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Although my initial career path was to be one of the Supremes (not the musically talented ones with platform shoes and sequins, but rather, the nine wearing sensible shoes and pressed black robes in DC), I will likely stay in Minnesota as I have never lived anywhere else (though I have traveled across many borders, including the pond, and various state lines).

My calling to the courtroom, led me to earn my law degree from the University of Minnesota, after receiving my undergraduate degree in Economics and Psychology from St. Olaf College. After law school, I quickly realized that I’m more at ease in the courtroom than in my own living room, so I became a litigator. Over the years, I have developed my own style of litigating (I’m trying to trademark it) and aggressively represent my clients whether I am protecting valuable intellectual property or tackling the interests of professional athletes. Although I am not as wacky or as flaky as Ally McBeal, litigation still holds its “entertainment value” after fifteen years in the profession. This year’s Valentine’s Day festivities are evidence (pun intended) of my passion — instead of celebrating the typical Valentine’s Day with dinner and roses, our litigation team celebrated the seventh anniversary of the then largest jury verdict in Minnesota. The verdict came after a nine year battle and, as a result, V-Day has now become known as “Verdict Day.” I’m hoping to rename more holidays soon.

A United States Magistrate Judge in Northern California relied on the Game of Thrones where there is no “Middle Ground” in rendering his decision to award attorneys’ fees for the work spent on all claims brought by former student athletes against the National Collegiate Athletic Association (“NCAA”).  The student athletes were victorious on certain claims and damages, but not others.  For all of you basketball fans, the marquee plaintiff for the case was Ed O’Bannon.

Some of you, like me, may be going through withdrawal from watching Game of Thrones and are frustrated that we will not be able to see the final season until 2019.  This may be why I focused on this dispute and am blogging about it.  Unfortunately, I have no official spoilers to share with you about the show other than that actor Kit Harrington also known as Jon Snow was seen in Croatia filming.  This likely means the new season of Game of Thrones will have a Cersei Lannister versus Jon Snow showdown in King’s Landing.  But, I digress.

The Magistrate Judge invoked the widely popular show to explain why even though the student athletes had not prevailed on all of their claims against the NCAA they should receive attorneys’ fees incurred for all claims.  The Magistrate Judge held that the attorneys for the student athletes should be awarded $42 million in attorneys’ fees.

The main claim was that the NCAA violated Section 1 of the Sherman Act by conspiring to exclude them from the collegiate licensing market.  The reasoning behind these type of fee awards is to encourage attorneys to take cases where the plaintiffs may not have the money otherwise to bring them.

Through the lawsuit, the student-athletes successfully protected their publicity rights. They obtained injunctive relief but did not obtain an award for deferred cash payments.  Specifically, the injunction prohibited the NCAA from using the student athletes’ right of publicity (names, images and likeness).  Further, the NCAA made voluntary changes to its system as a result of the lawsuit.

We have previously blogged about rights of publicity here and here.

In its appeal, the NCAA has argued to the Ninth Circuit that it should reject the $42 million fee award to the attorneys for the student athletes.  The NCAA argues that the student athletes won considerably less than what they sought in the lawsuit.  Further, the students were denied any deferred cash payments.  The student athletes failed on multiple claims, including collegiate licensing theory, and no damage class was certified.  The NCAA argues that the attorneys for the student athletes should not be entitled to any fees whatsoever, or at most, substantially less than the $42 million awarded.

Do you think the Ninth Circuit judges are fans of Game of Thrones and will uphold the Magistrate Judge’s “no middle ground” award of attorneys’ fees?

 

The producer and promoter of the James Bond movies Danjaq, LLC has filed an opposition to the intent-to-use application for the mark “.007%” with the United States Trademark Trial and Appeal Board (“TTAB”).  You may have seen some of the 007 movies, including:

Dr. No (1962); From Russia With Love (1963);Goldfinger (1964); Thunderball (1965); You Only Live Twice (1967); On Her Majesty’s Secret Service (1969); Diamonds Are Forever (1971); Live And Let Die (1973); The Man With The Golden Gun (1974); The Spy Who Loved Me (1977); Moonraker (1979); For Your Eyes Only (1981); Octopussy (1983); A View To A Kill (1985); The Living Daylights (1987); License To Kill (1989); Goldeneye (1995); Tomorrow Never Dies (1997); The World Is Not Enough (1999); Die Another Day (2002); Casino Royale (2006); Quantum of Solace (2008), Skyfall (2012), and Spectre (2015) (collectively, the “James Bond Motion Pictures”).

Many people debate who the best Bond has been: is it Sean Connery, Roger Moore, Pierce Brosnan or Daniel Craig (I am doubting there are many that would pick Timothy Dalton)?  My favorite is Daniel Craig, and I enjoyed the Casino Royale and Quantum of Solace movies best.  Skyfall was good too. But, I digress.

.007 Percent, LLC touts itself as an exclusive, invitation-only, social network for Bond villains aimed at the richest people in the world.  Specifically, the application at issue seeks to register “.007%” in connection with various goods and services, including: computer services; electronic delivery of images, email and photographs via a global computer network; providing on-line chat rooms and electronic bulletin boards for transmission of messages; streaming of data; and video broadcasting services, in International Class 38 and online social networking services, in International Class 45.

Here is a full description of the goods and services contained in the application.

In the Opposition, Danjaq asserts that “[t]he 007 Marks are extensively used in connection with, and to market and promote, the James Bond Motion Pictures and a wide range of goods and services.”  “Opposer and its predecessors have invested substantial time and expense promoting the James Bond Motion Pictures and the 007 Marks.” Accordingly, Danjaq asserts that “[a]s a result of extensive sales, advertising, and promotion of the James Bond Motion Pictures and the broad range of products and services sold or offered under the 007 Marks for decades, the 007 Marks have developed enormous goodwill and secondary meaning, and they are famous under 15 U.S.C. §1125(c).”  Danjaq asserts claims of likelihood of confusion, likelihood of dilution of its famous 007 Marks and that there is no bona fide intent to use the .007% marks in commerce for the goods identified in the Application.

This is not the first time Danjaq has taken legal action to protect its 007 marks.  Indeed, Danjaq spent more than fifty years battling script writer Kevin McClory who worked with Ian Fleming who famously authored the original novels.   The dispute was finally resolved in 2013.  Further, Danjaq was able to obtain rarely afforded copyright protection for the Bond character itself.  Finally, Danjaq filed oppositions against applicants seeking to apply for the trademarks “Super Bond Girl,” and “Inspiration Shaken and Stirred.”

James Bond has been a topic before on DuetsBlog, including here and here.

Will .007 Percent secure its trademark registration?  Who is your favorite Bond actor?

The Equinox Hotel Management, Inc. (“Equinox Hotels”) sued the Manhattan upscale gym giant, Equinox Holdings Inc. (“Equinox Gyms”), asking a federal judge in California to block the gym from expanding into hotels. Equinox Hotels do not want the upscale gym giant to take over the small company’s identity. Equinox Hotels fears that its brand recognition will quickly evaporate as consumers are bombarded with ads for the Equinox Gyms.

By way of background, Equinox Hotels is an independent San Francisco-based hospitality company that revitalizes hotel properties. It was founded in 1994. Equinox Hotels used its mark in connection with various hospitality services, including its hotel management and consulting services. The company portfolio of projects includes: (1) the Crowne Plaza Arlington; in Texas; (2) Jabal Omar Development Company Project in Saudi Arabia; (3) Walnut Creek Marriott & Athletic Club in Walnut Creek, California; (4) Hyatt Regency Sacramento in California; (5) The Davenport Hotel in Spokane, Washington; and (6) Laguna Cliffs Marriott Resort & Spa in Dana Point, California.

Equinox is a “fitness giant” that operates 94 EQUINOX branded luxury health clubs nationwide. Equinox Gyms abound especially in its hometown NYC. I recall my first trip to New York and seeing all of the signs with EQUINOX. I quickly learned that the New Yorkers escape from the hectic city into these upscale gyms.

The Equinox Gyms formulated plans to expand from the fitness industry into hospitality, including hotels. Two years ago, Equinox Gyms initially announced its hotel plans.

In its motion for an injunction, Equinox Hotels described its battle as a little David taking on a Goliath gym giant. The Equinox Gyms giant will soon be answering.

The hearing on the preliminary injunction will be held on January 16, 2018. Stay tuned.

Kim Kardashian West’s (“Kardashian’s”) company Kimisaprincess, Inc. won its motion to transfer a pending case against the company from Illinois to California. Danish makeup artist Kirsten Kjaer Weis (“KKW”) sued Kimisaprincess in Illinois alleging claims of trademark infringement, false designation of origin and unfair competition against Kardashian’s company.

Kim Kardashian and her family are no strangers to Duets Blog or the Courts. See Kardashian/Jenner TrademarksKardashians Caught Without Makeup, But Not The Way You’d Expect, and Keeping Up With The Kardashians.

Danish makeup artist KKW sells and distributes her products with a stylized KW brand or with her full name through fancy retailers such as Barney’s. In contrast, Kardashian’s company sells products in less expensive superstores such as Target, CVS and online. Kimisaprincess sells a brand of makeup called “KKW Beauty” after her initials that was released in June 2017. The products are sold exclusively online.

Makeup artist KKW alleges that she and Kardashian’s company are direct competitors. Because of Kardashian’s fame and celebrity, it is likely consumers will mistakenly believe KKW’s products—despite its prior rights to the trademark—is associated with Kardashian. This will damage KKW and prevent KKW from controlling the reputation and goodwill that KKW has established for her products.

Kardashian’s company brought a motion to transfer the pending case to California. Her company argued that that there is better access to documents and witnesses in California where Kimisaprincess and Kardashian herself are both located. In addition, third parties such as Kardashian’s momanger (as she’s known by the press), Kris Jenner and the company that designed Kardashian’s KKW Beauty products are also in California. Plaintiff lives in New York. There are not people or documents at issue located in Illinois.

In opposing the motion, Plaintiff Danish makeup artist KKW argued that Illinois was an appropriate venue, because actual confusion between her products and the KKW Beauty products had occurred in Illinois during a survey conducted about the products. The Court found this argument to be unpersuasive, because the KKW Beauty products are sold nationwide, so confusion would also occur in California.

The Court noted that there would be a marginal increase in cost to go to California, but it does not create a cost where none was. Plaintiff KKW would have to travel to Illinois too.

The showdown between the Danish makeup artist (KKW) and Kardashian’s Kimisaprincess will take place in California. Do you think the dispute will end up on the “Keeping up with the Kardashians” reality show?

The parent company of fashion giant Coach found out that there is a lot to a brand name.

Coach’s strategic plan was to expand into a specialty retailer that would branch out beyond the COACH® brand.  To accomplish this strategy, Coach acquired both snazzy shoe company Stuart Weitzman and trendy Kate Spade & Co.

In doing so, Coach wanted to rebrand its parent company to reflect the three distinct brands under the corporate umbrella.  Coach chose the name Tapestry for its parent company.

The public backlash and slight drop in Coach (now Tapestry) stock price was unexpected.  Consumer’s felt that Tapestry sounded “musty” or “old.”  Others were reminded of the Carole King song and were not happy.

Consumers felt better when they were told they would still be able to buy their beloved COACH® bags.

The parent company Tapestry has more impact on the Wall Street shareholders than the individual consumers.  The company explained the origin of the name.  The Tapestry name reflects the long history back to its start in Manhattan in 1941 following the Great Depression and the creativity, craftsmanship, authenticity and inclusivity that the company was founded on.

Coach is not alone in branding a parent company.  Mondelez (formerly known as KRAFT) that owns the Oreos® and Nabisco® brands also received backlash when it unveiled its new name.  Consumers complained that the name Mondelez sounded like a dreadful disease.

With all the acquisitions occurring in the business world, the renaming of parent companies will be a fertile ground for creative agencies to obtain business.

What names do you think would have been less controversial for Coach to have adopted?

Two time academy award winner Olivia de Havilland seeks an expedited trial for the lawsuit involving her right of publicity.  Olivia de Havilland, DBE v. FX Networks, et al, BC667011 (Superior Ct. Calif., June 30, 2017). The urgency is needed because Ms. de Havilland’s statutory right of publicity ceases at her death.  She is currently 101.

You may recall that Ms. de Havilland starred as the sweet Melanie Hamilton Wilkes who thought of Scarlett as a sister in my favorite movie the epic “Gone with the Wind.”  The movie received 10 Academy Awards.  It is an American classic.

Ms. de Havilland is suing FX and others involved with her depiction in the series “Feud: Bette and Joan” which depicts the rivalry between Bette Davis and Joan Crawford.   Ms. de Havilland was a friend of Bette Davis.  She claims that the series painted her in a false light, and violated both her statutory (Cal Civ. Code 3344) and common law right of publicity and unjustly enriched the FX defendants.

The right of publicity involves the right of an individual to control and profit from the commercial use of his or her name, image, likeness, or other unequivocal aspects of one’s identity.

We have blogged about the right of publicity before, here.

The FX defendants are defending against the allegations by invoking the anti-SLAPP Statute in California that protects against threats to the First Amendment in matters of public interest among other defenses.

Ms. de Havilland brought a motion for an expedited trial based on her “unusually advanced age” of 101.  She also asserted that she was susceptible to disease due to her advanced age and that she has recurring health issues.

As an aside, there is a separate statute for the right of publicity for the deceased at Cal. Civil Code 3344.1 in the unfortunate circumstance of Ms. de Havilland dying before resolution of the suit.

Not surprisingly, the Judge granted the motion for an expedited trial stating “I can’t imagine how one could not do that when the plaintiff is 101 years old.”  This will be an interesting trial to follow.

The four year saga ended (at least for now) with Tiffany & Co. being awarded for its vigorous fight to maintain its trademark and protect against genericide.  As previously reported, Tiffany & Co. filed suit against Costco Corporation (“Costco”) to protect its trademark with respect to engagement rings on Valentine’s Day in 2013.  (Read my post here.)   On August 14, 2017, the district court increased a jury award to Tiffany & Co. to $19.35 million.  Costco asserts it will appeal – so the saga is not over yet.

In defending against the lawsuit, Costco argued that the “Tiffany setting” encompassing the famous TIFFANY mark is merely a generic term for a type of engagement ring.    You may recall my post where I asked if you thought TIFFANY was generic? (Read it here.)  The district court answered my question in a ruling in 2015:  No, it is not generic.   In ruling on this motion, the judge ruled that Costco willfully infringed the TIFFANY trademark by using it on signage and it was a key part of Costco’s marketing strategy.  Among other things, she relied on a study in doing so.

Costco did not like the ruling and appealed asking the Second Circuit to take up an emergency appeal because of the “ongoing, irreparable harm to Costco’s business reputation which [Tiffany & Co. had] acted to amplify through statements to news media.”   Two months later, the Second Circuit denied this request.

In a ten day trial in September through October 2016, a jury awarded Tiffany & Co. damages in an amount of $5.5 million (adding to the lower profits Costco had actually obtained) and an additional $8.25 million in punitive damages for Costco’s bad behavior.  However, in an Opinion on August 14, the district court judge did not think this was enough.  She explained that the jury’s verdict was advisory only as to recovery of profits and trebled the profits increasing the award of damages to $11.1 million, plus interest, and added the award of $8.25 million in punitive damages.  Accordingly, Tiffany & Co. was awarded $19.35 million dollars from Costco.  In addition, Costco is permanently barred from selling anything that Tiffany did not make as “Tiffany” products, unless Costco uses a modifier such as the product has a “Tiffany style” or a  “Tiffany setting.”

We will have to wait and see if the Second Circuit agrees that TIFFANY is not generic and affirm the award of $19.35 million to Tiffany & Co.

This is the question being presented in a lawsuit pending in the Southern District of New York against the iconic band U2 and a majority of its band mates.  Paul David Hewson (more well known as lead singer Bono), David Howell Evans (more well known as guitarist extraordinaire the Edge), drummer Laurence Joseph Mullen Jr., and bassist Adam Clayton were all named as defendants in the Amended Complaint filed by British recording artist Paul Rose (“Rose”) in June of this year.  He contends that U2’s The Fly from the 1991 Atchung Baby album ripped off his musical composition Nae Slappin.

Atchung Baby and Nae Slappin
Atchung Baby and Nae Slappin

Rose contends he dropped off a demo tape at Island Records.  U2 recorded at Island Records and allegedly listened to the demo tape.  Both Rose and U2 were often in the Island Records offices.   Rose claims that the renowned guitarist The Edge changed his approach to guitar playing after hearing Rose’s work.

Rose claims that the lyrics of The Fly concede that U2’s new musical sound and direction was not really new.  As the great Bono sings:  “Every artist is a cannibal, every poet is a thief.”  Rose contends that this rings true with U2.

In its recently filed motion to dismiss, the iconic band argues that Nae Slappin is a different animal than The Fly.   Rose’s “Nae Slappin is essentially an extended guitar solo consisting mostly of multiple guitar tracks, with percussion accompaniment.”  “There are no vocals, no lyrics, no subject, and no theme.”  It is experimental and acts as a vehicle for Mr. Rose to showcase his guitar skills.  In stark contrast, U2’s The Fly is a “‘song’ in the true sense of the word, with everything that comes with it:  vocals, lyrics, a subject and a theme.”  “‘The Fly’ is a direct reference to ‘The Metamorphosis’ by Frank Kafka, in which the protagonist changes overnight from a travelling salesman to a giant insect, or fly.”   I must admit I did not like the movie with Jeff Goldblum and Geena Davis that is based on Kafke’s novella.  However, it looks like I was in the minority as Rotten Tomatoes shows a 91% rating by critics and 83% rating by audiences.  I might have to re-watch the movie now that I am an adult.  But, I digress.

While writing this blog post, I watched an old YouTube video of U2’s song for the first time.  See below.

I liked the song (and the video).                

The standard for determining copyright infringement is whether the “total concept and overall feel” are the same.  U2 alleges that the two works: The Fly and Nae Slappin do not meet this standard.  The band accuses Rose of parsing the two works. For example, he points to a 7-second clip from Nae Slappin and a 12-second clip from the band’s The Fly.  Rose also asserts claims about the “percussion” or a “beat” that the band claims is inappropriate.   Relying on previous case law, U2 asserts that the beats alone “are too common of a musical technique to be protectable.”  Further, U2 complains that there cannot be protectable expression in a “chord change” from “E7 to A7.”        

U2 asserts that “musical ideas” are not protectable—only “artistic impressions.”  Accordingly, U2 contends that Rose’s Amended Complaint should be dismissed.

U2 also argues that Rose waited too long to bring this lawsuit.  He waited 25 years.  We will have to see how Rose counteracts this argument.  In his Amended Complaint, Rose asserts that he has a “witness who had provided the Rose demo tape to the Island Records executives,” who had only come forth recently because she was previously concerned about losing her job.  This may be a reason Rose will assert that he waited.

Rose asserts an equitable claim for right of attribution and writing credit for The Fly.  U2 contends that this claim is really a claim for ownership of the copyright which is barred by the three-year statute of limitations.  This is different than laches (you waited too long).  Rather, a statute of limitations cuts off your right to make a claim (except if there are tolling arguments, fraud or the like).

Will U2 prevail on its motion? Will U2 play The Fly when the iconic band comes to Minneapolis to play at the US Bank stadium in September?

The famous Coachella Music Festival is held every April in Indio, California. This year Beyoncé, Radiohead, Lorde and several DJs (including DJ Snyder, DJ Kahleel, DJ Shadow) performed.

Coachella

The Coachella Music Festival, LLC and Goldenvoice, LLC (collectively “Coachella Parties”) sued Urban Outfitters, Inc. (“Urban Outfitters”) and its subsidiary Free People of PA LLC (“Free People”) for trademark infringement, unfair competition, dilution, and violation of various state law claims based on the clothiers Urban Outfitters’ and Free People’s use of COACHELLA marks.  One of the allegations at issue was Urban Outfitters and/or Free People the use of one or more of the COACHELLA marks as a “keyword” to trigger the clothiers’ online advertising.

The Coachella Music Festival LLC owns eight (8) registrations for COACHELLA marks (including:  COACHELLA alone; COACHELLA VALLEY MUSIC AND ARTS FESTIVAL and CHELA).  The Coachella Parties sell their own apparel with the COACHELLA marks and also licenses the COACHELLA marks to the popular inexpensive fashion store H&M Hennes & Mauritz AB.

The Coachella Parties allege that Urban Outfitters and Free People should both be held liable under an alter ego theory.  Urban Outfitters and Free People have the same: (1) principal places of business; (2) headquarters; (3) consolidated financial reports discuss pooling finances; (4) legal department; (5) IT department; (6) construction department; (7) sourcing department; (8) production department; and (9) in-house attorney reporting to SEC. Moreover, all of Urban Outfitters’ subsidiaries are grouped together in SEC filings and are referred to as “brands” of Urban Outfitters rather than separate companies.

Parent company Urban Outfitters moved to be dismissed from the lawsuit.  Urban Outfitters contends that the Coachella Parties fail to allege facts that show Urban Outfitters exerts control over every facet of Free People’s business or that Free People is a sham company that exists only to protect Urban Outfitters from liability. In other words, Urban Outfitters is not the alter ego of Free People.

Will Urban Outfitters be dismissed from the lawsuit? Will its subsidiary Free People be held liable for trademark infringement, unfair competition or dilution?

I traveled to Barcelona last week to attend the International Trademark Association (“INTA”) Annual meeting.

I arrived at the Barcelona Airport the requisite three hours before your international flight.  During my long stay at the Barcelona airport I saw three store signs with ® on them.  They included the following signs:

IMG_0502  IMG_0503

Although many stores have registered trademarks, the stores usually do not have the ® symbol on the actual store sign.

Have you noticed other store signs with ® included on them? Why don’t more signs have them?