del monte fruit naturals
del monte grapefruit

The original DEL MONTE spun off its fresh food division in 1989, leaving FRESH DEL MONTE selling fresh fruits and DEL MONTE COPR (“DMC”) sell preserved fruits. DMC began selling packaged fruits that indicated they should be refrigerated. Fresh argued (successfully) that the agreement at the time of the spin-off reserved fro Fresh the right to sell refrigerated fruit, even if the fruit to be refrigerated was preserved. Fresh prevailed at trial that DMC’s refrigerated lines breached the contract, infringed trademark and furthermore, violated 43(a) as false advertising, as DMC’s labeling that the packaged fruit be refrigerated was unnecessary, and that DMC labeled as such to falsely suggest that the fruit was fresh.

This part of the decision from page 15, discussing whether fees should be awarded, caught my eye:

The evidence showed a deliberate effort to attach to DMC’s preserved refrigerated products an aura of freshness in consumers’ minds, and to minimize the reminders that the products were preserved. But the evidence did not suggest that DMC used the “Must be Refrigerated” labels and omitted the fact that certain products were pasteurized or contained preservatives in order to trick consumers into believing the products were made by Fresh. Indeed, there was no evidence at all that the average consumer even knows that there are two different companies using the same Del Monte name and trademark

True, DMC didn’t apparently want to ‘trick’ consumers into believing that the refrigerated fruit originated with Fresh. It did however want to ‘attach’ an ‘aura of freshness’ to refrigerated fruit and the jury found that this was actionable false advertising. This sounds like an intentional ‘trick’ to me.

fresh del monte v del monte
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tommy gun 1921
tommyguns_002

The Thompson Sub-machine gun is popularly known as the Tommy Gun (and also known as The Chicago Typewriter). Plaintiff owns rights to the word mark TOMMY GUN for firearms and ancillary merchandise. It also claims common law rights in the trade dress of a Tommy gun. It may or may not trace its ownership back to the original manufacturer of the Thompson guns.

Defendant, Alphonse Capone Enterprises (admit it, cool name) sells Tommy Gun Vodka, in a bottle in the shape of a Tommy Gun.

A nice twist on the expired ‘shape’ rights being revived as trade dress fact pattern.

tommy gun v al capone
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Question to Ninth Circuit: Whether the owners of mobile multimedia messaging networks can be held liable for copyright infringement that allegedly occurs on their networks.

Justia opinion summary: Luvdarts sued mobile wireless carriers, who own multimedia messaging networks (MMS networks), for copyright infringement. At issue was whether the carriers could be held liable for copyright infringement that allegedly occurred on their networks. Because Luvdarts failed to allege adequately that the carriers had the necessary right and ability to supervise the infringing conduct, the district court properly determined that they could not prevail on their claim of vicarious copyright infringement. Because Luvdarts failed to allege adequately that the carriers had the necessary specific knowledge of infringement, it could not prevail on its claim of contributory copyright infringement. Accordingly, Luvdarts failed to state a claim on which relief could be granted and the district court properly dismissed its complaint with prejudice.

Link to opinion

makerbot-replicator

I gave a talk yesterday before the Institute of CLE for the Michigan Bar on ‘The Law of Shapes To Come.’ The arrival of affordable desktop scanners and 3d printers will allow near-perfect reproduction of 3D objects. The technology affords great opportunities, but will also challenge intellectual property rights (as did prior technologies such as the photocopiers, VCRs, software and MP3s). My talk surveyed the existing theories for protecting ‘shapes,’ and discussed a particular puzzle: to what extent can trade dress protect shapes which are in (or have fallen into) the public domain (specifically shapes that were the subject of expired design patents or copyrights)? Attached is my slide deck, which constitutes a visual outline of my talk.

If you are planning a CLE event (or wedding or bar mitzvah), I would be happy to discuss this subject and bring my dog and ponies.

law of shapes ppt
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Plaintiff has registrations for LUSH for various beauty products. It has a reg granted under Section 44(e) for LUSH for beauty salons. Read the wording regarding ‘beauty salons’ in the complaint. Defendant uses LUSH for beauty salons.

lush v lush
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So I read the caption ‘Mars v M&M Tax’ and thought that perhaps this would be a case of overreach, but then when I read the allegations that employees of defendant would dress up as M&M Characters, I realized that Mars might have a point here. And then when I saw the photos of the employees dressed up as M&M characters (starting on page 5), I thought “who would go to a tax preparer who was dressed up as an M&M Character?”

new mars v m&m
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Wells Fargo acquires the ABD Insurance company in 2007. It starts migrating the ABD name into the Wells Fargo name. By 2009 it’s letting various insurance licenses (and the trademark registration) and such under the ABD name lapse, and advising employees to use the Wells Fargo name exclusively. In 2011, a former ABD employee (and son of the founder) starts using the ABD name on a new (competitive) company. By mid-2012, he’s hired away up to 75 former-ABD Wells Fargo employees.

Wells Fargo sues. In addition to alleging various tortuous interference, trade secret and other business torts, it sues for trademark infringement, arguing that the ABD mark still appears on various Wells Fargo materials. ABD alleges abandonment. Wells Fargo proffers post-2009 use of the ABD mark on materials despite its announced name-change.

Held: While it is correct that actual use of a trademark will trump statements of intent to abandonment, all of Wells Fargo’s post-2009 use of the ABD mark was either of a historical nature (“We used to be ABD Insurance”) or of a residual nature (as in forgetting to update brochures). While sale of residual inventory of goods has been held to be trademark use, it has to be accompanied to current active use of the trademark, which was not the case here. Wells Fargo motion for preliminary injunction denied.

Practice pointers: Apparently the residual goodwill in the ABD mark was sufficient that it was worth fighting over four years after ‘retirement.’ Maintain the trademark registration (or file an ITU!)! And re-branding announcements should be worded that the former brand will not be abandoned, but will go on to brand emeritus status. And then use it for real, a little.

43(B)log comments here, making the point that this is an outlier to the tendency that the bad faith actor tends to lose.

wells fargo v abd
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