30
Nov/09

ESCAPE FROM ALCATRAZ Triathalon v ALCATRAZ Triathalon


The background of the ESCAPE FROM ALCATRAZ Triathalon seems to be complex, according to the Wikipedia entry at least. Here, defendant triathalon director split from plaintiff triathalon promoter, to organize another triathalon taking place on Alacatraz and calling it the ALCATRAZ TRIATHALON. Plaintiff sues based on its registered rights in ESCAPE FROM ALCATRAZ.
Complaint Escape From Alcatraz



30
Nov/09

"Case Study" of Design Within Reach's Move To "Knock-Offs" Plus Questions For Discussion


dwr credenza.jpg
Design Within Reach, a retailer of designer furniture, used to promote itself as ‘The source for licensed classics,’ selling modern classics such as the Barcelona Chair and Eames Chair. This earned it a certain following but also a non-following who referred to it as ‘Design Out Of Reach.” This FastCompany article details its current finanical troubles and its re-positioning away from licensed products to sell what some may refer to as knock-offs. The article contains interesting quotes by designers whose products have been ‘knocked-off’ by DNR, as well as by licensors (such as the Eames estate) that still do business with DNR but are having second thoughts. Bonus quote from Prof. McCarthy re trade dress protection of furniture, or lack thereof.
Things to think about:
1. Is it ironic that licensed versions of Modernism, a movement that, to the extent that it was inspired in part by the Bauhaus movement and thus had at least a stated objective of bringing ‘design’ to the ‘masses,’ are, for most part, unaffordable to the masses? Or is it some word other than ‘ironic’?
2. Is trade dress protection for the shape of Modern furniture more or less appropriate, given the simplicity of Modern design? Is there a public policy argument to be made against trade dress protection for the shape of furniture?
3. Does DWR’s prior relationship with the designers that it ‘knocks off’ influence your opinion of DWR?
4. Is there a Platonic chair that is intelligently designed and is affordable?
March 2009 blog post on trademark suit against DWR here.
dwr blu dot.jpg



25
Nov/09

Giardiniera-Variety Trademark Case


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From our continuing series of trademark cases involving garnishes, here is a memo of law from the owner of the SCALA mark for giardiniera, a pepper-based sauce for meatball and sausage sandwiches. Plaintiff believes that it terminated defendant as licensee. Defendant states on its website that it purchased the giardiniera business from plaintiff.
Memo Tro Scala License Termination



23
Nov/09

YooHoo v Beanie Boos re Crossed Big Pupiled Colored Iris Eye Dolls


yoohoo plust toys.jpg
Beanie Boos.jpg
Aurora, seller of YOOHOO AND FRIENDS plush dolls sues Ty, maker of BEANIE BOOS plush dolls for copyright and trade dress infringement, regardnig dolls that have crossed eyes, big pupils and colored irises.
The photograph of the Beanie Boos was taken by Sondra Schlossberg.
Memo Yoohoo v Beanie Boo Copyright Trade Dress



18
Nov/09

Philip Morris v. Various Groceries Selling Cigarettes


This is a complaint Philip Morris brought against six grocery stores and ten John Does, for selling counterfeit cigarettes. What’s interesting is how the Court will handle the joinder of these defendants – I did not see allegations in the complaint of any sort of connection between them (apart from the allegation that they all sell counterfeit cigarettes).
Complaint Philip Morris Counterfeit



17
Nov/09

Who Is The LAWYER OF LOVE?


Playboy sues divorce lawyer/former columnist/former Playboy model, for filing application for LAWYER OF LOVE (name of her Playboy column). I would assume LAWYER OF LOVE was a generic term for trademark lawyer. Defendant owns a registration for the mark LIFE’S SHORT, GET A DIVORCE. Background here.
Complaint Lawyer of Love Playboy



16
Nov/09

US Polo Association v Ralph Lauren re POLO and Horses


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polo.jpg
The US Polo Association and Ralph Lauren have been fighting since 1984 over logos using the word POLO and depicting horses. The background of the this dispute is set out below in the Polo Association’s complaint in a new declaratory judgement action.
Noting the success of the Polo Association’s licensing program, I will be reaching out to the governing body of water polo, in the hopes of securing a license. I would like to update the logo, perhaps to include ponies (yes, that’s a Billy Wilder reference).
Complaint DJ Polo v Polo



6
Nov/09

Extra-territorial Application of Lanham Act to 43(a) False Advertising Case


I think this is an unusual decision, so if you know of similar ones, please send them along. A Southern District of New York court last week denied reconsideration of its refusal to dismiss a 43(a) false advertising claim arising from activities in Germany. In so doing it adopted an expansive view of the reach of the false advertising provisions of the Lanham Act and of what constitutes ‘commerce’ under the Act (matched by, in my view, few other cases, most notably the Casino du Monte Carlo decision from the Fourth Circuit).
The three prong Vanity Fair test is the well-settled test in this circuit determining whether the Lanham Act can be applied to activities abroad (234 F.2d 633 (2d Cir 1956).
1. Is there a substantial affect on US commerce;
2. Is there a US defendant;
3. Is there no conflict with the substantive law of the non-US jursidiction affected.
So, for example, a US company sold PENNSYLVANIA cream cheese in Bolivia, and Kraft (owner of the PHILADELPHIA cream cheese mark) sued the US company here (necessitating an evaluation by the US court as to how Bolivian law would handle the matter).
AFAIK, the doctrine tends to be applied, for the most part, to trademark infringement cases relating to goods, but that’s only as far as I know. There was a 43(a) case a while back involving basketballs, but I think the non-US portion was trimmed from the case.
Now, the doctrine has been applied, to services, under a 43(a) false advertising case. In NewMarkets v Oppenheim, decision below, Plaintiff contracted with Defendant to form an investment fund. Defendant allegedly circulated the prospectus of a competing fund in Germany falsely stating that plaintiff would manage that fund. Plaintiff sued here, alleging, among other causes, 43(a) false advertising. Court applies Vanity Fair test and determines it will exercise subject matter jurisdiction. Defendant moves for reconsideration saying that use in Germany is not use in commerce, and court denies motion (see text of decision at bottom), holding that the Vanity Fair test determines what is and what is not commerce regulated by Congress.
Some background here and here.
Decision Extra-territorial Jurisdiction Lanham Act
Decision Reconsideration Extra-territorial



5
Nov/09

U.S. Government As Plaintiff In Trademark Suit


Here’s something you don’t see every day. The USG owns the mark ARMED FORCES INSTITUTE OF PAHOLOGY or AFIP. Defendant allegedly implies endorsement with or some other connection to AFIP.
Complaint Us Afip



5
Nov/09

Oral Contract Not Worth The Email They're Printed Out On


Plaintiff, movie distributor (The Weinstein Company), attempts to obtain exclusive license to distribute movie. It emails producer “We confirm that we accept your offer.” Producer immediately emails back “we’re going over the terms, we’ll get back to you.” (my paraphrase). Then producer does the deal with a different distributor. Distributor attempts to argue either (1) exclusive license created by oral communications, or (2) emails constitute written contract.
Held: The oral communications can’t create a binding transfer of an exclusive copyright license as there has to be a signed writing, as per the statute of frauds in the Copyright Act. The emails don’t create a transfer as defendant clearly and immediately indicated that it was not yet willing to enter into the contract.
Bonus footnote 4: Defendant argued that plaintiff couldn’t make the ‘oral transfer’ argument as it had taken a contrary legal position in another lawsuit. Held: ‘Judicial Estoppel’ exists not when a party argues a certain position in another proceeding but when a tribunal adopts that position.
Decision Twc Oral Copyright