DuetsBlog

Collaborations in Creativity & the Law

It’s a Mouse World After All

Posted in Agreements, Non-Traditional Trademarks, Television, Trademark Bullying, Trademarks

Deadmau5 (\’ded-mau̇s\; a.k.a. Joel Zimmerman) is a popular house music artist who performs wearing a mouse-like head covering called the mau5head.   On Twitter he calls himself an “Event Driven Marketing specialist,” so I thought this was a fitting subject for the hip legal, creative and marketing folks who follow us here at DuetsBlog – although it is also a clever backronym for EDM.

 

Look familiar at all?  Here comes the drop…

The Hollywood Reporter featured a story on an apparent brewing tiff between deadmau5 and Disney based on the filing of an extension request to oppose Ronica Holdings’ application for deadmau5′s logo.  The application claims a plethora of goods and services, including beer, toys, apparel, backpacks, metronomes, digital music, entertainment services, and BMX bikes.

Trademark image

 

Disney owns registrations (here and here) for the mark below for various apparel items, backpacks, and luggage, in addition to some marks with Mickey Mouse:

Trademark image

 

But this appears to be a redux of a prior battle.

Back in 2009, Catbread Inc. filed an application for the same logo (albeit maybe a little thinner at the corners of the mouth) on goods and services that overlap with those in the present application.  Catbread later assigned other deadmau5 logos to Ronica.  Disney filed a couple requests to extend their deadline to oppose the application, and Catbread ultimately expressly abandoned the application in 2011.

Trademark image

But Disney didn’t attempt to oppose (or even file a request to extend their deadline to oppose) this registered logo:

Mark Image

I assume that the express abandonment of the prior application came after discussions between deadmau5′s legal team and Mr. Mouse (an inaccurate portrayal, but I had to throw in a funny South Park clip).  Typically such an express abandonment comes either as part of a settlement or else perhaps the applicant quietly decided to simply abandon the application rather than deal with a response to a demand letter signed by Mr. Mouse.  In addition to the application, Disney’s legal counsel must have been aware of some use of the deadmau5 mark and potential associated trade dress issues.   On the other side, prior to filing the new application, this seems like a battle that deadmau5′s counsel likely anticipated with the new filing.  But since 2011, deadmau5′s popularity has grown substantially, so maybe there is more incentive and more evidence to support that the deadmau5 mark is not confusingly similar to Mickey.

Who do you think prevails on this one – deadmau5 or Mr. Mouse?

 

Anticipation . . . But, Heinz is Not Keeping Melinda’s Habanero Ketchup Waiting

Posted in Articles, Branding, Dilution, Famous Marks, Food, Infringement, Law Suits, Non-Traditional Trademarks, Product Packaging, Sight, Trademarks

Last month Heinz, a brand “synonymous with ketchup throughout the world,” and a seller of “650 million bottles of Heinz ketchup each year,” brought a federal trademark infringement and dilution lawsuit in Texas to enforce exclusive rights in the “famous” Heinz bottle design against Melinda’s Habanero Ketchup brand. Here is the Complaint and Exhibits A, B, C, and D. And, here is the Dallas Observer’s side-by-side depiction and skeptical commentary:

In fairness to Heinz, a side-by-side comparison is not appropriate for testing likelihood of confusion purposes, unless the products actually appear on store shelves side-by-side.

The lawsuit alleges that each of the below bottle design marks are “inherently distinctive” and that Melinda’s bottle design is “nearly identical” to Heinz’s “highly distinctive glass bottle design”:

 

 

 

 

 

 

 

 

 

 

 

Who buys glass ketchup bottles anymore? After all, Heinz Dip & Squeeze is genious, right Dan?

Yet, for now, as the song says, anticipation is keeping me waiting for the court’s decision on this interesting case . . . .

So, in the meantime, what do you think of Heinz’s claims? I’m not reading a trade dress claim, just bottle shape, do you agree?

And, how does Heinz’s bottle design compare to the Coca Cola contour bottle in terms of recognition?

Waking Up Talented Artists to a New Game

Posted in Copyrights, Idea Protection, Squirrelly Thoughts

Perusing the New York Times last weekend, I came across an article entitled “Wu-Tang Clan Plans to Sell Just One Copy of  a New Album.”  Oh, so they are going to offer one download and watch it permeate the world virally?

Wrong, they literally mean one single copy.  One beautifully boxed album.  A holy grail of rap music from a venerable crew.  One.

 

Wu Tang plans to “exhibit” the album, playing the album (not even performing live themselves) in museums and other similar venues for about as much as a ticket to see Aziz Ansari do stand up live.  And don’t even think about going and recording the album with your smartphone or another device.

The intention appears to be to push the boundaries of how society values art in all forms.  The Wu Tang Clan said in a statement:

Is exclusivity versus mass replication really the 50 million dollar difference between a microphone and a paintbrush? Is contemporary art overvalued in an exclusive market, or are musicians undervalued in a profoundly saturated market? By adopting a 400 year old Renaissance-style approach to music, offering it as a commissioned commodity and allowing it to take a similar trajectory from creation to exhibition to sale, as any other contemporary art piece, we hope to inspire and intensify urgent debates about the future of music. We hope to steer those debates toward more radical solutions and provoke questions about the value and perception of music as a work of art in today’s world.

It’s an intriguing concept based on theories of supply and demand.  But in order to make this work, it seems reserved to those acts that have developed a cult following.   It seems like something Prince would have considered at one point or another.  Rare, sought after albums are often a band’s first album – before they got the record deal and got major airplay.  Valuation of art pieces, however, tend to be based on the work itself, the time period of the work relative to the artist’s body of work and the number of copies or similar works available from the artist.

Do people feel an “ownership” connection about their music the same way that they do about a Warhol or a Banksy, especially those of us who were teenagers listening to Wu Tang around the Napster era?

So DuetsBlog readers, what do you think about the valuation of contemporary art versus music?  Do you think others will follow the Wu Tang distribution approach?

Twilight Trademark Trial Now on Horizon

Posted in Advertising, Articles, Branding, Dilution, Famous Marks, Goodwill, Infringement, Law Suits, Marketing, Trademark Bullying, Trademarks, USPTO

Another father-daughter trip to Bath & Body Works (BBW) this past weekend revealed that his and her Twilight Woods personal body care products are still available for sale:

Still, because ten days ago, the federal district court in the Southern District of New York rejected BBW’s attempt to have the trademark infringement and dilution claims – asserted by the owner of the Twilight Saga film series and franchise — dismissed on summary judgment.

Because BBW was unable to convince the court to dismiss the trademark and trade dress claims brought by Summit Entertainment, the case will now proceed to a trial before a jury, it appears.

As our friends over at Likelihood of Confusion pointed out last summer, counsel for BBW wrote and submitted a pretty impressive summary judgment brief, here are the opening lines from it:

This is a case about over-reaching. There is no doubt that Summit Entertainment, LLC (“Summit”) has a popular series of teen vampire movies, The Twilight Saga, but it is a basic premise of trademark law that rights in one market do not create rights in another market. That is why Unilever’s DOVE dishwashing detergent can coexist with Mars’ DOVE chocolates. This is particularly true where the trademark in question, TWILIGHT, is a common, descriptive English word and not an arbitrary term like KODAK. Also, Bath & Body Works Brand Management, Inc.’s (“BBW”) accused marks are not merely the word “twilight” alone, but are compound marks—TWILIGHT WOODS and TWILIGHT CRUSH—that refer to the name of a fragrance and an eye shadow color. Nevertheless, Summit believes that it has the exclusive right to use the word “twilight” across the full spectrum of goods and services. Make no mistake, Summit is not seeking to prevent harm to its franchise, but to obtain a windfall.

This case has been in litigation for three years now, and it was early-on painted by TechDirt as yet another example of Summit Entertainment’s trademark bullying.

Trademark Musings highlighted the apparently inconsistent positions taken by Summit, asserting likelihood of confusion against BBW’s Twilight Woods products on the one hand, and arguing against likelihood of confusion when the USPTO initially refused registration of Summit’s TWILIGHT mark for personal care products in Int’l Class 3, based on a prior federal trademark registration owned by Coty at the time (more than a year after the present case commenced, Bath & Body Works acquired Coty’s TWILIGHT trademark registration for “soaps, perfumery; essential oils; cosmetics; cosmetic hair lotions,” and now claims to have priority over Summit for personal body care products).

Notwithstanding BBW’s later acquisition of Coty’s federal trademark registration for TWILIGHT, the timing and origin of BBW’s Twilight Woods brand appears suspect. Summit released the first Twilight movie in the series on November 21, 2008, and about four to five months later, in April 2009 (after rejecting numerous other possible brand names for a new woods-oriented fragrance), BBW’s V.P. of Brand Development, its Director of Category Merchandising, and another member of BBW’s brand team conducted some brainstorm sessions (largely via text messages) to come up with Twilight Woods. BBW was reportedly on notice of consumers associating the products with the highly successful film early on during testing and thereafter, although it did obtain an opinion of counsel blessing the use of Twilight Woods as a brand name for personal care products.

Nevertheless, in denying BBW’s attempt to short-circuit Summit’s claims without the need for a trial, the court concluded that ”a reasonable jury could find based on BBW’s surrounding conduct that it adopted the Twilight Woods and Twilight Crush marks with the intent to capitalize on Summit’s good will.” In considering all the likelihood of confusion factors, the court ruled:

Upon review of all of the [likelihood of confusion] factors, the Court is compelled to deny BBW’s motion for summary judgment. When viewing the evidence in Summit’s favor, as the Court must on BBW’s motion, the Court finds that one factor, actual confusion, favors granting BBW’s motion for summary judgment. One factor, the quality of BBW’s products, is neutral. The remaining six factors — strength of the mark, the similarity of the marks, proximity of the products, “bridging the gap,” bad faith, and the sophistication of consumers — to varying degrees weigh towards denying BBW’s motion. Thus, although the [likelihood of confusion] analysis is not generally reducible to a mechanical counting exercise, a clear majority of factors here weigh in Summit’s favor. Moreover, the Second Circuit has explained that strength, similarity, and proximity are generally the three most important [likelihood of confusion] factors, and all of those three critical factors favor Summit.

To the extent you’re wondering why BBW’s purchase of Coty’s TWILIGHT registration didn’t provide BBW with a get-out-of-jail-free-card, the court had this to say:

BBW has failed to establish that there is no genuine issue of material fact as to whether Coty’s Twilight mark has priority over Summit’s Twilight mark. Summit used the Twilight mark in commerce at least as early as April 18, 2008, for the production and distribution of Twilight Motion Pictures and at least as early as May 1, 2008, for clothing and merchandise related to Twilight. Both of these dates are prior to BBW’s alleged priority date of June 18, 2008, based on the assignment from Coty. Accordingly, BBW has not established as a matter of law that it has priority over Summit with respect to the Twilight mark.

Ironically, this case started as a cease and desist letter from Summit Entertainment to BBW, and BBW felt so strongly it had done nothing wrong, it filed a declaratory judgment action in the Southern District of New York, requesting that the court agree, and then Summit predictably asserted counterclaims for trademark infringement, trade dress infringement, and dilution.

Three years later, after expensive and draining litigation, and after purchasing what it might have thought would be a get-out-of-jail-free-card from Coty, BBW still finds itself heading straight to a jury trial, with Summit Entertainment lusting after BBW’s profits on the highly successful Twilight Woods product line, so stay tuned.

Do you suppose that BBW is regretting pulling the trigger on a federal district court action now, especially in selecting the Southern District of New York?

Actually, let’s scroll a few frames earlier, do you suppose BBW is regretting the texting brainstorm session that resulted in the Twilight Woods name?

By the way, marketing types, how much creative is done via text messaging? Really, I’m wondering, as I was fascinated by that fact highlighted by the court.

Finally, any predictions on which party will be getting out their check book on this one? Do you suppose BBW will regret continuing to sell Twilight Woods products?

The Top 10 Lawyers of TV and Film: Numbers 1-5

Posted in Articles, Mixed Bag of Nuts, Television

In case you missed yesterday’s post, my colleague Derek Allen and I finally answered the age-old question: What’s better than a post by a DuetsBlog writer? Obviously, a DuetsBlog post by 2 DuetsBlog writers, especially these guys (you can’t tell but we’re pointing our thumbs at ourselves).

We’re sure you’d love to hear us both eloquently debate and disparage each other’s opinions on just about any topic, but we decided to start with our top 10 fictional lawyers from television and film.  Yesterday was 6-10 and today, we make the big reveal: numbers 1-5. Who will be out on the town celebrating tonight? Who will be considered the biggest snub? Dear readers, you won’t know unless you join us below the jump . . .
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The Top 10 Lawyers of TV and Film: Numbers 6-10

Posted in Television

In what we believe is a Duetsblog first, two of us — Tim Sitzmann and I – are teaming up to write a post.  (Even if this isn’t the first time a post has had two authors, much like European explorers who claimed to “discover” land that people were already living on, we are going to pretend that it is.)  And we have tackled a topic that a momentous event like this demands: the top 10 lawyers in the history of TV and Film.  We’re doing 6-10 today and 1-5 tomorrow.  So without further ado, and without any explanation whatsoever of our criteria, please join us below the jump . . .

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UPDATE: Trademark Dispute Over TO KILL A MOCKINGBIRD Continues to Fly

Posted in Mixed Bag of Nuts

The lawsuit that we told you about regarding a dispute over the trademark rights to the use of TO KILL A MOCKINGBIRD continues.  See http://www.duetsblog.com/2013/10/articles/trademarks/battle-between-harper-lee-and-her-hometown-museum-over-use-of-to-kill-a-mockingbird/.  The defendant Monroe County Heritage Museum brought a motion to dismiss.   The Court denied the motion and allowed author Harper Lee to pursue her claims.

One of the many arguments raised was that Harper Lee failed to plausibly allege that she owned a federally enforceable trademark so her Lanham Act claim under 15 U.S.C. § 1125 (false designations of origin, false descriptions and dilution).  However, the Lanham Act does not require a federally registered trademark to assert a claim.  As the Court explained, the statute forbids unfair trade practices even in the absence of a federal trademark registration.  (citing Planetary Motion, Inc. v. Techsplosion, Inc., 261 F.3d 1188, 1193 (11th Cir. 2012)). The Court noted that Ms. Lee had a state trademark registration and common law trademark rights.     

The dispute at issue is centered in Ms. Lee’s hometown so her Alabama trademark protection and common law protection may be sufficient.  However, it got me thinking about what someone might tell Ms. Lee about the benefits of a federal trademark registration.   First, and foremost, you obtain national protection and notification to the world that you own the trademark.  If another person attempts to register your mark or a similar mark for the same or similar goods and services, the examining attorney will likely cite your mark against the application and not allow registration.  You can also bring claims against others in federal court that may be outside of your geographical area.  Second, you can use the internationally known ® symbol.  Third, if someone attempts to register a domain name that infringes on your trademark, you can take steps to shut down the website.  This is especially important in the days of the internet where someone who is far away from your business can compete for the same customer shopping from his or her home online.  Fourth, a federal trademark registration provides increased value to your company.  Intellectual property is an important component of value and good will when buying and selling a company.  Finally, the owner of a federal trademark registration can use it to obtain registration of the trademark in foreign countries and to record the registration with the U.S. Customs and Border Protection Service to prevent importation of infringing goods.  Ms. Lee might want to consider obtaining a federal registration too.

 

Trying Something New

Posted in Advertising, Branding, Food, Mixed Bag of Nuts, Product Packaging

- Susan Hopp, Partner, 45 Degrees/Minneapolis

I recently stopped at Shuang Hur Oriental Market (my go-to store for Vietnamese coffee) on Nicollet Avenue in Minneapolis, and came away with an interesting branding experience.

As I passed the fresh meat counter with pork hooves and other un-named animal parts, I was reminded that I’m not their primary target audience – I like that – but I always feel welcome and I know the younger staff speaks English. I trust the store.

On the way out, my eye caught an entire aisle of instant ramen noodle soups! Wow. I had never even tried one and now here were literally hundreds of options from China, Thailand, South Korea, and more. I thought this could be the place to find an authentic product with the best texture and taste.

Well, I quickly realized this might not be a quick grab and go because I had nothing to base my selection on. This is something that does not usually happen in America. We live in a highly advertised and branded world and since we grow up immersed in this culture, we naturally know how things relate to each other. So it was interesting and surprising and, yes, a bit frustrating to walk into an environment where I see that products are indeed highly branded, based on something each company feels is important, but the brands didn’t mean anything to me. I was not emotionally connected to any of them.

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