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?
Philadelphia Eagles Sue Radio Station For Ticket Giveaways
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 AND CLINTON KELLY MAKE OVER AMERICA v MAKE OVER AMERICA
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.
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.
The Return of Societe Comptoir De L'Industrie v Alexander's Dep't Store?
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?
WSJ: Gild By Association (discussion of various forms of marketing involving a third party's trademark such as ambush marketing, comparative advertising and parody).
Jones Day has sued a website that highlights lawyers—even posting their photos and linking to firm biographies—and other professionals who buy and sell their homes in Chicago, Las Vegas, St. Louis and South Florida.
Plaintiff uses the mark UTAH LIGHTHOUSE in connection with goods and services that critque Mormonism. There has been extensive history between plaintiff and the LDS faith. Defendant FAIR responds to such critiques, and created a parody website that was similar in appearance to that of Plaintiff. Defendant used domain names such as UTAHLIGHTOUSE.COM to direct to the parody site (the names listed in this summary of the case on the Citizen Media Law Project's site all appear to point to plaintiff's site as this time).
There are complex and controversial issues here involving the intersection between trademark use and parody, and what constitutes commerical use of a trademark in a primarily religious/political speech context, similar to the issues raised by cases such as PETA v Doughney and JEWS FOR JESUS v Brodsky
Which issues I will not address in this post today.
I instead want to talk about the strange way the issue of whether plaintiff had a protectable mark was handled. Plaintiff received a registration 3119677 for UTAH LIGHTHOUSE after filing its complaint. Sections 7(b) and 33(a) of the Lanham Act discuss the evidentiary presumptions that a registered mark receives, including the validity of the mark as a protectable mark. See also McCarthy Section 32.134 and 32.138 for a general discussion of the presumptions that flow from a trademark registration.
In addressing the requirement as to whether it owned a protectable mark, plaintiff appears to have only cited its registration and relied upon the presumption. The District Court held that because the mark was not registered at the time the suit was filed, plaintiff was not entitled to that presumption (pg. 8) and then found that plaintiff had not shown secondary meaning (and then proceeds on a tangent about the absence of secondary meaning).
On appeal, plaintiff argues that even without the presumption, UTAH LIGHTHOUSE was inherently registrable.
The 10th Circuit choose not to entertain this argument as it had been raised only on appeal for the first time.
Oddly, it also finds that plaintiff failed to produce sufficient evidence that UTAH LIGHTHOUSE was protectable. If the registration was in the record, then, because it was issued under Section 2(a) and not 2(f), it would seem to be at a minimum evidence of the PTO's expert opinion that UTAH LIGHTHOUSE was inherently registrable as of March 21, 2005, the application's filing date (prior to the date that the suit began). With a minimum of evidence of trademark use (such as plaintiff's website), it is hard to see how defendant could establish that the mark wasn't protectable.
It could be that plaintiff's travails could have been avoided by plaintiff merely arguing in effect 'we are entitled to a presumption because of our registration but in any event, the mark is inherently registrable . . .', and that the court is penalizing the lawyering (unfettered by knowledge, I speculate freely).
As I stated above, I'm not speaking to the questions as to whether defendant's actions rose to commercial use, and whether it had good parody or other defenses. Based on one reading of the circuit court opinion, and none of the underlying documents, the holding that UTAH LIGHTHOUSE was not a protectable mark seems problematic at best.
"to collect, exhibit, preserve and interpret the art and archives of Frederic Sackrder Remington, the renowned American artist. The Frederic Remington Ar Museum houses a comprehensive collection of original Frederic Remington bronze sculptures, paintings, and sketches as well as a broad array of the artist's personal effects and correspondence. "
The Frederic Remington Trust 1861 is alleged to be a foreign trust located in Mexico. It obtained U.S. registrations for FREDERIC REMINGTON for various goods. It enforces those trademark rights against what the Museum alleges would be otherwise lawful sales of Remington sculpture replicas. It also holds itself out as the Frederic Remington Art Museum Foundation on its website. The Museum has now sued the Trust.
Frederic Remington Art Museum and Frederic Remington Art Museum Foundation v. Gregory Dean Shideler, Frederic Remington Trust 1861, LLC, Myong Hwa Lim and Sang H. Yoo, Case Number: 7:2008cv00109 (ND NY January 29, 2008) (Complaint upon request).
An interesting TTAB decision on the use of an artist's name as a generic term that one may fairly use to describe the work of that artist, as opposed to its use as a trademark is Michael Sachs v. Cordon Art, BV, opp 95655 (TTAB July 2000).
Trump Sued For $1 Billion Over Trademark Dispute In Vegas
Nights at Vegas is a property management company that will rent out condos on behalf of their owners. Among the condos it promotes are those in Trump properties in Vegas. Trump (which also markets condos on behalf of owners) sent a demand letter, alleging that NAV had misused the TRUMP trademark (and made false statements in connection with marketing the condos). NAV has sued, requesting a declaratory judgment that its use of the TRUMP mark in non-infringing, and alleging that Trump has engaged in monopolistic practices in the marketing of these condos.
Nights at Vegas v Trump et. al., 2:2008cv00122 (D Nevada Jan 26, 2008) (complaint upon request).
Avis Contests Law Blogger's Use of AVIS Logo In Law Blog Article Discussing Matter That Concerns Avis
In September, the New York Personal Injury Blog reported on a court decision in which a federal judge held that a 2005 federal law that abolished vicarious liability for car renting and leasing companies. It illustrated the article with the logos of Hertz and Avis.
Mr. Turkewitz: This particular piece has just been brought to my attention.
We have the greatest respect for your right to express your opinions on your blog, but that does not include the right to use Avis' trademark as you have done in this particular piece.
Understandably, trademark law is not within your area of expertise. Therefore, we trust that this was done out of ignorance and not based on an intent to misuse our mark to the benefit of your personal injury practice.
We ask that you remove it immediately and refrain from any similar use in the future.
Thank you for you prompt attention to this request.
Fred Grumman
Associate General Counsel
Avis Budget Group, Inc.
Daniel Moore paints photorealistic paintings of Alabama football. The NY Times reports that the University of Alabama has now sued, alleging trademark infringement arising from his use of the Crimson Tide's Crimson. The article notes that Alabama had previously allowed Moore press access to the field (raising contractual issues), that Moore has been doing this for many years with great success (raising acquiesence issues), and that what seems to annoy Alabama the most is that Moore is now selling merchandise in addition to his paintings.
The online version of the article contains a slide show entitled "Art and the Law" which reproduces the subject work from the relevant Tiger Woods case and the Three Stooges v Saderup case. The Tiger Woods case seems particularly relevant here (although that case pitted Wood's right of publicity against the artist's First Amendment rights). In that case, an artist sold lithographs of winners of the Masters golf tournament. Many media entities weighed in with amici briefs in that matter, discussing the First Amendment aspects of that case.
Commentary on Moore case.
E! Online: "'Heroes' Lawsuit Down the Drain" (Manufacturer of in-sink disposal objects to depiction of product in NBC show 'Heroes' - a super hero character displays prowess by placing her in hand in said disposal). HT Nerdlaw.
Modified version of LA strip club used in background of video game. Infringement action dismissed on summary judgement. Name of club was changed from PLAY PEN to PIG PEN, but logo, trade dress (including a sign saying 'Totally Nude') allegedly unchanged.
In the movie, 'Defending Your Life,' Albert Brooks dies and in the waiting room for heaven he meets the guy who claims to have coined the term TOTALLY NUDE.
You Can't Include the Term 'EBAY' In Your Trademark or Tradename
. . . unless you're eBay. Incidental to doing a search, I noticed that there were a gazillion dead and soon to be dead trademark applications for businesses providing ancilliary services to eBay sellers (e.g. WE WILL SELL YOUR STUFF ON EBAY FOR YOU or JOE'S EBAY DROP SHOP). These applicants could possibly use these terms to truthfully describe their businesses, but they simply can't own a trademark that incorporates the mark of another. Just trying to save you the $275 or $325.
The Department of the Army owns a federal registration for WEST POINT covering multiple goods and services. West Point Graduates Against The Waris an organization of West Point graduates against the war. The Army has sent them a demand letter.
Some cases involving trademark use by advocacy organizations include Brach van Houten Holding v. Save Brach's Coalition, 856 F. Supp. 472, 31 USPQ2d 1786 (ND Ill 1994) (no online version available), where the trademark owner sued the union for using the BRACHS mark to name an ad hoc anti-management group. See also International Assn of Machinist and Aerospace Workers v. Winship Green Nursing Center, 96-1206 (1st Cir. Dec. 30, 1996), where the union sued the trademark owner for using the union's trademark in informational material during the dispute.
However it seems that WPGAW's focus is not really West Point and its policies. This case may fall more cleanly into fact patters such as Playboy Enterprises, Inc., v. Wells, 279 F.3d 796 (9th Cir. 2002), which hold that you may truthfully identify prior affiliation providing that such use is not confusing.
Practice pointer: It would appear that the NY Times reported on the existence of West Point Graduates Against The War because of the demand letter.
HOG is a trademark of Harley Davidson. I apologize in advance but I couldn't find confirmation as to why Harley's are known as HOGs. I dimly recall that it was a reference to the distinctive sound of a Harley engine (which, btw, Harley tried to register for protection), but that might be wrong. Also, the Harleys Owners Group came in 1983, years after the nickname had been coined.
UPDATE: HOG used to be a name for big fat motorcycles, then it became a trademark derived from Harley Owners Group. See Harley-Davidson v. Grottanelli dba Hog Farm, 164 F3d 806 (2d 1999). Thanks to Scott and Will.
BONUS TRIVIA: Name a movie other than HARLEY DAVIDSON AND THE MARLBORO MAN that used a Harley trademark in the title. Hint: years later, the lead actor was accused of killing his wife.
Answer: ELECTRA GLIDE IN BLUE, starring Robert Blake.
Third Circuit Articulates Nominative Fair Use Test
"In this Circuit, we have today adopted a test for nominative fair use in which a court will pose three questions: (1) Is the use of the plaintiff's mark necessary to describe both plaintiff's product or service and defendaant's product or service? (2) Is only so much of the plaintiff's mark used as is necessary to describe plaintiff's products or services? (3) Does the defendant's conduct or language reflect the true and accurate relationship between plaitniff's and defendant's products or services? If each of these questions can be answered in the affirmative, the use will be considered a fair one, regardless of whether likelihood of confusion exists."
