Hyundai Files Grey Goods Suit in D Nevada

Hyundai sues non-US companies importing Hyundai-brand parts, alleging that the parts are materially different from parts intended for the US market due to physical differences and warranty differences. Physical differences are discussed in paragraphs 25 and 36 to 42. Warranty differences are discussed in paras 32, 33,44 and 45.


Text of 8th Cir decision in Warner Bros v X One X (A.V.E.L.A.) re Use of Movie Stills

AVELA, which specializes in merchandising public domain imagery, obtained publicity stills and the like, from classic movies such as ‘Gone With The Wind’ and ‘The Wizard of Oz.’ These materials were published without copyright notice, which, under the old Copyright Act of 1909, would strip those materials of protection (while the underlying works such as the movies, would remain protected). AVELA argued that these materials allowed them to merchandise depictions of the materials on any product. The 8th Circuit had previously rejected this argument.

Hollywood Reporter coverage here.

Law360 Coverage.


Text of Oral Argument in Star Athletica v. Varsity Brand

News coverage here.

Background here.


You Wouldn’t Understand, It’s a [your name here] Thing

sexy tm attorneyTrademark-Paralegal--Job-Title-Navy-Blue-frontIts-A-SIEMENS-thing-you-wouldnt-understand-welch thing

Here’s an interesting fact pattern. SunFrog.com is a custom t-shirt shop. You enter terms and the term is displayed on common designs. These designs are apparently created by the SubnFrog community of artists. I played with a bunch of search terms and it appears that a determination is made as to what category a particular term belongs to (profession, team name, first names, surnames) so that the customization makes grammatical and/or semantic sense (for so different terms generate possible designs. Examples above.

SunFrog has provided a guide to trademark and copyright for its users here.

Siemens has now sued SunFrog (see example above of shirt generated by using SIEMENS as a search term).


Text of Decision Tranferring Copyright Class Action Against Spotify to SDNY

jaco pastorius

Jaco Pastorius was a bassist for, among others, Weather Report (‘Birdland’ was their biggest hit). He died way too soon at the age of 36. His rights holding company is one of the named plaintiffs in this copyright class action against Spotify. The Central District of California grants Spotiy’s motion to transfer venue to the SDNY.


‘Managing The Trademark Asset Lifecycle’ is this Thursday in New York

wtr managing lifecycle 2016

I will be attending World Trademark Review’s conference on “Managing the Trademark Asset Lifecycle” in New York, on Thursday October 20, 2016.

The program covers:

– Brand and trademark audits;
– Brand valuation;
– Collateralization of brands;
– Financial and tax considerations of trademarks;
– Monetization (i.e. licensing);
– ‘Exit strategies’ (i.e. what to do with residual goodwill)

The full program is here.

The speakers are, on the whole, in-house counsel for some of the most valuable properties in the world. The full speaker list is here.

WTR reached out to me and I will be wearing my ‘working-blogger’ hat and attending and live-tweeting the conference, at WTR’s invitation.

Hope to see you there.


Dilution Claim Dismissed Against NBC/Biggest Loser re Use of LB Logo

Go to page 7 of the decision and you will see allegations of fame that are insufficient to state a claim of dilution at the Motion to Dismiss stage.



We need Men In Blazers to sort this one out. Allegations that employee of NYC bar stole FOOTBALL FACTORY trademark.


2d Cir: Brown v Winfrey re OWN YOUR POWER

oprah harpo own your power

Blogged previously here and here.

Plaintiff fails to establish protectability of OWN YOUR POWER, and likelihood of confusion arising from Oprah’s use on magazine cover and other usages.


SDNY: LVL XIII v LV re Metal toe plates

107 page decision by Engelmeyer, J.

Plaintiff targets its LVL XIII (Level 13) sneaker at the luxury ($500) market. The sneaker has a metal toe plate with LVL XIII engraved on it:


Plaintiff’s sneaker got some traction: a few celebrities were seen in a few pairs. 8 months after the introduction, LV comes out with the OTR (On The Road) luxury sneaker:

LV OTR sneaker

PLaintiff therefore has to establish secondary meaning in the toe plate as existing by the 8 month point. Very lengthy discussion as to how to not establish secondary meaning. Not high $$ sales, not much unsolicited media coverage, some evidence that existed after the 8 month point (and therefore irrelevant to the analysis). Plaintiff forewent a conventional secondary meaning survey in favor of a law professor whose testimony got tossed under Daubert.

Plaintiff argued that LV’s alleged copying was evidence of secondary meaning. McCarthy’s has one of the more succinct discussions as to why this argument is not always logically sound (defendant might have adopted the element precisely because it thought the element didn’t indicate source). Here, plaintiff couldn’t prove that LV had prior knowledge or that it copied plaintiff. LV’s designer testified that he was inspired by this photo of James Dean wearing Converse Jack Purcells:

james dean wearing jack purcells

LV’s designer replaced the toe ‘smile’ of the Jack Purcells with a metal toe clip because, apparently, metal detailing is in. Also, legal told him to stay away from the Purcells.

So Plaintiff fails in establishing that it has secondary meaning in the toe cap, so that is the end of the case but the court does a full Polaroid analysis any way. Weak mark, evidence of third-party use of two plates, the toe plates don’t look that much like each other (LVL XII’s toe plate has a LVL XII on it) no evidence of actual confusion, no bad faith, people who pay $500 for sneakers are careful as to brand – LV wins ‘lopsidely.’

LV brings counterclaim that plaintiff’s LVL XIII mark is confusingly similar to the LV mark. Dismissed.