Thread by @AkivaMCohen

Hey, litigation disaster tourists: my trials are done or settled and I'm back to a much more normal schedule ... which means we have some time to live-read the TSR v. Wizards of the Coast lolsuit today. Will have to break this thread to get Littler Girl up and to school, but ...

Let's start here. They've filed the case in the Eastern District of North Carolina. This is an interesting choice, given that WOTC is headquartered in Washington and registered as an LLC in Delaware, for a value of "interesting" that incorporates "clownishly ignorant"

As you all may remember from such prior hits as "You Can't sue the Governor of Wisconsin There" and "No, Mr. Biss, that's the Wrong State" ... this is not, so much, a thing.

To recap: there's a concept in the law called "personal jurisdiction" which, well, makes a whole lot of sense, generally speaking. It says you can't be hauled into a court that doesn't have a legal basis to have authority over you.

So if you live in Indiana, I can't just file a lawsuit against you in NY and force you to come defend yourself here.

Generally.

Of course, that's a problem if you're doing things that harm me in NY, so states have enacted "Long Arm Statutes" to fix that issue

Long Arm Statutes extend a state's jurisdiction over people who have engaged in certain types of conduct that make them subject to suit even in a state where they don't live.

For example, if that Indiana native drives into NY and gets into a car accident here ...

The NY victim doesn't have to go to Indiana to sue. The case arises out of a NY-based tort, so it's fair to sue you in NY.

I'm not going to run through the various long-arm exceptions, because they're not relevant here, but they exist.

Anyway, the rules for suing corporations are pretty simple:

1) You can sue them where their conduct occurred or (simplifying) caused harm, under a long-arm statute
2) You can sue them where they're incorporated; and
3) You can sue them where they're headquartered

Back to that highlighted image:

TSR is suing in NC. That's not where WOTC is incorporated or located.

And they're suing for a Declaratory Judgment of Ownership. So they're not alleging they were harmed by anything WOTC did.

So ... um ...

This court to TSR, if WOTC asks for the case to be dismissed as filed in the wrong court

Also, let's unpack that declaratory judgment thing. Most lawsuits are about things that people did to you, or are doing, that cause harm. So you want either money (to pay you for the harm that already happened) or an injunction (to stop it), or both

But sometimes, two parties have a live legal dispute about what their legal rights *are.* Say ... two farmers both claim the same strip of land. They can actually go to court and ask for a ruling: they want the court to declare who is right and who is wrong.

Here, TSR is saying (and we'll get there): "WOTC claims it owns the trademarks in various old d&d logos. We think we can prove we do. Tell us we're right and they're wrong"

So they're not alleging any harm. Just asking for a declaration of rights

Anyway, we haven't gotten past the preliminary paragraph - not even to the first allegation - and this case is fucked already. Impressive!

Let's see who pulled this feat off

OK. Interestingly enough, this firm appears to have an actual, functioning IP practice (by which I mean that it has a lawyer who appears competent to handle patent work and - and this is critical - *didn't* copy the text of its firm's "IP Practice" page from an encyclopedia)

Justin Humphries, in contrast, is primarily an insurance litigator, which makes it highly likely he hasn't spent much time worrying about personal jurisdiction in his cases (you're always going to have personal jurisdiction in your home state over the company that insured you)

OK, morning break time. I'll be back

And I'm back. As others have pointed out, this case caption ALSO says it was filed in the DISTRCIT of North Carolina, which is an indication that these folks don't play in federal court very often

OK, with all that out of the way, let's see what this case is about.

Uh... hunh

OK, a lot going on here.

First, they're apparently seeking a DJ on both trademark AND copyright in "certain letters, words, and images" and I can't even begin to tell you what a bad idea that is

Most fundamentally, it ups the stakes ENORMOUSLY. The prevailing party in a copyright DJ action can be awarded its attorneys' fees. So TSR has taken "we're filing a shaky suit in the wrong court using a small NC firm" and layered onto it "& we'd like to pay your attorneys for u"

Second, you can't copyright words or letters, so they must be talking about images. But the images in question, per their own intro, were (1) created by an entirely different company ("TSR Inc.") and (2) sold, along with the copyrights in them, to WOTC in 1997

I understand that their general theory on the trademarks is that WOTC lost the rights by stopping use of the marks, and New TSR can therefore pick them up (which is potentially a thing). But ... that's not how copyright works, at all.

The court can't just declare you, a third-party who had no part in creating the copyrighted works, the "owner of the copyright".

Even if you're the original artist (and "TSR LLC" -the newly formed entity suing - is not that) you can't "recapture" a copyright you sold to a third party just because they haven't been using it.

Now, TBF, I haven't read the rest of this complaint yet. So maybe there was some contractual reversion provision that covers this (haha no chance, but who knows) that would make this claim not crazy. But barring that ... wow.

So this is, in theory, not a crazy argument, depending on the facts. Time for a mini trademark law class

Trademarks exist to protect CUSTOMERS, not companies. Trademark rights are about making sure consumers know that when they are buying a "Coke" it's a product coming from the "Coca-Cola" company, with whatever attendant quality information that knowledge conveys

You have expectations (good or bad) for "Hershey's" products - therefore, we don't want someone marketing "Heshey's" chocolates and confusing a whole bunch of people into buying their products because they thought they were "Hershey's"

So that means that trademarks only have validity as long as they have some level of consumer identification between "product with that mark" and "company that makes the product"

You're probably most familiar with that concept in the context of "genericide" - trademarks that lose protectability when they stop being "the name of a particular product" and start being the name of a product category.

Like "Frisbee" and "Thermos" and "Dry Ice"

All of those were once trademarks - for flying discs, vaccuum insulated flasks, and solid carbon dioxide - until they became so synonymous with the product that they stopped identifying a particular manufacturer. That's why you get silly things like this

So if a company registers a trademark - say, "SaniFlush" - and then stops making the product and lets the trademark registration expire, and customers no longer associate that name with the manufacturer ... someone else can launch a new product with that name

That's essentially what TSR LLC (which I'll just call New TSR from now on) is arguing: That TSR Inc (Old TSR) sold a bunch of marks to WOTC, but WOTC stopped using them, nobody connects them to WOTC, and now New TSR wants to use them and WOTC is threatening to sue

Really? Really really?

So ... after alleging that WOTC isn't using the marks, you plead that they told you they've licensed them, AND that you know that there are actual companies using the marks in commerce right now?

I mean, that kills any trademark abandonment claim dead, don't it just

Also, you've very specifically pled that the rights to those marks and images were sold to WOTC. That ends any question about the copyrights, and should give you a baseline to understand that anyone using those marks is doing it under license. They don't need to prove it to you

If you want to roll the dice that they're lying, go ahead.

Also, and this is really a side point, but we're two pages and 13 paragraphs into your complaint, and I have no idea which marks you're complaining about and why

If I had to draft this complaint (and thank god for running my own practice, because I'll never have to be that guy) it would look something like this:

WOTC asserts rights in the following marks, which it purchased from Old TSR in 1997: A, B, C, D

BUT ...

WOTC stopped using Mark A in commerce in 1998. Since then, no products have been made or marketed, etc, etc.

As such, on information and belief, consumers no longer associate Mark A with WOTC or Old TSR products

We really like those marks - not because we want to confuse consumers, but because they're great - and want to register and actually use Mark A. But WOTC just wants to keep it locked up forever, ...

It's not complex. Why isn't this complaint structured that way??

Back to the complaint, and More Adventures in Not Understanding Personal Jurisdiction

No, "maintaining an office in the state" doesn't get you there. I mean, it's just SCOTUS saying that. Maybe the Eastern Distrcit of NC will disagree

BTW, two guesses on when New TSR registered to do business in NC

If you guessed "a week ago" come collect your prize

OK, this is genuinely surprising. They're saying they received an assignment of these applications (i.e. someone else filed them and then assigned them to New TSR). Let's see who that was. BRB, just gotta check the PTO

Ah. It was Justin Lanasa, individually, who filed the initial applications, and then assigned them to the LLC. Let's look at these trademarks, shall we?

Actually, lets not. There are too many. Here are more.

All of these, btw, were filed by this NC firm, which explains why they're the ones doing the litigation

Wizards of the Coast did NOT like that ... understandably

Oh my freaking God, it gets stupider

Y'all, WOTC didn't say it had "licensed" third parties to sell stuff using the old marks.

IT was CURRENTLY selling the old works on third-party websites.

And holy shit, New TSR went around offering to license other people to use the trademarks Old TSR sold to WOTC

DISTRIBUTORS ARE NOT LICENSEES

I feel like I'm having a stroke. Is this what a stroke feels like?

This is just astoundingly stupid in all directions. It's walking up to prime-Mike Tyson, kicking him in the knee, and then standing there going "well, you gonna do something about it or do I need to punch you in the balls?"

There's no universe where this ends well for them

And also, what the hell is the theory here on copyright, @humphriesfirm? (Yes, this has gotten bad enough that I feel like tagging them in). Your client made a marketing post using copyrighted artwork they don't own. What on earth are you thinking?

Seriously, please please please call your malpractice carrier. You're in way over your heads here and your client will have claims against you for the attorneys fees they're going to have awarded against them since you decided to bring a copyright DJ action.

If I were you, I would be racing to withdraw that DJ claim before it's served. But also, find yourself a competent copyright litigator to talk to, because that's not your guy. And I say that with respect, because I'm sure Mr. Nugent is a fine patent lawyer.

And?

See, now these are viable arguments.

On the other hand, that doesn't mean that New TSR gets to use it. And also, it appears to be factually, well, wrong

I mean ... it was an Old TSR logo. That means WOTC bought the rights.

And it was incorporated into a (presumably) copyrighted TSR book from the 1970s. Unless you've got hard evidence that Greg Bell didn't sign a work for hire agreement, you're dead in the water

Copyright registration creates a rebuttable presumption that the registrant owns it and the copyright was valid. That means it will be New TSR's burden to show Greg Bell definitely owns the copyright himself, not WOTC burden to find an assignment or work for hire agreement

Same goes for this one - and the "Upon information and belief" language tells me you're not expecting to get testimony from this woman that she is the sole copyright owner

--record scratch--

I'm sorry, what? That's the end of your factual allegations? Really?

No, really, that's it?

Like ... my guys. You never even mentioned your theory of why WOTC doesn't own these three images in your complaint. You're just sort of throwing it out there.

And holy hell, that's really all of it?

Yes. It really is. I.

Wow.

So, yeah... this is a shit-sandwich of a complaint. Maybe, maybe, maybe a real issue buried in there about continuous use, but here's the thing: New TSR's attempts to get these marks are SPECIFICALLY because they still resonate with the relevant consumers. There WILL be confusion

This is not a winnable battle for them and they should walk away now.

But they won't