Hyundai ran a commercial with humorous depictions of what it would be like if luxury items were widely available. Policemen would eat caviar, yachts would be parked in driveways, and men would play basketball on a marble court with golden rims and a basketball bearing the Louis Vuitton ‘toile monogram.’ LV sues for dilution, and wins. Decision below.

Prof Goldman’s thorough discussion here. A few initial reactions after one reading of the decision.

The federal dilution statute enjoins ‘commercial use in commerce of a mark or trade mark. . .” Academics have argued for the importance of interpreting this clause to mean ‘use of a mark as a mark‘. Was the basketball used as a trademark? In what is clearly a car commercial, a character bounces a basketball for several seconds. Does the basketball communicate origin of anyone’s goods or services?

Also, apparently a Hyundai witness testified that LV wasn’t the target of parody, but that luxury in general was the target of satire. I’m not so sure. A think that jokes can have more than one target. I’m reminded of the MasterCard v Nader case (2004 WL 434404 (SDNY 2004), the “Priceless” case. In analyzing the parody defense under copyright law, the Court noted that while the primary point of the ‘Priceless’ commercial was a comment on political mores, it also ‘subtly’ commented on the worldview espoused in MasterCard’s commercials. The application of the LV monogram turns mundane leather objects into coveted luxury items. The LV basketball may be reasonably perceived as commentary on that point.

Finally, where are we headed with dilution? YHWH is ineffable; the LV monogram is just somebody’s trademark.

Lv Hyundai Basketball

Registrant owns domain names such as GELBESBRANCHENBUCH.COM, which appears to translate as variants of “Yellow Business Directory” (the “Names”). Deutsche Telekom Media brought a civil infringement action in Germany based on its rights in YELLOW PAGES. It received an injunction relating to use of the Names, but not transfer, suspension, disablement or deletion of the Names. The US-based registrar (Moniker) disabled the names. Registrant sues Moniker in the US under 15 USC 14(2)(D)(v):

(v) A domain name registrant whose domain name has been suspended, disabled, or transferred under a policy described under clause (ii)(II) may, upon notice to the mark owner, file a civil action to establish that the registration or use of the domain name by such registrant is not unlawful under this chapter. The court may grant injunctive relief to the domain name registrant, including the reactivation of the domain name or transfer of the domain name to the domain name registrant.

A ‘policy described under clause(ii)(II)’ ccovers:

(II) . . . a reasonable policy by such registrar, registry, or authority prohibiting the registration of a domain name that is identical to, confusingly similar to, or dilutive of another’s mark.

Among the interesting questions here include whether Plaintiff is eligible for relief under the Lanham Act. In the Barcelona.com and the Monte Carlo casino cases, it was held that plaintiffs (that is to say, mark owners) had to own marks that were protectable under US law, in order to be eligible for Lanham Act relief.

Also, there is the interesting prospect that if the Names were re-activated, could they be accessible in Germany without violating the German injunction.

Ucalegon v Moniker

What should a court consider when asked to stay a civil proceeding when defendants are facing a criminal proceeding as well (considering that admissions in the civil proceeding could prejudice their ability to defend the criminal proceeding:

1) the extent to which the issues in the criminal case overlap with those presented in the civil case; 2) the status of the case, including whether the defendants have been indicted; 3) the private interests of the plaintiffs in proceeding expeditiously weighed against the prejudice to plaintiffs caused by the delay; 4) the private interests of an burden on the defendants; 5) the interests of the courts; and 6) the public interest.

Noting that this test is not a ‘mechanical device’ but a ‘rough guide and ‘checklist,’ the Second Circuit affirms the lower court’s decision to not stay in a counterfeiting case.

Decision 2d Cir Lv v Ly

CMG and Estate of Marilyn Monroe continue their dispute over the rights to her rights of publicity, to the extent they exist.

Background here. Two comments about the complaint. There’s a typo in paragraph 21, and if CMG had to list 8 famous celebrities it represents, I’m surprised Tommy John makes the list.

Cmg v Estate of Monroe

All defendants except remaining defendant settle with or are voluntarily dismissed by Nike. All testify that remaining defendant is the ‘orchestrator of the counterfeit shoe importation.’

“Defendant. . . has not come forward with facts to dispute their testimony. Technically, he has not met his obligation to do so under the summary judgment rule. Yet, the history of this case provides a slight basis for arguing that these witnesses and former defendants have an incentive to fabricate their testimony in order to avoid their own liability. Such credibility determinations should be made by the jury.”

Nike v Kau Summary Judgement