Terraserver.com v Microsoft
May 02, 2008
April 17, 2008
Former Bank Members' Use Not So Chic
Internetcase.com: "Former band members' use of service mark is not so Chic:"
Rogers v. Wright, No. 04-1149, 2008 WL 857761 (S.D.N.Y. March 31, 2008)The U.S. District Court for the Southern District of New York has issued a permanent injunction restricting the use of the service mark CHIC in connection with musical performances by two former members of the musical group of the same name.
April 10, 2008
Juicy Couture v Juicy Campus
Juicy Couture sues Lime Blue, owner of juicycampus.com, a college gossip site which has allegedly been selling JUICY CAMPUS apparel. Coverage here.
April 02, 2008
Societes des Bains etc. v. MGM Mirage (Monte Carlo?)
Societes Des Bains De Mer et Du Cercles Des Etrangers a Monaco v. MGM Mirage, Inc. et al
Plaintiff: Societes Des Bains De Mer et Du Cercles Des Etrangers a Monaco
Defendant: MGM Mirage, Inc. and Victoria Partners, L.P.
Case Number: 1:2008cv03157
Filed: March 28, 2008
Court: New York Southern District Court
The complaint is not available and there appears to be no press on this yet. I'll note that plaintiff manages the Monte Carlo casino in Monaco, and MGM Mirage manages the Monte Carlo resort and casino in Las Vegas. Plaintiff owns two registrations that incorporate the term MONTE CARLO.
March 28, 2008
Phenomenon Licensing v MySpace
Extensive discussion of lawsuit against MySpace by the Las Vegas Trademark Attorney here.
March 21, 2008
A Variant Of The Tautological Problem WIth "Natural Areas Of Expansion"
Softbelly sold SCREENIE BEANIES, bean bag toys with chamois bellies to be used in wiping a computer screens.
Softbelly’s objects to the judge’s having permitted Ty to present evidence of “Beanie” products that Ty marketed after “Screenie Beanies” entered the market. Obviously those products could not be used to show that the “Beanie Babies” trademark was in use before “Screenie Beanies” was, but they could be used as evidence of the likelihood that consumers would be confused about the source of “Screenie Beanies.” Carnival Brand Seafood Co. v. Carnival Brands, Inc., 187 F.3d 1307, 1311 n. 4 (11th Cir. 1999). The greater the variety of products to which “Beanies” or “Beanie Babies” is attached, the likelier it is that consumers would assume that a new “Beanie” product that closely resembled “Beanie Babies” was also made by Ty.
And may therefore be the reason plaintiff choose to enter that particular new area at that particular time.
Ty v Softbelly (7th Cir Feb 2 2008). Also, interesting discussion of witness tampering by Ty. Also litigation that BEANIE is generic for bean-bag plush toys is left for another day.
March 18, 2008
Phat Fashion v Victoria's Secret re P logo
Phat Fashions LLC v. Victoria's Secret Stores Brand Management, Inc.
By New York Southern District Court
New York Southern District Court
- Trademark
Filed: March 14, 2008
Plaintiff: Phat Fashions LLC, Phat Fashions LLC, Phat Fashions LLC Defendant: Victoria's Secret Stores Brand Management, Inc.
Case Number: 1:2008cv02745
March 11, 2008
SPRINGFIELD WILDCATS v. SHELBYVILLE WILDCATS
Or more accurately, Boston Red Sox vs. Yarmouth-Dennis Red Sox, of the Cape Cod League.
March 04, 2008
Wow, A Trademark Case About Accordions
Defendant advertises his accordions as 'orginal GABBANELLI' accordions from the 'orginal factory' when that is, allegedly, not the case.
Gabbanelli Accordions & Imports v. Isca Brilingtton dba West Coast Music, 2:08-at-00248 (ED Cal Mar 3 2008) (copy of complaint upon request).
February 10, 2008
"Scrabulous and the New Social Operating System"
February 01, 2008
Eames Office v Pod Hotel
Eames Office licenses the IP of Charles and Roy Eames. They created the Dot Pattern in 1949 and Eames Office published it as a fabric in 1999. The Pod Hotel obtained a swatch but did not purchase the licensed fabric. It instead allegedly purchased a 'knock off'. The Eames pattern was used in promotional material for the hotel and noted in reviews of the hotel.
Eames Office has now sued on copyright and trademark grounds.
Eames Office, LLC and Mahram Fabric Corp. v. BD Hotels LLC, Swavelle/Mill Creek Fabrics, Inc. and Vanessa Guilford, 1:2008cv00988 (SD NY January 30, 2008).
Monster v Franchise Monster
Monster provides services for employers and job seekers. Franchise Monster provides franchise and business opportunities information. Monster is seeking a preliminary injunction.
Monster Worldwide v. Franchise Monster Corp., 08 CV 0956 (SDNY Jan 29 2008).
January 26, 2008
"Gola Kicks Globe Into Touch:
IPKat: "Gola Kicks Globe Into Touch":
J
acobson acquired the GOLA footwear brand and its associated intellectual property rights way back in 1996. Globe sold and imported footwear into the United Kingdom, including shoes known as 'Globe Finale', 'Globe Wedge' and 'Globe Motto'. Globe's shoes featured a stripe design on the sides known as the 'Globe side design' and the word 'globe'. Jacobson sued for infringement of its UK and Community registered trade marks (above, left and right) for its 'Wing Flash' logo in respect of Globe's markings on its trainers (illustrated below, right). Jacobson also alleged that Globe was passing its footwear off as its own, seeking an injunction and the destruction of the offending products. Globe counterclaimed for a declaration that Jacobson registered trade marks were invalid.
LuLu Settles With Hulu
LocaTechWire.com: LuLu Settles Lawsuit Against Hollywod's Hulu:
Bob Young, founder and chief executive officer of Lulu, has dropped his trademark infringement lawsuit against Hulu, the Fox- and NBC-backed online video Web site.. . .
Lulu filed suit against Hulu last fall after the Hollywood venture disclosed its name. Young felt that Hulu would create confusion in the marketplace since it is so similar to Hulu. The case immediately ran into a setback when a judge threw out the suit, saying no damage had yet occurred.
A friend of mine uses LuLu's self-publishing service. I personally used the beta version of Hulu to catch up on some old episodes of Heroes.
January 23, 2008
Any Pretext For Running Photos Of Dogs
Mystic Krewe of Mardi Paws receives demand letter from Have A Heart Through Art, owner of registration for MARDI PAWS.
Citizens United vs Citizens United Not Timid
Washington Times: Inside Politics:
Two organizations with slightly different names are united in their opposition to Sen. Hillary Rodham Clinton's presidential campaign. And now they may be united in a trademark dispute.Citizens United, the conservative group headed by David Bossie that just released its sixth documentary, "Hillary: The Movie," has sent a cease-and-desist letter to a so-called "527" political group organized by legendary Republican prankster Roger Stone.
You Be The TTAB
QUESTIONARY THE GAME OF SMART QUESTIONS and design, for board games vs PICTIONARY for 'equipment sold as a unit for playing a board game.' Assume the goods are legally identical and travel in the same trade channels.
Answer on Friday.
January 16, 2008
Absolutely Scrabulous?
MSNBC: "Facebook Asked To Remove 'Scrabulous'
Merriam-Webster tells us that SCRABBLE is derived from the Dutch word schrabbelen, or to scratch. HARDSCRABBLE suggests a 'hard scrape' in farming marginal land. Many U.S. dictionaries identify the board game as the first definition of the word SCRABBLE, and 'scramble' or 'scribble' as secondary definitions.
January 06, 2008
Latter Day Saints vs. Latter Day Saints
Examiner.net: "Churches Fight Over Name Use in Court":
The Community of Christ has obtained a temporary court order protecting rights and ownership of its previous name, the "Reorganized Church of Jesus Christ of Latter Day Saints" and its recognized initials, "RLDS."
December 21, 2007
Major League Baseball v Major League Moving
Major League Baseball Properties v. Major League Moving and Associated Capital Services, 4:07 cv 565 (ED Texas Dec 19, 2007).
Hard to believe. Look forward to hearing how this turns out.
December 18, 2007
GIRLS GONE WILD v. GIRLS GONE WINE
I think we know where the NY Lawyer stands on this: "'Girls Gone Wild' Goon Sues 'Girls Gone Wine'"
December 13, 2007
See Spot Allege Likelihood of Confusion
It's a snow day so I'm home with Banner and Ollie. Both dogs have been following the Chewy Vuitton and Jucy Crittoure cases with interest. Ollie, who is half border collie, brings to my attention Woof, Inc. v. The Dog Spot, 07-cv-02229-RCL (D.C. D.C. Dec 13 2007). Both parties are pet supply stores in the D.C. area. Plainitff uses A.K.A. SPOT, while defendant uses THE DOG SPOT.
December 06, 2007
TOP v. Fresh-Top Canister
Seventh Circuit: Use of "Fresh-Top Canister" on canister of ZIG-ZAG tobacco not even close to confusing or dilutive of TOP brand tobacco. The fact that the word TOP appears on tobacco packaging all the time was relevant to the dilution analysis.
Top Tobacco and Republic Tobacco v. North Atlantic Operating Company and National Tobacco Company, 07-1244 (7 Circuit December 4, 2007) (Easterbrook, J.). visa AltLaw.
The guy on the Zig-Zag label is apparently a Zouave Soldier.
November 27, 2007
Dagwood v. Dagwood
A Dagwood sandwich is a very big sandwich, named after the comic strip character, Dagwood Bumsted, who liked to make big sandwiches. An Indiana company alleges that it has operated Dagwood sandwich shops in Indiana since the 80's. A nationwide chain, Dagwood Sandwich Shops, LLC, has federal registrations. The Indiana company sued the chain in Indiana state court; the chain has now removed to federal court.
Of interest: "Dagwood Sandwich" has become a dictionary word, while King Features still syndicates "Blondie and Dagwood."
Dagwood's Deli-sub Shop, Inc. v. Dagwood's Sandwich Shoppe, LLC, 2007cv01507 (S.D. Indiana Nov 21 2007).
November 19, 2007
Anytime Fitness v. Premier Mortage: Can-Spam and TM Infringement Complaint
Anytime Fitness is a fitness center franchisor. Premiere Mortgage is a Flordia-based mortgage lender. Plaintiff Anytime alleges that Defendant Premiere sent spam to Anytime's franchisees in violation of the CAN-SPAM act. What is interesting is that Plaintiff also alleges trademark infringement, however it is not clear (to me) from the complaint how Premiere Mortgage used the ANYTIME FITNESS mark in its spam.
Anytime Fitness, Inc. v. Premiere Mortgage Capital, Inc., 07-cv-04633-RHK-JSM (D. Minn, Nov 16, 2007)
November 15, 2007
Golden Compass Sues Beyond Golden Compass in EDNY
Producers of upcoming theatrical movie "Golden Compass" sue producers of DVD entitled "Beyond The Golden Compass" on copyright and trademark grounds. "Beyond the Golden Compass," marketed as a tie-in, promises to:
Unlock the astonishing truths and hidden meanings inside the pages of Philip Pullman's The Golden Compass, the best-selling fantasy novel -- and now major motion picture -- that has captured the imagination of millions worldwide. This cutting edge film examines the secret codes and symbols of Lyra's world -- a parallel universe where each person is guided by their animal daemon and where dark, evil forces lurk behind facades of piousness and beauty. Utilizing the latest CG animation, stunning on-location re-enactments and rare archival footage, Beyond The Golden Compass: The Magic of Philip Pullman also includes revealing interviews with historians and experts as well as an exclusive talk with the author himself.
New Line Cinema v. Koch Entertainment, CV 07 4782 (E.D.N.Y. Nov. 15, 2007).
November 13, 2007
TROPICANA v TROPICANA
Business Courier of Cincinatti: Lawsuit Challenges Ruby on Tropicana Name"
"Bill Yung's Tropicana Entertainment LLC, the owner of the Tropicana hotel and casino chain and its Las Vegas flagship, has filed a trademark infringement lawsuit against Jeff Ruby Culinary Entertainment Inc.
Tropicana Entertainment contends that Ruby's use of the Tropicana name and trade dress at his Tropicana restaurant in Newport infringes on its trademark, which its predecessor registered for hotel and restaurant services in 1989."
November 01, 2007
HuLu Not In UGC; LuLu Loses Prelim
Lulu assists in self-publishing content, including user-generated content (UGC) in video form. Hulu is the much-discussed joint venture between NBC and Fox that will distribute video content online. The venture had filed a trademark application covering a broad array of services, that could include the distribution of video UGC. Additionally, Hulu has sometimes been described as a potential competitor of YouTube, and that may give rise to the perception that Hulu would distribute UGC.
Lulu filed a trademark suit, alleging that LULU and HULU were confusingly similar, and brought a preliminary injunction motion, arguing that, with its massive resources, were Hulu to enter the UGC field, it would cause irreparable harm to Lulu's fledgling business.
However, under a sealed record, Hulu provided evidence that it will, at least for now, stick to distibuting Network-fare, and not UGC. The identification of other services in its trademark application would not support a finding of that HuLu was about to become a direct competitor of plaintiff. As HuLu was not a direct competitor, there was no finding of imminet irrelarable harm to justify urgent relief. The judge noted that were Hulu to move into UGC, then the court would reevaluate at that time.
Lulu v. N-F Newsite, LLC, 5:07-CV-347-D (EDNC Oct 19 2007) (copy upon request).
October 31, 2007
Legal Aid v. Legal Aid
Enquirer.com: "Legal Aid Sues Alleged Copycat"
"The Legal Aid Society filed the suit this week after learning several potential clients mistakenly called Legal Aid Alternative for help, only to be turned away or charged $350 for useless documents."
October 29, 2007
"Hey Google! Where'd You Get That Logo?"
Interesting analysis from the designer of the SMASHLAB logo above, discussing the similarities between the two logos, in a designer's terms.
October 22, 2007
HIGH DEFINITION LIVING v. HIGH DEFINITION LIVING
Press Release: Nuvision Files Lawsuit Against Panasonic For Trademark Infringement:
NuVision® U.S. Inc., a Scottsdale, Ariz.-based manufacturer of high performance 1080p LED DLP and Deep Black™ LCD HDTV displays, announced today that it has filed a lawsuit in the United States District Court for the District of Arizona against Panasonic Corp. of North America seeking to prevent Panasonic from infringing upon and deliberately copying and using NuVision’s registered “High Definition Living” trademark.
October 17, 2007
GIGANTIC v. WE ARE GIGANTIC
Adrants.com: "Gigantic Goes After MDC's WE ARE GIGANTIC For Trademark Infringement":
"Both GIGANTIC and We Are Gigantic are located in New York. Urban has taken issue with MDC naming its new shop We Are Gigantic and has filed suit against We are Gigantic, L.L.C. and Neil Powell claiming trademark infringement.
Urban tells us, "Neil has offered to peacefully co-exist with our company by offering a plan for differentiating our brands, but so far I have seen nothing that remotely attempts to accomplish this. I am flummoxed as to why this so difficult a document to produce for someone who is supposedly so proficient in branding. Specifically, I find the use of the color red in his logo to be particularly naive, given the use of red in our logotype."
October 11, 2007
SPRINGFIELD WILDCATS v. SHELBYVILLE WILDCATS, con't
DailyPress.com: Arizona State Sun Devils vs. Salem High Sun Devlis.
Trademark Blog collegiate/high school trademark dispute archives here.
October 10, 2007
First Niagara v. First Niagara
We filed a trademark infringement suit on behalf of First Niagara Insurance Brokers, Inc. today, against First Niagara Financial Group, Inc.
Here is the text of the complaint
You may recall that this dispute was the subject of a Federal Circuit decision regarding use in commerce.
September 14, 2007
BARELY THERE v BARELY THERE
September 10, 2007
What's Swahili For "Yeah, Sure It Is"
LuLu sues Hulu and TechCrunch convinces the world that HULU is Swahili for cease and desist.
September 01, 2007
Bad Week For ICONIX
August 16, 2007
More on J&J v American Red Cross
American REd Cross press release: "American Red Cross Defends USe of Emblem and Mission."
August 01, 2007
Fashion Week v. Fashion Week
MiamiHerald.com" "Fight Develops Over 'Fashion Week":
"Fashion aficionados know that in Miami, there are three separate runway events that all get referred to loosely as ''fashion weeks'': Fashion Week of the Americas, Funkshion Fashion Week Miami and, most recently, Mercedes-Benz Fashion Week Miami Swim.
That's a lot of fashion and a lot of weeks. Each is run by a different company, solicits different designers and fills a different fashion niche.
Now, a court battle is emerging over which is the real ''Miami Fashion Week'' with legal claims to the name."
July 13, 2007
Chunky Monkey v Chunky Monkey
Current Trends: "Chunky Monkey Goes to Court . . . Again."
June 20, 2007
Rain v. Rain
Current Trends in CTE: Rain, Rain Go Away (Beatles tribute band named RAIN sues Korean pop singer named Rain).
Sam I Am Not
Variety: Seuss Gives ABC Sitcom New Name (Seuss estate protests use of 'Sam I Am'; show name changed to "Samantha Be Good").
June 14, 2007
First Horizon National Bank v. Horizon Bank
Longmont FYI: "Horizon Bank Forced To Change Name" :
'“We thought we touched all the bases in regards to our due diligence,” said Allen, referring to choosing the Horizon Banks name.
He said his company hopes to announce a new name soon.'
June 13, 2007
Capital
Counterfeit Chic: "Initial Interest Confusion" (summary of acrimonious acronyms).
June 11, 2007
SPRINGFIELD WILDCATS v. SHELBYVILLE WILDCATS
When I was interviewed for this article in Athletic Management magazine several years ago, about a trademark dispute between a college and a high schooil using the same team name, I had made the point that we were going to see more high school/college name disputes because, unlike twenty years ago where high school athletics were in effect, small, single-site business not in interstate commerce, media such as regional sports TV networks and the Internet were putting high schools into interstate commerce. Thus we would see more overlap between high school, college and even professional team names, and therefire more naming conflicts Upon re-reading this article I see that the author saw fit to leave that insight out, so cancel my subscription.
Today's NY Times reports on "Marketers Joining the Varsity" noting a surge of marketing dollars into the high school athletics market, which further erodes any 'branding' distinction between the high school, collegiate and professional sports markets. One result of this mega-sports licensing market will be more conflicts, and another will be 'inherited' dilution, as many Lions, Tigers and Bears will now encounter other teams who have been using the same names as them, some for decades or longer.
May 13, 2007
Brooks v. Payless and Exeter Brands
IP and Entertainment Law Blog: 'Brooks v. Payless ShoeSource and Exeter Brands (subsidiary of Nike), re infringement over 'boomerang logo, text of complaint available.
April 12, 2007
Perhaps Katonah Is The Real SURF CITY
April 03, 2007
I Heart Dispute
WSJ.com: "We Heart Trademark Disputes Involving People Named Stewart" (re I Heart NY and the KATONAH matters).
April 01, 2007
Chooseco v. Daimler
Citizen.com: Children's book series founder sues over trademark use":
"R. A. Montgomery, founder of the children's interactive book series Choose Your Own Adventure, and his company Chooseco LLC of Waitsfield, Vt., are suing DaimlerChrysler, BBDO Detroit, Organic and Marvel Entertainment in U.S. District Court for trademark infringement.
DaimlerChrysler features the trademark Choose Your Own Adventure in their recently launched ad campaign for the new Jeep Patriot. Chooseco also seeks to injunct DaimlerChrysler and its advertising partners from continued use of their mark in the campaign."
Email me for the memo in support of the motion for preliminary injunction.
March 21, 2007
I Have The Face For Radio, continued
I participated in a podcast regarding the iPhone dispute (prior to its being settled) on the belatedly named This Week In Law with Denise Howell.
February 28, 2007
THE DIG v. DIGG
Lucas Films has a registration for THE DIG, a video game from 1995, used copies of whichI found for sale on eBay and on Vintagegaming.org.
DIGG is an archetypical 'user content' website - it is a news and information site listing stories from all over the web, based on voting by Digg members. Perhaps you've seen the DIGG THIS button below some blog posts to faciliate selection. I've previously discussed attempts to 'game' the DIGG system but that's another story.
Lucas has now filed a Notice of Opposition (not a lawsuit as reported in some places), alleging that registration of DIGG for news services about, among other things, gaming, would be confusingly similar to THE DIG for a video game. Reaction in the blogosphere is pretty much what you'd expect.
Lucas' Notice of Opposition is here. If you have a good theory as to what Lucas wins if it wins, tell me and I'll post it. My totally speculative theory, unfettered by actual facts, is that Lucas is keeping its options open for adapting THE DIG into a different property, perhaps a movie, and will want to broaden its coverage. Steven Spielberg reportedly conceived this game and Orson Scott Card wrote the dialogue for it, so why not?
February 15, 2007
Has Levis Sued Esprit Again?
I reported in 2003 that Levis had sued Esprit over a red tab on jeans. I see that Levis has sued 'Esprit Us Distribution' in the Northern District of California, on Tuesday. There are no news reports, and the complaint isn't available on ECF. I might as well link to my recent post on Levis
February 12, 2007
February 05, 2007
Apple Ends Dispute With Beatles Over Trademarks
Bloomberg: Apple Ends Dispute With Beatles Over Trademarks
In 2003, I wrote here:
"In 1989 Apple Computer paid Apple Corps. (the Beatles' label) $27 million to settle a trademark lawsuit. I believe that Apple also paid several million in legal fees at the time (Apple's unsuccessful attempt at getting insurance to pay its fees reported here). Without seeing the 1989 settlement agreement, I can't comment on the somewhat surprising news that Apple Computer launched its new iTunes service without assurance that Apple Corps. wouldn't sue again. It has . . . This makes Apple Computer look like a repeat offender."
January 12, 2007
2d Cir: Shake It Like A Polaroid Factor
2d Circuit decision in Louis Vuitton v Burlington Coat Factory discussing proper application of the Polaroid factors (the test of likelihood of confusion in these parts):
In applying the Polaroid factors during resolution of the parties’ claims at a trial
on the merits, the District Court should consider not only the potential for consumer
confusion as to the source of the marks in question, but should also consider the potential for confusion as to the “sponsorship, affiliation, connection, or identification” of those marks. Star Indus. v. Bacardi & Co., 412 F.3d 373, 383 (2d Cir. 2005). The District Court should give particular attention to the Polaroid factors in light of the potential for types of confusion other than source confusion, focusing perhaps especially on (1) the proximity of the products and their competitiveness with one another, (2) evidence that the imitative mark was adopted in bad faith, and (3) sophistication of consumers. See, e.g., Lois Sportswear, U.S.A., Inc. v. Levi Strauss & Co., 799 F.2d 867, 874-75 (2d Cir. 1986); Sports Auth. v. Prime Hospitality Corp., 899 F.3d 955, 964 (2d Cir. 1996). In considering both source and non-source confusion, the district court should ensure it gives adequate weight to the strength of the Louis Vuitton trademark when weighing the various Polaroid factors. See Louis Vuitton Malletier v. Dooney & Bourke, Inc., 454 F.3d 108, 116 (2d Cir. 2006). Finally, we note that the potential for non- source confusion and its applicability to the Polaroid factors may be relevant to Louis Vuitton’s claims under New York’s anti-dilution statute, New York General Business Law Section 15 360-l (McKinney Cum. Supp. 2007). See Hormel Foods Corp. v. Jim Henson Prods., 73 F.3d 497,16 506-08 (2d Cir. 1996).
January 10, 2007
Unfrigginbelievable - Cisco Sues Apple Over iPhone
Reuters reports that Cisco sues Apple over its use of IPHONE. Yesterday, Cisco had indicated its belief that it would receive a signed copy of an agreement.
UPDATE: Cisco alleges use of front company.
There's a U.S. application filed here in September, claiming March 2006 priority based on a Trinidad and Tobago application, in the name of Ocean Telecom Services. Cisco alleges that this is a front company for Apple.
UPDATE: Cisco's statement.
UPDATE: NY Times on the lawsuit, quoting Apple VP for World Communications.
January 08, 2007
Perry Ellis Sues J Crew Over Penguin Design
PEI Licensing, a subsidiary of Perry Ellis, owner of the Munsingwear PENGUIN trademark, has sued J Crew in the Southern District of New York, alleging that various items of clothing bearing penguins, including the PENGUIN CRITTER CARDIGAN depicted above, infringe and/or dilute its famous PENGUIN trademark. Complaint on Pacer.
PEI Licensing v. J Crew International, 06 CV 15385, SDNY Dec 21 2006.
December 28, 2006
The Penumbra Of Marilyn Monroe and Betty Crocker and Aunt Jemima
Plaintiff winery licensed the MARILYN MONROE name and likeness from the Monroe licensing entity, and sold wine under the MARILYN MONROE brand for many years, displaying a succession of images of Marilyn on its labels, over the years. At one point it also licensed the copyright in a famous nude photograph of Marilyn on Red Velvet, from the photographer (historical aside - nude photos used to be scandalous) and sold wine with the photo on the label. The photographer terminated the license and then licensed the photo to Defendant, a different winery, which reproduced the photo on its label. Plaintiff sues on trademark infringement for use of a photo that it can no longer use, but defendant can.
As discussed here by Prof Patry, plaintiff prevails. Even though defendant utilized the work under a valid copyright license, such use created a likelihood of confusion with plaintiff's trade dress, which consisted in part of the likeness of Marilyn on the label. The good professor questions the decision, noting the paradox that the plaintiff could prohibit the use of an image by the rightful owner, when itself could not use that image.
I've been emailing and phoning Bill this week about this paradox, and I think we pretty much agree now that the decision is ok. I guess I would phrase it this way - the bundle of rights that is a trademark, contains a negative right to prohibit all those usages that would create the likeihood of confusion but the bundle of positive rights is not identical - the trademark owner cannot use all similar images to its own, if it does not own copyright in them.
Example: Coca Cola has by now built up strong rights in the use of polar bears as trademarks for Coke. I might create a polar bear and own valid copyright in it - except that I cannot use it as a trademark for soda if it creates a likelihood of confusion with Coke's trademark rights (and, Coke cannot use an image of a polar bear that infringes my copyright in my polar bear).
So the scope of protection for a 'fluid' trademark can be hard to articulate with precision. Take images that have been updated many times over the years, such as the BETTY CROCKER or AUNT JEMIMA logos. Some of these images have been modified so any times that, from a copyright point of view, had they been independently created, the first in the series might not infringe the copyright in the last of the series (see the series of Betty Crocker images below, for example).
One would have to do a likelihood of confusion analyis of the marks still in use, a copyright analysis of images no longer in use, as well a 'residual goodwill' analysis of logos no longer in use, to identify all the potential images that would infringe the trademark rights in this 'series' of marks. I'll call the totality of the prohibited usages the negative penumbra.
However, within that negative penumbra may be certain images in which third parties lawfully own the copyright, for example because it was an artistic work that makes fair use of the protected image.
It would seem therefore that the 'positive penumbra' of trademark rights would be smaller than the negative penumbra, as the trademark owner would not itself be able to use those images without the permission of the copyright owner - the Red Velvet Marilyn photo being one such example.
Berry Croker image from here.
'Home Cookin' image from here.
December 21, 2006
Wrestler v. Jay-Z Over 'Diamond Cutter' Hand Gesture
Wrestler Diamond Dallas Page is suing rapper Jay-Z and Rocwear and Roc-a-fella Records over use of a 'diamond cutter' hand gesture. Diamond Dallas Page v. Shawn Carter p/k/a/ Jay-Z, 2:05-cv-08475-DSF-JWJ (C.D. Cal 2006). Coverage here. Given that the complaint is not available on Pacer, we can't evaluate some fairly novel elements here, such as the description of the mark, the manner in which defendants used the mark, and how one person using a hand gesture can be confused with another person using a hand gesture.
UPDATE: depictions of the hand gesture here.
December 14, 2006
REAL CARS v CARS
"In a federal lawsuit filed last month in Oklahoma City, Collectible Promotional Products Inc. of Woodward, Okla., claims Disney and toy company Mattel Inc. incorrectly used a similar trademark to its “Real Cars” line of collectible toy cars.
CPP said it has been using a chevron design with the words “Real Cars” above it since 1994. The company applied for a federal trademark, which was granted in 1998. CPP contracted with Mattel to make and package limited numbers of Hot Wheels toy cars such as the Carroll Shelby Limited Edition 1965 Shelby Cobra 427 S/C."
November 29, 2006
Disclaimed Too Late: Sixth Circuit Initial Interest Confusion Decision
Audi AG v. D'Amato dba Quattro Enthusiasts (05-2359) (6th Cir Nov 27, 2006) (AUDISPORT.COM infringes and dilutes AUDI).
November 28, 2006
Evidence Of Secondary Meaning In TV Catchphrases?
I confess that I have used the expression "Whachoo talkin' about Willis?" without ever having seen a single episode of "Diff'rent Strokes" (nor have I ever spelled 'different' as 'diff'rent') but I am aware where the phrase comes from.
Noted authority TV Land, is coming out with a special "The 100 Top TV Catchphrases." Purists will be annoyed that they have combined lines from comercials ("I Can't Believe I Ate The Whole Thing"), political expressions ("Read My Lips"), one time memorable lines ("I Don't Like Spunk") and what I would regard as true catchphrases, repeated phrases ("Aaay" or "D'oh!").
Ironists will note that Hank Kingsley's "Hey Now!" is on the list, as it is a parody of a catchphrase.
Moralists will note that two catchphrases on the list end in 'Bitch!', including Dave Chapelles' 'I'm Rick James, Bitch!", which, coincidentally, is how our firm signs its demand letters.
At least one phrase is the subject of an IP case, 'Here's Johnny!' Carson v. Here's Johnny Portable Toilets, Inc., 698 F.2d 831 (6th Cir. 1983), which went off on rights of publicity. I'm sure there are more cases - please email me.
The question arises - if a catchphrase enters the lexicon, does that diminish or enhance its protectability? Does 'Where's The Beef?" signify Wendy's, or Walter Mondale, or does it have it's own significance at this point?
Note the trilogy above: does Homer's parody refer to Johnny Carson, or to Jack Nicholson, or to both?
Here's Johnny by Stephen Cox available here.
Here's Johnny by Ed McMahon available here.
November 14, 2006
Some People Claim That There's A Woman To Blame
Reuters: "Singer Buffett sues alleged trademark infringer."
October 20, 2006
SPRINGFIELD WILDCATS v. SHELBYVILLE WILDCATS
OK, Springfield Wildcats vs. Shelbyville Wildcats is a gag from The Simpsons, but, as is always the case with The Simpsons, there is a profound truth hinted at here, involving the coexistence of scholastic team names.
The Des Moines Register tells us of a dispute between the University of Wisconsin and the Waukee High School, over the use of a W logo. A couple of years ago I was interviewed by a collegiate licensing magazine and I said many brilliant things about how the Internet and regional sports cable channels, as well as more aggressive scholastic licensing programs, were upsetting the delicate balance that allowed college and high school teams to coexist with similar names without confusion. I have located the article which ran none of that good stuff but merely went with my commonplace quotes (pick a good trademark - great advice).
I can't remember exactly what I said so I will defer to Madisonian.net for its own proposed rule for college/high school dispute resolution. And btw, their Badger Badger Badger title is a reference to a cartoon as well.
October 03, 2006
You Can't Make Up This Kind Of Irony
Congratulations to the Foley Hoag firm, which won the exclusive right to be called FOLEY,
today.
September 25, 2006
Apple To Protest Use of PODCAST?
According to Wired and others, Apple has protested the use of PODCAST READY and MYPODDER. This is the first report, to my knowledge, of Apple protesting the use of a PODCAST mark (it does protest POD-variant marks. I would want to see the demand letter before I commented further.
Apple's trademark guidelines are here. PODMART is given as an example of the sort of mark that Apple would object to.
September 20, 2006
Hard Rock Cafe v. Hard Lox Cafe
Hard Rock Cafe complains re use of HARD LOX CAFE as name of not for profit festival. Note reference to how Hard Rock was 'obligated' to complain.
My Life, My Card, My Second Lawsuit
Second time someone claimed prior rights in American Express' MY LIFE MY CARD slogan.
First time reported here, apparently later settled.
September 12, 2006
EBay Sues Over Its ITs
From the Plaintiffs' Lawyer Blog, we learn that eBay is suing WorldClassAuctions.com (source of the second tagline above) on 13 counts of trademark infringement (link to complaint there). EBay alleges trade dress in its home page (always an interesting theory), as well as its IT mark.
August 10, 2006
Boycott Old Navy If You Feel Like It
Details via Counterfeit Chic here.
August 08, 2006
Foley v. Foley Con't
Foley firm settles trademark dispute with Foley firm.
Suggested advertising slogan for everyone else:
"Go With The Trademark Firm Not Embroiled In A Trademark Dispute"
August 07, 2006
You Can Get Dizzy Thinking About This
Wall Street Journal: On MySpace, Millions of Users Make 'Friends' With Ads (Free online today only), on the practice of movie studios to create MySpace personal pages for fictional characters from their movies, such as Ricky Bobby of "Talledega Nights," and John Tucker of "John Tucker Must Die." Presently there are numerous MySpace pages for fictional characters, maintained by fans. In response to the John Tucker page, one MySpace user notes:
"It's very coy. They're being sneaky," says Jesse Kozel, a 25-year-old from Florida, listed John Tucker as his friend without realizing the studio paid for the site. Mr. Kozel says he knew the site wasn't run by the actor, but assumed it was one of the many hundreds of amateur sites created in honor of movie characters.
So he mistakenly concluded that the authorized site wasn't authorized. False false endorsement?
July 27, 2006
SciFinder Scholar v. Google Scholar
News.com: "Google Scholar trademark case ends."
July 13, 2006
The Website Formerly Known As NPGMC
Price closes his website at NPGMusicClub.com and his attorney says it has nothing to do with a recent lawsuit brought by antoher NPG.
June 22, 2006
ROMANTIC INTERLUDE v. PROVOCATIVE INTERLUDE
Stephan Co, says that Elizabeth ARden infringed its INTERLUDE trademark through sale of Arden's PROVOCATIVE INTERLUDE product. Elizabeth Arden says the suit is without merit.
Not mentioned in the story: Stephan apparently sells under the ROMANTIC INTERLUDE mark.
June 16, 2006
Milbank v. Milbank, Foley v. Foley
NY Times: "Law Firms, Unflattered, Turn on Soundalikes."
June 05, 2006
Paradise By The Dashboard Light
WSJ Law Blog: