The Trademark Blog

NY Times article on celebrity fragrance lines.

I should do merchandising.

Posted by Marty at 06:01 PM | Permalink

Mo's Restaurant sues Moe's Southwest Grill.

Discussion of Flaming Moe episode from Simpsons here.

One of my favorite Lionel Hutz lines from that episode: 'This all goes back to the Frank Wallbanger case of '78. How about that! I looked something up! These books behind me don't just make the office look good, they're filled with useful legal tidbits just like that!'

Discussion of Lionel Hutz here.

Posted by Marty at 04:11 PM | Permalink

Defendant, a company that 'travels the country to videotape young women exposing their breasts at events and venues such as Mardi Gras and spring break beach resorts,' is ordered to pay a young woman $60,000 in punitive damages for using her image in its video (and on the cover of the box) without her written consent.  Via The Virginian-Pilot.

Posted by Marty at 04:04 PM | Permalink

Client is computer and software vendor.  It wishes to introduce its new computer featuring a CD-RW drive and MP3 management software with the advertising slogan: "Rip, Mix, Burn Your Own Custom Music CDs."

Client is a consumer electronics manufacturer.  It invents a video recording device.  It wishes to say in its advertising that its product allows the user to 'build a library' of his or her favorite shows.

Clients ask you if the advertising actively induces infringement.

Posted by Marty at 02:29 PM | Permalink

The Second Circuit has reversed the District Court in 1-800-Contacts and dismiised the trademark infringment cause (remanding to hear unfair competition cause).

Text of decision: (drill down on 2d Cir. site on 'search all' link).

I understand the Court's holding that WhenU's internal listing of website URLs is not trademark use.  I understand that in and of itself, placing an ad next to a competitor's ad is not trademark use (but might be an element of unfair competition).  I think that in its dicta, the Court placed too much emphasis on the fact that WhenU sells categories (as in eye care) as opposed to keywords.  I think that when you read the discussion of free-riding on page 24, you can predict how these justices would come out on the unfair competition causes.  I think that it's interesting that a company that advertises on Gator, would sue WhenU.

Prof. Goldman on decision here.

Posted by Marty at 10:40 PM | Permalink

Prof. Patry on Grokster here.

Posted by Marty at 10:28 PM | Permalink

Sanofi-Aventis, the French pharmaceutical company, owns the trademark ACOMPLIA for the anti-obesity drug rimonabart (not yet approved here).  Medical Week News owns the domain name ACOMPLIAREPORT.COM and publishes news about the drug.  Sanofi filed a UDRP action with WIPO.  Medical Week News, represented by EFF, filed a declaractory jdugment action, complaint here.

Posted by Marty at 08:51 PM | Permalink

Good ongoing discussion of Grokster here, via WSJ.

Prof. Goldman suggests that you not you name your company anything that ends is a -STER, in a thorough analysis here.

Posted by Marty at 06:10 PM | Permalink

. . . I was advising my clients not to actively induce infringement before Grokster came out.

Posted by Marty at 05:41 PM | Permalink

S Ct. reverses 9th Cir. 9 - 0, articulating an 'affiramtive steps to foster infringement' standard.  Text of Grokster decision.

Important language:

 . . . one who distributes a device with the object of promoting its use to infringe copyright, as shown by clear expression or other affirmative steps taken to foster infringement, is liable for the resulting acts of infringement by third parties.  We are of course mindful of the need to keep from trenching on regular commerce or discouraging the development of technolgoies with lawful or unalwful potential.  Accordingly, just as Sony did not find intentional inducement despite the knowledge of the VCR manufacturer that its device could be used to infringe . . . mere knowledge of infringing pontential or of actual infringing uses would not be enough here to subject a distributor to liability.  Nor would ordinary acts incident to product distribution, such as offerring customers technical support or product updates, support liability in themselves.  The inducement rule, instead, premises liability on purposeful, culpable epxression and conduct, and thus does nothing to compromise legitimate commerce or discourage innovation having a lawful promise.

Posted by Marty at 04:31 PM | Permalink

Sears lawsuit, alleging that "Where Else? Menards?" infringed its "Sears. Where Else?" trademark, deemed  'so lacking in merit as to make this an exceptional case justifying an award of reasonable attorney's fees and expenses' which in this case was $2.5 million.  Via suntimes.com. 

Posted by Marty at 02:25 PM | Permalink

TTABlog: TORRE MUGA for wine not confusingly similar to TORRES for wine, brandy and liquer.

Posted by Marty at 08:08 PM | Permalink

. . . from Prof. Goldman merely by following this link.

Posted by Marty at 07:52 PM | Permalink

ICANN announced recently that it has begun negotiations with an applicant for another 'sponsored' (non-open) top level domain, .XXX.

There has been a fair amount of coverage, for and against.

My initial reaction is (with the proviso that the public information to assess these things is always insufficient): .XXX seems plausible for what it is but it isn't what many probably think it is.

First, the basics.  The applicant is the ICM Registy of Jupiter, Florida.  The sponsoring organization is  The International Foundation for Online Responsibility.  The back-end provider appears to be Afilias (the .info registry, which itself is a consortium of many registrars).  ICM estimates that it will register 500,000 such names so the usual suspects stand to make some money.

The application is here.  It states as its purpose:

 The .xxx TLD is intended primarily to serve the needs of the global online adult-entertainment community. The online adult-entertainment community is defined as those individuals, businesses, and entities that provide sexually-oriented information, services, or products intended for consenting adults or for the community itself. The terms "adult-entertainment" and "sexually-oriented" are intended to be understood broadly for a global medium, and are not to be construed as legal or regulatory categories.  Rather, the referenced Community consists generally of websites that convey sexually-oriented information and for which a system of self-identification would be beneficial.

 

 

 The application goes on to indicate that benefits include:

 "potential defenses in domain-related litigation, enhanced acceptance by search-engines and therefore increased functionality, better opportunities to negotiate with credit card and transaction providers, and new marketing opportunities."

And that's the key to understanding this.  This TLD is intended to be a trade association and is not a form of regulation.

.XXX (and I, for purposes of this conversation) sidestep the hottest hot button issue with porn which is whether it is immoral. 

But .XXX also sidesteps other hot button issues.  Consider the various 'harms' associated with 'adult content':

1.  Exposure of porn to minors;

2.  Involuntary exposure to adults, through misleadingly labeled sites, 'dropped' domain names, spam, 'cloaked' search engines results, etc.;

3.  Workplace exposure;

4.  Harm to consumers (i.e. credit card theft);

5.  Harm to sex industry workers.

It seems that the idea of a voluntary .XXX TLD will have little or no effect on issues 1 to 3 and seems only targeted at 4 and 5.

It's true that filtering will be made easier if an ISP can block anything containing an .XXX but of course if someone's business (or scam) is based on deception of some form, they aren't going to migrate to .XXX (cf. FTC bulletin "Requiring “ADV” Labeling for Commercial E-Mail Won’t Reduce Spam "  If adolescents (or employees) behind a .XXX filter want to access porn, then it won't matter that 50% or 95% of the porn in the world has been blocked.

To its credit, ICM Registry doesn't really push filtering as a selling point for .XXX (at least not in its application).  IFFOR does make statements that it wishes to combat child pornography.  I don't think the TLD itself will do that, maybe giving money to IFFOR will.

THe TLD actually targets harms to consumers and to industry workers (which of course serves a public interest).  The registry seeks to become something of a better business bureau for the online sex industry, as it promises to  'incorporate a best business practices provision into the registrant’s domain name registration agreement and will develop compliance mechanisms to address non-adherence.'  So perhaps there would be some harm reduction on that score.

As to whether ICANN should be doing content-oriented TLDs like this at all, there is much discussion on, for example, ICANNWatch.

As to whether Congress may be seek to push all adult content into this TLD, maybe.

As to how not to do a voluntary inclusion zone, see .KIDS.US.

As to how it affects you?  Probably not that much.

Posted by Marty at 05:47 PM | Permalink

"Bronco Wine Company and Barrel Ten Quarter Circle, Inc. filed a petition for writ of mandate, invoking our original jurisdiction. It seeks declaratory and injunctive relief barring application of the labeling requirements of Business and Professions Code section 25241 to wines produced by Bronco that are destined for interstate commerce because the section is in conflict with Bronco's federally approved certificates of label approval (COLA)"

from:

BRONCO WINE COMPANY et al., Petitioners, v. JERRY R. JOLLY, as Director, etc., et al., Respondents; NAPA VALLEY VINTNERS ASSOCIATION, Intervenor. C037254 , COURT OF APPEAL OF CALIFORNIA, THIRD APPELLATE DISTRICT , 129 Cal. App. 4th 988;2005 Cal. App. LEXIS 861, (May 26, 2005, as modified June 20, 2005).

Posted by Marty at 03:18 PM | Permalink

From Debevoise press release:

Debevoise & Plimpton LLP successfully represented Novartis Animal Health US, Inc. ("Novartis USA") in its action against LM Connelly & Sons and National Pet Supplies, Australian businesses that sell Novartis pet medicines made for the Australian market through various Internet websites. The lawsuit - 04 Civ. 10213 (BSJ) - was filed in the United States District Court for the Southern District of New York and alleged that the sale of these foreign medicines constitutes trademark infringement because the foreign medicines differ from those Novartis USA sells in the United States.

In granting Novartis USA’s motion for a preliminary injunction, United States District Judge Barbara S. Jones, found that "Novartis USA has shown that it has valid trademark rights and that Defendant’s sale of Australian medicines is likely to confuse United States consumers and therefore, Novartis USA has a likelihood of success on the merits of this case." Judge Jones also found that, "the nature of the material differences [between the Australian and American medicines] amply demonstrates irreparable harm to Plaintiff."

Posted by Marty at 08:33 PM | Permalink

American Association of Publishers asks Google to suspend its Google Library project.  Via Search Engine Watch.

Posted by Marty at 06:12 PM | Permalink

OK, we're pretty surprised by this outcome.  Blue hexagonal  pills marked STAMINA-Rx and a robot design, sold in a clear bottle not confusingly similar to blue hexagonal pills marked STAMINA-PRO and a robot design, sold in a clear bottle.

The court relies heavily on the absence of evidence of actual confusion.  Actual confusion is an important factor but the absence of evidence is not always the evidence of absence.

2005 U.S. App. LEXIS 9791,*

HI-TECH PHARMACEUTICALS, INC., Plaintiff-Counter-Defendant-Appellant v. HERBAL HEALTH PRODUCTS, INC., d.b.a. Dynamic Life, Inc., Plaintiff-Counter-Claimant-Appellee; DYNAMIC HEALTH PRODUCTS, INC., INNOVATIVE COMPANIES, INC., d.b.a. Innovative Health Products, Inc., ONLINE MEDS RX., INC., f.k.a. Dynamic Life, Inc., Defendants-Appellees

No. 04-11605

UNITED STATES COURT OF APPEALS FOR THE ELEVENTH CIRCUIT

2005 U.S. App. LEXIS 9791

 May 26, 2005, Decided

 May 26, 2005, Filed

NOTICE:    [*1]  NOT FOR PUBLICATION

PRIOR HISTORY:   Appeal from the United States District Court for the Northern District of Georgia. D. C. Docket No. 03-02486-CV-WBH-1. Hi-Tech Pharms., Inc. v. Herbal Health Prods., 311 F. Supp. 2d 1353, 2004 U.S. Dist. LEXIS 5833 (N.D. Ga., 2004)

COUNSEL:   For Hi-Tech Pharmaceuticals, Inc., Appellant: Michael Joseph Powell, Baker, Donelson Bearman Caldwell & Berkowitz, ATLANTA, GA
 
For Herbal Health Products, Inc., Appellee: Joshua Tropper, Gambrell & Stolz, L.L.P., ATLANTA, GA
 
For Dynamic Health Products, Inc., Appellee: Joshua Tropper, Gambrell & Stolz, L.L.P., ATLANTA, GA
 
For Innovative Companies, Inc., Appellee: Henry D. Fellows, Jr., Fellows, Johnson & La Briola, Atlanta, GA
 
For Online Meds RX., Inc., Appellee: Joshua Tropper, Gambrell & Stolz, L.L.P., ATLANTA, GA; John Todd Timmerman, Shumaker Loop & Kendrick, TAMPA, FL; Seaton D. Purdom, Gambrell & Stolz, ATLANTA, GA

JUDGES:   Before EDMONDSON, Chief Judge, TJOFLAT and KRAVITCH Circuit Judges.

 OPINION:   PER CURIAM:

Plaintiff-Appellant Hi-Tech Pharmaceuticals ("Hi-Tech") appeals the district court's denial of a preliminary injunction against Defendant-Appellee Herbal Health. Hi-Tech alleged that Herbal Health's product, Stamina Pro, infringed on the trademark and trade dress of Hi-Tech's male sexual enhancement  [*2]  product, Stamina-Rx. We conclude the district court did not abuse its discretion by denying the preliminary injunction and affirm. We also deny Herbal Health's motion for sanctions.

FACTS

The parties do not dispute these factual findings by the district court. HiTech began manufacturing Stamina-Rx in 2001. See Hi-Tech Pharms., Inc. v. Herbal Health Prods., Inc., 311 F. Supp.2d 1353,1355 (N.D. Ga. 2004). Hi-Tech's president, Jared Wheat, registered the Stamina-Rx mark with the United States Patent and Trademark office on 5 August 2003. The Stamina-Rx pill is blue and in the shape of a hexagon. It is packaged in a clear bottle with a white top. The bottle also contains an image, which the district court described as "a robot-like being with arms raised holding a sphere, and the words 'maximum sexual stimulant.'" Hi-Tech Pharms., Inc., 311 F. Supp.2d at 1355.

Until about late winter or spring of 2003, Herbal Health bought and distributed Stamina-Rx. After that, Herbal Health began "manufacturing, marketing, and selling their own dietary supplement for improving sexual performance called Stamina Pro." Hi-Tech Pharms., Inc., 311 F. Supp.2d at 1355.  [*3]  Stamina Pro is a blue pill in hexagonal form, and it too is sold in a clear bottle with a white top. The district court described the Stamina Pro bottle as having an "image of a robot-like being with his arms by his sides and the words 'maximum male sexual enhancement formula.' ... [and containing] the statement 'compare to Stamina-Rx TM.'" Id. at 1355-56.

Hi-Tech sought a preliminary injunction to prevent Herbal Health from producing, marketing, advertising, promoting and selling Stamina Pro. The district court denied that motion, and Hi-Tech appealed to this Court.

STANDARD OF REVIEW

The decision to grant or deny a motion for preliminary injunction is reviewed for an abuse of discretion. Cumulus Media, Inc. v. Clear Channel Communications, Inc., 304 F.3d 1167, 1171-72 (11th Cir. 2002). We review the district court's legal conclusions de novo. Id. Findings of fact are reviewed for clear error. Id. at 1171.

DISCUSSION

To be entitled to a preliminary injunction, Hi-Tech must demonstrate (1) a substantial likelihood of success on the merits; (2) a substantial threat of irreparable injury without the injunction; (3)  [*4]  that the harm to Hi-Tech outweighs the harm to Herbal Health; and (4) that an injunction would be in the interest of the public. Palmer v. Braun, 287 F.3d 1325, 1329 (11th Cir. 2002). To show a likelihood of success on the merits for both the trademark and trade dress infringement, Hi-Tech must show that consumers will likely confuse the Stamnia-Rx mark or dress with Stamina Pro. See Carnival Brand Seafood Co. v. Carnival Brands, Inc., 187 F.3d 1307, 1309 (11th Cir. 1999) (trademark); Wal-Mart Stores, Inc., v. Samara Bros., Inc., 529 U.S. 205, 146 L. Ed. 2d 182, 120 S. Ct. 1339,1343 (2000) (trade dress). Likelihood of confusion is ultimately a question of fact that we review for clear error. Cumulus Media, Inc., 304 F.3d at 1172 n.5. Hi-Tech argues that the district court legally erred by requiring it to show actual consumer confusion instead of the proper threshold of a likelihood of confusion. We disagree. The district court said that actual confusion was one of the "most important factors in the likelihood of confusion analysis," but it also said that Hi-Tech has "not presently demonstrated a substantial likelihood of success." 311 F. Supp.2d at 1357  [*5]  (emphasis added). We have long said that the type of mark and evidence of actual confusion are the most weighty of considerations. Frehling Enters., Inc., v. Int'l Select Group, Inc., 192 F.3d 1330, 1335 (11th Cir. 1999). Accordingly, the district court made no legal error and did not clearly err by finding no likelihood of confusion. Thus, Hi-Tech cannot show a substantial likelihood of success on the merits.

We also agree with the district court that Hi-Tech did not demonstrate that irreparable harm would occur without the injunction. Hi-Tech relies on McDonald's Corp. v. Robertson, 147 F.3d 1301 (11th Cir. 1998), and it argues that irreparable harm may be presumed when a likelihood of confusion is established. Robertson is distinguishable; the district court there found "substantial likelihood of confusion" existed. Id. at 1310. No such showing was made here. And, as noted by Judge Hunt, Hi-Tech's own evidence indicated that "sales of Stamina-Rx ... exceeded $ 3 million in the last month, and the product is currently on back order." 311 F. Supp.2d at 1357. Hi-Tech did not challenge this finding on appeal. We are,  [*6]  therefore, unconvinced that irreparable harm will befall Hi-Tech without the preliminary injunction.

Herbal Health filed a motion for sanctions pursuant to Federal Rules of Appellate Procedure 38. That motion is denied.

AFFIRMED.

Posted by Marty at 09:37 PM | Permalink

Answers here.

Posted by Marty at 08:38 PM | Permalink

PLI Outline on "Idea Submission Cases: Alternative Theories For The Protection Of Ideas" by Jessie Beeber if Frankfurt Kurnit.

Posted by Marty at 04:11 PM | Permalink

The new .JOBS domain name registration start-up period has begun and will run through August 15, 2005.  .JOB FAQs here.

Posted by Marty at 07:00 PM | Permalink

Rush Limbaugh on Digitial Rights Management technology.  Via Boing Boing.

Posted by Marty at 02:55 PM | Permalink

From the Future of Music coalition's website:  The Future of Music Coalition is a not-for-profit collaboration between members of the music, technology, public policy and intellectual property law communities. The FMC seeks to educate the media, policymakers, and the public about music / technology issues, while also bringing together diverse voices in an effort to come up with creative solutions to some of the challenges in this space. The FMC also aims to identify and promote innovative business models that will help musicians and citizens to benefit from new technologies.

Posted by Marty at 02:52 PM | Permalink

Dispute regarding ITUNES.CO.UK spills into UK civil court.  Via abcmoney.co.uk.

Posted by Marty at 02:31 PM | Permalink

Specialist IP court proposed in Malaysia, via New Straits Times.

Posted by Marty at 02:29 PM | Permalink

WIPRO v. WIPRO in Germany, via India Times.com.

Posted by Marty at 02:23 PM | Permalink

Posted by Marty at 01:17 PM | Permalink

Posted by Marty at 06:07 PM | Permalink

The Apple Insider notes that Apple has filed a trademark application for NUMBERS and speculates that it is coming out with a spreadsheet program.

Posted by Marty at 05:55 PM | Permalink

Discussion of  international trademark protection for the FIREFOX applications on Slashdot.  As an aside, Mozilla, distributor of the FIREFOX applications, will receive a U.S. registration for FIREFOX shortly.

Posted by Marty at 02:45 PM | Permalink

A political action committee concerned with intellectual property issues named IPAC has been formed.

Posted by Marty at 02:34 PM | Permalink

Patients who were filmed as part of a reality show taking place in a hospital, have been certified as a class to bring a right of privacy suit against the producers of the TV show.  Via NY Lawyer.

Posted by Marty at 02:27 PM | Permalink

My son told me that SpongeBob had been cancelled because a child had drowned on a family boat trip when he leapt overboard because he thought he saw SpongeBob.  Furthermore, this had to be true, because Armand, Max, Matt B., Jake S., Matt W. and Jake N. had all heard this.

So we Googled 'SpongeBob drowning' and found this rebuttal.

Posted by Marty at 06:37 PM | Permalink

Felix Salmon wonders about the true dollar value of counterfeits.

Boing Boing wonders about iTune sales as a percentage of songs actually loaded onto iPods.

Copyfight wonders about the BSA's software piracy numbers.

Posted by Marty at 04:09 PM | Permalink

Petition for cert in Contessa Premium Foods v. Berdex Seafood, via Scotus Blog.

Questions presented: (1) Whether willfulness is a prerequisite for an award of profits for violations of Section 43(a) of the Lanham Act; (2) whether the case should be remanded for reconsideration after Grokster is decided.

UPDATE: A reader alerts me to the fact that cert was denied on this issue two years ago in a Fifth Circuit case, Quick Technologies, Inc. v. Sage Group plc.

Posted by Marty at 04:22 PM | Permalink

The latest issue of the Freshfields International IT and new media update is available online. Among the decisions discussed is that of the higher regional court of Colgne, Germany, that held that a n auction provider that is aware of a trademark infringement occurring on its side must do whatever is technically feasible to prevent future infringements by whatever technical means necessary.

Posted by Marty at 05:24 PM | Permalink

In March 2003 I wondered here whether print media (in my hypo, the New York Times), could utilize a 'shrink-wrap' license, that is to say whether it could print licensing terms on that nice blue bag it comes in, or perhaps on its front page, by which it attempted to extend the statutory protection of its contents (perhaps claiming protection in its various factual compilations).

Well, now the Librarian and Information Science News reports that some reference books are now being sold in shrink wraps.  Via CopyFight.

If you wanted to look into this issue, one place to start would be to Google Pro CD, Inc. v. Zeidenberg.

Posted by Marty at 12:19 AM | Permalink

Calcanis Blog on a software package that suggests that third party RSS feeds are out there waiting for you to put to your own commercial use.  Ernie the Attorney weighs in.  What do you guys think?

Posted by Marty at 12:05 AM | Permalink

Dorling Kindersley published "Grateful Dead: The Illustrated Trip."  It had asked the Bill Graham Archives permission to reproduce seven posters promoting Dead concerts.  The parties couldn't agree on a licensing fee and the book was published containing seven 'thumbnail' images of the posters.  The Archives sued.

The Southern District of NY conducted the traditional four part fair use test.  Defendant's use was presumptively fair as it was biography.  The original work was a published creative work, favoring plaintiff.  The amount and substantiality (or lack thereof as this was a thumbnail, favored, defendant.

As to the fourth factor, "the effect of the use upon the potential market for, or value of, the copyrighted work,' when reading the decision I was struck by the potential circularity of a finding that a use isn't fair because it has a negative effect of the potential market.   As noted by the court, a plaintiff could create a business licensing parodies, and then argue that unlicensed parodies have a negative effect on that market.

I emailed noted copyright lawyer and deadhead Craig Mende, who responds:

"There has always been a danger of circularity in applying the fourth statutory factor.  As Judge Daniels notes, any uncompensated use of a copyrighted work involves the loss of "potential licensees," and "if this were the determinitive factor, it would render the analysis for the fourth factor meaningless."  To address this, the Court cited a line of cases holding that only potential licensing revenues for "traditional, reasonable or likely to be developed" markets should be considered, and imported a key first factor concept -- whether the use is "transformative" -- to make this determination:  "Whether a copyright holder is expected to exploit a market depends substantially on whether the use is transformative."
 
I think it's helpful that the Court is trying to give contours to what types of lost licensing opportunities count as harm under the fourth factor.  However, looking to whether the use is "transformative" may be the wrong inquiry, and probably proves too much.  For instance, turning a 60 page play into a 2 and a half hour feature movie is highly transformative, but that doesn't mean that making a movie is a fair use of the play, or that it isn't taking away from the copyright owner's "traditional" market for the work."

So the court found that 'the transformative nature of the use is outside the ambit of lost licensing opportunities' and this there was no negative effect on plaintiff's market. Fair use.

Bill Graham Archives v. Dorling Kindersley, 03 CV 9307 (SDNY  May 11, 2005) (text of decision via Silicon Valley Media Law Blog).

Bill Graham Fillmore posters available here.

Posted by Marty at 12:47 AM | Permalink

Blogging Baby is reporting on a running story regarding a blog's report on an allegedly defective product (in this case the AMBY BABY swing), and the manufacturer's attempts to, it seems, squelch the story by alleging trade libel, and the backlash to that attempt.  I think this is an interesting case study in customer relations in the age of the blogosphere (note, for example, how the customer is able to widely disseminate photos of the part in question). As of today, a Blogging Baby's post (with the words 'defect allegations' in the title) is among the first Google hits for the term AMBY BABY.  Via Calcanis Weblog.

Posted by Marty at 02:37 PM | Permalink

WIPO Statement on its report re new gTLDs here.

Posted by Marty at 03:41 PM | Permalink

The Canadian law firm of Shapiro Cohen, has sent out an email on a change on Canadian Trademark Office practice regarding publication of the first filed application or application with the earliest priority date.

Posted by Marty at 03:36 PM | Permalink

This is Emeco's $370 Navy chair (more info here):

This is Target's 'Cafe Aluminum Side Chair', 2 for $249 (more info here):

Emeco's registration number for the configuration of its chair is 2511360 (view in TARR here).

NY Times article 'Look-Alikes Draw Lawyers Stares' (reg req) reports on Emeco's protest to Target.  The source of Target's chair, Euro Style, indicates that it will change the design of the chair.

UPDATE: Here is the Sandra Dining Set, 6 for $750 (hat tip Teresa):

Posted by Marty at 02:28 PM | Permalink

Two breweries in the town of Ceske Budejovice fight over the right to use BUDWEISER.  Via Prague Daily Monitor.

One of many articles on the eternal trademark dispute here.

Posted by Marty at 02:01 PM | Permalink

Energizer, maker of SCHICK brand razors, successfully enjoined Gillete from advertising that its M3POWER razors 'change the angle of hair in relation to the skin' and that it can 'extend or lengthen hair,'    The judge found Gillette's claim to be "unsubstantiated and inaccurate." The court also ruled product demonstrations in Gillette's advertising were "greatly exaggerated."

Coverage here, via Washington Post.

Posted by Marty at 01:48 PM | Permalink

No, you can't.  What you may have meant to ask was:

“How can I take advantage of a trend created by a popular manufacturer, such as Louis Vuitton, Fendi, et cetera, without violating their rights?”

To which our litigation partner Glenn Mitchell responds: 

Coming close to a popular design without going over the line is no assurance that the subject of your sincere flattery will not bring all its might and main to make you stop, and that you might not have the wherewithal to withstand such an assault.  Nevertheless, here are some general guidelines to follow in creating a lawful imitation (bearing in mind that every situation is unique).

First, NEVER use a company’s signature monogram, such as LV, the Fendi “F” design, or Chanel’s interlocking C’s, or a logo similar enough to trick the eye.  Companies often use these logos as repeated background patterns or the hardware affixed to the handbags.  Also note that, for example, the Coach leather hangtag has been found to be a protectable trade dress element.  These are often the most recognizable features of such bags and, as such, indicate the source of the bags – the sine qua non of a trademark.  (Of course, it is often these logos that make the product a desirable status symbol, but that is the proper province of the trademark owner.)

This leaves you with the shapes of the bags and the patterns thereon.  In the heady trade dress climate of the 1990’s, companies, including Coach and Hermes, were regularly successful in obtaining protection for the actual design of their bags, even if the house trademark or logo was not itself copied, on the ground that the bag shape was inherently distinctive or had become distinctive through fame and success.  (Often a “bootstrap” analysis was used, namely, that the defendant would not have copied the bag design if it were not famous.) 

Nevertheless, when a defendant could show that the copied features were important to the function of the bag, or were common and would therefore not be construed by consumers as an indicator of source, it would prevail.  (I successfully defended a case brought by Henri Bendel against Sears Roebuck and Circle of Beauty, a division thereof, where the plaintiff argued that its plastic-coated cosmetic bags of various shapes constituted protectable trade dress.  Our clients’ bags, although of similar shapes and designs, bore stripes of a different color than the bags and the Court held that, but for the color, the bags were not protectable.)

Recent Supreme Court decisions put a brake on the broad protection of product designs, including fashion items, as trade dress.  The plaintiff now has to prove, often by expensive survey evidence, that consumers actually recognize the design as an indication of its source, i.e., that they would expect all goods of that design to come from the same manufacturer. 

Further, the plaintiff has the burden to demonstrate that the product elements it claims protectable are not essential to the function of the product, or make the product better or cheaper to manufacture.  (Generally, no one can claim a monopoly on fine leather, or particular fabrics, such as plastic-coated canvas, or gold-plated hardware.) 

In at least one recent case, however, Coach did manage to convince the U.S. Court of Appeals for the Second Circuit that it was entitled to protection for a line of bags based upon the following description of its trade dress:  glove-tanned leather; bound edges; heavy brass or nickel-plated brass hardware; and a hangtag with a beaded chain. 

Also, as people who follow fashion know, there is very little brand-new material in design.  In other words “Everything old is new again.”  Even fashion trends that were horrible the first time around, such as leg warmers, eventually come back into vogue.  Consumers recognize this, and they also know that designers use one another for “inspiration.”  Otherwise, there would be no “trends.”  Thus, all but the most unique and distinct of shapes is generally fair game.  Certain fanciful shapes, such as the unique animal shapes of Judith Leiber handbags and minaudieres (pictured left), however, may be protectable. (ed. note - we represent JL).

Patterns.  This, of course, is often the aspect of the bag most recognizable and therefore most prone to copying by others who want a piece of the market created by the trendsetter.  For instance, one of the big items for this season is Louis Vuitton’s line of bags featuring a cherry design created by the artist Takashi Murakami.  (In past seasons, Vuitton came out with a line of white bags featuring a bright multi-colored pattern, which was also very successful.)

One must approach such patterns with caution, because they may not only be subject to trademark protection, but may also be protected under Copyright law.  Slavish copying of such patterns should always be avoided.  Nor are minor modifications likely to provide a safe harbor, as Copyright law protects the creator against third parties who produce designs that would be viewed as “substantially similar.”

However, Copyright law protects only tangible expression, not an “idea,” so if you wish to adorn your bags with brightly colored whimsical fruit, you should be able to do so.  (Even cherries might be used, so long as they do not look too similar to the Murakami cherries.)  By the same token, a repeating pattern featuring pastel-colored shapes should not infringe a different pattern using similar colors and other shapes.  In close cases, attorneys versed in trademark or copyright, such as the authors of this blog,  can evaluate the question of whether a particular pattern is “substantially similar” to another.

Further, while it is often a good idea to perform a trademark search to determine whether the manufacturer of the item at issue has sought or obtained a federal trademark registration, the absence of a registration or application is no assurance, as both federal and state trademark laws protect unregistered trademarks and trade dress, so long as they meet the requirements for protectability, namely distinctiveness (inherent or acquired through use and promotion) and non-functionality.

You should be okay on legal grounds, then (with the above caveat that this doesn’t always protect you from being sued (and that I am speaking generally)), if you (a) do not use the house mark of another (it is also a good idea to search the Trademark Office to determine whether the original manufacture has applied to register any of the particular design elements) and (b) do not slavishly copy a graphic pattern.  In other words, it’s okay if someone says “that reminds me of the style of the new Vuitton bags,” but not “I love your new Vuitton bag.”

Note that trademark law protects against confusion not only of the direct purchaser, but also of potential consumers who might see the product post-sale.  Thus, even if you specifically tell the purchaser that your product is not genuine but is a “replica” or if you separately provide labels for the consumers to attach themselves, you will be found liable if the product otherwise infringes the original.  In fact, as previously reported in this blog, the United States House of Representatives has recently passed a bill making mere possession of counterfeit labels a crime, even if they are not affixed to a product.

Have fun and be safe.  When in doubt, consult your friendly neighborhood intellectual property attorneys.

Posted by Marty at 07:21 PM | Permalink

Grambling State Universitiy to change 'Packers-style' G logo, perhaps inadvertently.  Via Packers.scout.com.

Pictured left to right: the logos of Grambling, the Green Bay Packers, and the Georgia Bulldogs.

Posted by Marty at 03:33 PM | Permalink

Wall Street Journal article (free link for now) re North Korea's role in product counterfeiting..MARLBORO, MILD SEVEN and STATE EXPRESS 555 cigarettes are specifically mentioned.

Posted by Marty at 03:14 PM | Permalink

Two new blogs with Regular IP content:

Silicon Valley Media Law Blog from attorney Cathy Kirkman of  Wilson Sonsini.

Video Game Law Blog (really) from Canadian law firm Davis and Company.

Posted by Marty at 03:05 PM | Permalink