Deckers v Wal-mart re ‘Bailey Button’ Trade Dress

ugg one baily buttongg-1873-Bailey-Button-Triplet-Boots-in-Chestnut-56_04_LRGbrinley wood toggle

Decker (owner of the Uggs brnad) claims trade dress and owns a design patent covering its ‘Bailey Button’ style, two versions of which are depicted on top. The Bailey Button style is characterized by: (1) suede boot styling, (2) overlapping of front and rear panels on the lateral side of the boot shaft; (3) curved top edges on the overlapping panels; (4) exposed fleece-type lining edging the overlapping panels and the top of the shaft; and (5) one or more buttons prominently featured on the lateral side of the boot shaft adjacent the overlapping panels.

Decker now sues Walmart for selling allegedly infringing boots. It is not clear to me from the exhibits in the complaint but I believe that the Brinley ‘wood toggle’ style depicted above bottom is one of the complained-of styles.

ugg v walmart bailey button



bad to the bone complaint


EVOLUTION FRESH for juices v FRESHER EVOLUTION for juice making things


As I’ve said many times, High Pressure Processing (HPP) is a method of food processing where food is subjected to elevated pressures (up to 87,000 pounds per square inch or approximately 6,000 atmospheres), with or without the addition of heat, to achieve microbial inactivation or to alter the food attributes in order to achieve consumer-desired qualities. Plaintiff operates a chain of stores under the mark EVOLUTION FRESH, which sells juices, and promotes the fact that its juices are made using HPP. Defendant FRESHER EVOLUTION sells HPP equipment.

evolution fresh hpp complaint


Something Isn’t Kosher (I Can’t Help Myself)

urban tortilla

This page suggests that Urban Tortilla, which sells tortillas in San Francisco Airport, paid $299 for the spiffy U in circle logo above. They have now been sued by the Union of Orthodox Jewish Congregations, owner of the U in circle certification mark that indicates that food is kosher. Among the foods prohibited under the kosher laws are anything that combines dairy and meat, so a cheese and beef burrito is right out.

urban tortilla memo


Well, I Hear The Whistle But I Can’t Go

I’m gonna take her down to Mexico
She said oh no
Guadalajara won’t do

Full lyrics here.

guadalajara v guadalajara


Lexmark: Standing Under 43(a) False Advertising: “Zone of Interests” plus “Proximate-Cause”

First, a shout out to Prof Tushnet, of 43(b)log, whose article is cited with approval in this case.

Lexmark manufactures toner cartridges. Cartridges can be re-filled by ‘re-manufacturers’, so Lexmark inserted a microchip that prevented re-use (unless the consumer returned the cartridge to Lexmark). A ‘shrink-wrap’ license prohibited the consumer from submitting the cartridge to re-manufacturers. Static manufactured a chip that allowed re-manufacture of Lexmark cartridges despite the presence of Lexmark’s chip. Lexmark brought various claims against Static. Static brought counterclaims under the false advertising prong of 43(a), alleging that Lexmark made two false statements that injured Static’s business:

1. That consumers were legally obligated to return the cartridges solely to Lexmark; and
2. That Static’s chips were illegal.

Static claimed that it sold fewer chips because as a result of those false statements, consumers purchased fewer re-manufactured cartridges.

Lexmark argued that because Static was not a direct competitor of Lexmark, Static did not have standing under 43(a).

Held: The ‘direct-competitor’ test is rejected. Static properly pled the elements of a Lanham Act false advertising claim. It properly alleged that its injuries were in the zone of interests that 43(a) seeks to protect. It further properly alleged that its injuries were proximately caused by a violation of the statute – namely that the deception of the re-manufacturers caused them to withhold trade from Static (which it will have to establish at trial).

lexmark v static


Where’s Cookie Puss At? Beastie Boys v Monster Energy

This SDNY decision is chock full of useful legal tidbits.

Monster Energy allegedly disseminated a video that included four (or was it five?) songs in which the Beastie Boys owned 50% of the copyright (or did they?). The Beastie Boys sue on copyright and trademark. All sorts of pre-trial motions get brought. From the top:

1. Plaintiffs want to offer at trial other videos that contain Beastie Boy music. These videos were created and posted by fans and hosted on Monster’s site, as some sort of user-generated content promotion. Held: the videos are out – the allegedly probativity (that these third-party videos somehow shed light on Monster’s sate of mind) is outweighed by among other things, the dreaded ‘trial in a trial.’

2. Plaintiff is allowed to amend its complaint to add a fifth song. The Case Management Plan had set December 16, 2012 as the deadline for amending the complaint. Plaintiff moves to amend on February 14, 2014. Plaintiff has to show good cause. They discovered the infringement in July 2013, during expert discovery. They notified defendant fairly promptly. They waited out summary judgment. Then they moved to amend. And defendant is not prejudiced by the addition of the fifth song.

3. Even though Plaintiff didn’t own the copyright to the fifth copyright at the time the action started and obtained it by assignment later, the ability to sue for copyright can be retroactively assigned.

4. Defendant’s expert’s testimony relating to any ‘likelihood of association’ arising from the sue of the Beastie Boys’ music in a Monster Energy video, will be inadmissible as to the likelihood of confusion, as to the term may cause confusion with the jury as to the proper standard.

5. Experts may not base their opinion as to perceptions of a brand from asking co-workers in the expert’s office. This expert actually had testimony thrown out in a previous case for the same reason. Seriously?

6. The Court does a very thorough analysis of the requirement for monetary damages under the Lanham Act, laying out the disagreement among the Judges of the SDNY as to whether or not plaintiffs are required to show either (1) actual confusion or (2) bad faith, in order to obtain monetary relief. The Court concludes that they do.

Prior decision in summary judgment here.

I’m not sure what my favorite Beastie Boys song is.

beastie v monster


Two Restaurants Named COUNTRY KITCHEN About 35 Minutes From Each Other

Plaintiff, owner of a federal registration for COUNTRY KITCHEN for a nationwide chain, operates a COUNTRY KITCHEN in Patchogue. Defendant operates the NORWICH COUNTRY KITCHEN, in East Norwich, which is about 35 minutes away.

country kitchen complaint


This Is How Louisiana Spends Its Tax Dollars

moveon pick your passion

Advocacy organization MoveOn.org placed billboards in Louisiana criticizing the governor’s Medicaid policies. The billboard refers to Louisiana’s trademarked phrase ‘Pick Your Passion.’

Here is the ‘argument.’ The Lieutenant Governor’s office, which we are told is a ‘separate’ office from that of the Governor, instructs the Tourism Department. The Tourism Department is the title owner of the PICK YOUR PASSION trademark, which covers ‘Promoting culture, recreation, tourism and business in Louisiana.’ MoveOn’s billboard uses the trademark to criticize the Governor, not the Lieutenant Governor. Under the ‘Cat is Not in the Hat’ line of reasoning (ignoring the conflation of tm and copyright theories), defendant may only appropriate plaintiff’s protectable expression to comment on plaintiff, not on a third party. The Billboard uses the Lieutenant Governor’s trademark to comment on the Governor.

Seems like transparent sophistry to me. Perhaps MoveOn should consider a 42 USC Sec 1983 claim against the State of Louisiana.

Coverage here.

louisiana moveone pick your passion brief


LovelySkin.com v LivelySkin.com re Presumptions in 2(f) Regs

LovelySkin.com owns registrations for LOVELYSKIN and LOVELYSKIN.COM, which it obtained through a showing of acquired distinctiveness under Section 2(f) of the Lanham Act. It sued LivelySkin.com for infringement (both were ‘cosmeceutical’ retailers). Defendant counterclaims, moving to cancel plaintiff’s registrations. The District Court found no confusion and cancelled the regs. This 8th Circuit decision does a good job walking through the proper analysis for presumptions. Defendant raised questions whether plaintiff had acquired distinctiveness, but not enough to upend the presumption. However, defendant won the war, as the Court affirmed the finding of no confusion. Bonus discussion of whether misaddressed emails are in fact evidence of actual confusion (in this case, no).

lovelyskincom eighh circuit