LegalWeek list of Top 50 US Firms by Fee Income, 2002.

Bret writes to tell us of:  Capp Enterprises v. Disney, CV03-3357 GAF, filed yesterday in Los Angeles, regarding Disney’s use of Capp’s registered SADIE HAWKINS DAY trademark in the upcoming May 17 episode of Disney’s ‘Lizzie McGuire’ show.

In the Al Capp comic strip L’il Abner, Sadie Hawkins (pictured left) was so ugly, her father, the mayor of Dogpatch, ordered that November 13 be Sadie Hawkins Day.  Every man in Dogpatch  was given a 10 minutes running start, and Sadie could marry the man she caught.  Sadie Hawkins Day dances, where women asked the men to dance, became all the rage.

Other contributions to American culture from L’il Abner include the Shmoo, Fearless Fosdick, and Joe Btfsplk, who always has a cloud hanging over him.

Plaintiff owns a federal registration for PYCNOGENOL, an anti-oxidant which is derived from French tree bark.  Defendant advertised its product as MASQUELIER’S: THE ORIGINAL FRENCH PYCNOGENOL, and inserted PYCNOGENOL into its meta-tags.  Plaintiff brought infringement and dilution claims.  On appeal, the Ninth Circuit held, under its nominative fair use test (see recent fair use cases here and here) that while Defendant could make some reference to PYCNOGENOL, its use in meta-tags (which it apparently admitted had done so to affect its search engine ranking) was ‘unreasonably pervasive’ and therefore exceeded the second and third prongs of the fair use test, namely that it exceeded the minimal amount necessary to refer to plaintiff’s mark, and that such use was likely to cause confusion. The Court did not elaborate on how pervasive was unreasonably pervasive, and whether it viewed any meta-tag use at all as unreasonably pervasive.

The dilution cause was remanded per Mosely.

I look forward to a Ninth Circuit review of the Northern District of California Taxes.com case, discussed here.

Aside: I put PYCNOGENOL into Google today.  The Google abstract of the third hit referred to PYCNOGENOL but the site it turned up, which sells the competing product, does not.

Horphag v. Pelligrini et. al., no. 01-56733 (9th Cir. May 9, 2003) Text here.

Perhaps if the NY Times had used the anti-plagiarism software that this Kansas City teacher used to catch 28 of her students, then it wouldn’t be in its present predicament.  Link via Nathan, minister of information systems at Schwimmerlegal.

The rap group OutKast released a song entitled ‘Rosa Parks.’  The second line of the lyrics is ‘Everybody move to the back of the bus.’  The song was used to promote OutKast’s album and the words ROSA PARKS were used on the sticker on the packaging of the CD.  Civil-rights figure Rosa Parks (well-known for her refusal to move to the back of a bus) brought suit under Section 43(a) of the Lanham Act, and right of publicity and otherstate claims.  Defendant successfully moved to have the suit dismissed on summary judgement.  Ms. Parks appealed.

The Sixth Circuit reversed the grant of summary judgement.  It set out 3 tests for analyzing the use of a celebrity name in a title of a work:

1 – Does the title create a likelihood of confusion?

2 – Alternative avenues – Were there alternative means for the defendant to express its idea?

3 – ‘Fred and Ginger’ test – Was the use of the name artistically relevant to the work? (named after the case involving the move ‘Fred and Ginger,’ about dancers who imitate Fred Astaire and Ginger Rogers, for a living).  The Second Circuit held that it would bar use of a name on a title if there was no artistic relevance or if there was relevance, if use of the title explicitly misleads as to source.

Here, the Sixth Circuit adopted the Second Circuit test, and held that it was a triable issue of fact to determine whether the use of ROSA PARKS had artistic relevance to the song.  Case was remanded to determine that question.

The case contains a good discussion of the extent to which persona will be protected under Section 43(a).

tidbit:  Johnnie Cochran represented Ms. Parks.

Text of decision here.

Audio sample of ‘Rosa Parks’ via Amazon here.

AP Reports that Uncle Tony the Magician and 20 other Brazilian magicians successfully sued TV Globo for airing a progran that revealed how magicians perform magic tricks.  Plaintiffs alleged that their revenue decreased by 70% because many people lost interest in magic after learning how the tricks were performed.  Link via Weirdofthenews.

Trademark dispute regarding slogans for labor lawyers reported here.

Via Brandweek,  Infogrames, maker of video games such as ‘Enter the Matrix,’ has changed its name to Atari. Atari means ‘success’ or ‘luck’ in Japanese. 

The Atari History Museum is here.