'DEEP THROAT' v 'LINDA LOVELACE' About as fair use as a theatrical film v theatrical film case is gonna get http://t.co/V5QJs4w45d
— TrademarkBlog (@TrademarkBlog) September 2, 2014
Plaintiff owns incontestable rights in THE BIGGEST LOSER. Defendant fitness club allegedly used the term in promoting its services.
Defendant bakery identifies branded cookies and candies as toppings for its cakes. Plaintiff See’s Candies alleges that defendant’s ‘manufacture, storage, sales and storage’ processes don’t meet See’s standards, therefore the See’s candies offered are materially different and therefore infringing.
Complaint Sees Aunt Joy
Charleston, West Virginia, was the home of Alex Schoenbaum, founder of the SHONEY’s chain, which had been a BIG BOY franchisee. Charleston put up a statue honering ‘Shoney’ with Big Boy on the top. Big Boy International reportedly protested on trademark grounds. This article quotes me to the extent that if the statue was put up by the town to honor one of its citizens, then it’s likely not use of a trademark in commerce.
Law school fact pattern: What if the community put up the statue on public land across the street from a Shoney’s? And Shoney’s contributed the money to pay for the statue? And contributed the land?
Also: consider if the statue of a (possibly copyrighted) work was commissioned by the town? Or if purchased on the secondary market for Big Boy staues (which apparently exists).
Radio station gives away Philadelphia Eagles tickets and mentions Eagles in on-air promotions, without authorization. It had also promised Eagles once before not to do this sort of thing. Eagles sue enforcing clauses on back of ticket contract, and on trademark.
Macy’s uses MACY’S AND CLINTON KELLY MAKE OVER AMERICA receive demand letter from owner of registrations for various MAKE OVER marks; files declaratory judgment action.
Consider this case:B & L Sales Associates v H. Daroff & Sons, 421 F.2d 352 (2d Cir 1970) (registered trademark COME ON STRONG v use of COME ON STRONG in ad copy).
Complaint Macy Makeover
Weight Watchers sues Nestle for displaying Weight Watchers ‘Points’ on Nestle products. WW has previously sued Campbell Soup and Tesco on similar theories (background of Campbell suit here and Tesco here) but reportedly settled both matters.
Complaint WW Points
Major League Baseball Properties sues former licensee Don Russ for use of various MLB properties.
Complaint MLB Don Russ Baseball
The interest of the consumer here in competitive prices of garments using Dior designs without deception as to origin, is at least as great as the interest of plaintiffs in monopolizing the name.
If we are in fact entering the era of New Frugality, will it affect our trademark jurisprudence? In Societe Comptoir, a 1962 Second Circuit case, Alexander’s Department store sold what today would be refered to as Dior Knock-offs. From the case:
The merchandise was so described in newspaper advertisements, on hang tags attached to the garments reading, ‘Original by Christian Dior– Alexander’s Exclusive– Paris– Adaptation’”
The Court held for Alexander’s, holding that there was no confusion, as it was clearly labeled that this were copies of Dior, and not Dior originals.
I’m not sure I could prove it definitively, but I would venture that over the past ten years, the majority of circuit courts would not hold for defendant on those facts.
But I wonder if an extended economic downturn will make courts more receptive to the viewpoint in the lead-off sentence?