Category Archives: Litigation

Trademark Infringement Statutes: Mind Your T’s and M’s

The proliferation of social media has resulted in a similar (although not nearly as vast) proliferation of trademark infringement and trademark infringement lawsuits. And while parties may bring claims for “common law” trademark infringement or trademark infringement under state law, the vast–almost exclusive–basis for a standard infringement suit is federal law.

But, as lawyers, what do we do with all those Lanham Act statutes? There are a whole bunch of trademark sections to deal with after all. (Okay, fine, it really isn’t that difficult but, apparently, confusion does arise.) Seriously. You have 15 U.S.C. §§ 1114, 1115, 1117, 1125, and more!

Well, a florida federal district court recently gave the parties a remedial lesson in trademark statutory law:

The Court notes that Roca Labs erroneously cites to 15 U.S.C. § 1117 as the statute supporting its claim for trademark infringement. However, section 1117 enumerates remedies available to plaintiffs who prevail under other sections of the Lanham Act; section 1117 alone does not provide a cause of action. Because Boogie Media does not challenge Roca Labs’ erroneous use of this section, and because Roca Labs states elsewhere in the Amended Complaint that it seeks relief for trademark infringement under section 1114, the Court construes Count I as a claim under 15 U.S.C. § 1114(1).

Roca Labs, Inc. v. Boogie Media, LLC, 2013 WL 2025806, at *8 n.2 (M.D.Fla. May 14, 2013). Don’t ask me why I changed all the hyperlinks from Westlaw to Cornell’s awesome Legal Information Institute when my citation to the case is still a Westlaw citation. But hey, at least you have easy access to the relevant statutes. I’m sure the parties in this matter wish they did.

Microsoft OneNote for Lawyers

I tweeted this out earlier. I would love to get some reaction. I have never been a big user of OneNote but it seems like lawyers could (and should) be using it. This is particularly true as its level of integration with Outlook (and Word) increases. Let me know what you think.


Let’s get a discussion going in the comments so that everyone can benefit. Or, if you have some links to articles or other publications, send them to me (via the contact form) and I will add them to the post so that everyone can benefit.

Beginning in 2013, let’s make Social Media, Esq.™ a little more social!


How To Lay Foundation for the Admissibility E-Mail Evidence

The Federal District court for the Western District of New York recently provided a great summary of how to lay foundation for e-mails (as business records). Since e-mail evidence is a part of nearly of case these days, this information should prove helpful to all lawyers. In Beechwood Restorative Care Center v. Leeds, 856 F. Supp. 2d 580, 595-96 (W.D.N.Y.), the trial court set the record straight on e-mails as business records:Attribution 3.0 Unported (CC BY 3.0)

The Second Circuit has explained that:

Rule 801(d)(2)(D) of the Federal Rules of Evidence defines as nonhearsay a statement offered against a party that is “a statement by the party’s agent or servant concerning a matter within the scope of the agency or employment, made during the existence of the relationship.” In order to introduce evidence of an out-of-court statement as nonhearsay under Rule 801(d)(2)(D), a party must lay a sufficient foundation by establishing “(1) the existence of the agency relationship, (2) that the statement was made during the course of the relationship, and (3) that it relates to a matter within the scope of the agency.”

Marcic v. Reinauer Transp. Companies, 397 F.3d 120, 128–29 (2d Cir.2005) (quoting Pappas v. Middle Earth Condominium Ass’n, 963 F.2d 534, 537 (2d Cir.1992)). In addition, “admissibility under Rule 803(6) requires both that a [document] have been ‘kept in the course of a regularly conducted business activity’ and also that it was the ‘regular practice of that business activity to make the [document] ….’ ” United States v. Freidin, 849 F.2d 716, 719–20 (2d Cir.1988) (quoting Rule 803(6)).

Under both those rules, then, a proper foundation must be laid before a document can be admitted. Provided that plaintiffs can meet that foundational requirement at trial, these exhibits are not barred by the hearsay rule. See Penberg v. HealthBridge Mgmt., 823 F.Supp.2d 166, 187 (E.D.N.Y.2011) (“A party seeking to introduce an email made by an employee about a business matter under the hearsay exception under Rule 803(6) must show that the employer imposed a business duty to make and maintain such a record”) (quoting Canatxx Gas Storage Ltd. v. Silverhawk Capital Partners, LLC, No. H–06–1330, 2008 WL 1999234, at *12 (S.D.Tex. May 8, 2008)); Park W. Radiology v. CareCore Nat’l LLC, 675 F.Supp.2d 314, 333 (S.D.N.Y.2009) (“Though an email may satisfy the business records exception under appropriate circumstances, Plaintiffs do not show that the … emails qualify” because the “employees were not under an obligation to create the emails as a record of regularly conducted business activity.”).

This excerpt sets out most (if not all) of the arguments and legal authorities you will need to argue for or against the admissibility of e-mail evidence based on the business records exception to the hearsay rule. With foundation and admissibility issues frequently popping up with respect to admissibility of electronic evidence, hopefully this guidance from W.D.N.Y. will help save you some time and money in addressing these issues.

(Clip art credit: 177Designs)

Subpoena Twitter Accounts – New York Court Says “Yes!”

An interesting decision came out of New York recently. It is a criminal matter involving an Occupy Wall Street protestor who was arrested for disorderly conduct as he marched across the Brooklyn Bridge. While the case was resolved on unique procedural grounds (briefly discussed below — I only do a little white collar criminal law so I’m not particularly familiar with some of the intricacies of criminal procedure in other states), it does present some solid information for practitioners with respect to the ability to subpoena information from a user’s Twitter account.

Let me start with the end. The case is People v. Harris, Case No. 2011NY080152, 2012 WL 1381238 (N.Y Crim Ct. Apr. 20, 2012). And in that case, the court denied the defendant’s attempt to quash a subpoena on grounds that: (1) defendant did not have standing for the motion to quash because criminal defendants (in New York at least) do not have standing to quash a subpoena issued to a third party (the court analogized to prior rulings regarding subpoenas to banks); and (2) the defendant didn’t have the right to “intervene” in the action between the government and Twitter in order to challenge the subpoena. With that in mind, here are the more interesting aspects of the decision.

In this case, the government subpoenaed all tweets from 9/15/11 to 12/31/11 and the associated email address for the @destructuremal account. Upon receipt of the subpoena, Twitter informed @destructuremal, and the following day, @destructuremal informed Twitter of his intent to challenge the subpoena. Here is the first noteworthy point. Twitter, like any good third-party in receipt of a challenged subpoena, took the position that it would not comply with the subpoena until the court ruled on @destructuremal’s challenge (from here on out, I’m going to refer to @destructuremal as Harris, since that is who he is). I would expect Twitter to take the same position in the future.

Second, the court did a surprisingly good job of summarizing what Twitter is:

Twitter is an online social networking service that is unique because it enables its users to post (“Tweet”), repost (“Retweet”), and read the Tweets of other users. Tweets can include photos, videos, and text-based posts of up to 140 characters .3 Users can monitor, or “follow” other users’ Tweets, and can permit or forbid access to their own Tweets. Besides posting Tweets or reposting other users’ Tweets, users may also use the more private method to send messages to a single user (“Direct Message”).

That is as probably the best judicial description of Twitter I have come across. Moving on, third, for you EULA / Clickwrap junkies, the court relied heavily on Twitter’s Terms of Service, recognizing that “checking the box” was sufficient to invoke the terms:

In order to sign up to be able to use Twitter’s services, you must click on a button below a text box that displays Twitter’s Terms of Service (“Terms”). (See By clicking on a button on the registration web page, you are agreeing to all of Twitter’s Terms, including the Privacy Policy (see The Privacy Policy informs users about the information that Twitter collects upon registration of an account and also whenever a user uses Twitter’s services.

The court than gives what amounts to a “shout out” to the Twitter folks:

By design, Twitter has an open method of communication. It allows its users to quickly broadcast up-to-the-second information around the world. The Tweets can even become public information searchable by the use of many search engines. Twitter’s Privacy Policy informs the users that, “[w]hat you say on Twitter may be viewed all around the world instantly.” (See With over 140 million active users and the posting of approximately 340 million Tweets a day (see, it is evident that Twitter has become a significant method of communication for millions of people across the world.

Fourth, the court held that “the defendant has no proprietary interests in the @destructuremal account’s user information and Tweets between September 15, 2011 and December 31, 2011.” The court based this holding on Twitter’s TOS, which state:

By submitting, posting or displaying Content on or through the Services, you grant us a worldwide, non-exclusive, royalty-free license to use, copy, reproduce, process, adapt, modify, publish, transmit, display and distribute such Content in any and all media or distribution methods (now known or later developed).

Since Harris agreed to those terms, every time he used Twitter, he was granting Twitter a license to distribute his Tweets to anyone, for any purpose. “Twitter’s license to use the defendant’s Tweets means that the Tweets the defendant posted were not his.” That is a pretty significant ruling; while many correctly recognized that this was the case, we now have some additional judicial authority establishing this.

Fifth, the court disregarded the “reasonable expectation of privacy” argument.” This court finds that defendant’s contention that he has privacy interests in his Tweets to be understandable, but without merit. Part of the Terms agreement reads: “The Content you submit, post, or display will be able to be viewed by other users of the Services and through third party services and websites. The size of the potential viewing audience and the time it can take to reach that audience is also no secret, as the Terms go on to disclose: What you say on Twitter may be viewed all around the world instantly … [t]his license is you authorizing us to make your Tweets available to the rest of the world and to let others do the same.”

While a Twitter account’s user information and Tweets contain a considerable amount of information about the user, Twitter does not guarantee any of its users complete privacy. Additionally, Twitter notifies its users that their Tweets, on default account settings, will be available for the whole world to see. Twitter also informs its users that any of their information that is posted will be Twitter’s and it will use that information for any reason it may have.

And Finally, in another interesting twist, the court required that the subpoena responses be submitted in camera review. First, it recognized that the Stored Communications Act (the “SCA”). “While this court holds that the defendant has no standing to challenge the subpoena as issued, once the subpoena is brought to a courts attention, it is still compelled to evaluate the subpoena under federal laws governing internet communications.”

The court proceeded to hold that Twitter is a service provider of electronic communications for purposes of the SCA. Next the court recognized that the SCA “permits the government to compel disclosure of the basic subscriber and session information listed in 18 U.S.C. § 2703(c)(2) using a subpoena.” Following this reasoning, the court held that the government complied with the subpoena requirements under the SCA.

The court required in camera review in order to protect Harris’s privacy concerns.

So what does it all mean (read this part if you don’t want to read the rest)? First, Twitter acted appropriately in the face of a challenged subpoena. Second, some courts actually understand Twitter (or more likely, the judge’s clerks understand Twitter) and can describe it fairly well. Third, courts (at least this court) had no problem with EULA / TOS “click and accept” approach. Fourth, the court held that the defendant had no proprietary interest in his Tweets and that, based on Twitter’s TOS, “the Tweets the defendant posted were not his.” Fifth, the court held that the defendant had no reasonable expectation of privacy in his Tweets. And finally, the court analyzed the subpoena under the Stored Communications Act and ultimately required in camera review.

Significant applause to the author of this opinion. It is well written and provides an excellent explanation of what Twitter is, how it works, and why users do not have ownership, propriety interests, or reasonable expectations of privacy in what they post. These are definitely issues that all practitioners should be aware of.

Now go subpoena Twitter and have some fun! If you have a public domain copy of this opinion, send it my way and I will get it posted on the site.