IN THE UNITED STATES DISTRICT COURT
KAREN DUDNIKOV, a/k/a TABBERONE,
Major League Baseball Properties, a New York Corporation
Reply #2 to Defendant's Opposition To Plaintiffs' Motion For Summary Judgment
Plaintiffs Karen Dudnikov, a.k.a "Tabberone", and Michael Meadors, pursuant to Local Rule
D.C.COLO.LcivR 7.1(C), submit the following Reply #2 to Defendant's Opposition To
Plaintiffs' Motion For Summary Judgment ("Response") which was filed in response
to the Motion For Summary Judgment ("Motion"):
1. MLBP improperly begins the Response by referring to "Plaintiff, 'Tabberone'" (Response, Pg 1 ¶1). Tabberone is the eBay® handle used by one of the Plaintiffs, Karen Dudnikov. Under "Statement of Facts", MLBP refers to the "plaintiffs" and attempts to improperly lump them together under the name of "Tabberone" The name of the e-retail business run by the Plaintiffs is called "Tabbers Temptations" as can be seen looking at Response Exhibit A-1 E. Plaintiffs believe the references are an attempt to correct the omission made in the counter-claims asserted in MLBP's Answer To Complaint And Counterclaims ("Answer"), filed June 23, 2003. Michael Meadors has never been known as "Tabberone".
Reply Concerning Additional Disputed Facts
2. Several times MLBP refers to the wording on the selvage of the licensed fabrics. MLPB repeatedly refers to the licensed fabrics as being marked for "individual consumption only" (Response, Pg 2 ¶1), or "individual use only" (Response, Pg 4 A.10.). It also touts the fabrics contained the statement on the selvage: "THIS IS FOR INDIVIDUAL CONSUMPTION ONLY. ANY UNAUTHORIZED USE OF THIS FABRIC IS PROHIBITED AND ILLEGAL" (Response, Pg 4 A.10.). Yet it at no time offers any legal opinion, state or federal statutes, or legal authority that supports MLBP's contention that the disclaimer on the selvage is binding upon the purchaser of the fabrics.
3. MLBP repeatedly refers to the fabric items, the tissue box covers, as having "prominently bore the registered trademarks of the Major League Baseball Clubs (Response, Pg 1 ¶1), "tissue box covers bearing the trademarks" (Response, Pg 3 A.7.), or being identified with the Clubs' trademarks (Response, Pg 2 ¶1). The fabric items at no time "bore" any trademarks or had any trademarks attached to them. The trademarks images were part and parcel with the licensed fabrics. These trademarked images were placed on the fabric with the full knowledge and consent of MLBP. These trademarked images were placed onto the fabrics by MLBP in order to sell the fabrics. At no time did the Plaintiffs attach any marks to the products.
4. "MLBP controls the nature and quality of the products bearing the trademarks and copyrights of the MLB Clubs" (Response, Pg 3 A.5.). We assume that they are admitting knowledge of the forced labor and sweat shop conditions that exist in the third world country factories that manufacture their licensed products and that such knowledge is approval of the conditions.
5. Contrary to the "Undisputed Material Facts" presented by MLBP, there are not "numerous references to the Clubs" in the eBay® auction listings. There was minimal team name use. (See Response Exhibit A-1 E). This use easily falls under "fair use" as defined in the Lanham Act.
6. MLBP contends the "disclaimer" was in smaller type face than the rest of the listing (See Response Exhibit A-1 E). The size difference is minimal and the difference actually lends itself to drawing attention to the disclaimer as it is noticeably different. By no means is the disclaimer difficult to read. The disclaimer is immediately under the listing and the viewer does not have to "scroll" down the screen to read it. The consumer has to scroll down the screen to bid and there is no reason to believe the consumer would not read the rest of the listing. In this case, it would take a conscious effort of the part of the eBay® consumer to avoid reading the disclaimer. To be effective, a disclaimer must be conspicuous and easy to read. Plaintiffs' disclaimer(s) meet those requirements. Nothing was done to suggest sponsorship or endorsement.
8. MLBP relies heavily on Mirage Ed., Inc. v Albuquerque A.R.T. Co., 856 F.2d 1341, 1343-44 (9th Cir. 1988), a flawed decision, and Munoz, from the same circuit. They rely on these because these out-dated decisions are the only ones that support their now-contention that the tissuebox covers are derivatives. They ignore C.M. Paula Co. v. Logan, 355 S.Supp. 189 (N.D.Tex.1973), Lee v. Deck the Walls Inc., 925 F.Supp. 576 (N.D.Ill. 1996), Woods v. Bourne Co., 60 F.3d 978 (2nd Cir. 1995), Precious Moments vs La Infantil, 1997, (D.P.R.) 971 F.Supp. 66, and Paramount Pictures v. Video Broadcasting System, 724 F.Supp. 808 (D. Kan. 1989) as well as the Copyright Office's own declaration. Why ignore these? They contradict their position. Indeed, since MLBP is headquartered in New York, one could assume they would seek the 2nd District as venue in any case they would initiate and therefore they should be familiar with Woods v. Bourne Co which set the rule that to be a derivative work a thing must be independently copyrightable." A rule which is supported by the Copyright Office and copyright law.
9. Even the American Bar Association disagrees with Mirage. In its 1996-1997 Annual report, Committee No. 304 attacked Mirage and supported Lee v. Deck the Walls. (see attachment #4)
10. MLBP characterizes the tissuebox covers as derivatives (Response Pg 16 ¶2 and ¶3 and Pg 17) and yet ignores case law from their own 2nd Circuit that states to qualify as a derivative the item must be copyrightable.
11. MLBP also misstates Precious Moments vs La Infantil (Response Pg 19 ¶1), claiming the court granted relief when in fact the court only ordered La Infantil to add a disclaimer to include the fact that T.M. Sewing Service and La Infantil were not "in any way connected to Precious Moments". That was not the relief being sought by Precious Moments. That's all they got. That hardly constitutes a victory on trademark issues.
12. Sally Beauty Co. v. Beautyco, (Response pg 13 ¶3) was also misstated. The quote on the Response states "[B]uyers typically exercise little care in the selection of inexpensive items" . The full quote was "buyers typically exercise little care in the selection of inexpensive items that may be purchased on impulse." (emphasis added). Many times, bidders on eBay® must wait as long as a week for the auctions to end. Then, they must pay. Some pay by mail. Those who pay electronically get the product faster. It can be as long as three weeks between bidding and receipt of merchandise. Rarely is it less than 5 days. That hardly qualifies as an impulse purchase. Omitting that part of the quote deliberately distorts the full meaning of the statement.
13. MLBP uses Charles of the Ritz Group, Ltd. v. Quality King (Response Pg12 ¶4) to announce that "disclaimers…are generally ineffective". What they omitted was a 2nd Circuit statement from another case where the Court of Appeals stated (referencing Charles of the Ritz Group):
Such disclaimers might be effective to cure a minimal or moderate amount of confusion, but a case involving more substantial confusion might require more than the simple "not affiliated" language ordered by the district court in this case. See Charles of the Ritz, 832 F. 2d at 1324 (approving, in a case involving "substantial confusion," the district court's requirement that "the disclaimer be prominent and also indicate that the two companies were competitors, rather than allowing the current ambiguous wording 'not related to'").
The 2nd Circuit in Charles of the Ritz actually approved the use of disclaimers.
14. MLBP asserts Plaintiffs show no "severe emotional distress" (Response Pg20 ¶2) but cites no authority for this observation and does not present any credentials as to the expertise of MLBP to make such a pronouncement. The "evidence" is the Trademark Page on the web site, www.tabberone.com. MLBP believes that all persons who are threatened by them will simply comply and become passive. There is no evidence that when threatened, someone can't suffer severe emotional distress and still fight back, and fight back hard.
15. The Trademark Page of the web site was started during the fight with M&M/Mars concerning the use of their licensed fabrics. While involved with M&M/Mars, the Plaintiffs discovered many other people who had suffered at the hands of VeRO members for similar unfounded offenses. The Plaintiffs were using the internet as an information source. Since information about trademarks and copyrights was so scattered, the Plaintiffs decided to post it on the web site for others to read and use if they so desired. This began out of anger over the bully tactics being employed by corporate lawyers. It turned out, that once confronted with actual legal action and lengthy defenses against their tactics, these same corporate lawyers were eager to settle.
16. Through the Trademark Page on the web site, the Plaintiffs found themselves being contacted by others with similar problems. One such person, the owner of Monster Patterns, is now in federal court against McCalls and Simplicity for falsely claiming he infringed on their copyrights and trademarks. His story, with briefs, is on the web site. Another, known as Scrungee1, used arguments from the Trademark Pages to back down Suzie's Zoo and National Football League Properties, both of whom terminated eBay® auctions of hers only to reinstate them after reading her arguments. Suzie's Zoo even thanked her for keeping them abreast of the latest trademark laws. (See Attachments #1, #2,)
17. As a result of the law suit, not the web site, the Plaintiffs were contacted by Fox 31 News. The press release was a result of information forwarded to the Plaintiffs. Enjoying the discomfort of someone who inflicted intentional and unwarranted harm, as MLBP did, is natural. It does not replace the lost sleep, concern over livelihood, frustration, lack of appetite, time lost, and companionship lost. While there may be enjoyment in the Trademark Page, it is revenge as well, and that is the motivation.
Good Faith Belief
18. A "good faith belief" (Response Pg 5 #18), for a lawyer, must be founded in experience, common sense, and case law. "Good faith belief" is a legal term of art, and in both the civil and criminal law a determination of good faith is tested by an objective standard. The 10th Court of Appeals stated in 1999:
Lindsay argues that the referenced instruction conflicts with our decision in United States v. Ratchford, 942 F.2d 702 (10th Cir. 1991). In Ratchford, a bank fraud case, the defendant-appellant challenged the district court's failure to include, in its jury instruction on good faith, language indicating that a "[d]efendant's belief that he was acting in good faith need not be rational nor reasonable if [d]efendant's belief [was] truly held." Id. at 706. We rejected this argument, concluding the district court's good faith instruction adequately stated the law and was "sufficiently broad to include beliefs not rationally or reasonably held." Id. at 707 (citations omitted). Lindsay apparently incorrectly interprets Ratchford to hold that a good faith belief that is irrationally or unreasonably held can always provide a defense to a charge that requires proof of intent.
19. Fed. R. Civ. P 11(b)(2) provides that where the legal theory underlying the claim for relief is not warranted under existing law, an attorney must investigate whether the claim is supported by a non-frivolous argument for the reversal, modification, or extension of existing law. See Eastway, 179 F.3d at 254. At no time has MLBP projected any argument for the reversal, modification, or extension of existing law.
20. Under Fed. R. Civ. P 11(b)(1), an attorney's subjective good faith belief will not in itself preclude a finding that the claim has been presented for an improper purpose, Eastway at 254, particularly where it is "patently clear that a claim has absolutely no chance of success under existing precedents" or where the party fails to allege, much less produce credible evidence, that it has sustained a legally cognizable injury. Id. at 255 (emphasis added)
21. The good faith belief requirement has been defined as a state of mind which is based on good faith under circumstances which justify such belief. The belief must be reasonable. Akers v. Allaire, 17 Kan. App. 2d 556, 558, 840 P.2d 547, rev. denied 252 Kan. 1091 (1992).
22. What is reasonable for the average person is not reasonable for a professional. A doctor does not take a patient's statement of abdominal pain to mean the doctor is to immediately schedule an appendectomy. The doctor conducts tests, x-rays, scans, and other tests before proceeding. An automobile mechanic who immediately replaces the head gasket because of a complaint of a knocking noise would soon be out of business. The mechanic runs diagnostics and conducts test drives first.
23. A lawyer is no different. A lawyer cannot take action simply because he or she perceives an infringement. The case histories are very clear on the subject yet MLBP chose to ignore them.
24. MLBP trashes the notion of "Fair Use". To read the arguments, MLBP can conceive of no instance where the use of the Club's trademarks would be fair use. At least none were offered while rejecting all of the examples given.
25. In The Rock and Roll Hall of Fame and Museum, Inc. v. Gentile Productions, 134 FR.3d 749 (6th Cir. 1998) the court ruled a photographer using on a poster for sale the image of the Museum as well as the name of the museum was fair use, despite the fact the museum had trademarked both. (see attachment #5)
26. Fair use was also found in Wonder Labs Inc. v. Proctor & Gamble Co., 728 F. Supp. 1058 (S.D.N.Y. 1990), involving the term DENTIST'S CHOICE for toothbrushes. There, the court held that even though the term was prominently displayed in the defendant's advertisements, simply drawing attention to the phrase was not enough -- attention had to be drawn to the words as a source of product.
27. Another key statutory fair use case, WCVB-TV v. Boston Athletic Association, 926 F.2d 42 (1st Cir. 1991), involved the use of the registered trademark BOSTON MARATHON by a television station in connection with its coverage of the event. This case highlights the importance of context in a fair use determination.
State Claims and Perjury Claim
28. The Plaintiffs contend that the actions terminating the auctions were unjustified. The Plaintiffs contend MLBP took that action knowing, or reasonably should have known, the actions were not supported by law and case histories. MLBP keeps stating it has the right to protect the Club's marks. And it does. It also has the obligation to investigate and be sure before doing harm. The Plaintiffs received an unsolicited email from an Ashley Weller (see attachment #3) who forwarded to us a response she had received from MLBP. Seems she had reported someone on eBay® using licensed fabrics to MLBP. Bryan Day responded to her that "We are currently discussing internally how to handle these matters." If MLBP's position on the use of licensed fabric was so firm and so correct, then why did they stop terminating auctions using licensed fabrics after they found themselves in federal court?
29. In addition, the Plaintiffs are not seeking criminal or civil convictions on the subjects, they are seeking a declaratory judgment that the actions of MLBP constitute those offenses. Further court actions, if any, would have to be undertaken, most likely involving a trial, in order to complete the action.
30. The state and federal counterclaims made by MLBP are invalid in that they are incomplete and are addressed in a Motion For Dismissal.
31. The Plaintiffs believe that since MLBP based its actions solely upon the eBay® listings (Response Exhibit A-1 E & F) that those exhibits, plus the pleadings, should be sufficient for the Court to render a decision on either a summary judgment or a declaratory judgment. Oral arguments are not necessary.
Respectively submitted this 28th day of July, 2003
Certificate of Service
Steven M. Kaufmann