Jay Z owns in part the 40/40 nightclubs in NY, Atlantic City and Las Vegas. Boston Red Sox (Sock?) David Ortiz has allegedly patronized the clubs and opened up a club by that name in the Dominican Republic. The Name LLC, the owner of 40/40 mark, has sued Ortiz in the DR and is now suing in the SDNY, for infringement arising from the website operated by the DR club.
Jurisdictional issues here bring to mind that old chestnut, Bensusan Restarant v King, 126 F.3d 25 (2d Cir 1997) (the BLUE NOTE case).
If you are a DR trademark lawyer, please help us out on the DR end of the story: does The Name LLC have DR trademark protection? If not, can a famous mark enjoin use in the DR? As an alternative to fame, can a theory be based on bad faith (namely Ortiz’ alleged knowledge of the US club)?
Complaint 4040 Ortiz
WIPO’s Arbitration and Mediation Center (WIPO Center) and the Format Recognition and Protection Association (FRAPA) are to join forces later this month in providing alternative dispute resolution services to address problems of format plagiarism or the unauthorized copying of television (TV) formats, such as those used for game, reality or talent shows and sitcoms. Programs using these formats are often remade in different markets using local parties.
I’m inclined towards the belief that genericide happens far less frequently than is believed (aspirin, escalator, zipper, yo-yo , thermos (with an asterisk) and very few others). Today’s NY Times ran an obituary of the inventor of the trampoline which makes the claim that George Nissen, added an ‘e’ to the Spanish word for diving board, trampolin, and registered the word as a trademark. Several other sources on the Internet repeat this.
I can find trademarks filed by Nissen and his company on TESS, but I can’t find a cancelled trademark for TRAMPOLINE covering ‘backyard tumblers’ owned by anyone. If you have info on the genericide of TRAMPOLINE, please share.
Geo Targeting is the method of determining the location of a website visitor and delivering different content to that visitor based on that location. Today I saw an ad the headline of which was “Housewife From [location of my ISP] Loses 47 Pounds Drinking Acai Berry Juice!” and the copy of which referred to ‘Jane Doe From [my location] . . ‘ If Jane Doe doesn’t live in my town, then that is a literally false statement. 43(a)? Is it material? I don’t know, but why do they rig the ad this way?
Background here. How will you honor this annual event today?
Assume Lockheed owns an incontestable registration for SKUNKWORKS. Lockheed sends cease and desist letter to registry alleging that SKUNKWORKS.COM is being used to infringe its trademark. Registry refuses to de-activate site. Lockheed sues in 2d Circuit and not 9th, so don’t discuss Lockheed v NSI (the SKUNKWORKS case).
2d Circuit Affirms Dismissal of Infringement Cause, Remands False Advertisement, Against eBay in Tiffany case (Text of Decision)
District Court dismissal of direct and contributory infringement by eBay affirmed, dismissal of false advertising vacated and remanded back.
Very very quick summary after one quick reading: eBay has ‘general knowledge’ that for its Tiffany listings, some unknown percentage was counterfeit (not 95% but not zero). However, it doesn’t specifically know whether any particular listing is counterfeit, until Tiffany tells it so. That’s the key to the holding. Because the contributory infringement language of the Supreme Court Inwood case requires that the defendant had knowledge that ONE (emphasis by court) third party is continuing to infringe, eBay didn’t have the requisite knowledge that any ONE particular customer was infringing (until Tiffany brought it to eBay’s attention, at which point eBay took down the listing). Thus Ebay didn’t allow infringements to continue after it had actual knowledge of any particular infringement. Also, the court declined to hold that the ‘general’ knowledge that eBay had that some (or even most) listings were counterfeit, rose to the ‘have reason to know’ prong of the Inwood test.
However, with regard to the false advertising count, to the extent that eBay advertised general Tiffany listings, to the extent that eBay advertised that TIFFANY jewelry could be purchased on eBay, the implication was that ALL such jewelry was genuine, which eBay knew not to be true. So the false advertising count will be remanded to the district court to reconsider.
UPDATE: good discussion of 43(a) issue, especially wrt problems of proof via 43(B)log.
Tiffay v Ebay 2d Cir