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Firm Attorneys Named “Super Lawyers” and “Rising Stars” in 2020 Florida “Super Lawyers” Magazine

Firm Attorneys Named “Super Lawyers” and “Rising Stars” in 2020 Florida “Super Lawyers” Magazine


Congratulations to Firm Partners, Peter Matos, Jennie Malloy, John Cyril Malloy III, and Oliver Ruiz, on being named to this year’s list of SuperLawyers, and to Firm Associates, W. John Eagan and Jessica Neer McDonald, on being named Rising Stars. Of note,  Mr. Matos, Mr. Malloy, and Mrs. Malloy, have been named Super Lawyers for no less than ten years. Relying on a patented process of nominations, research, peer evaluation, and final selection of less than 5% of all attorneys, this Thompson-Reuters company produces one of the more reliable attorney rankings available.

Instagram – The Subject of Dichotomous Copyright Cases

In early 2018, Stephanie Sinclair, a professional photographer brought a copyright suit against Mashable, Inc. and its parent company, Ziff Davis, LLC. Stephanie alleged the defendants infringed on her copyright regarding one of her photographs at least because Stephanie posted said photograph to her Instagram profile wherein Mashable then displayed the photograph on one of their articles.

In discovery, Mashable created an article, and displayed Stephanie’s photograph as part of the article by virtue of embedding the photograph from Stephanie’s Instagram. It is critical to note, as opposed to directly downloading and posting and/or copying and pasting Stephanie’s photograph to Mashable’s article (which may otherwise be knowing as uploading), Mashable embedded her photograph to the article via an Instagram interface.

From the standpoint of this case, embedding may be defined as a simple process wherein a webpage author can display an image, video and/or other media source to the author’s webpage by virtue of directly linking the source of such media. The process of embedding technically allows for the author’s website to display such media without the author’s website needing to “host,” own, or in some cases, have a license for the media.

An example of embedded media may be found here. Note, that upon hovering over or selecting embedded media, a user may be directed to Instagram’s webpage or have Instagram’s information displayed above such media.

The case (which can be found here) was ultimately dismissed in full albeit many arguments made by Stephanie. The ruling came generally from the following discovery: (1) Instagram’s terms and conditions state content posted to Instagram grants Instagram (and subsequently Instagram’s embedding interface) a non-exclusive, fully paid and royalty-free, transferable, sub-licensable, worldwide license to such content, (2) Stephanie agreed the above portion of Instagram’s terms and condition and (3) Mashable properly utilized Instagram’s embedding interface to display Stephanie’s photograph. Thus, a generalized conclusion could be made that Mashable was not in fact infringing on Stephanie’s copyright as Mashable was utilizing a photo licensed by Instagram and interface owned by Instagram.

Now recently, a similar suit was filed by Elliot McGuken, a photographer who took a photo of a lake and posted the photo to his Instagram page. He found himself in a near identical situation to Stephanie wherein the day after Elliot posted the photograph, he found the photo displayed on a Newsweek LLC, article. The suit outlines the fact that Elliot is suing for copyright infringement and the fact that Newsweek properly embedded Elliot’s photograph from Instagram.

In contrast to Stephanie’s case, Elliot’s case was not dismissed in full and Elliot may have an opportunity to legally claim prayer for relief in form of damages, which may be monetary. Reportedly, an Instagram representative has made comment stating that the use of their embedding interface does not directly extend Instagram’s license of content to those seeking to utilize the interface, which creates a sharp contrast for the cases as described above.

More information is sure to emerge on not only the status of Elliot McGuken vs. Newsweek, LLC, but also the use of Instagram’s embedding interface and possibly the copyright implications that may arise from its use.

Instagram is the one of the largest photograph and video-sharing social media platforms in the world. As Instagram releases more information on the subject, it is sure to be a topic for online news, blog or media outlets to pay close attention to in order to ensure compliance with copyright laws, and a subject for photographers who use Instagram to follow to ensure their rights are protected.

Supreme Court Rules on Viability of “Defense Preclusion” in Trademark Case

Nearly twenty years of trademark litigation between Marcel Fashions Group and Lucky Brand Dungarees resulted in a Supreme Court decision, which ruled that the principle of claim preclusion does not bar Lucky Brand’s reliance on a new defense, particularly given the evolving facts and issues that can arise in a trademark dispute. In the case under review, Marcel alleged that Lucky Brand infringed on Marcel’s “Get Lucky” mark through its use of “Lucky” in violation of a 2005 injunction (which followed the settlement of a 2003 action between the parties, with certain claims being released). The Supreme Court ruled that Lucky Brand was not precluded from asserting a defense based on the release in the 2003 agreement even though it had not pursued that defense in a prior action, because the defense can only be barred if the causes of action are the same, or “share a common nucleus of operative facts.” Finding that the prior action did not share a common nucleus of operative fact, the Supreme Court reversed the decision below and ruled that Lucky Brand could rely on the defense in the most recent action.

This case marks the third round of litigation between the parties. Marcel initiated the first round in 2001 with an allegation that Lucky Brand infringed on its “Get Lucky” trademark. A settlement was reached in 2003, which stipulated that Lucky Brand would refrain from using “Get Lucky”. In 2005, Lucky Brand initiated the second round, alleging that Marcel copied its designs and logos. Marcel filed multiple counterclaims, almost all relying on Lucky Brand’s continued use of the “Get Lucky” mark in violation of the 2003 agreement. Lucky Brand moved to dismiss Marcel’s counterclaims on the theory that they were barred by a release provision in the 2003 agreement; this was the only time Lucky Brand invoked the release defense prior to the current case. The 2005 action concluded with the district court permanently enjoining Lucky Brand’s use of “Get Lucky.” However, as pointed out by Justice Sotomayor in the Supreme Court’s decision, the injunction did not mention Lucky Brand’s use of other marks or phrases containing the word “Lucky.”

Marcel filed the most recent case in 2011, alleging that Lucky Brand violated the 2005 injunction due to its use of the “Lucky” trademark. The central issue became whether Lucky Brand’s failure to litigate the release defense in the 2005 suit barred it from invoking the release defense in the most recent action. The Second Circuit held that Lucky Brand was unable to assert the defense due to the principle of claim preclusion, which prevents parties from raising issues that could have been raised and decided in a prior action–even if they were not actually litigated. However, the Supreme Court reversed on May 14, 2020, finding that a defense can be barred only if the causes of action are the same, or “share a common nucleus of operative facts.”

The Supreme Court ruled that the 2005 and 2011 cases do not share a common nucleus of operative fact because, while the 2005 action depended on Lucky Brand’s use of “Get Lucky,” the case under review did not. Rather, the 2011 action alleged only that Lucky Brand infringed by using their own marks containing the word “Lucky.” The Court explained that claim preclusion generally does not bar claims predicated on events that postdate the filing of the initial complaint, and highlighted that this principle “takes on particular force in the trademark context, where the enforceability of a mark and likelihood of confusion between marks often turns on extrinsic facts that change over time.” Because the two suits involved different marks, legal theories, conduct, and time frames, the Court found that they do not share a common nucleus of operative fact. As such, the Court held that, under the facts of this case, claim preclusion would not bar Lucky Brand from relying on the release defense in the most recent action.