Institute for Information Law & Policy

NYLS Professor James Grimmelmann in Publisher’s Weekly

Professor James Grimmelmann's blog has been the go-to source for information and commentary about the proposed Google Books settlement since it was first announced in October 2008. In addition, he has written numerous papers, organized the October 2009 "D is for Digitize" conference at NYLS, and led a group of students in putting together The Public Index, an interactive website containing anything and everything about the Settlement. 

Publisher's Weekly recently published an editorial titled The Google Settlement: Why it Matters by Professor Grimmelmann describing the amended settlement, recently filed by the parties. According to Grimmelmann, the Google Books initiative may be good for society in the sense that it "empowers users to seek out whatever they want to learn," but the settlement terms are part and parcel of this benefit and they require careful examination. He states three areas of concern regarding the settlement: (1) whether a handful of lawyers negotiating it can adequately represent the class members and the public interest; (2) the effective orphan works monopoly granted to Google; and (3) the risks presented by use of an opt-out class action mechanism and whether legislation is a more appropriate response.

Publisher's Weekly editorial 

The Public Index

The Laboratorium                                                                              

From the Student Research Fellow Blog: “IP Surprise: Roller Derby” Follow-Up

The IILP hosted “IP Surprise: Roller Derby” this past Thursday, November 12, 2009 at NYLS.  Our guest lecturer was Ms. Quinn Heraty, a 2000 graduate of NYLS, and the founder of Heraty Law PLLC.  Ms. Heraty focuses her legal practice on negotiating deals, advising clients about business issues, and dealing with trademark, copyright, licensing, and other intellectual property matters.

Ms. Heraty’s presentation began with the history of Roller Derby in the U.S.  Did you know that Roller Derby evolved from Depression-era “Dance Marathons” where out-of-work contestants attempted to stay on their feet long enough to outlast the competition for a cash prize?  Neither did we! 

Ms. Heraty, represents various Roller Derby leagues, as well as the Women’s Flat Track Derby Association, the governing body for Roller Derby in the U.S.  In her role as counsel to New York’s Gotham Girls Roller Derby league, Ms. Heraty spearheaded the case that allowed the league to use the “Roller Derby” trademark.  While researching the origin of the trademark, she discovered that the original owners were no longer using the mark in commerce – and had therefore lost the right to prohibit its use.

Ms. Heraty has also represented individual teams and skaters in trademark matters, for example:

Seattlle’s Rat City Rollergirls’s dispute with Starbucks over their logo:

Colleen “Crackerjack” Bell’s dispute with Frito-Lay over her nickname.

Alexander McQueen and the re-emergence of trade dress

    The fashion industry loves bringing back trends of season past (leggings, dramatic shoulders…essentially the better part of the Balmain Winter 09/10 collection), and this time it is Alexander McQueen who is reviving another trend: the trade dress claim.  In October 2009, the fashion house filed a trade dress infringement claim down the block from New York Law School at the U.S. District Court in Manhattan accusing popular shoe manufacturer Steve Madden, Ltd.  of infringing on McQueen’s trade dress with the production of a motorcycle jacket inspired bootie. 

McQueen produced the “Faithful” bootie in January 2009, and claims the bootie achieved the “distinctiveness” requirement of the trade dress section of the Lanham Act by the “wide spread media attention” it has received by being photographed on society’s trend setting fashionistas. (Interesting side note: does a shoe meet the non-functionality requirement of the Lanham Act?)

The trade dress claim is rarely brought when dealing with copycat designs, but Alexander McQueen was left with little legal alternatives.  According to Women’s Wear Daily, the lawyers for Alexander McQueen state, “ In fact, the only design element of the ‘Faithful Bootie’ that Madden did not deliberately copy is the zipper pull that contains the ‘Alexander McQueen’ trademark,”.  It looks as though Steve Madden designed his bootie with not just the Alexander McQueen shoe in mind, but also the McQueen legal department as well.