Our firm, Leason Ellis, has filed a declaratory judgment action on behalf of plaintiff, Anne With An E, a theatrical producer that is developing a musical based on the 1908 novel ANNE OF GREEN GABLES. Plaintiff seeks a declaration that its musical will not infringe the asserted tradeamrk rights of Defendant, an entity owned in part by the province of Prince Edward Island, the setting of the novel, which holds itself out as the sole licensing authority for the ANNE OF GREEN GABLES trademark. Defendant is also developing a musical based on the novel.

Text of complaint in Anne With An E vs Anne of Green Gables Licensing Authority lawsuit:

Anne With An E v. Anne of Green Gables Licensing Authority, 23-cv-1408 (SDNY February 21, 2023)

Wikipedia entry on Anne of Green Gables

Press coverage on the Anne With An E lawsuit here.

I asked: “What were the first trademarks?

ChatGPT replied:

The use of trademarks can be traced back to ancient times, when craftsmen and traders marked their goods with unique symbols or designs to identify their origin or quality. However, the modern concept of trademarks as legally protected intellectual property emerged in the late 19th century.

The first trademark registration system was established in the United Kingdom in 1875 with the Trade Marks Registration Act. The first trademark registered under this system was a Bass Brewery’s red triangle in 1876. The red triangle was chosen because it was easily recognizable and stood out on advertising materials.

In the United States, the first registered trademark was granted to the Averill Chemical Paint Company in 1870 for its “Averill Chemical Paint” brand. However, trademark protection in the U.S. was not established by federal law until the passage of the Trade-Mark Act of 1905.

Today, trademarks are recognized and protected around the world, and play a vital role in the branding and marketing of goods and services.

So I asked: “What are examples of ancient trademarks?

Chat GPT responded:

There are many examples of ancient trademarks that have been discovered through archaeological and historical records. Here are a few examples:

  1. Ancient Greek potters marked their pottery with symbols or signatures to identify their work and distinguish it from that of their competitors.
  2. In ancient Rome, brick makers stamped their bricks with a mark or symbol to identify their work and prevent others from copying it.
  3. Medieval guilds in Europe used trademarks to identify the goods produced by their members and ensure quality control. For example, goldsmiths would stamp their work with a guild mark to show that it had been made to a certain standard.
  4. In Japan, samurai families used mon, or family crests, to identify their belongings and distinguish themselves from others. These crests were often used on clothing, armor, and other personal items.
  5. In China, merchants used “chops” or seals to mark their goods and documents with a unique design or symbol. These chops were often made of stone, jade, or other materials and were used to verify the authenticity of the item.

These are just a few examples of the many ways in which people throughout history have used trademarks to identify and protect their goods and services.

So I asked: “Were trademarks used in Mesopotamia or Sumer?

Chat GPT responded:

Yes, there is evidence that trademarks were used in Mesopotamia and Sumer, which are among the oldest known civilizations in the world. While the concept of trademarks in the modern sense did not exist at that time, craftsmen and merchants in these civilizations used unique marks or symbols to identify their goods and services and distinguish them from those of their competitors.

For example, in ancient Sumer, clay tablets have been discovered that bear the marks of merchants and traders who used symbols and signs to represent their names or businesses. These marks were used to verify the authenticity of transactions and to establish trust between buyers and sellers.

In addition to these individual marks, there were also standard symbols and designs used in these civilizations that represented certain trades or professions. For example, the “cuneiform” script used in Mesopotamia was a standardized system of writing that was used for record-keeping and commerce.

Overall, while the exact nature and purpose of these early marks may be different from modern trademarks, they served a similar function in identifying and differentiating the goods and services of one individual or business from another.

So I asked: “what is a reliable reference source for information on the use of trademarks in Mesopotamia and Sumer?

ChatGPT responded:

One reliable reference source for information on the use of trademarks in Mesopotamia and Sumer is “The Ancient Near East: A Very Short Introduction” by Amanda H. Podany. This book provides an overview of the history, culture, and society of the ancient Near East, including Mesopotamia and Sumer, and discusses the use of marks and symbols to identify goods and services.

Another useful reference is “The Art and Architecture of the Ancient Orient” by Henri Frankfort, which provides an in-depth look at the art, architecture, and material culture of the ancient Near East, including Mesopotamia and Sumer. This book includes information on the use of marks and symbols in trade and commerce, as well as other aspects of ancient Near Eastern culture.

For more specific information on the use of trademarks in ancient Mesopotamia and Sumer, academic articles and research papers can be a valuable source of information. JSTOR, an online database of academic journals, can be a good place to start searching for such articles. Additionally, the websites of academic institutions and museums that specialize in ancient Near Eastern studies may also provide useful information and resources.

So I asked: “what were the earliest use of trademarks and symbols to mark goods in the Indus Valley civilization?”

Chat GPT responded:

The Indus Valley civilization, also known as the Harappan civilization, flourished in the northwestern region of the Indian subcontinent from around 2600 BCE to 1900 BCE. While much about this ancient civilization remains a mystery, archaeological excavations have uncovered a variety of artifacts that provide clues about the use of trademarks and symbols to mark goods.

One of the most notable artifacts is a seal that was found at the Harappan site of Mohenjo-Daro, which is thought to date to around 2300 BCE. This seal, made of steatite (a type of soft stone), is engraved with a series of symbols, including what appears to be a unicorn or bull, as well as other signs that are still undeciphered. It is thought that this seal may have been used to mark goods or documents and to establish the identity of the person or organization responsible for them.

Other artifacts found at Harappan sites, such as pottery and metal objects, also bear symbols and designs that may have functioned as trademarks or indicators of origin. For example, some pottery has been found with repeated geometric patterns, while metal objects have been found with engraved designs that are thought to represent the identity of the maker or owner.

While the exact meaning and purpose of these symbols and designs remains unclear, they provide evidence of a sophisticated system of trade and commerce in the Indus Valley civilization, and suggest that marks and symbols were used to establish and maintain trust between buyers and sellers.

So I asked: “what are reliable references on the use of trademarks in Indus Valley civilization?

CHAT GPT responded:

There are several reliable references on the use of trademarks in the Indus Valley civilization. Here are a few:

  1. “The Indus Civilization: A Contemporary Perspective” edited by Gregory L. Possehl: This book is a collection of essays by leading scholars in the field of Indus Valley civilization studies. It provides a comprehensive overview of the civilization’s history, culture, and material culture, including the use of marks and symbols on artifacts.
  2. “The Ancient Indus Valley: New Perspectives” edited by Jane McIntosh: This book presents recent research and discoveries related to the Indus Valley civilization, including its trade networks and the use of seals and other marks to identify and authenticate goods.
  3. “Harappan Seal Impressions on Pottery: An Analysis of Late Harappan Pottery from Kunal” by K.N. Dikshit: This academic paper presents an analysis of the designs and symbols found on pottery from the Late Harappan period, including their possible meanings and functions as trademarks.
  4. “Indus Script and the Indus Civilization: A Review” by Asko Parpola: This paper provides an overview of the Indus script, which is still undeciphered, and its potential relationship to the use of seals and other marks as trademarks and for other purposes.

These are just a few examples of the many resources available on the topic of trademarks in the Indus Valley civilization. Academic journals, online databases, and museum collections can also be valuable sources of information for those interested in this fascinating ancient civilization.

The End

SDNY: The Fashion Exchange v Hybrid Promotions 14-1354 (Judge Stein).

Plaintiff’s hard drive and server were “fried in some unknown fashion” so it couldn’t establish its damages (page 4). There doesn’t seem to be a lot of other evidence on other aspects of the lawsuit, either. Defendant’s summary motion as to damages granted.

The decision contains a pretty extensive listing of the types of damages possible under the Lanham Act.

Text of decision in The Fashion Exchange v Hybrid Promotions: the fashion exchange damages sdny

The Solicitor General has advised SCOTUS to grant cert in Abitron Austria v Hetronic (brief below). It thinks the 10th Circuit got it wrong under Steele v Bulova. It thinks this is a good vehicle for determining the geographic scope of the Lanham Act.

Petitioner Abitron’s introduction in its petition (HT ScotusBlog):

Petitioners—all foreign nationals—were subjected to a $90 million damages award under the Lanham Act, 15 U.S.C. § 1051 et seq., for allegedly infringing respondent’s U.S. trademarks. While trademark rights are distinctly territorial, the accused sales occurred almost entirely abroad. Of approximately $90 million in sales, 97% were purely foreign: They were sales in foreign countries, by foreign sellers, to foreign customers, for use in foreign countries, that never reached the United States or confused U.S. consumers. The Tenth Circuit nonetheless held that the Lanham Act applies extraterritorially to all of petitioners’ foreign sales. Recognizing that the circuits have splintered in this area, the Tenth Circuit adopted an expansive view that other courts, including the Fourth Circuit, have concededly rejected. Under the Tenth Circuit’s view, the Lanham Act applies extraterritorially whenever foreign defendants’ foreign conduct allegedly diverts foreign sales from a U.S. plaintiff. Such an effect, the court held, sufficiently affects U.S. commerce because it prevents foreign revenue from flowing into the U.S. economy. The question presented is: Whether the court of appeals erred in applying the Lanham Act extraterritorially to petitioners’ foreign sales, including purely foreign sales that never reached the United States or confused U.S. consumers.

The SG has restated the question as:

Whether, under Sections 32(1)(a) and 43(a)(1)(A) of the Lanham Act, the owner of a U.S.-registered trademark may recover damages for uses of that trademark that occurred outside the United States and that were not likely to cause consumer confusion in the United States.

There have been studies over the years suggesting that SCOTUS agrees with the SG up to 80% of the time, however those studies are dated. More recent studies have much smaller data sets, enough for a rash of high-profile SCOTUS cases to skew the result. So the odds of cert being granted have risen considerably but I won’t guess as to how much.

Hetornics – SG brief recommending cert

P AND P IMPORTS LLC V. JOHNSON ENTERPRISES, LLC, No. 21-55013 (9th Cir. Aug 24 2022). Link to text of decision below.

Court refers to both litigants’ backyard “4 in a row” games as “CONNECT 4 knock-offs.” Ninth Circuit reverses defendant’s summary judgment. Too much evidence suggesting defendant’s intentional copying. Also: District Court had erroneously required evidence of secondary meaning linking product to this specific plaintiff, rather than evidence merely linking the product to a single, albeit anonymous, source.

Reversed and remanded.

There’s no finding as to functionality of trade dress.

Out of curiosity, I used “backyard Connect 4” as a search term in Amazon and got these results:

Text of P AND P IMPORTS LLC V. JOHNSON ENTERPRISES, LLC, No. 21-55013 (9th Cir. 2022): ninth circuit connect4 trade dress p and p johnson

Lederman v. The Hershey Company, No. 1:2021cv04528 – Document 43 (N.D. Ill. 2022)

Plaintiff asserts that hot fudge topping would contain the ingredients essential to hot fudge – cream and whole milk. She asserts that the quality of fudge depends on the amount and type of fat-contributing ingredients and that those fat ingredients are typically from dairy or vegetable oils.

These are the ingredients of Hershey Hot Fudge topping:

This product contains skim milk and whey milk. The consistency is derived from vegetable fat. Accordingly, plaintiff alleges that the labeling of this product as hot fudge topping is deceptive.

The standard is whether a reasonable consumer – is there a probability that a significant portion of the general consuming public or of targeted consumers acting reasonably in the circumstances could be misled. How do real consumers understand and react to the advertising.

Plaintiff cited to dictionaries, recipes, and confectionery experts to define fudge as being cream and whole milk-based. The court held that this was merely an understanding across random sub groups.

Rather, plaintiff needed to show that a significant portion of the general consuming public and there was no such showing. Motion to dismiss granted however with leave to replead.

Text of Lederman v Hershey: lederman v hershel d ill hot fudge

Jacobs v. Whole Foods Market Group, Inc., No. 1:2022cv00002 – Document 27 (N.D. Ill. 2022)

Plaintiff sues, based on the disparity between the box size of rice pilaf and the amount of product. The empty space is known as “slack fill.”

Defendant notes that the box clearly identifies the weight and number of servings.

Plaintiff cites Benson v. Fannie May Confections Brands, Inc., 944 F.3d 639 (7th Cir. 2019) for the proposition that the presence of an accurate net weight statement does not eliminate the misbranding that occurs when a container is made, formed, or filled so as to be misleading.”

However, the court notes:

Benson involved boxed, ready-to-eat chocolates. As the court explained, a consumer might reasonably expect to be able to estimate the approximate number of chocolates in a particular box based on the box size . . . But any reasonable consumer surely knows that rice pilaf sold in a box must be cooked in water or another liquid prior to consumption, and understands further that the cooking process will cause the rice to expand in volume. In other words, a reasonable consumer expects the size of the box to bear only a loose relationship to the amount of cooked product its contents will yield. Accordingly, a shopper uncertain about how many boxes of rice pilaf to buy for the family dinner would know not to rely on the size of the box and would look for additional information of precisely the kind plaintiff admits defendant’s rice pilaf box contains: the number of servings each box will produce based on a specified serving size. Because that information dispels any tendency to mislead that the box size alone might create, there is no deception as a matter of law.

Text of Jacobs v Whole Foods: nd ill rice pilaf