INFRINGEMENT SUIT OVER LAWYER’S ADVERTISING CARTOON PROCEED

NYLJ 6-8-07

4. INFRINGEMENT SUIT OVER LAWYER’S ADVERTISING CARTOON PROCEEDS

4. You may have seen it a thousand times and leafing through the Yellow Pages it would seem as innocuous as all those subway ads for Fitzpatrick & Fitzgerald or Fitzwilly or Fitzwhatever, you know?—the one with the fightin’ leprechaun? Or that guy with the 1970’s mustache? It probably won’t work for the blind lady or scales: too generic.

But the doodle of a guy wrapped in bandages in a hospital traction bed has been Newmark & Newmark’s trade advert since 1988, and registered since 1990. Howeer, the Berne Convention Implementation Act, which eased copyright notice requirements, was also 1988, which meant that their usage/image pre-dated it, briefly.

And that was where Ronai & Ronai, another personal injury firm felt they had enough wiggle room to put out their own version of the hapless patient. As the image had been published without copyright notice, it appears possible for them to get by without trademark infringement. An N&N are based in Rockland and R&R in White Plains, it ended up in the lap of SDNY, where the R&R SJ was summarily denied. N&N’s 1990 registration and steps taken in the intervening years cured the earlier distribution. SDNY approved as it was within the allowance of pre-Berne, that steps were taken within 5 years of initial publication. And as he had the discretion to reduce damages to $200 if he found the infringement were unwitting, it was his urging that the parties all settle as amicably as possible.

After all, they wouldn’t want to injure each other’s reputation, would they?