19
Oct/18

Today’s Pleading Quiz – What Do People Think When They See Pictures of Women on a Club’s Social Media Account


I think federal causes are tricky to plead in this one.

Defendant operates a strip club in Long Island.  Plaintiffs are 19 women, all of whom seem to be well-known professional models.  Defendant allegedly reproduced photos of plaintiffs on its Instagram (or other social media) accounts, and ‘intentionally altered’ the images ‘in order to make it appear that they worked at or endorsed’ defendant’s club.

The New York state rights of privacy and publicity causes are straightforward.

How would you plead false endorsement and false advertising?

Before you answer, read the decision embedded below.  There was a similar lawsuit involving models suing a sex club in Boca Raton, in 2016 (not the site of the 2016 INTA Leadership Meeting in Boca that year).  There is an interesting holding that allowed the models to base a false endorsement claim on an intent to commercialize their images (as opposed to basing false endorsement on ownership of a trademark). The decision also contains survey results as to what people think when they see pictures of women on a club’s social media account (spoiler – they think the women frequent the club).



16
Oct/18

Interesting Lawsuit: Bluetooth SIG v Fiat Chrysler re Use of BLUETOOTH in Car Communications System


 

Interesting case.  Bluetooth SIG licenses BLUETOOTH marks to entities that sell Bluetooth-compliant equipment.  Mere re-sellers seem to not need to pay license fees.  Defendant Fiat Chrysler utilizes audio components that themselves may be identified as Bluetooth-compliant, however Bluetooth SIG alleges that when defendant incorporates those components into the car’s system, the system itself may modify or alter the components.  Thus they are not mere re-sellers and thus the system needs to be licensed to identify itself as Bluetooth-compliant.



12
Oct/18

“a blood oath never to use the name Lynyrd Skynyrd again.”


until the tribute tour, and then the film.

From Justia’s summary:

A 1988 consent order settled a suit brought by plaintiff against past and then present members of the rock band known as Lynyrd Skynyrd, seeking to clarify each party’s rights with respect to the use of the name “Lynyrd Skynyrd” and their rights to make films about the band and their own lives.



3
Oct/18

Dr Martens v Yoox Net-a-Porter re Trade Dress


 



26
Sep/18

D Del. DJ Action: INSTAVOICE v INSTAGRAM for Voice Apps


Apparently Instagram’s API Brand Guidelines said that INSTA- formatives were cool.  See para 26 of the complaint.



26
Sep/18

Blockchain.io Responds to BLOCKCHAIN Trademark Lawsuit


I blogged the complaint filed by Blockchain Luxembourg against Blockchain.io here last week.

I have now been contacted by the head of communications for Blockchain.io, who asked that I post the following:

Paymium, that has been successfully operating a BTC/EUR exchange since 2013 and serving 170,000 customers, is currently closing its private ICO to accelerate the rollout of Blockchain.io. The public sale for this complementary cryptocurrency exchange service will start on September 27. 

The domain name Blockchain.io was registered by Paymium way back in April 2012 (https://www.whois.com/whois/blockchain.io), and the Blockchain.io project launch was publicly advertised in the press months ago. 3 days before the beginning of the sale, and a few weeks away from the official release of our platform, it thus comes as no surprise that we are challenged by some potential competitors, for obvious reasons. We condemn this approach that surely doesn’t comply with the crypto-community values. 

Moreover, Blockchain.io disputes the accusation of making false and misleading statements. What is at stake is, at first, the protection of our name, our reputation, and our loyal investors and customers. For these reasons, our lawyers will answer point by point the claims that have been made.

As for our ICO, we already provided early investors with the alpha version of our platform that is ready to be launched right after the public sale in November. The name blockchain.io is the legal property of Paymium and the public sale will start as planned on September 27.”



25
Sep/18

SDNY: Sick Boy v Chainsmokers re SICK BOY


Sick Boy Clothing, a South Dakota-based apparel company, owns a registration for SICK BOY.  Its website identifies musicians who wear SICK BOY clothing.  The Chainsmokers, a band, released a song entitled “Sick Boy,” and sells some merchandise using the term.



21
Sep/18

SDNY Lawsuit Over Use of BLOCKCHAIN Trademark – You Read That Right


 

 

Plaintiff, Blockchain Luxembourg, owns a federal trademark registration for BLOCKCHAIN and design, disclaiming  the word BLOCKCHAIN.  It provides blockchain-related goods and services, and operates websites at blockchain.com and blockchain.info.

It defines the marks in which it claims rights in this suit in para 24 of the complaint:

So yes, plaintiff disclaimed the word BLOCKCHAIN in its registration, and it is claiming rights in the word BLOCKCHAIN per se in this complaint.  That’s not a show-stopper.  The disclaimer will have some evidentiary weight as to the state of play on the date that the disclaimer was made, but a party can argue that it has acquired secondary meaning in the mark subsequent to that.

Defendant is operating as Blockchain.io.  It allegedly offers identical or related crypto coin goods and services.

I guess you have to read the complaint.

 

UPDATE: I have been contacted by the Director of Communications of Blockchain.io, who asked me to post the following reply:

Paymium, that has been successfully operating a BTC/EUR exchange since 2013 and serving 170,000 customers, is currently closing its private ICO to accelerate the rollout of Blockchain.io. The public sale for this complementary cryptocurrency exchange service will start on September 27. 

The domain name Blockchain.io was registered by Paymium way back in April 2012 (https://www.whois.com/whois/blockchain.io), and the Blockchain.io project launch was publicly advertised in the press months ago. 3 days before the beginning of the sale, and a few weeks away from the official release of our platform, it thus comes as no surprise that we are challenged by some potential competitors, for obvious reasons. We condemn this approach that surely doesn’t comply with the crypto-community values. 

Moreover, Blockchain.io disputes the accusation of making false and misleading statements. What is at stake is, at first, the protection of our name, our reputation, and our loyal investors and customers. For these reasons, our lawyers will answer point by point the claims that have been made.

As for our ICO, we already provided early investors with the alpha version of our platform that is ready to be launched right after the public sale in November. The name blockchain.io is the legal property of Paymium and the public sale will start as planned on September 27.”



20
Sep/18

Regus v WeWork re HQ for Office Space Rental and Services (ND Texas)


Office rental company Regus sues office rental company WeWork over use of the mark HQ. Regus has a registration from 1988 for HQ covering office services (i.e. supplying ‘back office’ personnel services to its renters)



12
Sep/18

After All That, Belmora v Bayer (FLANAX) Dismissed On Statute of Limitations


Bayer sells FLANAX brand pain reliever in Mexico.  Virginia-based Belmora adopted and applied to register the FLANAX mark for pain reliever in 2003, prior to any use or applications in the U.S. by Bayer.  4th Circuit, in the first circuit court case to apply Lexmark to 43(a)(1)(A), held that for purposes of 12(b)(6), Bayer could bring an action if it established that it was in the zone of interests of the Lanham Act (in this case, by indicating that it was injured by the misuse of a trademark in U.S. Commerce, even if it itself did not use its trademark in such commerce), and if defendant’s use injured those interests.

On remand: This was going to be a weird case because not only did Bayer not use FLANAX in U.S. Commerce prior to Belmora, it indicated that it was never going to use FLANAX in such commerce, because it used the ALLEVE name in the U.S. for that particular pain reliever (naproxen sodium).  Accordingly, injury would have to occur in Mexican commerce.

Well, we’re not going to see how that plays.  Bayer learned of Belmora’s application in 2004, its use at approximately same time, and of Belmora’s additional alleged unfair competition (false advertising), not later than 2009.  It didn’t bring a civil suit until 2015.  Using either a two year or four year statute under the Lanham Act and/or California state law, Bayer was untimely.

Disclosure: we represent Belmora up through the Fourth Circuit decision.