Author Archives: Mark Kaufman

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About Mark Kaufman

Mark Kaufman is a lawyer and founder of Kaufman and Kahn, LLP in New York New York.
EMAIL: kaufman@kaufmankahn.com
BIO: About Mark
PHONE: (212) 293-5556

Cybersquatter Gets Swatted Down
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Cybersquatter Gets Swatted Down | Mark Kaufman

They said it couldn’t be done, but Kaufman & Kahn recently not only won summary judgment against a prolific cyber-squatter, but also won an award of statutory damages and attorney’s fees. Gregory Ricks, a renowned cyber-squatter, had registered the domain name justbulbs.com, and he’d done that because, frankly, my client named JUST BULBS had failed to renew it. So arbitration was commenced.

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Mr. President: May I Say Something?
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Mr. President: May I Say Something? | Mark Kaufman

As readers may recall, we previously wrote about the confidentiality agreement imposed by then-candidate Donald Trump upon those who worked in his campaign. In that agreement, the workers literally were required to consider, as the definition of “confidential,” anything that Donald Trump determined, in his sole discretion, to be confidential. Now, he is President, and he apparently thinks that’s still true (presumably without doubting whether it was true before he was President).  Trump seems to see his view of confidentiality (and non-disparagement) is enforceable upon any and all U.S. Government employees — including ex-FBI Director James Comey, who did not sign any such confidentiality agreement, nor could be compelled to do so. Apparently, that’s why he threatened to bring a lawsuit against the former FBI director on the basis of “leaking.”

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Hotel California: A Great Song, a Great Title, But a Great Hotel?
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Hotel California: A Great Song, a Great Title, But a Great Hotel? | Mark Kaufman

Here’s the case of a dark, desert highway with, perhaps, a cool wind in your hair:  The Eagles Ltd v. Hotel California of Baja. It concerns a hotel in Mexico that had been opened in the 1950s under the name Hotel California. The owners decided to stop using that name and retitled the property “The Todos Santos Hotel,” catering to American tourists. Recently it was sold again, and the new purchasers went back to using its old name — and proceeded to market it as the “legendary Hotel California.” Promotional literature contained strong allusions that the hotel was the inspiration for the song.

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A Tale of Three Appraisals
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A Tale of Three Appraisals | Mark Kaufman

Once upon a time, not too long ago, there was a contract and a client. The contract gave the client an option to buy a business based on obtaining three appraisals. After the first two appraisals were for the same amount, the seller told the client that he would waive the third appraisal. The seller tendered a contract of sale for $3 million. A couple of weeks passed, the attorneys exchanged suggested revisions, but on the day before the deadline to exercise the option, the seller sent back the contract with a surprise: He has changed it, increasing the price of the sale by $500,000, based on a third appraisal that he had obtained (despite his stated intentions).

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A Friend of a Friend Said… You Should Actually See a Lawyer
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A Friend of a Friend Said… You Should Actually See a Lawyer |  Mark Kaufman

The other day a client sent me two pictures. One was of a someone else’s textile design, and the other was my client’s own rendering of it. The client said “We copied our design from their design. Can you tell us whether it’s infringing?” Rather than respond to the email, I called my client and reminded him about the rules of discovery:  although any communications I have with my clients—including communications in which a client admits to having copied something—are protected by attorney-client privilege, mistakes can happen when even privileged documents are inadvertently produced in discovery in the event of a lawsuit.  Also, if he inadvertently shares those communications with third parties, the attorney-client privilege goes out the window.  So, saying incriminating things in emails (or texts or worst of all social media) can live forever in a way that’s inconvenient if not destructive.

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“UL” is Not in the Public Domain. Don’t Mess with Certification Marks!
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“UL” is Not in the Public Domain. Don’t Mess with Certification Marks! | Mark Kaufman

What two words are worth $500,000 each? In the case of HOVERBOARD (R) re-seller The Space Chariot, those two word are “UL Certified.” (Yes, HOVERBOARD is a federally registered trademark; while it appears to be on the road to becoming generic, that’s a topic for another day.) Why they are called HOVERBOARDs is beyond me. They clearly have wheels that touch the ground, but if kids (or those “young at heart” who prefer not to use their own horsepower) want to use their imagination, far be it for me to intervene. Most people have seen these devices on the street and have figured out that operating them relies on tilting them with your body weight, much like a Segway scooter. But unlike the Segway, these inventions have a history of bursting into flames at the most inconvenient of locations, which is why so many airlines have banned them from flights.

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Take the Gig, But Lose the Content?
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Take the Gig, But Lose the Content? | Mark Kaufman

Parties, events, and weddings are the lifeblood of working musicians. It’s money in the hand, as opposed to what might come out of royalties down the road. This incentive is what led a client to reach out to me recently; he had a great gig booked, was looking forward to it…and then the contract came. The event is being hosted by a large and well known corporation, at a third-party venue, and the pay is good enough to warrant calling an attorney. The contract not only requires each performer to waive their rights of publicity/privacy (in their name and likeness, so photos posted on the internet won’t garner a lawsuit), but also provides, in essence, that “you allow us to record your performance, and you grant us an irrevocable worldwide in perpetuity license to use your performance.”

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Breitbart’s Biggest Enemy is the Truth…Including Todd Bigelow’s Copyright
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Breitbart’s Biggest Enemy is the Truth…Including Todd Bigelow’s Copyright | Mark Kaufman

A lawsuit was recently filed in the Southern District of New York that isn’t exactly fascinating for its merits, but it does speak to the perennial issue of intellectual property rights: the erroneous but popular idea, even among commercial users, that “if it’s on the internet, it’s free to use!” In Bigelow v. Breitbart News Network, LLC, photographer Todd Bigelow is suing Breitbart News over its use of one of his photographs without his permission. In addition to garden-variety copyright infringement, Bigelow also sued under the Digital Millennium Copyright Act, because Breitbart had removed the identification of the artist and its copyright from the image.

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5Pointz: The Intersection of Intellectual and Real Property
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5Pointz: The Intersection of Intellectual and Real Property | Mark Kaufman

Anyone who has had the pleasure of riding outbound LIRR trains from New York’s Penn Station over the years probably remembers a memorable sight: the 5Pointz graffiti artist showcase emblazoned on the exterior walls of some aging factory buildings in Long Island City. Having reached at least a tacit deal with the owner of the buildings, the space provided a venue for graffiti artists to produce photo-realistic murals of hip-hop legends as well as the familiar practice of “tagging,” which consists of writing the artist’s nom-de-guerre with highly imaginative and stylized lettering.

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No Trademark? No Problem
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No Trademark? No Problem | Mark Kaufman

An interesting case was recently decided in the Southern District of New York called Charisma World Wide Corp v. Avon Products. It appears to be a case over intellectual property rights, but decided without relying on intellectual property law. The case was over a technical analysis as to whether the court had subject matter jurisdiction to even listen to the complaint. It hinged on the court’s analyzing whether the conduct that the plaintiff was complaining about had a substantial effect on domestic (that is, U.S.) commerce. Charisma World Wide Corp. (Charisma) is a Panamanian company that sells “renowned products” in Panama under the trademark “Charisma.” America’s own Avon, of door-to-door sales, fame, had been selling similar products in Panama, also called “Charisma.” Both products are cosmetics and, to a casual observer, seem like exactly the same thing.

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It Takes All Sorts of Torts, Indeed!
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It Takes All Sorts of Torts, Indeed! | Mark Kaufman

A copyright dispute late last year forced a holiday play to go dark before the Rockefeller Center tree was ever lit. The suit centers around the play Who’s Holiday by Matthew Lombardo. No, the dispute is not over the apparent typo in the play’s name. Rather, it is that the defendant’s play is based on the character Cindy Lou Who from the beloved Dr. Seuss book The Grinch Who Stole Christmas. Whether the play is an unauthorized derivative work (from the perspective of the Dr. Seuss estate) or a parody (from the perspective of the playwright) is what the court ultimately may need to decide. Who’s Holiday is a profane, one-woman show that documents the life of Cindy Lou Who after the denouement of Grinch. It finds Cindy living in a trailer park, after having married the Grinch, whom Cindy had murdered (allegedly in self-defense), before the curtain lifts.

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E = Who Are You?
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E = Who Are You? | Mark Kaufman

Readers of my blog know that I’m generally in favor of enforcing copyright. If you’ve got the goods on someone and those are your rights, you should be entitled to collect for it — or at least stop it. Likewise, if you’ve been called out for infringing, the right thing to do is usually to pay the pound of flesh required of you. But how does the would-be defendant know whether paying it will actually solve the matter? A client recently received a demand letter from a licensing agency for allegedly infringing on a copyright owned by a newspaper in Europe. The notice was referring to my client’s use of, let’s say, the famous image of a French boy running with a baguette on a relatively private — and certainly a non-profitable — website. In this case the pound of flesh was only a couple hundred bucks, but I was motivated by the sense that the purported licensor was a greedy, undeserving troll until proven legitimate.

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To Boldly Go Where No Nerds Have Gone Before…
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To Boldly Go Where No Nerds Have Gone Before… |  Mark Kaufman

To boldly go where no nerds have gone before… In Paramount Pictures Corp. v. Axanar Productions, Inc. the U.S. District Court for Central California was presented with a case of fan fiction gone awry. A small studio called Axanar Productions set out to produce a piece of Star Trek fan fiction centered around an obscure character named Garth of Izar. It was to be a feature-length film set as a prequel to the 1973 original series. In order to finance the production, the studio hosted a crowdsourcing campaign that was successful in raising $1.1 million.

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Tequila or Not Tequila: A New Certification Mark is Born
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Tequila or Not Tequila: A New Certification Mark is Born | Mark Kaufman

Ironically, the same week that the president of Mexico declined to meet with the president of a formerly friendly nation because of various perceived (and perhaps actual) insults, the United States Trademark Trial and Appeal Board (TTAB) granted a decision in favor of a Mexican non-profit association of distilleries. The Consejo Regulador del Tequila was granted a certification mark for the appellation ‘Tequila.’ According to the U.S. Trademark statute, a “certification mark”

means any word, name, symbol, or device, or any combination thereof to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of such person’s goods or services ….
So the TTAB determined that, despite its most unfortunate location South of the Soon to Be Very Tall Border,  the Consejo Regulador del Tequila can control the use of the word ‘Tequila’ within the United States.

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“Anything Goes”? Not Necessarily
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 “Anything Goes”? Not Necessarily | Mark Kaufman

You might think that the inaccuracy of the following statement is obvious: “If it’s on the internet, it’s free.”‘ Still, many of today’s internet users, including business owners, seem to believe it and use what they download with litigious results. There are at least two lawsuits in the Southern District of New York—Veronina v. Scores Holding Company and Taylor v. 44th Enterprises, d/b/a Diamond Club Gentlemen’s Cabaret—that involve the unauthorized use of images downloaded from the internet. Specifically, dozens of women are suing over the use of their photos in advertisements for strip clubs and escort services. (Not surprisingly, both cases are brought by the same attorneys.)

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Creative Team Behind Broadway’s Jersey Boys Hit with Copyright Infringement
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Creative Team Behind Broadway’s Jersey Boys Hit with Copyright Infringement | Mark Kaufman

Big girls may not cry, but the creative team behind the smash Broadway musical Jersey Boys might be doing just Creative Team Behind Broadway’s Jersey Boys Hit with Copyright Infringement that. On November 28, a jury in Nevada federal court found that the musical’s creators were guilty of copyright infringement—to the tune of 10% of the show’s profits. Jersey Boys centers around the life and times of 1960s doo-wop group The Four Seasons. After retirement, Tommy DeVito, who was a founding member of the band, began work on an autobiography with the help of a ghostwriter (also known as an “uncredited co-author”) named Rex Woodward. After Woodward succumbed to lung cancer in 1991, DeVito changed his tune about who had written the unfinished book, claiming that he alone authored it. Further, he gave permission for it to be used as the basis for the musical that would become Jersey Boys.

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A Curious Case of Fraud and Bankruptcy
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A Curious Case of Fraud and Bankruptcy | Mark Kaufman

A new client came to me admitting that he’d been defrauded hundreds of thousands of dollars. While the most direct route would be to sue the other party now and ask questions later, it’s in my client’s interest to get a result that’s actually payable—not to mention that unnecessary litigation is not a good use of money. For his part, the debtor claimed to want to do the right thing and create an agreement that would allow him to pay the debt back over time. This led me on a law-finding mission to determine how my client might be impacted if the debtor later filed for bankruptcy. Would an agreement constitute a waiver of my client’s rights to hold the debtor liable for the fraud?

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Increased Rights for Whistleblowers in the Private Sector
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Increased Rights for Whistleblowers in the Private Sector | Mark Kaufman

A recent court decision in Kings County called Della Pietra v. Poly Prep Country Day School has expanded who can bring a cause of action under whistleblower provisions of the New York Not-for-Profit Corporation Law. While the case is significant, and potentially persuasive, it is not a binding precedent. The facts of the case are interesting. Della Pietra was working at Brooklyn’s Poly Prep Country Day School when an administrator, employees, students and alumni took a trip to Cuba, apparently for the stated purpose of “a learning experience.” Indeed. Pietra became privy to what really occurred in Cuba: underage drinking, smoking, and participation in prostitution. When she went to the Board of Trustees and reported what she knew, she was allegedly harassed, defamed and ultimately fired.

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Get It In Writing!
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Get It In Writing! | Mark Kaufman

Sometimes, in the heat of a new project or business opportunity, slowing down to make a written agreement seems boring, unnecessary, and even adversarial. When everything is going well, the parties can feel that reducing it to writing means they don’t trust each other. But an interesting, recent case illustrates exactly how important it is to “get it in writing”—and offers a lesson to anyone to confirm what each side expects in order to avoid a substantial misunderstanding.

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Trademarks: Register Early and Register Often
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Trademarks: Register Early and Register Often | Mark Kaufman

Recently a lawsuit over a prominent band’s name was filed in state court in Virginia. At first glance, the lawsuit has the ingredients required for an intellectual property case eligible for federal jurisdiction. So why is it being argued in state court? The lead plaintiff, Aston “Family Man” Barrett, began playing with Bob Marley and his band The Wailers in 1969. After the original band members dropped out, Barrett was the last remaining original member until he quit earlier this year. However, The Wailers did not miss a beat and kept touring all over the world.

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Trump’s Confidentiality and Non-Disparagement Agreement Is Not Terrific. Believe Me.
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Trump’s Confidentiality and Non-Disparagement Agreement Is Not Terrific. Believe Me. | Mark Kaufman

Recently Buzzfeed News published a reprint of part of a non-disclosure/non-disparagement agreement between Donald Trump’s campaign and anyone who works or volunteers for it — and it made me wonder just how enforceable it is. Under New York law, it’s pretty difficult to avoid a prohibition against sharing confidential information. The courts generally support the notion that if someone has information that’s confidential and proprietary (maybe even unique) to a company, the company should be able to protect itself, with very few exceptions. So, on its face, this agreement might be “fine.”

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Protecting Cannabis Trademarks
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Protecting Cannabis Trademarks | Mark Kaufman

Recently we met a client who wants to develop a brand for use in connection with a cannabis product, in one of the 23 states (and the District of Columbia) where it’s legal.  While cannabis is clearly a growing business, selling it is still a criminal offense in the eyes of the federal government.  So, the challenge is to protect a brand without the aid of the US Patent and Trademark Office (USPTO).   The USPTO reasons that federal trademark protection requires use of the trademark in interstate commerce, and interstate sale of marijuana violates the federal Controlled Substances Act.

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Leaving Your Job to Start Your Own Shop?
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Leaving Your Job to Start Your Own Shop? | Mark Kaufrman

{4:48 minutes to read} It’s exciting to find yourself in a place where you can start your own business—exciting and frightening. But, if you’re leaving a place of employment to start your own shop, it’s very important to be sure that your present employer is not inadvertently going to own a piece of the work that you do for yourself, or have a claim against you for taking clients. If you have a non-compete agreement in place, that would give a pretty clear sign that you couldn’t take clients whom you met while you were working for the employer. But even if you don’t have a non-compete agreement, you still have restrictions on what you can do, if you do it during your regular business hours and use your employer’s facilities.

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Are You a Nigerian Prince, or Do You Just Want My Money?
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Are You a Nigerian Prince, or Do You Just Want My Money? | Mark Kaufman

Attorneys beware: The equivalent of the so-called “Nigerian prince who has been trying to contact you” has found out where you work! Recently I received a referral for a potential client from another attorney. The first email from this potential client, whom I will call Mr. Jones, explained that he had matters pending in three different jurisdictions.

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Characters and IP Law: The Personalities of Stephen Colbert
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Characters and IP Law: The Personalities of Stephen Colbert by Mark Kaufman

When he was on Comedy Central’s The Daily Show and The Colbert Report, Stephen Colbert committed to a character that has the same name as his. The character is a greenback conservative who keeps an American shield under his desk—a character who popularized the word “truthiness” (yes, it’s a real word). When Colbert took over David Letterman’s job on CBS’s Late Night, he announced that he would retire the character and be himself.

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Atlantic v. Reddit: A Principled Stance or a Fool’s Errand?
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Atlantic v. Reddit: A Principled Stance or a Fool’s Errand?| Mark Kaufman

Atlantic Recording Corp. has filed a petition in the New York State Supreme Court seeking to compel the internet message board Reddit to reveal who posted a link that directed the user to a pirated version of a song that hadn’t been released yet. The recording is named “Heathens,” performed by a hip-hop duo named 21 Pilots, and is part of the soundtrack to the movie Suicide Squad. According to the papers Atlantic filed with the court, the leak resulted in substantial damages, because Atlantic was no longer able to execute its strategic promotional prerelease and, as a result, suffered a loss of sales. The filing seeks permission to subpoena Reddit in order to determine the IP address of the user who leaked the song. Atlantic argued that Reddit is the only entity that can tell who posted the link.

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The Top 5 Provisions That Should Be in Your Contract Agreement
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The Top 5 Provisions That Should Be in Your Contract Agreement | Mark Kaufman

When we negotiate contracts with large corporations on behalf of computer programmers, app developers, and website developers, it’s like playing chess with someone who’s very good at the gameyou have to assume that everything you write is going to be considered carefully. You’re not going to squeeze something by a big company; it has experienced, in-house counsel just for this purpose. Let’s assume it’s going to be an ongoing relationship and not simply one project. In that case, you want to have a master agreement that has general provisions, and a task order or Scope of Work (SOW) for each specific project.

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How (Not) to Handle a Disgruntled Client
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How (Not) to Handle a Disgruntled Client|Mark Kaufman

Let’s say I have a client who does landscaping. Their customer paid for part of the job by credit card and part of it in cash and was told to wait several weeks to see how things grow. A few days later, the customer emailed the landscaper:

This is a terrible job. I’m disputing the credit card charge. I also want a refund of the portion paid in cash. And if you don’t pay it back, I’m going to ruin you on social media.

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Domain Names: Use ‘Em or Lose ‘Em
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Domain Names: Use ‘Em or Lose ‘Em| Mark Kaufman

Recently a client of mine was approached by a company that buys and sells domain names. It was claiming to represent another company that wanted to buy my client’s domain name—but remain anonymous. I was intrigued and took to the internet to search through all of the new products coming out with names that were similar to my client’s domain name. I narrowed it down to one product that is sold by an extremely large company—a product that was 100% wholesome and was featured alongside great Americana imagery like people playing baseball, going out for picnics, and standing around in gazebos.

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