16
Jul/14

Join Us To Celebrate The San Francisco 49er’s Lawsuit ($10 cover, 2 drink minimum)


49ers logo

This is interesting for a bunch of reasons. The San Francisco Forty-Niners sue a nightclub near its stadium, that promotes events that refer to the Niners or its players. See Exhibits Q, R and S in the second document below for ads the club distributes to promote, for example, birthday parties ‘in honor of’ specific Niner players, with photos of the player wearing his Niner uniform. Of particular interest is the Niners’ invocation of its unusual 3-D trademark registrations in its uniforms (see Exhibit J through M).

One fact that isn’t clear (to me) from the pleading is whether the nightclub had the consent of the player whose birthday it was allegedly celebrating. And its not clear if the players showed up for their party.

There was a recent case that stands for the proposition that you can’t end-run a false endorsement cause by claiming that you were exercising your First Amendment rights by ‘foisting’ some kinds words on the celebrity (Michael Jordan prevailed against a drugstore that ‘congratulated’ him on being inducted into the Hall of Fame (in a full-page ad that featured all sort of MJ indicia)). So if the players didn’t authorize, there may be an action there as well.

p.s. There’s also a straight-forward copyright claim, as the nightclub appears to have used Niner photographs without authorization.

49ers v motif.pdf

49er exhibits.pdf



10
Jul/14

False Advertising Cause Maintained in Our “Trademark Scammer” Case


This is a lawsuit my firm filed against a company that we allege is a ‘trademark scammer.’ Defendants moved to dismiss. The Court maintained our false advertising claim. 43(b)log comments here.

leason ellis v pta.pdf



27
Apr/09

Does the Collection Agency Commit TM Infringement?


Statesboro.biz: Debt Collectors and Trademark Infringement:

A creditor (credit card company, bank, physician, etc.) assigns or sells a debt for collections to a third party debt collector or debt buyer, the debt collector further assigns the debt to a law firm. The law firm is representing the 3rd party debt collector, but uses the original creditors name (trademarked name) in filing suit.
It is Trademark Infringement Folks
The law firm is not directly representing the original creditor and doesn’t have direct consent of the creditor to file suit (remember they were employed by the third party assignee or debt buyer).
This is trademark infringement and companies reputations and names are being tarnished by misuse of their names. Not only that it is dilution of their brand and causing much consumer confusion.
If you look at it another way these third party to a third party law firms are using the companies tradename to benefit financially (used in commerce).

Hmmm. Well, speaking in the abstract, if a trademark licensee says “I am trademark owner” as opposed to “I am trademark owner’s licensee,’ that may be problematic (however there is such a thing as a trading name license). Consumer debt colection is heavily regulated – there may well be state regulations governing how the debt collector identifies itself that cover this issue. However here the article is suggesting that a law firm is mis-identifying its client. You would likely want to go the professional responsibility statute to analyze that one first.
However, it seems that the law firm HAS to identify the trademark owner is some way. How else would the consumer know which debt is being collected? (as to whether a law firm can threaten suit when it has not been authorized to do again is not a trademark issue).



15
Apr/09

"CNN Acquires CNNBrk Twitter Account"


BusinessInsider: CNN Acquires CNNBRK Twitter Account:

Hard to believe, but the CNN Twitter account racing Ashton Kutcher to 1 million subscribers wasn’t even under CNN’s (TWX) control until recently.
CNN has taken control of the @cnnbrkaccount — and its 944,000 followers — we’ve heard. We don’t know the transaction details, and are waiting to hear back from CNN to confirm the deal and any details

More details from TechCrunch.



26
Mar/09

Somebody Might Think That The MTA Was Responsible For This?


MTA Service.tiff
New York Metropolitan Transit Authority protestsMTA Service Specialists” use of MTA logo.



19
Oct/08

GE v Nantucket


GE alleges defendant falsely represented that it was a subsidiary of GE.



2
Sep/08

Who Is the Real Fake Don Draper?


Don Draper is a character on the TV show “Mad Men.” You can follow Don Draper’s Twitter account. Maybe it’s infringing. Maybe it’s fan fiction. Maybe it’s authorized but the property owner denies it so it will go ‘viral.’ You can get dizzy thinking about this.



23
Jul/08

Trademark Infringement Makes Small Children Cry


party dora.jpg
. . . or perhaps it was the trademark enforcement.
Wall Street Journal article on trademark owners policing use of character costumers by local party performers: “Why Dora the Explorer Can’t Come To Your Kid’s Birthday Party“:

. . . .Though the walk-about “Dora” had the expected pageboy haircut and backpack, her expression was blank and her legs appeared out of proportion to the rest of her body. “When Dora came out,” Mrs. Sorkin says, “none of the kids would go to Dora, including my daughter, and a few of the kids started crying.”
Elvira Grau, who owns Space Odyssey USA, where Mrs. Sorkin held her daughter’s party, says the costume companies that service her parties try to make their costumes look sufficiently different from the trademarked characters to avoid lawsuits. When Mrs. Sorkin complained to her that Dora was “hideous,” Mrs. Grau gave her a $250 credit. “But I told her, ‘You can’t have the real Dora. If you want the real Dora, call Nickelodeon.’ ”

Every sentence in this article is both funny and extremely sad.
There is a sentiment expressed by Justice Stevens in Moseley v V Secret, that where there is no confusion, a tarnishing use reflects on the tarnisher and not the trademark owner. It might be the case that where there is no confusion that the local children’s clown is ‘licensed’ by anyone, that if the clown stumbles around drunk or otherwise behaves inappropriately, in a character costume, that that reflects on the clown, and not on the costume.
Comment away.



22
Jun/08

Been Caught Stealing


LV guitar straps.jpg
Luxist: “No More VUITTON Straps For Dave Navarro“:

[Navarro of Jane's Addiction] has received a rather stern letter from the Vuitton legal team saying in part that: “We have no doubt that this copying has been willful and is intended to trade upon the fame and cachet of the LV Trademarks to elevate the status of the infringing Guitar Strap, and of Jane’s Addiction.”



30
Apr/08

Marvel v TechCrunch re Screening of Iron Man


Marvel sends TechCrunch a demand letter saying ‘don’t print the demand letter.’
UPDATE: The email is up.
Background: TechCrunch used the theater’s group sales to purchase all the seats for a showing and then invited its readership to the screening. Marvel doesn’t identify a legal basis for its demand but advises that TechCrunch may not ‘exhibt, sell tickets to or invite the public’ to the screening.
Well, TechCrunch is not selling tickets, it’s not exhibiting, and, in the words of my colleague Paul Fakler, under the Copyright Act there’s no exclusive right to invite the public.
I suppose that you could posit a fact pattern where somebody gives away a branded product in a promotion in such a way as to deceive the public that he/she was endorsed by the brand owner.
But (use deep movie trailer announcer voice here) IN A WORLD where people give away iPods at trade shows all the time (and people don’t read that as endorsement), I will speculate in general, (not having reviewed all of TechCrunch’s promotions of this event,) that to be actionable as false endorsement, the language would have to be closer to ‘false on its face’ as in “Join TechCrunch and Marvel at a screening . . .” than to language that theoretically implies an endorsement (“Join TechCrunch at a screening of Iron Man.”).
Differing views glady accepted at marty at symbol schwimmerlegal dot com.
Still in all, can’t wait to see Iron Man.
2d Update: Goodness Prevails, Minus $2000 In Legal Fees.