The judge ruled that there was no likelihood of confusion between First Commercial’s logo and Red Hat’s since Red Hat’s fedora was red with a black ribbon and the other hat was black with a blue ribbon. Furthermore, First Commercial’s mark did not include the face of the mystery man. Instead, the second logo included a couple of arrow heads (chevrons) and a square. As to Eddy Nig wearing a fedora and glasses, this was considered his right.

The case: H.P. 3768-121-10 Red Hat vs. Stuart Commercial LTD et al. (Tel Aviv – Jaffa District Court, before Judge Shoshana Almagor

OUR COMMENTS
This case relates to an important issue as to how similar the logo of a minor service provider / auxiliary service to a major player can be to the major player’s logo, so as to graphically indicate this to the public, without implying that the minor service provider benefits from recognition from the major player and is somehow endorsed. Unfortunately, the honorable judge doesn’t seem to have been aware of this.

She discusses the law regarding identical trademarks, based on court decisions, and then notes that this is irrelevant to the present case. It is not clear why she didn’t delete these irrelevancies.

Apparently the fact that there are only about 600 Red Hat users in the country was considered of more significance in deciding whether their mark is well-known in the open source community than the fact that the defendant acknowledges that Red Hat is the Microsoft of the Open Source movement. One wonders how many Rolls Royce cars are on Israel’s road, and whether that indicates that Rolls Royce is not a well-known mark.

The mark, as registered, is monochrome. There is no colour limitation. Thus the judge’s learned discussion regarding the colours of the two fedoras and their ribbons is a red hat herring.

I would suggest that most software is developed by people and the distinctive element of the trademark is the fedora, not the face thereunder, which is partially concealed anyway. The fact that the name of the complainant is Red Hat and the name of their flagship product is Fedora reinforces this conclusion.

From the description of rectangles and arrow heads in the decision, it is a little difficult to visualize what the competing mark looks like. Since a picture is worth a thousand words, I’ve reproduced the logo above.

In my opinion, the logo is meant to represent a fast forward button with a fedora on top, i.e. a fast track to Fedora.

I can see merit in the argument that this is free-riding on Red Hat’s reputation, but would argue that the firm is simply advertising consulting and programming services for open source products, including Red Hat’s Fedora. This conclusion is, in my opinion, strengthened by the fact that the blog originally included a different logo, a Fedora over a face which was taken down at Red Hat’s request.

The issue that should have been addressed by the court is whether a mark that is a variation on a theme and which intentionally includes similar elements to recall the mark of a major player, but which is not similar to the mark it recalls, but is distinctive therefrom, nevertheless is infringing. I believe the criterion that the court should have addressed in this case, is whether the graphic mark implies authorization from Red Hat, i.e. that is an authorized service provider.

There are three other points of note:

1. This intellectual property dispute concerns open source branding.
2. There is a typo in the court ruling and leading Trademark lawyer Ms. Ellen Shankman is written as Ilan – a male name.
   One of the parties refers to the Fedora as being a Sherlock Holmes hat, which is what Robert Downey Jr. wore when playing the part. However Basil Rathbone and most of the other 100 or so dramatizations of Conan Doyle’s character, have Holmes wearing a deerstalker – although the hat does not appear in any of the original Conan Doyle stories.

All in all, a poor decision. What went wrong?

Tal Children’s furniture LTD supplied their baby changing table to Shilav, Israel’s leading chain of baby furniture, clothes and accessories.

In the course of time, Shilav found a supplier, Texture Furniture LTD,  who could supply the identical design at a quarter of the price. Not surprisingly, Shilav switched suppliers. Tal Children’s Furniture LTD accused the second supplier of ‘passing off’ their product and also infringed on their IP rights.

Since any association of the goods by the public was with Shilav, not the manufacturers, and since there were no registered IP rights, the case was dismissed and the complainant was ordered to pay NIS 10,000 costs to each defendant. 

COMMENT

The furniture in question apparently had two small drawers opened by inserting fingers and a couple of larger draws with two handles. The figure taken from Shilav’s current catalogue is thus not identical to the design in question, but is fairly indicative of the type of design masterpiece in question. Also known as Dressing table 57, the unit, together with bed 17 and polka-dot sheets was fancifully marketed as the Alice in Wonderland Set.

The decision is correct, but the mental gymnastics performed by Judge Chana Yinon, the citing of irrelevant case-law and the general write-up of the decision makes for tiring reading. This ruling could have been as short as this summary. 5 pages of discussion was quite unneccessary. 

T.A. 35573-07 Tal Children’s Furniture LTD vs. Texture Furniture LTD

I am a balloonologist myself, and have made literally thousands of one balloon dog sculptures at birthday parties, children’s wards in hospitals, busking on Jerusalem’s Ben Yehuda Pedestrian Precinct, as a student, in St Marco’s Square, Venice, and thanks to Lord Greville Janner, then MP, QC, and a fellow magician, in a conference room at the British Houses of Parliament.

None of my sculptures will ever be as famous as Jeff Koons’. I can, however, claim to inflate my regular sized versions made from a standard Qualatex 2 x 60 balloon, in the traditional way, by lung power, and due to also playing the trombone, can generally manage about 200 balloons in one session.

In what appears to me to be a total hutzpa, Koons has sent cease-and-desist letters to Park Life, a San Francisco gallery and store that sells the bookends, and Imm-Livinga distributor of balloon sculpture bookends. See  http://www.nytimes.com/2011/01/20/arts/design/20suit.html?_r=1

Unfortunately, Park Life‘s owner, Alexander has taken the bookends off sale and removed from his website.

In this instance, I am not impressed with Peter D. Vogl, the partner of Jones Day who sent the cease-and-desist letters.  We are all Intellectual Prostitutes, but some of us have standards! If the case was fought in Israel, I’d be honored to represent the bookend distributor pro bono myself.

If it will help Alexander’s cause, I am willing to sign an affidavit that his bookends are faithful copies of my sculptures, and to provide him with a non-exclusive license to continue manufacturing them. After all, the size and look are close to my models. The fee? a couple of bookends would be nice!

Apparently, lawyer Jed Wakefield of Fenwick and West LLP has now picked up the condom and asked for a declaratory judgement against Koons.

“It could bring freedom to balloon animals everywhere,” Wakefield said.

In a very interesting ruling, Tel Aviv Judge Abraham Yaakov ruled that Israel Customs were wrong for attempting to charge Levi Strauss for the cost of storing and eventually destroying counterfeit jeans confiscated, according to Customs, on behalf of Levi Strauss.

Israel Customs attempted to argue that Section 200a of the Customs Ordinance provides that Customs can impound goods believed to infringe copyright or registered trademarks for three days, but further action requires the rights holder to post a deposit. Customs argued that the deposit was not only to compensate the importer if he were to prevail in court, but also to cover Customs expenses should the importer prove untraceable,  go into bankrupcy or liquidation, or otherwise default.   

The judge’s ruling included the following reasoning:

1. The Customs Authority itself acknowledged that the primary party responsible for paying for destruction of infringing goods is the importer. Since the rights holder has done nothing wrong, why should they have to pay costs?
2. Although Customs claimed that the rights holder is proactive in the legal proceedings, this is not necessarily the case.  Customs can seize and hold goods without the rights holder being an active party.
3. Even if the rights holder informs Customs, about their rights and about an infringing shipment, Customs are obligated to act as a law enforcement agency, not merely as protecting the financial interest of the rights owner.
4. Although Section 53(1) of the TRIPS agreement includes such a provision, the judge ruled that Section 200b of the Israel Customs Ordinance instituted in the wake of TRIPS rejected billing the rights holder for the actions performed by customs and established that the deposit paid by the rights holder to cover the seizure of goods should be refunded in full if the courts rule that the goods indeed infringe.

 The court pointed out that the interpretation of the Customs Authority was equivalent to arguing that the rights holder should serve as a guarantor the infringing importer.

As to the claim by Customs that the only party that benefits from destruction of the infringing goods is the rights holder, the judge succinctly stated that it would have been better had this never been claimed, and went on to rule that it was in the national interest to uphold intellectual property rights and to enforce the criminal law. Indeed, having signed TRIPS, the State had accepted the obligation to enforce IP rights.

In summary, the court ruled that the only reason for posting bond was to prevent frivolous actions and to protect the rights of wrongfully charged importers.

Levis was awarded NIS 100,000 for statutory damages and NIS 10,000 costs from the first defendant who did not attend the hearing, with the second defendant who did show up, having to pay a mere NIS 2500 costs with the goods to be destroyed.  The Customs and VAT Department of the State of Israel was ordered to pay NIS 10,000 in legal fees to Levis.

The Case: T.A. 3261-03/10 Levi Strauss & Co. vs. Algamal, Alnazer Odeh and The State of Israel Customs & VAT Authority 

Kadim Guidance LTD filed suit against Eli Mula – Liyat Flowers and against Shlomi Mulaim, alleging that their rights to supply candy bouquets under the name “zer matok” had been infringed.

The term Zer Matok means sweet bouquet.

Judge Eli Yifrach ruled that the term was generic. Attempts to obtain trademark protection had failed as the product, comprising arrangements of pralines and chocolates was descriptive, and the complainants had failed to prove that they had obtained a reputation for the product that was being infringed by the competition. Allegations of passing off, unjust enrichment, etc. were all rejected. The case was dismissed and costs of NIS 35,000 were awarded to each defendant.

Hsin Lung Accessories Co. Ltd., a Taiwanese company has developed and patented or registered designs for collapsible aluminium scooters that are distinguished by having two back micro-wheels and one front wheel, and that they incorporate a split base with a propulsion mechanism such that by alternatively shifting weight from one foot to another and twisting the body, it is possible to drive the scooter forwards. The scooter is sold in Israel as “Streeter” and worldwide as “Fliker”.  It is patented in the US, Germany and China.

The US Patent Number US 7,073,805 titled “User-propelled riding toys and methods”, has the following abstract:

This invention is a user-propelled riding toy. A platform on which a user stands is supported by a steering mechanism that transfers a directional force from the platform; and a geartrain mounts to the wheels. The geartrain is adapted to receive a downward force from the platform, and translate a portion of the downward force into a rotational force on the wheels. The geartrain also provides an upward return force acting on the platform, and translates a directional force into a lateral force acting on the wheels. The platform is propelled forward direction by the rotational force on the wheels. Lateral forces cause two sets of wheels to pivot in opposite directions, and thereby directionally steer the platform.

The importer also claims copyright on the packaging, having a unique design on the box.

When other traders started selling similar scooters in Israel, Hsin Lung and their local distributor, both represented by Saar Plinner, sued the importers, distributors and customs.

The problem was that the design was never registered as a patent or an industrial design in Israel.

Unperturbed,  Hsin Lung Accessories Co. Ltd. and the importer sued for passing off, unjust enrichment and copyright infringement; it being noted that in Israel, copyright does not require registration.

The defendants claimed that the generic scooter manufacturers in China that manufactured the goods suggested the brand name “Mover”, and gave various packaging options, including a picture of the goods within, in attractive colours. What is clear, however, is that apart from the name being different, printed in a different colour and appended to a different position, the two scooters are identical.

The complainants asserted that the issue is not parallel importing of similar goods, but rather importing of fake goods, and that they had developed a market by heavy investment in marketing. They alleged that the choice of identical colours was intentional, and that the suffix “er” on the names “Streeter” and “Mover” was designed to confuse.

The defendants claimed to be acting properly, in that the complainants had not registered their design or patent in Israel, the names were different and copyright on designs does not extend to goods that could have been registered.

Judge Rafi Carmel of the Tel Aviv District Court noted that copyright was not infringed and that the scooters were sold under a different name that appeared clearly, in different colours three times on the article in question. The free-riding charges, that the defendants were fulfilling a demand created by the advertising of the plaintiffs was also dismissed since free-riding is not a tort in Israel.

Ruling that the plaintiffs had not proved that unjust enrichment rights in the scooter accrued to the plaintiffs, he rejected the Unjust Enrichment charges. All charges were dismissed and the plaintiffs were required to pay legal fees of NIS 20,000.

COMMENT

In this case, although the design is a clear copy, albeit with a different name, there is no case of passing off and no trademark infringement. I would argue that by failing to register their patent in Israel, the plaintiffs were conscientiously opening the door to third parties marketing competing goods here. They had the opportunity to file for protection and failed to do so. Consequently, they have no case and the judge is correct.

However, since the Supreme Court ruling in the (in)famous 5768/94 A.Sh.I.R. case 

רע”א 5768/94 א.ש.י.ר – מדינת ישראל הרשות השופטת

in certain cases it is possible to obtain compensation under the doctrine of Unjust Enrichment, even where complainants have not registered designs and patents locally, where there is an additional element of bad faith.

I am not a great fan of A.Sh.I.R. since I like clear-cut law. Like most patent attorneys, I would encourage exporters to Israel to register their inventions as patents and to register their designs thereby creating clear in rem rights in Israel.

Nevertheless, A.Sh.I.R.  remains good case-law and is supposed to create a binding precedent that the Tel Aviv District Court should follow where applicable.

In this case, the plaintiff has a US patent which indicates that they are the inventors, and the Taiwanese manufacturers are selling identical models as a generic article.  In such a situation, I think that the A.Sh.I.R. ruling could be applied.

The A.Sh.I.R. decision was a triumph for Former Chief Justice Barak. It indicated that registering designs and patents was not necessary to prevent other manufacturers and distributors producing similar goods.  If there was evidence of bad faith, wilful copying, etc., then one was entitled to injunctions and compensation despite failing to register ones goods. Barak was into doing ‘justice’ rather than formalistically applying the law. There is evidence that the current Supreme Court is more formalistic, and I see that as a good thing.  However, unless this case is appealed we’ll not know if A.Sh.I.R. is still good case-law or not. Therefore, it would be useful if the complainants appeal this decision to the Supreme Court.

The case: T.A. 1126-07-10 Hsin Lung Accessories Co. Ltd and Shed On It  LTD. vs. B.S. Toys and Brands and others.

In addition to the more formal entertainments on offer in and around Times Square, New York, there are three scantily dressed buskers. One who calls himself the Naked Cowboy and a further two, each of which calls herself the Naked Cowgirl.

These entertainers wear cowboy hats and boots and sing to the accompaniment of their guitars.

The Naked Cowboy, Robert John Burck, was born on December 23, 1970 in Cincinnati, Ohio.  He can be viewed on his website: www.nakedcowboy.com. In his performances,  he wears a pair of y-fronts, and holds the guitar sufficiently low to conceal the garment, giving the impression that he is nude – hence the name.

Louisa Holmlund, wears a micro-skirt and a pair of little mirrors on her nipples. Both earn tips by crooning the crowds and by providing photo-shoots. Apparently, she pays royalties of $500 a month or $5000 a year to the Naked Cowboy. She can be seen on her website here: www.nakedcowgirlny.com

There is now a second Naked Cowgirl; Sandra Brodsky who calls herself Sandy Kane. She  wears a starred and striped bikini and matching cowboy hat and refuses to pay a franchise fee.   She is in her 50s.

It seems that the Naked Cowboy is the original act, that inspired or was plagiarized by the Naked Cowgirls. Both have been somewhat lapse with their trademarking, with the Naked Cowboy’s mark lapsing and being refiled, and the Naked Cowgirl’s mark also lapsing.

As the Naked Cowgirl Kane has refused to take out a ‘francise’ from the Naked Cowboy – what I suppose would be called ‘protection money’, the Naked Cowboy has sued for infringement of his IP rights.

According to Burck, Kane is ripping off his intellectual property, he also claims her act is “un-American” and makes a “mockery of the system and the trademark infringement laws.”

Having entered the silly season (onat hamalafafonim - the “cucumber season” in Hebrew), this epic battle of the sexes has been picked up by the various newspapers as well as the IP Blogs – including our friends, the IPKAT.  With a dirth of real IP stories to discuss, and with the Israel Courts in recess, I have decided to analyze this case. Noone seems to have actually commented on the legal issues. So here goes.

I don’t think that being un American is a crime, even in Time Square. The issue of trademark infringement is something that can sensibly be discussed however. I thing that both trademark registrations are limited to the combination of Naked Cow+boy and Naked Cow+girl. Both marks are somewhat descriptive, perhaps the naked cowgirl with udders on show, is even more so.

I don’t think either mark should be interpreted to give wider protection than exact copying.  In other words, the fact that both use he words Naked and Cow does not imply copyright infringement or passing off. the words Boy and Girl are opposites.

For the same reason that North Face is not infringed by South Butt, I don’t believe that the word mark Naked Cowboy is infringed by Naked Cowgirl.  I don’t think that there is a likelihood of confusion either. Male body builders look different than female strippers. It’s probably something biological.

That said, and although perhaps aiming largely at a different segment of the crowd, with the Naked Cowboy getting tips from women tourists and homosexual men, and the Naked Cowgirl attracting heterosexual men, one could argue that there is a problem in setting up a competing business on someone else’s patch.  This raises various issues. For example, does a busker, who does not invest capital in premises but who clearly invests time and energy in becoming a tourist attraction in his own right, create rights?

Ms Kane seems a little past her prime. It could be that she does have a negative impact on the trade. Is this a crime?

In Jewish Law, one cannot simply open a business opposite a competitor. the issue seems to be more one of drawing away trade than passing off. However, this halachah is not the law in New York. It seems that the State does allow one to open up souvenir shops, coffee shops, restaurants and hotels opposite similar establishments, and I am skeptical that merely because Times Square is the Naked Cowboy’s patch, that other buskers can’t perform there.

Arguably, all the cowpeople are part of the scene that keeps tourists visiting Time Square.  I don’t believe that the newspaper and postcard vendors that benefit from the buskers attracting the crowds should pay them, nor do I think that the buskers should pay the theatres for bringing the crowds.

The franchise issue is an interesting one, but I would argue that noone would assume that there is a franchise for buskers and one does not order their services, but simply tips the individual if entertained. The tip is generated by the behavior of the individual at the time that the tip is made. It is not something related to the chain.

A waitress working in a chain of restaurants would not be expected to share her tips, so why should a busker?

Singing songs created by Burck would be copyright infringement. The combination of a cowboy hat, boots and underwear is not.  As is often the case, there is a confusion between an idea and the expression of the idea. Dance steps, routines, songs and the like can be protected with copyright. I don’t think the basic idea of the act can be.

Burke claims that Kane’s performances have caused “confusion” with the public and may put “a potentially permanent devaluation on a real American Brand and Icon.”

It is not the first time that Burke has gone to court to protect his trademark. In February 2008 he sued Mars Inc. in federal court in Manhattan, alleging that a blue M&M character, dressed in underpants and boots that appeared in the candy’s advertisements, violated his trademark. That suit was resolved in November that year. Neither party gave a reason for the dismissal with prejudice, which prevented Burck from re-filing his lawsuit.

The M&M advertisment was one of a series, which included an M&M dressed as the Statue of Liberty and an M&M as King Kong climbing the Empire State Building.

U.S. District Judge Denny Chin, who presided over the earlier lawsuit, ruled that Mars had to face Burck’s false- endorsement claim,wherein he claimed that there was a potential for consumers to believe Burck supported the ads. However, Burke’s right-of-publicity claim against M&M was refused.

Louise Holmlund had a stronger case of claiming trademark infringement as she’d held a mark for Naked Cowgirl. Unfortunately, however, it died in 2007.

Likelihood of confusion with Burke, not convincing. His second claim seems to be one of dilution. Here he may have a point. I think the case should be thrown out. Both sides will probably gain from the publicity in the meantime though.