Duets Blog : Creativity and the Law: DuetsBlog

You may have heard the phrase “Shaq Attaq” referring to the famous NBA player and gold medal winner Shaquille O’Neal’s basketball skills.  While he played basketball in Arizona for the Phoenix Suns, the Arizonians nicknamed him “The Big Cactus” and “The Big Shaqtus” in reference to the combination of Mr. O’Neal and an Arizona cactus.

You may recall that I wrote about former NFL players suing the NFL over their likenesses a couple of months ago “Purple People Eater Jim Marshall & Friends Take on the NFL.” ESPN used O’Neal’s likeness when it aired commercials featuring O’Neal encountering a cactus bearing his face in the desert. Before doing so, however, ESPN obtained Mr. O’Neal’s company, Mine O‘Mine, Inc.’s, permission to use the mark. Mine O’ Mine has the exclusive rights to use and sublicense Mr. O’Neal’s, image and likeness and to register, exploit and protect Shaq and Shaq-formative trademarks.  In connection therewith, the company has a pending application for the “Shaq Attaq” mark for apparel.  

Mr. O’Neal is moving from the basketball court to a different court. True Fan Logo, Inc.’s shaqtus.net website is an online retail store under the SHAQTUS ORANGE CLOTHING COMPANY mark. Playing off the ESPN commercial, the store features an animated character in the form of a cactus with O’Neal’s facial features and a basketball jersey with Mr. O’Neal’s number. This company tried to shut down the ESPN commercial claiming its ownership of the Shaqtus mark. ESPN ignored this request.  However, Mr. O’Neal is not ignoring the company. Indeed, Mr. O’Neal recently sued True Fan Logo, Inc., and individuals Dan Mortenson and Michael Calamese. According to the complaint they have registered and are using shaqtus.com and shaqtus.net.  

A PDF of this complaint is attached. Read more about the complaint here. The complaint  includes claims of trademark infringement, unfair competition, trademark dilution, cyber-squatting and others. Shaq often wins on the basketball court. Now, he is hoping for a win in a Las Vegas court of law.

• Email This
• Print
• Comments
• Trackbacks
• Share Link

Are you shopping for a trademark? Stores spend lots of money branding their names. Accordingly, many register their store names as trademarks.   Over Thanksgiving while shopping in Turkey,  I saw the store front sign Inci®.

I thought it was unique because you do not often see the ® on a store front sign. For example, you do not see bloomingdale’s® or Neiman Marcus®.  Although I am not quite to the shopping level of Isla Fisher’s character in the movie “Confessions of a Shopaholic,” I still have never seen the Inci® store anywhere in the United States, or even on the streets of Paris or London. 

When I returned to the United States, I checked the United States Patent and Trademark Office (USPTO for short) website and found that there is an abandoned trademark for Inci in the United Statesand two live trademarks for Yeni Inci

and Inci Fatih.

According to the USPTO website, “Inci” means pearl. Although I cannot fully understand the Turkish registration website, I was able to determine that the same trademarks are owned by the same entities in the United States and Turkey. The registrations are for clothing. It is unclear, however, if this trademark owner is associated with the Inci® store that I saw in the Turkish mall.

Could the owner of the Turkish store Inci® receive protection in the United States even if it did not have a valid  registration? Possibly. The “famous marks” doctrine could provide such protection. This doctrine was born in my favorite city Paris. Article 6bis of the Paris Convention for Protection of Intellectual Property protects marks within a nation where it is well-known even though it is not actually used or registered in that nation  So, if Inci® can show that it is well-known in the United States it may receive additional protection. 

The courts are far from uniform in applying the “famous marks” doctrine. A New York court ruled in favor of Cutabaco, the company producing the favorite cigar of Cuban President Fidel Castro.  The court held that Cutabaco had a legally protectable right to COHIBA because the Cuban brand was well known among United States premium cigar smokers before the American company General Cigar resumed use of the COHIBA trademark. Accordingly, the court granted Cutabaco an injunction prohibiting General Cigar from continuing to sell cigars under the COHIBA trademark and cancelled General Cigar’s COHIBA. On the other hand, the Second Circuit refused to recognize the doctrine in connection with the famous Bukhara restaurant of New Deli. The Second Circuit explained that Congress had not incorporated the doctrine into Federal Trademark law so it would not recognize the doctrine.  

Whether Inci® or other such European stores would receive protection in the United States without registered trademarks will depend upon how famous the stores are and what court they land in. With the international nature of the economy, this is a topic that the Supreme Court will likely take up in the years to come.

• Email This
• Print
• Comments
• Trackbacks
• Share Link

Viking fans will recall the famous Purple People Eaters from the late 1960s through the late 1970s. The nickname arose for the defensive line of the Vikings from their purple jerseys and the popular Sheb Wooley song bearing that name. Although they went to four Super Bowls (unfortunately, not taking home a Super Bowl ring), the Purple People Eaters did not receive the astronomical, multi-million dollar, contracts received by the Pro Bowl players today. Accordingly, the retired players rely upon the use of their names, images, and likenesses on paraphernalia, sports bars, and other businesses to make money.

To protect their valuable trademarks in their names, images and likenesses, Purple People Eater Jim Marshall, along with five other retired National Football League (“NFL”) players, filed a class action lawsuit against the NFL to recover for their injuries as a result of the NFL’s unauthorized use of their identities to promote the NFL, sell NFL-related products and otherwise generate revenue for the NFL.  They have brought claims for false endorsement under the Lanham Act and various state law claims. The lawsuit was filed in the United States District Court for the District of Minnesota.

Their Amended Complaint alleges that “by commercializing the names, images and likenesses of its players, both active and retired, the NFL has become one of the largest entertainment conglomerates on the planet, raking in an estimated $6.9 billion in 2008 alone.” In contrast, the “now-retired NFL players, as a group, suffer severe physical maladies and disabilities as a result of the sacrifices they made to make the NFL what it is today.”  One example identified in the Amended Complaint was that safety Toby Wright sought to use his name, likeness and identity as an NFL player to promote two businesses, one a sports bar and the other a training facility. In response, the NFL informed him that he would have to pay the NFL $100,000 to use his own identity. Because he did not have the funds, the safety was effectively “blocked” from using his own identity. 

Only time will tell if Minnesota Supreme Court Justice Alan Page, who is also a Purple People Eater, will join the class action and whether the Purple People Eater Jim Marshall and the other retired players can beat the NFL off the football field.

• Email This
• Print
• Comments
• Trackbacks
• Share Link

The makers of Red Bull have taken on companies who are importing and distributing unauthorized gray market Red Bull Energy Drink products across the United States.  

The company brought a suit recently in New York alleging that the bootleg Red Bull Energy Drinks that were only authorized to be sold in other countries were also being diverted into the United States. Red Bull claims that the distribution of such products causes or is likely to cause purchaser or consumer confusion, mistake and/or deception to the detriment of Red Bull and consumers. As I discussed last week in “Should ‘Bootleg’ Toys Be Shut Down?,” trademark owners can obtain relief from the courts if the “gray market” goods are “materially different” than those sold by the trademark owner.  

Red Bull alleges that the “material differences” between its products and those being distributed by the New York company include:  unfamiliar spelling or language on the cans, different local distributor contact information, a lack of required United States federal and state nutritional information, unfamiliar ingredients identified on the cans, lack of deposit information, different units of measurement, lack of batch coding, lack of expiration dates, and lack of rigorous quality control standards. 

This is not the first time that Red Bull has taken action against distributors of gray market goods. In 2006, Red Bull sued a Georgia company for its bootleg distribution of Red Bull products. In April of this year, Red Bull obtained a verdict for twenty-one million dollars against the company and also obtained a permanent injunction against the company prohibiting it from further trademark infringement and trademark dilution. Red Bull is likely hoping for a similar resolution in the New York case.

To say that the Red Bull brand is valuable is an understatement. Red Bull is currently the leader in the energy drink category. In 2008, over 1.3 billion units of the Red Bull Energy Drink were sold in the United States. Red Bull promotes the U.S. Red Bull Energy Drinks featuring its valuable trademarks in connection with numerous athletic events, music festivals, sponsorships, and sports competition (including motor sport) in the United States and around the world. 

The courts are not the only venue that Red Bull has sought to police its trademarks. In May of this year, Red Bull filed a 337 Complaint with the International Trade Commission (“ITC”) requesting that it commence an investigation of entities that are selling and distributing imported gray market energy drink products in the United States which are materially different than Red Bull’s energy drinks. The ITC agreed to start an investigation into the matter. Accordingly, Red Bull may obtain government assistance in policing and protecting its Red Bull brand and trademark. The ITC may be bombarded with similar complaints because gray market bootlegging occurs across numerous markets for many types of products, not just energy drinks and toys.

• Email This
• Print
• Comments
• Trackbacks
• Share Link

It depends. “Gray market” goods are those goods that are sold outside of the brand owner’s authorized distribution channels. Although a trademark owner may consider them “bootleg,” “gray market” goods are actually legally acquired abroad and then imported into the United States without the trademark owner’s consent. These actions do not legally infringe the trademark under the Lanham Act unless the “gray goods” undermine the owner’s goodwill or leave the consumer in a state of “legal confusion.”   If the "gray market" goods are "materially different" from the trademark owner's goods, then courts have found "legal confusion." 

The Cabbage Patch Kids dolls were at the heart of a dispute in the case entitled, Original Appalachian Artworks v. Granada Electronics, 816 F.2d 68 (2d Cir. 1987). A Spanish importer/distributor sold Spanish Kids dolls in the United States.  The Second Circuit found that the Spanish-language birth certificates, adoption papers and instructions for the Spanish Kids dolls were “materially different” from those same English-language documents for the Cabbage Patch Kids dolls.  It was likely that the consumer would be confused. Accordingly, the Cabbage Patch Kids trademark owner obtained a permanent injunction prohibiting the Spanish importer/distributor from selling the Spanish Kids dolls in the United States.

With the increasing global nature of our economy, “gray market” infringement claims will likely increase in the years to come. Courts have found “material differences” in products based on labels, packaging, structural strength of parts, product composition and storage of material. If a product fails to contain English warning labels or English operator owners’ manuals, courts will likely find these to be “material differences” warranting protection. 

“Material differences” do not have to be physical. Services provided with product and warranties (or lack thereof) can be found to be a “material difference” from the trademark owner’s product. Further, a trademark owner’s superior internal quality control procedures can be a “material difference.” There are many ways that a trademark owner can assert that there is a “material difference” in its product so that it can obtain protection from “gray goods” being dumped into the United States to unfairly compete with the trademark owner’s products.

• Email This
• Print
• Comments
• Trackbacks
• Share Link

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.

• Email This
• Print
• Comments (1)
• Trackbacks
• Share Link

This summer has seen popular icons pass away such as Michael Jackson and Farrah Fawcett as we have discussed in earlier blog posts. With the recent passing of “Dirty Dancing” star Patrick Swayze last week, I am reminded of his famous saying “Nobody Puts Baby in a Corner” :

Two years ago this famous saying was embroiled in a trademark suit. Lions Gate Entertainment Inc. owned a trademark for the famous saying in connection with its merchandising surrounding the iconic film. It sued fifteen clothing companies, including a Denver company called Real Baby for selling baby clothes with the trademark, including onesies. The parties settled the case before the merits were reached.  

Other movie quotes, or adaptations of quotes, have been registered as trademarks. One of the best known movie quotes was uttered by Clark Gable in the Oscar winning “Gone With the Wind.” The trademark “Simply Scarlett Frankly My Dear You Look Divan” was registered in connection with clothing, likely in an effort to capitalize on the success of the movie. However, this trademark was ultimately cancelled because the registrant failed to file appropriate documentation (in legal jargon Declaration of Continued Use under Section 8).  

Other famous Patrick Swayze movie lines have not been registered for trademarks yet; such as his “ditto” response to Demi Moore’s “I love you” in the movie “Ghost” or “Pain don’t hurt” that he uttered in “Roadhouse.”   Who knows if these lines will ever become registered trademarks.

As discussed above, movie studios such as Lions Gate Entertainment Inc. sometimes register trademarks for famous movie lines. But, if you can beat the studio to the punch and register a famous movie quote (or adaptation of a quote such as the above one for “Gone With The Wind”) in connection with a product, you might hit the marketing jack pot.   

Unfortunately, there will be no more such iconic phrases from Patrick Swayze.

• Email This
• Print
• Comments
• Trackbacks
• Share Link

Heiress Paris Hilton starred in the “reality” television show The Simple Life with her BFF Nicole Richie from 2003 to 2007. In connection with the hit show, Paris Hilton delivered her famous catch phrase “That’s Hot.” Always the entrepreneur, Ms. Hilton trademarked her famous catch phrase in connection with beverages fit for an heiress—champagne and prosecco.  She has not yet obtained a trademark for "That's Hot" in connection with buffalo chicken wing sauce or potato chips, as Steve Baird noted in his blog post about the saucy trademark chip fight.

Catch phrases are expressions that are usually popularized through repeated use by a real person or fictional character. It is a hotbed for trademark registrations. Donald Trump tried to register as a trademark his famous “You’re Fired” catch phrase from his hit show The Apprentice. But, he later abandoned the registration applications.

Ms. Hilton sued America’s largest greeting card company Hallmark Cards over the use of her name and photo along with her registered trademark, “That’s Hot,” in connection with a parody card, “Paris’s First Day as a Waitress.” The Ninth Circuit recently refused to dismiss Ms. Hilton’s claim. The Ninth Circuit rejected Hallmark Cards’ argument that its depiction of the heiress was protected speech as a matter of law. Hallmark Cards defended its Paris Hilton card stating that a number of its new humor greeting cards are parodies of popular celebrities and politicians.

Hallmark Cards may want to go back in time and design cards with characters from certain old television shows that would be appreciated by those who grew up before iPods and Facebook. Although Flo from Alice’s famous catch phrase “Kiss My Grits” used to be trademarked in connection with aprons and potato chips, these trademarks have since been abandoned. Similarly, Hallmark Cards could design a card with JJ from the television show Good Times and his famous catch phrase “Dy-no-mite” to describe a person celebrating a birthday. Alternatively, Hallmark Cards could look to the movies and construct a card picturing the Governor of California Arnold Schwarzenegger with his famous catch phrase “Hasta La Vista Baby” from the Terminator 2: Judgment Day movie that is currently not trademarked.

Catch phrases often emblazon t-shirts, mugs, and other products—already having consumer recognition. But, businesses should beware that many famous catch phrases (and even not so famous ones) are trademarked and using them could open them up to a trademark infringement lawsuit.

• Email This
• Print
• Comments
• Trackbacks
• Share Link

Well, at least in the trademark arena, a Beatles heir defeated a preliminary injunction motion brought by the wife of the lead singer of U2.  The dispute centered around Stella McCartney’s launch of the perfume “STELLANUDE” last weekend. 

Bono’s wife, Ali Hewson, is an owner of the cosmetics company Nude Brands Co., Ltd. Her company owns the European Union trademark on “NUDE” in capital letters and the United States Trademark for NUDE.

Bono’s wife brought a motion for a preliminary injunction to prevent Paul McCartney’s daughter from launching her new perfume. The English High Court denied the injunction because the delay in selling Stella McCartney’s perfume would cause massive disruption to the company and cost millions of pounds to the company (i.e., advertising, packaging, etc.).

Of course, this may only be a battle victory for Ms. McCartney and her company. Bono’s wife and her company intend to fully pursue the trademark infringement claim to trial. Mrs. Bono may still ultimately win the war over the “NUDE” trademark.

Would the result be different in the United States? 

As I blogged about recently, a federal court in New York took a different view regarding a trademark issue involving eBay than the courts in France and Germany had taken on the issue. Similarly, some United States courts have differed in their treatment of preliminary injunction motions in the context of a trademark dispute than the English High Court involved with the “NUDE” trademark case. For example, the United States District Court for the District of Minnesota recently issued an injunction in a trademark dispute applying the long-standing (at least in the United States) presumption of irreparable harm in the case Gold’s Gym Licensing LLC v. K-Pro Mktg. Group, Inc., No. 09-CV-1211, (D. Minn. July 28, 2009).  If the presumption was applied, Mrs. Bono may have had more luck with her preliminary injunction motion in the United States courts. Yet, the applicability of this presumption across courts in the United States is an open question in light of the Supreme Court’s decision in eBay v. MercExchange, LLC, 547 U.S. 388 (2006)—declining to apply the presumption in a patent case.

• Email This
• Print
• Comments
• Trackbacks
• Share Link

I, like most women, want a present in a little blue box from Tiffany & Company (a/k/a Tiffany & Co.) This is not just because the company bears my name (I only wish I were an owner of the company), but because Tiffany & Co.’s exquisite jewelry is associated with the fabulous blue box.  Tiffany & Co. has been around for over 170 years. The mystique of Tiffany & Co. was enhanced by the movie “Breakfast at Tiffany’s” starring the beloved Audrey Hepburn. To protect this long-established brand and trademark that epitomizes luxury and attentive customer service, Tiffany & Co. took to the courts to obtain protection from Internet sales of counterfeits.  

eBay has become a hotbed for counterfeit sales of many high-end products. To assess the impact of this practice, Tiffany & Co. embarked on two buying programs where it bought products that had been represented to be authentic Tiffany & Co. merchandise on eBay. The overwhelming majority of these purchases, as much as seventy-five percent, were fakes. 

To combat this trademark infringement and dilution, Tiffany & Co. sued eBay in 2004 alleging that eBay had facilitated and allowed these fake or counterfeit items to be sold on its website (bringing six causes of action, including various trademark infringement, dilution and false advertising claims under the Lanham Act). Last month, a New York District Court found that Tiffany & Co.—not eBay—was responsible for protecting its brand and trademark on the auction site. In other words, eBay is not responsible for keeping its users from selling fake jewelry with the Tiffany & Co. name. eBay is only required to take appropriate action when it receives notice of the infringement, presumably from Tiffany & Co. Not surprisingly, Tiffany & Co. has appealed this decision to the United States Court of Appeals for the Second Circuit. 

Does this decision ignore an important tenet of the Lanham Act—that it is supposed to protect consumers and trademark owners? Should eBay and other sites such as Amazon.com have independent obligations not to contribute to trademark infringement (i.e., policing their websites)? 

Several other high-end companies have sued eBay in Europe and have fared much better than Tiffany & Co. did in the United States.   A French judge ordered eBay to pay 40 million euros (in light of the current low value of the United States dollar, this would translate to $63.2 million) to LVMH Moёt Hennessy Louis Vuitton over charges of selling fakes. Similarly, the German courts held that eBay must employ preventative measures against the sale of fake Rolex watches.  Unless the Second Circuit overturns the New York District Court’s decision, consumers and trademark owners will receive more protection in Europe than in the United States. Should American courts be more friendly to trademark owners?

• Email This
• Print
• Comments
• Trackbacks
• Share Link