In An Agitated State About LATHER

Plaintiff owns incontestable registrations for LATHER for products that lather. Defendant is introducing a LATHER product. The top image is from the complaint. The image below shows defendant’s product as part of a ‘travel set’ of toiletries. Context is important.


The Tell-Tale Apostrophe

Bizarre story. Genius (formerly Rap Genius) provides lyrics and facts about songs, under license from music publishers. After Google partnered with LyricFind to publish lyrics, search traffic to Genius’s versions of lyrics plummeted. According to the WSJ:

Genius first became suspicious about the source of Google’s lyrics in 2016, when a Genius software engineer spotted something odd about the song “Panda,” a hit by rapper Desiigner. While many lyrics sites had published error-ridden transcriptions of Desiigner’s hard-to-understand lyrics, Genius had the definitive version because Desiigner himself provided his lyrics to the site, Genius said .

So Genius created an Easter egg. It alternated use of straight and slanted apostrophes in a pattern to spell out ‘red-handed’ in Morse code (Sic – see box above). The WSJ confirmed that certain of Google’s lyrics contained the ‘watermarks’ created by Genius.

As to whether Genius could bring an action – well, certain printed reports are a little over-confident that Genius cannot bring a copyright action because it is not the owner of the copyrights in the lyrics in question. True – but one can’t conclude anything without seeing the agreements between Genius and the publishers. It might be the owner of one of the exclusive rights in the copyrights enumerated in Section 106 of the Copyright Act.


Bodum’s French Press Trade Dress Victory Affirmed In 7th Circuit

Plaintiff’s French press is on the left

Pictured above, on the left, is plaintiff Bodum’s CHAMBORD French press coffeemaker, and on the right is that of defendant A Top. A French press, also known as a coffee plunger, stamp pot, or coffee press, depending on your locale. uses a mesh plunger to separate the coffee grounds from the coffee. I don’t mind French press, but I personally prefer either the CHEMEX drip method, or my favorite – the AeroPress.

This was a Seventh Circuit appeal of Bodum’s victory at trial in the Northern District of Illinois.

Plaintiffs in product configuration trade dress cases must win the trade dress trifecta:

  • they have achieved secondary meaning in the trade dress;
  • the trade dress is not functional; and
  • defendant’s configuration is not confusingly similar to the protectable elements in plaintiff’s trade dress.

Bodum defined its trade dress as:

  • the metal band surrounding the carafe that forms support feet and the handle attachment;
  • the domed lid;
  • the rounded knob atop the plunger
  • the C-shaped handle.

Bodum did not claim protection in the cylindrical carafe or the plunger, acknowledging that those elements are functional for a French press.

Defendant A Top did not contend that it did not copy those arguments – it argued that Bodum failed to establish that the claimed features are not essential to its use and that these features do not affect the coffeemaker’s cost or quality. In other words, Bodum had not met its burden that these elements were not functional (Bodum was asserting common law rights and therefore had the burden of establishing protectability).

A passage of interest:

A Top’s expert . . . didn’t see particularly great advantage in the design of the handle, but [he] saw an advantage in having a handle.” Whether it is more advantageous for a French press to have a handle, however, is not a pertinent inquiry; the question is whether there is an advantage to having this designed handle, to which [the expert] agreed there is not.

The Court came to similar conclusions about the feet, lid, and lid knob.

Affirmed. Bodum USA v A Top New Casting Inc., No. 18-3020 (7th Circuit June 12, 2019)


SDNY: Straightforward 12(b)(6) Dismissal on Parody Grounds

Straightforward dismissal on 12b6 – Website ran an article criticizing Ebony Magazine’s policies – article used an illustration parodying Ebony cover (see above). Court runs through LoC factors and 2d Circuit three factor nominative fair use test.

See 43(b)log analysis of EBONY parody decision here.


Can Kawhi Klawback His KLAW From Nike?

There may be less to this lawsuit than some commentators think. Toronto Raptor star Kawhi Leonard, who is reported to have among the largest hands in the NBA, signed an endorsement deal with Nike in 2011, which ran through September of last year. Some Nike merchandise used the ‘Klaw,’ a logo that uses his initials to suggest his hands:

The parties apparently dispute to what extent they collaborated on creating this design. Kawhi says the logo is a trace of his hands. In May 2017 Nike applied for a copyright registration on the logo, referring to it as a work-for-hire. In November 2017 Kawhi filed a trademark application and ultimately received a registration. Kawhi intends to use the logo on non-Nike merchandise, Nike has claimed ownership, stating that he can’t. Kawhi filed this declaratory judgment action seeking a declaration of ownership.

There has been some commentary on this complaint that makes two points may be besides the point. The first is: ‘how is possible that there is no agreement as to ownership of the logo?’ The second is: ‘what happens when one party owns a copyright and another party owns a trademark in a work?’

First – you cannot get a handle on this dispute from just reading this complaint. The complaint admits there is a written endorsement contract (that was amended several times, and was in effect in 2017 when the parties filed their applications), but does not attach excerpts from the contract, nor does it quote language from the contract. Without having seen this contract, I will go out on a limb and speculate that there is a clause that provides for ownership of intellectual property created during the relationship between Kahwi and Nike (like, I bet, Nike owns its TV commercials), as well as a provision that provides for ownership and use of intellectual property and other rights that pre-dated the contract (such as Nike’s swoosh logo, and Kawhi’s rights of publicity) or was created outside the contract. If, for example, Kawhi wrote a soulful poem that had nothing to do with his endorsement contract, he probably retains ownership. And (still speculating here), the clause delineating IP inside and outside the contract is ambiguous enough that both Nike and Kawhi believe they own the logo. I will continue to speculate that the interpretation of said clause will determine ownership of both the trademark and the copyright in the logo. So it is not overly probable that there will be a copyright vs. trademark fact pattern here.

As long as we’re talking about Nike and ownership of IP relating to its endorsers – I spent sometime today down the TESS rabbit hole and saw that Nike owns or has owned trademarks such as LEBRON, LJ, MELO, and the KD logo. I can see why they would want to own these marks (as opposed to merely being licensees), and I can see why these stars shouldn’t allow it (I note that Lebron has had the LEBRON marks assigned back to him).


Nobody Knows The Trouble I’ve Seen – Nobody Disputes This – The Puns Write Themselves


DJ Actions: When Someone Threatens You, Get It In Writing

Defendant HALO FARM, a dairy company, filed 11 oppositions in the TTAB against 11 applications of HALO-variant marks filed by Halo Fresh, an energy drink vendor. Plaintiff sought a declaration of non-infringement in civil court. Defendant moved to dismiss, arguing that its oppositions were a mere prelude to obtaining a coexistence agreement, and that plaintiff had not made out an actual case or controversy. In support of its complaint, plaintiff alleged that, in addition to filing the 11 oppositions, defendant’s president had, during a phone call with plaintiff’s CEO, implicitly made clear that she intended to pursue plaintiff in court, and in so doing, made a point of referring to a prior trademark litigation defendant had filed.

Held: First, it is well settled (t least in the Second Circuit) that TTAB oppositions, apparently even eleven of them, will not, without more, give rise to a ‘substantial controversy’ sufficient to justify standing in a DJ action. Second, the court did not credit plaintiff’s CEO’s characterizations of his phone call with defendant, noting the lack of word-for-quotes and the lack of other specifics. No case or controversy – complaint dismissed.

Practice Pointer: When someone threatens you, get it in writing.


“Changed Circumstances” Prelim Denied in WDNY: But Do People Drive 40 Minutes For Ice Cream?

A motion for preliminary injunctive relief that would otherwise be deemed to be untimely, may be viable if there have been recent material changes to the circumstances. For example, plaintiff, which had been tolerating a geographically remote third-party, may contest that party’s recent expansion into plaintiff’s geographic market.

Here, in a dispute between two upstate New York business over the mark LAKE EFFECT for ice cream, plaintiff’s motion for urgent relief was denied, as it failed to establish that ‘changed circumstances’ offset its excessive delay in protesting defendant’s somewhat lengthy use.

Defendant had been selling ice cream in a location 40 minutes from plaintiff. Plaintiff began business discussions with defendant in 2013, coinciding with defendant’s expansion of distribution into a third party shop from 2012 until 2014. Defendant opened an ice cream store under its own mark in 2017. Plaintiff resumed negotiations, then protested, and then filed for a preliminary injunction in February 2019. It argues that:

(1) defendant’s original store was too far away for it to take action;

(2) plaintiff wasn’t aware of the 2012 location (even though the location was near its own store, and plaintiff had been negotiating with defendant during this time); and

(3) plaintiff had protested promptly after learning of the 2017 location.

Held: (1) plaintiff failed to establish that defendant’s original location was in fact outside of plaintiff’s market (but do people really drive 40 minutes for ice cream?);

(2) plaintiff’s claim of ignorance of the 2012 usage was not plausible; and

(3) even if plaintiff had not been aware of the 2012 usage, it still had waited too long to protest the 2017 location.

199 Delaware Avenue v. Lake Effect Artisan Ice Cream et. al., 1:19-cv-00224 eaw (WDNY April 18, 2019)



Traveltime v Commute Time (Easy Spirit v Skechers re trade dress)


Configuration / Shape / Failure to Function

The mark consists of a two-dimensional design of a light gray, generally rectangular body with rounded ends. The top of the body features a light gray rectangle on each side. The left side of the body features a dark gray cross within a circle. The dark gray cross features a triangle on each arm of the cross and a central circle. The center of the body features two dark gray rounded rectangles. The right side of the body features two light gray rounded rectangles within a dark gray circle. One of the light gray rounded rectangles contains two light purple circles and the other light gray rounded rectangle contains two dark purple circles.


OA 2/6/19: Failure to function:
The applied-for mark, as shown on the specimen, does not function as a trademark because it is merely a drawing of the actual goods.  Additionally, as shown in the specimen, the mark appears on the packaging of the goods as a picture of the goods itself to show consumers what the goods look like.  Consumers would not likely view the mark as it appears on the box as source-identifying mark/brand name.