Ceci N'est Pas un Birkin Bag

ha!.  I would have to believe that this fact pattern has to have happened before in the history of the world, but I don’t know about it.  Thursday Friday puts a picture of an Hermes Birkin bag on a $35 tote, as ‘an anti-status symbol.’   “My other car is a . . . ” Times coverage here (I stole the headline from them).

A $30 Rolex? Post-purchase confusion?  Tarnishment or Chewy Vuitton? Jelly Kelly redux?  No copyright cause in the complaint btw.

Another case of coulrophobia in the offing.

HT Amanda.

Complaint Hermes Birkin Thursday Friday



UGGLEBO Clogs sues owner of UGG trademark in U.S> in District Court in Minnesota. Allegations include history of the Ugg boot: “Legend is that Australian pilots wrapped their feet and legs with sheepskin to keep warm in unheated airplanes. The wraps were so ugly they were referred to as ‘uggs.'” (para 11).

Complaint Ugglebo v Ugg Minnesota


Text of Decision in AFP v Morel (the TwitPic Case)

Morel is a professional photographer. He was in Haiti the day of the earthquake and uploaded his pictures to TwitPic.com, linking to those pictures using his Twitter account. The AFP news agency allegedly distributed without authorization and mis-attributed his pictures in various ways. AFP argues that the Twitter terms of service granted them a royalty-free license as a sub-licensee of Twitter or it is a third-party beneficiary of Twitter’s terms of service with Morel, allowing for re-distribution. AFP’s motion to dismiss denied on direct copyright infringement, contributory copyright infringement and DMCA (removal of his attribution notice); granted as to Lanham 43(a) (on Dastar grounds) and vicarious infringement.

The Background section makes for interesting reading as to how a ‘hot news’ photo zips around the world these days.

decision afp morel twitpic copyright


PING PONG Is A Registered Trademark For Table Tennis

Go look at registration 520270 if you don’t believe me.  I represented a UK company named Jaques that claims that it coined the term and sold it to Parker Brothers around 1900, but that’s another story.

Now, to anticipate a question I get asked when I blog about this sort of suit: “Because the plaintiff is more motivated. It is usually easier for the defendant to use a different generic term, than to defend the suit, which would likely involve spending over a $100k for a survey that established that the term was generic.”

Complaint Ping Pong


And Another Levis Arcuate Complaint

Levi’s sues Dolce and Gabbana re back pocket stitching.  Prior ‘arcuate’ complaint here.

Complaint Levis Dolce Gabbana


Checking In With LV v Hyundai (Luxury Basketballs)

Hyundai ran a commercial during last year’s Super Bowl which depicted (for a few seconds) an ‘LV’ basketball as one of a series of exaggerated images of luxury. LV sued (complaint here, but sadly, commercial removed from YouTube). I checked the docket today (slow weekend) and it looks like the lawsuit proceeds – the parties are in the midst of discovery.



Complaint Astronut Astronut 3d iPhone App


Seen In A Different Drug Store


Ownership of US Trademark Between Foreign Suppliers and US Distributors

Easter District NY: Foreign distributor tussles over ownership of trademark in the US with its (alleged) former distributor, in this case MONTANA vegetables from Egypt (hmmm).

Decision discusses caselaw re presumption that foreign manufacturer owns trademark vis-a-vis an exclusive US distributor and what might vary that presumption. HOWEVER, don’t let this happen to you. The best practice here is old hat. If you’re contemplating exporting to the U.S., file a trademark application here. If you will use an exclusive distributor, clarify the ownership of the trademark(s) in a written agreement, now. Remember, exclusive distributors tend to become former exclusive distributors (and you tend to become a former foreign supplier).

Decision Haggar Montana Import Export


Reasonable Attorney Rates and Hours In New York

Plaintiff prevailed by default in a trademark infringement case in the Southern District.  It sought attorneys’  fees .  The Court considered the reasonableness of the hourly rate for the timekeepers involved and the number of hours they expended.

$657/hour was ‘well withn the range of rates for law firm partners with significant IP law experiencein the New York City area”, as was $459/hr for a new partner, $400/hr for a senior associate, and $391 and $355 for ‘other associates.’

Plaintiff didn’t meet its burden of proof that $175 was a reasonable for a ‘clerk’ (no evidence as to the clerks’ backgrounds) so $99 hour was found to be the reasonble rate.

However, 7.6 hours for a demand letter and15.25 hours for researching and drafting proposed findingss of fact were found to be excessive (the findings of fact were very similar in part to the previously drafted complaint).  Accordingly there was an across the board cut of 15% on all time.