The counterfeiters registered at least 34 domain names, including several with the word Hermès along with its bag names: Birkin and Kelly.  Hermès sells two handbags named after famous actresses.  The Birkin bag was named after actress and singer Jane Birkin.  I saw an episode of “Sex and the City” this weekend where Samantha was fired for using her client’s name (Lucy Liu) to go to the head of a list with a two year wait to obtain the coveted bag.  The Kelly bag was coined after actress and Princess of Monaco Grace Kelly covered her pregnant stomach with a Hermès bag.  These bags sell from $6,000 to $150,000.

When the defendants failed to answer the complaint filed by Hermès, the court entered a default judgment and permanent injunction.  In addition to trademark counterfeiting, infringement and dilution, the court also entered judgment on the cybersquatting claim.  Cybersquatting involves registering or using a domain name with the bad faith intent to profit from the goodwill of another’s trademark.  In other words, the defendants were selling knock-off products through these domain names.  The court’s order also provides that upon receiving notice Internet search engines (e.g., Google) and social media websites (e.g., Facebook) are required to de-index and remove infringing domain names and websites from any search results pages.  This type of relief will likely be requested more frequently by litigants with Internet shopping’s growing popularity.

Other fashion designers have, and will continue to, enforce their trademark rights and work to shut down counterfeiters.  Indeed, there is another counterfeit handbag battle pending before the Second Circuit.  Fendi Adele SRL (“Fendi”) is arguing that it can obtain enhanced damages from an alleged counterfeit merchandise seller’s conduct without showing that the conduct was willful.  This battle (going back to 2006) is a topic for a blog post on another day.

To address this serious crime, Congress enacted the Trademark Counterfeiting Act of 1984 (“Counterfeiting Act”).  The Counterfeiting Act makes it a federal crime to violate the Lanham Act by the intentional use of a counterfeit trademark and/or the unauthorized use of a counterfeit trademark.  Penalties under the Act include a prison sentence of up to five years and/or a $250,000 fine ($1,000,000 fine for a legal entity) for selling or even attempting to sell counterfeit goods or services.  In addition to criminal penalties, the counterfeiter can be sued civilly by the owner of the trademark under the Lanham Act.  Recovery under the Lanham Act can include lost profits, triple damages and attorney’s fees.

Last week, the Fourth Circuit upheld jury verdicts convicting counterfeiters of importing and selling counterfeit Burberry handbags and wallets.  The well-known plaid pattern trademarks at issue are often referred to as the “Check” mark.  Specifically, the judge stated that “[t]he plaid pattern displayed on appellants’ goods differs only slightly from the Burberry Check mark — in color and in the shape of the boxes formed by the stripes.”  Accordingly, the marks on the counterfeit wallets and purses were close enough to Burberry’s trademark to support the jury verdict.

Handbags and wallets are goods that are often counterfeited both in the United States and abroad.  What other products have you encountered that have counterfeit trademarks?

In an interesting turn, Facebook purchased 750 patents from IBM that related to software and networking.  How this purchase will affect the lawsuit is still unknown.  It may forge a settlement.  Has anyone heard of any recent instances where patents have been purchased to settle or avoid a lawsuit?

I recently read an article in Forbes magazine about a company that purchases patents as investments.  The company is called Intellectual Ventures—or IV for short.  It was founded by former Microsoft Chief Technology Officer Nathan Myhrvold.  The company has filed lawsuits against big companies alleging patent infringement based on the purchased patents.  These actions, according to Forbes magazine, have resulted in “a few pricey licensing deals.”  Ironically, it has been rumored that IV was initially set up at the behest of Bill Gates to help defend Microsoft against patent trolls.  It remains to be seen if the company could also be a place where parties in disputes could come to purchase patents to avoid lawsuits.

Louis Vuitton sought to have Warner Bros. remove references to a counterfeit bag and the line “Careful, that’s a Louis Vuitton,” from the movie.  The bag at issue is manufactured by a Chinese American company Diophy.  Louis Vuitton has also sued Diophy for trademark infringement in another lawsuit.  It asserts that the movie is misleading the public that Louis Vuitton is the source of the bag.  The scene also undermines the company’s efforts against counterfeiting and trademark enforcement.

Should we be concerned that trademark owners will be able to interfere with creative works, such as movies, by vetoing the appearance of its product?  This argument was raised by counsel for Warner Bros., along with First Amendment protection, during a recent hearing.  Louis Vuitton countered still by arguing that the public would be confused into thinking that the Diophy bag is the real thing.

Movie producers and other artists should be cognizant of intellectual property issues or face potential litigation.  On the other hand, product placement in a movie can be welcome.  Indeed, it can be big business.  Steven Spielberg and Hershey Food Corporation struck a deal to co-promote the E.T. movie with Reese’s Pieces.  Still other trademark owners may be happy to have their product prominently displayed in a movie as free advertising.  They may even pay the movie to feature the product.  Then next time you go to the movie theater you might encounter some intellectual property issues.  Do any come to mind?

By way of background, Louboutin urged the Second Circuit to reverse the District Court’s order denying it a preliminary injunction on the grounds that Louboutin could not demonstrate that it was likely to succeed on its trademark infringement and unfair competition claims. In support of Louboutin and a reversal, Tiffany & Co. argued that the District Court’s opinion in this case had “adopted a sweeping and unprecedented per se rule against granting trademark protection to any single color that is used on any ‘fashion item,’ even where the color has achieved ‘secondary meaning’ and is associated with a single brand.”  INTA also weighed in alleging that the color red on soles of shoes was not aesthetically functional and that if left to stand the decision would “upend key aspects of trademark and unfair competition law, making it easier for third parties to use the brands of others.” 

YSL’s friends are professors of law who teach in the area of trademark and related fields (including a professor from my alma mater the University of Minnesota Law School). They argue that “functionality channels the grant of legal monopolies over product features away from trademark to utility . . .” They believe that the District Court appropriately recognized the importance of color to consumers in fashion markets. Aesthetic functionality of a trademark occurs where the consumer’s preferences for attractive product designs drive purchases. These professors further believe that competitors would be harmed if trademarks, such as Louboutin’s red soled mark, were allowed to monopolize certain colors. After discussing design patents, the law professors assert that there is a need to bolster the doctrine of aesthetic functionality to not only protect trademarks, but also design patent applications. 

Finally, the law professors dismiss Tiffany & Co.’s concerns for its own trademark because its rights are based on color marks for nonfunctional product packaging (i.e., the well-recognized robin’s egg blue). This same argument was also expressed in a comment to my prior post on INTA’s amicus curiae brief. 

In their brief, the law professors claim that “it is far from clear how Louboutin would be harmed if a woman mistakenly believes another woman’s monochromatic red shoes to be Louboutin.” I disagree. I have always wanted a pair (unfortunately, they were not under the Christmas tree this year), but would be less inclined to buy a pair if I saw another woman wearing poorly designed red sole shoes that I mistook for Louboutin’s shoes. Maybe, it is just me, but there are likely others who would have a similar reaction.   

The Second Circuit has its work cut out for it. This is a very important battle for color trademarks (and especially those trademark owners in the fashion industry that rely so heavily on color). Will Louboutin and its friends INTA and Tiffany & Co. prevail or will YSL and the law professors prevail?

You may recall a prior DuetsBlog post regarding the trademark battle in the Southern District of New York between two famous designers.   The Christian Louboutin companies sued competitor Yves Saint Laurent companies based on its federally registered trademark for “a lacquered red sole on footwear.”   In connection with this lawsuit, Christian Louboutin brought a motion for preliminary injunction.  In denying the motion, the District Court found that granting trademark rights to this use of red would “significantly hinder competition,” that is, “permit one competitor (or a group) to interfere with legitimate (nontrademark-related) competition through actual or potential exclusive use of an important product ingredient.” Christian Louboutin S.A. v. Yves Saint Laurent Am., Inc., 778 F. Supp. 2d 445, 454 (S.D.N.Y. 2011).   In declining to find a likelihood of success to enjoin Yves Saint Laurent, the District Court explained that it “c[ould] not conceive that the Lanham Act could serve as the source of the broad spectrum of absurdities that would follow recognition of a trademark for the use of a single color for fashion items.”  Id. at 457. 

Christian Louboutin has now appealed this decision to the Second Circuit.  As you likely read in Catlan McCurdy’s blog post, Tiffany & Co. submitted an amicus curiae brief on behalf of Christian Louboutin.  As any company associated with the fashion industry knows, color is often crucial to the company’s brand.  Tiffany & Co.’s robin egg blue is the subject of numerous trademark registrations for items such as jewelry, fragrances and handbags (Reg. Nos. 2184128, 2416795, 2416794).  Tiffany & Co. wants to keep the protection courts have afforded single color marks.

INTA also has submitted an amicus curiae brief in support of Christian Louboutin.  Specifically, INTA alleges that the District Court erred in rejecting the presumption of validity attendant to Christian Louboutin’s federal trademark where the narrower claim actually defined in the registration, namely a “lacquered red sole on footwear.”  Further, INTA alleges that the color red on soles of shoes was not aesthetically functional.  Such errors if left to stand would “upend key aspects of trademark and unfair competition law, making it easier for third parties to use the brands of others.” 

The importance of the appeal to the Second Circuit is highlighted by the amicus curiae briefs filed by Tiffany & Co. and INTA.  Color trademarks are an important form of intellectual property protection for fashion brands.  It will be interesting to see if Christian Louboutin, with the help of Tiffany & Co. and INTA, can convince the Second Circuit to protect its red-soled footwear.

Demstore.com and Washington Promotions & Printing, Inc. (collectively the “Demstore.com entities”) operate the website www.demstore.com where they sell election and campaign merchandise bearing the Rising Sun trademarks. OFA sent cease and desist letters to them. Yet, the Demstore.com entities continued using the trademarks on merchandise. 

The Demstore.com entities alleged that the trademarks were invalid based on laches. This means that the company argued that OFA had unreasonably delayed pursuing its claim in a manner that was prejudicial to Demstore.com. OFA countered that a laches defense was not available because the Demstore.com entities had intentionally infringed the trademark. 

OFA is likely wanting to use the Rising Sun trademarks for President Obama’s reelection campaign. It will be interesting to see if OFA can restrain the Demstore.com entities from using the trademarks.

GTL Fuel, LLC (“GTL Fuel”) filed trademark applications for “GTL Fuel” in connection with energy drinks and plastic tubes for packaging non-alcoholic drinks in test tube containers. It has obtained a trademark registration for GTL Fuel in connection with energy drinks. 

The Situation’s company has sued GTL Fuel for trademark infringement, unfair competition, among other things. The Complaint contends that GTL Fuel has been engaged in developing and marketing “products to fuel your GTL life,” including gym products, tanning products, laundry products, energy shots, bronzers, tanning lotions, and shampoos among other things. The Situation’s company contends that GTL Fuel is infringing on its trademarks and attempting to associate its products with the Situation and Jersey Shore. The Complaint alleges that GTL Fuel’s Facebook page only has two other pages it “Likes” – a cancer site and “DJ Pauly D” who is a Jersey Shore roommate of the Situation. Accordingly, the Complaint alleges that “it is apparent that GTL Fuel was created to capitalize upon the goodwill of Plaintiff’s Mark and the Mark’s association with [the Situation], and to illegally profit off of the use of the Mark in commerce.”

I have written a couple prior blogs about lawsuits where Facebook is a party. Facebook is not only involved as a party to lawsuits but is also a place where trademark holders can find evidence of others infringing on their trademarks. Other social media such as Twitter is another fertile ground for evidence of trademark infringement. Indeed, GTL Fuel announced a “Guido contest” in connection with its energy drink. This too appears to be a way for the company to link itself to the Situation and his Jersey Shore compatriots—as they often use the term on the show. 

The Kardashians and Jersey Shore roommates will likely not be the only reality stars filing for trademarks. As this new genre of television is so popular and capitalizes on marketing their brands, disputes regarding reality show related trademarks are likely to continue popping up.

Plaintiff Timelines registered the trademarks TIMELINES® and TIMELINEX.COM® in connection with its operation of the website called Timelines.com. This website allows users to record and share events and contribute photos, descriptions, videos, links and geographic locations. The lawsuit arose after Facebook announced an exciting new profile layout called Timelines stating, “tell your life story with a new kind of profile.” In the lawsuit, Timelines contends that it will go out of business if mega-giant Facebook is allowed to launch its “Timelines” layout. Accordingly, Timelines is seeking an injunction preventing Facebook from using this new layout. 

This lawsuit appears to have delayed Facebook’s official launch of the new Timelines profile. However, I performed a quick search on the internet and found an articlethat claims a process for allowing access to the new Facebook Timelines now. Specifically, it contends that a user can sign up for the app developer program in less than five minutes. As I am not technologically savvy, I declined to try.

We will have to wait and see if the little company Timelines can block mega-giant Facebook’s new profile layout and save its company.

The family has numerous trademarks. Kim Kardashian owns trademarks with her name that range from jewelry, clothing, cosmetics, perfume to entertainment. She has abandoned the trademark registrations for Kimberly Kardashian and kimsaprincess. Following the issuance of the Notice of Allowance for those registrations, she failed to file a statement or Use of Extension Request. This is likely because Kim Kardashian is the lucrative brand she has been building through her reality shows. Indeed, her September wedding reportedly cost $10 million (although she did not have to pay for it). This free multi-million dollar wedding was one of the many benefits of having built a mega strong brand. 

Her sister Kourtney Kardashian has registered her name as a trademark for numerous types of clothing and accessories.  Sister Khloe has a trademark for her name and for the mark “unbreakable bond by Khloe and Lamar” for fragrances and countless other products ranging from clothing, candles, eyewear, to jewelry. Khloe and Lamar recently launched their new unbreakable unisex fragrance. The process of choosing the fragrance and the bottle containing the product was well documented on the reality show Khloe & Lamar.

As mom Kris Jenner is brand savvy, she has also registered numerous trademarks related to her Kardashian daughters including: K Dash by Kardashian (referring to the family’s clothing store), Kardashian Kollection, Kardashian Khaos, and Kardashian Kurves.

Now Kylie and Kendall the youngest children of Kris Jenner have registered trademarks for their names. They each have at least seven trademarks and numerous trademarks for Kylie and Kendall. 

Kris Jenner knows the value of intellectual property and branding. Do you think that his mother-in-law will register trademarks for our local celebrity Kris Humphries?