Duets Blog : Creativity and the Law: DuetsBlog

A couple of hours ago Kare 11 News in Minneapolis reported "Lions Tap wins settlement with McDonalds."

Absolutely no details about the settlement were provided, so it's hard to understand how Kare 11 is able to pronounce this as a "win" for Lion's Tap over McDonalds, although it certainly plays into the seductive David and Goliath theme of the case. The attorney for Lion's Tap apparently is quoted as saying the parties reached a "mutually beneficial amicable resolution," and Kare 11 further reports that McDonalds did not "immediately return a phone message seeking a comment" today.

Perhaps even more troubling than the unsupported "win" characterization, is the repeated failure of the traditional media covering this story to get the facts straight -- facts easily discernible by reading the federal court complaint that is so often recited in the stories, but apparently very few actually have undertaken to read it. In case you're interested, here is another link to the actual complaint.

As we have documented before on DuetsBlog, Lion's Tap did not register the "Who's Your Patty" slogan until after McDonalds began use and only days before filing suit against McDonalds, and it did not register -- even in Minnesota -- four years ago, as repeatedly and incorrectly reported ad nauseam by the media.

In fairness, although local CBS affiliate WCCO also republished the significant error on the timing of Lion's Tap's Minnesota registration of the "Who's Your Patty" slogan, at least it didn't assume the settlement to be a "win" for the Tap: "Lion's Tap Settles With McD's Over Catchphrase."

Our coverage of this case is here (9/3/09), here (9/8/09), here (9/21/09), and here (10/17/09).

In case we have not heard the last word on this case, stay tuned, and we'll let you know more as we know more about this Lion's Tap "win" and "mutually beneficial" resolution.

UPDATE: Is the Star Tribune reading DuetsBlog? It appears so. A Google search shows the Star Tribune's original story title on the settlement was: "Lion's Tap wins trademark suit against McDonald's," but now the story is titled: "Lion's Tap settles trademark suit against McDonald's," with no mention of the Minnesota State registration.

Now we just need to get USAToday, NPR, Newstin, Daylife, and NewsSpider, on the bandwagon.

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Reverse confusion trademark infringement claims are sometimes reminiscent of the well-known biblical story of David versus Goliath.  This doctrine basically protects smaller, lesser known, trademark owners whose trademarks are infringed upon by large multi-national companies with gigantic advertising budgets.  You may want to check out a few prior posts on DuetsBlog relating to Lion's Tap and McDonald's from Steve Baird, here and here, and guest blogger, Jason Voiovich, here.

Domino’s Pizza learned this lesson earlier this October. Great American Restaurant Company owns and operates the small Dallas area pizza chain Brooklyn’s Old Neighborhood Style Pizzeria. It holds the trademarks: “A TASTE OF THE OLD NEIGHBORHOOD” and “BROOKLYN’S OLD NEIGHBORHOOD STYLE PIZZERIA.” When Domino’s Pizza launched its new “Brooklyn Style Pizzeria,” the smaller Texas chain sued Domino’s Pizza for trademark infringement. The Fifth Circuit reversed Domino’s Pizza’s win in the lower court (in legalese = granting summary judgment). Domino’s Pizza will now have to battle it out with the Great American Restaurant in the Texas courts. 

Domino’s Pizza is not alone. Steven Spielberg’s well-known company, DreamWorks, was sued by senior trademark user Dreamwerks Products—a science fiction convention. Although Spielberg’s production company produces much more than science fiction movies and television shows, DreamWorks was still found to have infringed the convention’s trademark through reverse confusion.  

Similarly, Victoria’s Secret was sued by A&H Sportswear when it launched THE MIRACLE BRA swimwear. A&H Sportswear holds the trademark to MIRACLESUIT for swimwear. In deciding the appeal, the Third Circuit allowed the claim against Victoria’s Secret to continue. However, the Third Circuit observed the downfalls of such claims. Reverse confusion claims penalize an innovative junior trademark user who, after spending a lot of money promoting a trademark, could be blocked from using it by a senior trademark owner who has not even invested in or promoted the trademark. Moreover, the claim could inhibit larger companies from expanding product lines, such as in this case Victoria’s Secret from moving into the swimwear line.   

In contrast, the Harlem Wizards did not fare well off the basketball court. In a court of law, the Harlem Wizards lost its reverse confusion infringement claim against the NBA for using the Washington Wizards. The court found that entertainment basketball was different from NBA basketball so there was no infringement. 

These cases raise the issue of how aggressively should courts enforce the reverse confusion infringement doctrine. Do we fear chilling companies from expanding into other product lines? Should a senior trademark user be able to block use by a larger company when it does not promote its own trademark? This battle between David and Goliath will likely continue in federal courts across the country for some time.

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