DuetsBlog

Collaborations in Creativity & the Law

What Famous Quarterback Named Elisha Allegedly Provided Fake Helmets To Sports Dealers?

Posted in Articles, Contracts, Counterfeits, Famous Marks, Law Suits

Elisha is the two time Super Bowl MVP New York Giants quarterback Eli Manning.

Eli Manning

Collecting equipment used, or uniforms worn, during an NFL game is big business. Young and old alike want these items to feel close to their favorite team or player.

throw football 1celebrate football 2

In a 99 page Amended Complaint, plaintiffs (including,  sports memorabilia collectors/marketers and resellers) sued the New York Giants and employees, alleging that Eli and the team provided fake memorabilia to a dealer. They allege that fake helmets, jerseys and other sports memorabilia were given to dealers.

The lawsuit arose after a criminal investigation into the sports memorabilia business that resulted in Plaintiffs’ being indicted. Ultimately, the indictments were dismissed. Plaintiffs allege that the New York Giants lied during the criminal investigation and were involved in a cover up. Specifically, Plaintiffs alleged the Giants’ General Counsel concealed and encouraged misconduct. This resulted in Plaintiff Inselberg being indicted.

Specifically, the Amended Complaint has 18 counts including: civil RICO, malicious prosecution, tortious interference with prospective economic advantage, trade libel, intentional infliction of emotional distress, consumer fraud, common law fraud, quasi contract unjust enrichment, quantum meruit, unfair competition – misappropriation and reverse palming off; breach of contract, tortious interference with contractual relations, civil conspiracy, aiding and abetting, negligent supervision, negligent retention, negligent misrepresentation, and respondeat superior.

Last week, Plaintiffs attorney told a New Jersey court that a 2010 e-mail exchange between Eli Manning and the team’s equipment director Joe Skiba proves that Eli Manning knowingly provided fake helmets to a sports retailer. Specifically, Plaintiffs’ attorney claims that Eli Manning told Mr.  Skiba that he was looking for “2 helmets that can pass as game used. That is it.” They assert that Eli Manning was under contract to provide game-worn memorabilia to retailer Steiner Sports, LLC. Further, Plaintiffs’ attorney asserted that the Giants or their employees “appear to have deleted” Manning’s e-mail.

The New York Giants’ attorney stated that “the e-mail, taken out of context, was shared with the media by an unscrupulous memorabilia dealer and his counsel who for years has been seeking leverage to a big payday. The e-mail predates any litigation, and there was no legal obligation to store it on the Giant’s server.”

Were the helmets and jerseys fake? Was there a cover up and conspiracy by the New York Giants? Or, are the Plaintiffs merely seeking a big payday and/or to divert attention from the dismissed indictment?

We will have to wait to see how this “plays” out in the courts.

Here’s to Calling the Kettle, Brand Too?

Posted in Advertising, Articles, Branding, Food, Genericide, Loss of Rights, Marketing, Trademarks

The teapot read my post from last week and is not only calling the kettle black, but brand too:

KettleBrandChips

So, we’ll have to see whether saying it’s so makes it so, after we stir the pot a bit, of course.

Like the previous Virginia Brand ham example, the chip packaging above prominently incorporates the word “brand” as does the two-word Kettle Brand trademark registration from 2015.

Unlike the Virginia Brand example, however, the Kettle Brand potato chip packaging shown above displays the federal registration symbol too — in this case, after the word Kettle.

Yet, the federal registration symbol begs the question of whether it signifies registration on the Principal Register for distinctive marks or the Supplemental Register, the latter being reserved for non-disitnctive matter that is non-generic and capable of some day serving as a trademark.

As you may have suspected, the answer is, it depends. In this case, it depends on which registration from the Kettle Foods portfolio we’re speaking about, and on the goods covered by the registration in question, as Kettle Foods owns a number of registrations that consist of or include the term KETTLE, some reside on the Principal Register and some on the Supplemental.

In addition, whether the registrations disclose disclaimers also becomes relevant to the analysis of what Kettle Foods owns. For example, the two-word Kettle Brand trademark registration referenced and linked above from 2015 resides on the Supplemental Register and covers potato chips, corn chips, and popcorn, among other snack food items; the word Brand is disclaimed as generic, which means the USPTO believes that Kettle is merely descriptive, not yet distinctive.

One might ask then why Kettle Foods would “settle” for a Supplemental Registration in 2015 when it already had in the bag Principal Registrations for Kettle Brand for tortilla chips (disclaimer of Brand, not Kettle)? Better yet, why file an intent-to-use trademark application for the same mark — also covering tortilla chips — less than a year after the Principal Registration was maintained with the filing of a Section 8 & 15 Declaration?

What might that spell for the validity of the four Principal registrations (here, here, here (disclaimer of KETTLE for potato chips) and here) for this stylized KETTLE logo designation:

KettleLogo

What do you think, can Kettle and/or Kettle Brand actually serve as an effective brand name and trademark for potato chips, corn chips, and/or popcorn?

Or, does Kettle signify a class or type of snack food made in a kettle, as opposed to a pot — kind of like Brick Oven, generic for frozen pizza made in brick ovens?

Blizzard v. Bossland: Game Over for Video Game Botting?

Posted in Civil Procedure, Copyrights, Infringement, International, Law Suits

IMG_0015

I’m a rules follower. Going back to the days of the Game Genie—a device that allowed gamers to play Super Mario Bros. with infinite lives or the Legend of Zelda with infinite bombs—I have always preferred the satisfaction of beating the IMG_0016game by its own rules.

 
Like the video games that have progressed since the Nintendo NES, the corresponding cheat codes have become increasingly more sophisticated. Bossland is a company that creates and sells entire programs dedicated to hacking and cheating in popular video games, such as World of Warcraft, Overwatch, and Diablo 3, all made by Blizzard Entertainment. Many of the Bossland programs allow users to create “bots” that play the game automatically without any user interaction so that the user can, for example, achieve a higher level character without the usual effort. This is a practice sometimes referred to as “botting.”

 
Blizzard has been fighting companies like Bossland for years. Since 2013, Bossland has sold approximately 118,939 products in the United States alone. Blizzard estimates that 36% of these products were cheats for Blizzard games. In June of 2016, Blizzard sued Bossland in the Central District of California. According to Blizzard, the Bossland cheats give users an unfair advantage, reducing the enjoyment of the game for other players. Blizzard alleged, among other causes of action, that Bossland violated an anti-circumvention provision of the Digital Millennium Copyright Act. The DMCA provides:

No person shall manufacture, import, offer to the public, provide, or otherwise traffic in any technology, product, service, device, component, or part thereof, that—
(A) is primarily designed or produced for the purpose of circumventing a technological measure that effectively controls access to a work protected under this title;
(B) has only limited commercially significant purpose or use other than to circumvent a technological measure that effectively controls access to a work protected under this title; or
(C) is marketed by that person or another acting in concert with that person with that person’s knowledge for use in circumventing a technological measure that effectively controls access to a work protected under this title.

17 U.S.C. 1201(a)(2). Within its games, Blizzard has “technological measures” that operate to prevent users from using cheats and hacks, but the Bossland programs are designed to work around Blizzard’s measures. At first blush, Bossland’s programming seems like the very type of circumvention efforts that the anti-circumvention provisions of the DMCA were designed to protect against. But the DMCA was enacted in response to internet file sharing concerns. In 2009, Blizzard was involved in a similar lawsuit against another cheat company. Many were concerned that a ruling in favor of Blizzard would overly expand the DMCA to allow for recovery under any circumvention of any type of technological control. Jef Pearlman of Stanford University suggested that “because anything can contain copyrighted works,” a ruling in favor of Blizzard could suggest that “any access to anything becomes a DMCA violation.” Blizzard did win its 2009 case, and the judgment was affirmed on appeal to the Ninth Circuit.

 
Late last year, Bossland motioned to dismiss the lawsuit for a lack of jurisdiction over the Germany-based company. The district court denied Bossland’s motion. After that attempt, Bossland apparently stopped defending the suit altogether. As a result, Blizzard obtained from the court a default judgment against Bossland. The judgment awards damages to Blizzard based on available statutory damages under the DMCA. The DMCA allows a plaintiff to collect a minimum of $200 per violation. Blizzard alleged 42,818 violations of the DMCA, and because Bossland did not dispute any of them, Blizzard obtained a judgment of statutory damages to the tune of over $8.5 million.

 
Bossland maintains on its product websites that “Botting is not against any law.” While perhaps technically true, the circumvention of digital copyright safeguards is.

While the Slants are in the Spotlight, Chief Wahoo is on Deck

Posted in First Amendment, USPTO

Throughout the past decade, attorneys, judges, plaintiffs, and defendants have invested thousands of hours in the fight over offensive trademarks. Most of the public is aware of the controversy surrounding the Washington Redskins, who continue to be embroiled in litigation that is currently pending with the Federal Court of Appeals for the Fourth Circuit. But even more important is the pending litigation at the Supreme Court, where the Asian-American band The Slants have challenged the constitutionality of the law that prevents the federal government from granting the benefits of federal registration to trademarks that disparage groups of people.

We’ve discussed the history and merits of the case at at length. I won’t get into the details in this post. However, with the Cleveland Indians in town to play the Minnesota Twins, I was reminded that the Cleveland organization seemed to be escaping the glare of the media attention that had been focused on the Redskins and the Slants. Apart from the name of the team itself, Cleveland’s logos throughout only seem to worsen the potential to disparage or offend Native Americans. For reference, the logos and years of use are reproduced below:

Indians Logos

The Supreme Court heard oral arguments in the Slants case (In re Tam) on January 18th. But while we await a decision from the Court, the Cleveland Indians provide us with a reminder that, regardless of what a court may say, the court of public opinion may have the final word. In fact, we have learned over the last two weeks that Major League Baseball’s Commissioner Rob Manfred has been in discussions with the Cleveland organization regarding the “Chief Wahoo” logo since the end of the World Series. The Commissioner has publicly stated that he is pushing the team “to transition away” from the logo. Just last January, the MLB awarded Cleveland the right to host the 2019 All-Star game. With recent events in Charlotte and throughout the U.S., it’s hard not to wonder whether Chief Wahoo’s retirement date may already be set.

We’ll have to wait and see how the Supreme Court rules in In re Tam but, as with the case of the Cleveland Indians, not all trademark battles are won in the court of law.

 

Trademark Butter Battle: Kerrygold v. Irishgold

Posted in Infringement, Mixed Bag of Nuts, Product Packaging

You’ve probably heard of and/or eaten Kerrygold® Pure Irish Butter, a deliciously popular (but higher-priced) butter imported from Ireland, made with milk from grass-fed cows. It’s available in most stores across the United States…except for Wisconsin. Sorry to all my Wisconsin friends, you’re missing out. However, the butter is so popular that there have been reports of Wisconsin residents driving across state lines just to buy the Kerrygold® butter.

salted_butter

The reason that Kerrygold® butter cannot be sold in Wisconsin is the state’s protectionist law that requires all butters sold in Wisconsin to be graded through either the Wisconsin or federal grading systems, which effectively bans butter produced outside the United States. Kerrygold® butter is produced, packaged, and graded in Ireland by the Dublin-based company Ornua, and thus can’t be legally sold in Wisconsin.

Recently, a company based in the United States, Old World Creamery, attempted to side step Wisconsin’s law against imported butter. A couple weeks ago, Old World Creamery announced plans to start selling a butter from Ireland in Wisconsin, under the brand name “Irishgold.” The company found a workaround to sell its Irishgold butter in Wisconsin by importing it from Ireland, processing and packaging it in the United States, and then having the butter graded by state-licensed graders in Wisconsin.

Irishgold Packaging

Soon after learning of Old World Creamery’s plans, Ornua Foods North America Inc. and Ornua Co-operative Ltd. (collectively “Ornua”) filed a federal trademark infringement complaint in the Eastern District of Wisconsin against Old World Creamery LLC and Eurogold USA LLC (the “Defendants”). On the same day, Ornua also filed a motion for a temporary restraining order (TRO), seeking to stop Defendants’ use and marketing of the IRISHGOLD mark. Ornua asserted its ownership of several federal trademark registrations, including KERRYGOLD® (stylized) (Reg. No. 883,443) in connection with “dairy products – namely, butter, cheese”, and several KERRYGOLD & design registrations (Reg Nos. 1,452,354; 4,518,032) also in connection with various dairy products.

Last week, the court ruled in favor of Ornua and granted the motion for TRO. Following the well-established factors for granting a TRO, the court decided that a TRO was appropriate because Ornua had a reasonable likelihood of success on its trademark infringement claims, Ornua would suffer irreparable harm if Defendants’ use of the IRISHGOLD mark continued, greater injury would be inflicted on Ornua by denying the motion, and granting the TRO served the public interest.

What do you think? It will be interesting to see whether the TRO will push the parties to settlement, or whether litigation will continue towards trial. For now, it seems that my fellow Wisconsinites will still be making road trips to satisfy their cravings for imported Irish butter. Stay tuned for updates.

The 50% Solution

Posted in Almost Advice, Branding, Guest Bloggers, Mixed Bag of Nuts, Product Packaging, Squirrelly Thoughts

–James Mahoney, Razor’s Edge Communications

Years ago, I was washing my hands in the office men’s room. Next to me was a wheelchair-bound guy washing his at the appropriately lower sink.

I was thinking that the lower sink was a good idea when I noticed that the paper towel dispensers were all at “regular” height. The water on the wheelchair guy’s hands would run down his arms when he reached up to access the towels. He and I both laughed at that.

“Yeah,” he said, “it’s what we call the 50% solution.”

The 50% solution came to mind the other day when I opened a box of enticing “Made in France” cookies. Inside, the cookies were packaged in four little cellophane bags. It’s a terrific idea. The little packs keep the rest of the cookies fresh, so you can savor the box-load over a longer term without worrying that they’ll get stale or soggy from humidity.

Curious about how far the thoughtfulness went, I checked the nutrition label. Serving size: 3 cookies. Cookies per cellophane pack: 4 cookies.

FYI, I exceeded the serving size by 33%. No sense letting a good cookie go stale.

When is a Duck a Goose, or a Ham a Brand?

Posted in Articles, Branding, Food, Genericide, Loss of Rights, Marketing, Trademarks, USPTO

VirginiaBrandHam

Every once in a while, the word “brand” appearing on product packaging surprises me, because my earlier understanding of the word preceding it spells generic, not brand. Just like the above.

Shopping in Whole Foods this past weekend, the above shown VIRGINIA BRAND designation called out like a neon sign from behind the glass of the meat counter, so I had to capture the image.

When speaking about the risk of trademark genericide, I’ll often refer to nervous trademark types behind the scenes influencing packaging to help educate consumers against a generic meaning.

Some of my favorite examples are Band-Aid® Brand Adhesive Bandages, Kleenex® Brand Tissue, and Jell-O® Brand Gelatin Dessert. We’ve referenced many others in our Genericide Watch.

Yet, there was something different about the VIRGINIA BRAND designation. First, the typical ® federal registration symbol is missing, as most brands worried about becoming generic are federally-registered. What’s more, as much as I love VIRGINIA, the name of a State simply lacks the inherent distinctiveness of the previously mentioned coined words that were made up to serve the specific purpose of serving as trademarks. Coined marks are uniquely susceptible to degeneration through genericide, but inherently generic wording begins and ends there.

To me, Virginia was a type or category of ham, either coming from Virginia or perhaps employing a common type of smoking or curing that originated in Virginia, either way generic, not a brand.

Turns out, VIRGINIA BRAND is a federally-registered trademark for packaged prepared meats, but it appears to be owned by White Packing Co., Inc. of Fredericksburg, Virginia, not Wellshire Farms West of Palm Coast, Florida, the latter trademark owner having used this label specimen to federally-register the WELLSHIRE logo (note the small print indicating MADE IN MARYLAND):

VirginiaBrandLabel

When lots of different and unrelated brands of ham offer Virginia and/or Virginia Brand ham, say Boar’s Head, Sara Lee, Black Bear, Eckrich, can Virginia and/or Virginia Brand really be a brand?

VirginiaBrandHamSpecimen

In other words, if anyone can sell their version of “Virginia Brand” ham, doesn’t that turn the notion of “brand” on its head, or at least on a boar’s head?

Just because someone calls a duck a goose, doesn’t make it a goose, right?

And, in terms of geography, just because someone calls its ham Virginia, doesn’t make it a brand either (especially when it’s made in Maryland or North Carolina).

Let’s just say, I’m more than likely to be confused here. Anyone able to make sense of this brand conundrum? Perhaps an easy job for Dr. Seuss and his famous character Sam-I-Am?

In terms of consequences, might the Virginia Brand federal trademark registration fairly be considered deadwood, suitable for smoking your next Easter Dinner ham?

TICK DIFFERENT – But Apparently Not All That Different?

Posted in Advertising, Branding, Dilution

The irony of trademark clearance – even if a trademark espouses a unique message, it may not be all that unique.

Swiss watchmaker Swatch AG finds itself embroiled in another trademark dispute with Apple, Inc. – this time, for the trademark TICK DIFFERENT. Swatch applied for the trademark in Switzerland, which Apple has challenged before the Swiss Federal Administrative Court.

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Apple, you may recall, coined the slogan THINK DIFFERENT in connection with a 1997 ad campaign. The slogan’s deliberate grammatical turn (i.e., avoiding the more obvious “think differently“) earned national acclaim and became associated with Apple’s turnaround in the subsequent decade.

Think-Different-campaign

It seems on that basis Swatch may have an uphill battle ahead of it – the THINK DIFFERENT mark was used in association with computers, but it has no doubt attained a high level of international fame. What’s more, the watch Swatch offers with this tagline has some element of “smart” functionality – that is, it contains contactless payment functionality.

This makes Swatch’s mark vulnerable under theories of trademark dilution, something we have addressed at length in this blog. Evidently, in Switzerland, the standard is rather specific – to prevail, Apple must “prove that at least 50 percent of consumers associate “Think Different” with Apple branding.” The U.S. standard is not quite that overt, but relatively the same standards apply – if THINK DIFFERENT is famous and well-known among U.S. consumers, it can be said Swatch’s mark would create a “likelihood of dilution” with respect to Apple’s mark.

But as it happens, Swatch also has applied for the TICK DIFFERENT mark in the United States – and the Trademark Office has approved and allowed the application. This means Apple did not choose to oppose this application when it was published, and must wait until Swatch submits proof of use in the U.S. (or provides its Swiss registration information, if and when it is issued) for the mark to be registered. Only then could Apple challenge the U.S. application – then a hypothetical registration – via a cancellation proceeding.

So the Swiss lawsuit could be the start of many enforcement proceedings for Apple – even if they are successful in Switzerland, the electronics giant may well be before the TTAB in the near future.

The Muddy Waters of Use for Beer Brands

Posted in Trademarks

The Craft Brewers Conference is an impressive affair. Between the number of brewers I’ve met from across the country as well as internationally, and the colossal trade show, the breadth and scope of the industry is probably most visible from this event.  Set in D.C. this year, it’s surrounded by important historical places and legal landmarks. Like George here.

Throughout the show and its associated events, there are opportunities to sample beers  – including some not made in DC or without distribution in this area but available in other markets.  Without getting too far into the complicated web of laws that govern how alcohol gets from the brewer to the consumer, distribution is challenging and a long term strategic process.  For a trademark to achieve registration though, the applicant must have use in commerce and use in interstate commerce.  So I think George Washington wanted to ask a question on many Brewers minds – are these samples a sufficient use in interstate commerce?

When the brewer has used in commerce – sold or shipped product from its brewery to a purchaser – that can establish the “use in commerce” even if the use is only within the state.  It has to be a product that a consumer can buy, not some token use.  Use in interstate commerce is in addition to that use. It has to have a sale or shipment across state lines – or otherwise federally regulated under the Supreme Court’s expansive interpretation of the Commerce clause. To have a sample at an event like this or at a beer fest, a keg is typically transported across state lines, which can support use in interstate commerce.

So yes it seems that these uses would meet that second standard, but it is important to document that transfer and also document how the consumer encountered the product. Many I saw this week barely had a name of the brewer clearly recognizable, let alone the beer name. They also were being served by convention center staff – an often unavoidable decoupling of a consumer’s experience with the brand.

 

Aaron Keller Explains the Physics of Brand

Posted in Articles, Branding, Marketing

AaronKeller3 AaronKeller4AaronKeller1 AaronKeller2

We enjoyed connecting with our many friends at Fuse 2017 last week in Miami Beach, and experiencing the larger-than-life Martha Stewart and the living display of her fearless brand.

One of the many Fuse highlights was experiencing Aaron Keller explain the Physics of Brand, Capsule’s third book — this one Aaron Keller co-authored with Renee Marino and Dan Wallace.

The book has received high praise, from some very notable folks in the world of design, including Mauro Porcini, but don’t listen to me or others, check it out for yourself, here.

Anyone able to fill in the imaginary caption bubbles for the various visual freeze frames of the animated brand physicist Aaron in Action?

Knowing Aaron as I do, I’m 99% certain, he’s repeating the top image to the right as he reads this post, one response I’ve seen before, and one which needs no caption bubble to understand.

Aaron, Renee, and Dan, congrats on the success of The Physics of Brand!