Monday, December 29, 2008

A “Kool” False Advertising Lawsuit


On December 23, 2008, two companies associated with the famed singing group “Kool & the Gang“ (The Name Vault, LLC and Gang Touring, Inc., together the Plaintiffs) filed a false advertising and unfair competition lawsuit against the Las Vegas Sands Corp., Venetian Casino Resort, LLC and Sennie “Skip” Martin in the U.S. District Court for the District of Nevada. See The Name Vault, LLC et al v. Las Vegas Sands Corp. et al, Case No. 08-cv-01809 (D. Nev. Dec. 23, 2008). A copy of the complaint is available here (courtesy of courthousenews.com)

The Name Vault is the current owner of the intellectual property belonging to the group “Kool and the Gang” which was first formed in the 1960s by George Brown, Dennis Thomas, Ronald Bell (n/k/a Khalis Bayyan), Robert “Kool” Bell, and the late Claydes Charles Smith and best known for its musical hits “Celebration” “Get Down On It” and “Ladies Night”. Among The Name Vault’s trademark asserts are federal trademark registrations for KOOL AND THE GANG (word mark) and KOOL AND THE GANG (and Design) – both covering entertainment services in the nature of live performances by a musical group and series of musical sound recording. Gang Touring is the operating company that handles the day-to-day operations of the group and uses the The Name Vault’s intellectual property under license. Both companies are owned by the four surviving original founding members (George Brown, Dennis Thomas, Khalis Bayyan, and Robert Bell)

According to the complaint, Martin joined the group in 1987 as a trumpet player and vocalist. Martin served as a trumpet player and vocalist periodically for the group from 1987 to 1995 and again from 2000 until 2007. The complaint notes that Martin has never been the lead singer, lead vocalist, or frontman for the group.

This last fact is critical because according to the complaint, sometime in December 2008, the Venetian began promoting a New Year’s Eve concert appearance by Martin – billing Martin as the “former lead singer of Kool & the Gang.” Specifically, the ad (viewable here) reads:

Immediately following Fergie’s high-energy performance, Grammy Award-winning artist Skip Martin, former lead singer of “Kool & the Gang,” will take the stage at 10:45 p.m. and perform hit songs like “Celebration” and “Ladies Night.”

According to the complaint, Martin never performed “Celebration” or “Ladies Night” with the group. Plaintiffs also became aware that Martin was promoting himself on his website, http://www.skipmartinmusic.com/categories/bio, as the “lead vocalist” for the group from 1987-1995 and from 2000 to the present.

Plaintiffs sent the Defendants a cease and desist letter on December 11, 2008, warning that Plaintiffs would take legal action if the Defendants did not stop their infringing conduct by December 18, 2008. The Defendants refused to pull the ad, and so Plaintiffs filed suit.

Plaintiffs causes of action are for false advertising under 15 U.S.C. §1125(a) as well as common law false advertising and unfair competition.

Wednesday, December 24, 2008

Verizon Announces $33.2 Million Cybersquatting Default Judgment

Several news sources (WSJ.com and Dow Jones Newswire) reported on the $33.2 million default judgment obtained by Verizon Communications Inc. against OnLineNIC, Inc. for alleged cybersquatting. See Verizon California Inc. et al v. OnLineNic Inc., Case No. 08-cv-02832 (N.D. Cal.).

Verizon sued OnLineNIC for registering 663 domain names that were “identical to or confusingly similar to Verizon trademarks.” Verizon claimed that the registrations were done in order to steer traffic away from Verizon's sites.

The default judgment awarded Verizon $50,000 per domain name.

Verizon’s counsel associate general counsel Sarah Deutsch was quoted as saying “This case should send a clear message and serve to deter cybersquatters who continue to run businesses for the primary purpose of misleading consumers."

Or maybe it just sends a message that if you are sued, you should take the lawsuit seriously or else face the consequences of a default judgment and, in the cybersquatting context, the strong likelihood of the plaintiff electing to receive statutory damages under 15 U.S.C. § 1117(d) which can range from a minimum of $1000 to a maximum of $100,000 per domain name depending on what the court considers just, which apparently in the Verizon case was $50,000.

Monday, December 22, 2008

Viacom Files UDRP Action to Obtain JACKASS.com


WSJ.com has a blog post today entitled “The Battle of Jackass.com” (link here) about Viacom’s attempts to obtain (or some would say “hijack”) the domain name jackass.com from a well-known domainer company. Domainnamewire had a similar story earlier in the month.

The show “Jackass” – showcasing the “don’t-try-this-at-home” stunts of Johnny Knoxville and Steve-O, was broadcast on MTV from 2000 to 2002, and was followed by two theatrical films released in 2002 and 2006. MTV has been using the domain name http://www.jackassworld.com/ to advertise and promote the shows and films; however, Viacom – MTV’s parent company – decided that it would much rather have the easier to remember URL jackass.com, and so decided to file a UDRP arbitration action on December 5th with the World Intellectual Property Organization in an attempt to get the domain name transferred to Viacom.

The only thing standing in Viacom’s way; however, is a significant foe in the domain name world – one with a great deal of resources and willingness to fight a case that will surely be characterized as “reverse domain name hijacking” by Viacom.

The owner of the jackass.com domain name is Future Media Architects, Inc. (“FMA”), a British Island company owned by a man named Thunayan Khalid Al-Ghanim. FMA reportedly owns thousands of domain names – none of which are apparently for sale (because after all, offering a domain name for sale can be used as evidence of bad faith registration).

FMA has had its share of domain name disputes. One particular case that has captured the interest of the domain name world involves Lufthansa Airlines. On April 17, 2008, FMA lost a UDRP action brought by Lufthansa over the two-letter domain name LH.com. See Deutsche Lufthansa AG v. Future Media Architects, Inc., Claim Number: FA0802001153492 (decision here).

But the loss did not phase FMA which had already filed its own civil action in federal court seeking declaratory relief to stop any transfer of the domain name to Lufthansa pursuant to 15 U.S.C. § 1114(2)(D)(v) (the “reverse domain name hijacking” provisions of the ACPA) which provide a party with a right to relief against an "overreaching trademark owner" when party’s registration or use of a domain name is not unlawful under the Lanham Act. See Future Media Architects, Inc. v. Deutsche Lufthansa AG, Case No. 08-cv-02801 (S.D.N.Y. Filed March 17, 2008). A copy of the First Amended Complaint can be found here.

As for jackass.com, the case at first would appear to be clear cut – after all, the domain name registration was first created back in October 1997 – several years before MTV’s “Jackass” was even used as a mark, much less became distinctive. How could FMA have registered the domain name in “bad faith” when Viacom itself did not even have even rights in the name at the time?

However, what’s not clear is if FMA was indeed the party that first created the domain name in 1997 or did it acquire the domain at some later date after 2000 – and thus, the date of registration by FMA could be deemed to be subsequent to the date when Viacom’s Jackass mark did become distinctive.

One interesting nuance to this case is that FMA filed for and received its own federal trademark registration for the mark JACKASS on September 6, 2005 for “Computer services, namely providing search engines for obtaining data on a global computer network.”

Such registration, while doing very little to help FMA argue that it did not have any “bad faith intent” at the time it registered a domain name in 1997, could help fight Viacom's argument that FMA has “no rights or legitimate interests in respect of the disputed domain name” (one of the three factors Viacom must prove in order to obtain an order that the domain name should be transferred).

And should the case end up in federal court like the Lufthansa case, then to the extent that FMA may have acquired the domain name sometime in perhaps 2003 (after all, the trademark registration claims a date of first use of December 15, 2003), the registration could help FMA win in a close battle of the nine ACPA “bad faith” factors because although the registration may have occurred at a time when the mark JACKASS was distinctive, all that FMA needs to show is lack of “bad faith intent” in order to overcome Viacom’s cybersquatting claim.

Then again, if the case goes to federal court, one would expect Viacom to file a counterclaim to cancel the registration on the basis of fraud by challenging whether FMA really ever used the mark JACKASS as a source identifier for such services.

Friday, December 19, 2008

VISA wins again against eVISA on trademark dilution claim under TDRA standard

The third time will hopefully be a charm for Visa International Service Association (“Visa”), owner of the famed VISA mark, in its long running trademark dispute with JSL Corporation (“JSL”) over JSL's use of the mark eVISA.

On December 16, 2008, the U.S. District Court for the District of Nevada decided once again on summary judgment that JSL’s use of the eVISA mark was likely to cause dilution against the famed VISA mark. See Visa International Service Association v. JSL Corporation, Case No. 01-CV-00294, 2008 U.S. Dist. LEXIS 101399 (D. Nev. December 16, 2008).

The case has actually been decided in Visa's favor twice already -- both times on summary judgment. On October 22, 2002, the district court granted partial summary judgment in favor of Visa on its trademark dilution claim, finding that Visa had shown as a matter of law that JSL use of the EVISA mark likely diluted the VISA mark. On appeal by JSL, the Ninth Circuit on January 16, 2004 remanded the case back to the district court in order for the court to consider the impact of the U.S. Supreme Court’s decision in Moseley v. V Secret Catalogue, Inc., 537 U.S. 418 (2003), which held that to prevail on a dilution claim under the dilution law at the time (the Federal Trademark Dilution Act ("FTDA")), a plaintiff must establish actual dilution rather than a likelihood of dilution.

After the Ninth Circuit's remand, the Trademark Dilution Revision Act of 2006 ("TDRA") was subsequent signed into law on October 6, 2006. On remand, the district court applied the FTDA and again granted summary judgment to Visa on its trademark dilution claim on December 27, 2007. The court, following the Ninth Circuit’s instructions set forth in Jada Toys, Inc. v. Mattel, Inc., 496 F.3d 974 (9th Cir. 2007), applied the old dilution law rather than the new law because Visa had filed the lawsuit in 2001 before the FTDA was enacted. On February 1, 2008, Visa filed a motion for relief from a final judgment based on this court's "mistake" in applying the FTDA rather than the TDRA.

Before the district court could decide the motion, the Ninth Circuit, on February 21, 2008, amended the Jada Toys decision (previously blogged here) to apply the TDRA to a trademark dilution claim even though the plaintiff filed suit before the TDRA's enactment. See Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628 (9th Cir. 2008). The district court then informed the Ninth Circuit that it wished to entertain Visa’s motion for relief from a final judgment in light of the Ninth Circuit's amended Jada Toys decision and the Ninth Circuit remanded the case to allow this court to consider Plaintiff's motion for relief from a final judgment.

In the end, the court granted Visa’s motion for relief from a final judgment although it did so under Fed. R. Civ. P. 60(b)(5) (a party can challenge a final judgment if “it is based on an earlier judgment that has been reversed or vacated” or “applying it prospectively is no longer equitable”) instead of under Rule 60(b)(6) (for any other reason justifying relief from the operation of the judgment) which was the basis cited by Visa in its motion.

Visa tried to get the court to apply the law of the case doctrine and simply accept the court’s earlier decision to grant summary judgment after finding "likely dilution" under the pre-Moseley standard; however, the court recognized that the law of the case doctrine has an exception where there is “an intervening change in the law” and proceeded to analyze the facts again under each part of the TDRA to determine if there was any element which may be appropriate for applying the law of the case doctrine

The court did not apply law of case to the fact of fame, but found once again under the TDRA that the VISA mark is famous. As for the TDRA’s requirement that a mark be distinctive, the court accepted its prior order finding the VISA mark to be arbitrary when used in connection with the goods and services provided by Visa. Regarding JSL’s use of the VISA mark in commerce, the court concluded that it had used a mark that was nearly identical to the protected mark – the same mark except for the JSL's addition of a letter 'e' as a prefix, which is commonly used to denote the online version of a business.

The court applied law of the case to the factor of JSL’s use after the mark became famous because the element is identical to the FTDA. Finally, the court applied the six nonexclusive factors set forth in 15 U.S.C. § 1125(c)(2)(B) that a court may consider in determining whether a trademark is likely to cause dilution by blurring and found that Visa had made an “exceptionally strong showing” on four of the six factors. The court concluded as a matter of law that JSL’s use of the EVISA mark is likely to cause dilution by blurring of Plaintiff's VISA mark, and amended its December 27, 2007 order accordingly.

Finally, the court, applying law of the case, granted the same injunctive relief that it previously ordered – namely enjoining JSL from using or registering the EVISA mark and from using the www.evisa.com domain name.

Wednesday, December 17, 2008

Black Sabbath Co-Founder Files Trademark Infringement Lawsuit Against Live Nation Over Sales of Unlicensed “Black Sabbath” Merchandise


Bloomberg reports on the trademark infringement lawsuit filed by Anthony Iommi, co-founder and lead guitarist of the famed heavy metal band Black Sabbath, and Bluefame Ltd., the U.K. corporation that represents Iommi in his Black Sabbath trademark licensing, against Signatures Networks, Inc. (“Signatures”) and Live Nation, Inc., which purchased Signature in 2007. See Anthony Iommi et al v. Signatures Network Inc. et al, Case No. 1:08-cv-10904 (S.D.N.Y. December 16, 2008). A copy of the complaint can be downloaded here (courtesy of The Trademark Blog).

Iommi is the only remaining original member of the band formed in 1968 in Birmingham, United Kingdom, by Iommi, vocalist John “Ozzy” Osbourne, bassist Terence “Geezer” Butler and drummer Bill Ward. The original members left the band in the 1980s and each member relinquished all of his respective right, title, and interest in and to the Black Sabbath name, which left Iommi as the sole exclusive owner of the Black Sabbath name by 1985.

Bluefame first received a registration for the BLACK SABBATH mark in the United Kingdom in 1999, and subsequently assigned and transferred the registration to Iommi. On October 31, 2000, Iommi received a federal trademark registration from the United States Patent and Trademark Office for the word mark BLACK SABBATH for three classes of goods (phonograph records, compact discs and prerecorded audio tapes featuring music; clothing; and entertainment services, namely, live performances by a rock band).

In 1997, in connection with a Black Sabbath reunion tour, Iommi, through Bluefame, entered into a licensing agreement with Signatures to manufacture, distribute, and sell merchandise bearing the Black Sabbath trademark and Iommi’s image. The original term was through the end of 2000, but the term was extended to June 30, 2006 through three subsequent amendments.

According to the complaint, the parties attempted to negotiate a fourth amendment, but were unable to reach any agreement on extending the license. The negotiations apparently collapsed around the time when Live Nation purchased Signatures for $79 million in cash, stock and repayment of debt.

In April 2008, Iommi sent a letter to Signatures demanding that Signatures cease and desist from manufacturing, selling, and distributing all merchandise bearing the Black Sabbath mark and/or Iommi’s name or likeness. According to the complaint, Signatures has continued to manufacture, distribute, and sell a wide range of merchandise bearing the Black Sabbath trademark and Iommi’s image and likeness.

Iommi’s causes of action are for registered trademark infringement under 15 U.S.C. §1114, false designation of origin under 15 U.S.C. §1125(a), trademark dilution under 15 U.S.C. §1125(c), trademark infringement under New York law (N.Y. GEN. BUS. L. § 360-k), trademark dilution under New York law (N.Y. GEN. BUS. L. § 360-1), common law trademark infringement, and breach of Iommi’s right to privacy under New York law (N.Y. CIV. R. L. §§ 50-51) for the unauthorized use of Iommi’s name, image, and likeness.

Iommi seeks injunctive relief, damages, treble damages, costs, attorneys’ fees, and destruction of all infringing merchandise.

(perfect gift for the holidays)

Monday, December 15, 2008

SCRABULOUS case S E T T L E D



The lawsuit filed by Hasbro, Inc. against the makers of the widely popular Facebook game SCRABULOUS (previously blogged here and here) has been voluntarily dismissed by Hasbro. See Hasbro, Inc. v. RJ Softwares, Rajat Agarwalla, and Jayant Agarwalla, Case No. 08-cv-6567 (S.D.N.Y. July 23, 2008). News reports on the settlement can be found here, here, and here.

Scrabulous screenshot

As usual, the parties are silent on the terms of settlement, but RJ Softwares issued a press release on its LEXULOUS site (the new name given to the SCRABULOUS game soon after the lawsuit was filed) stating:

RJ Softwares has agreed not to use the term Scrabulous and has made changes to the Lexulous and Wordscraper games (in the U.S. and Canada) to distinguish them from the SCRABBLE crossword game. Based on these modifications Hasbro has agreed to withdraw the litigation filed against RJ Softwares in federal court in New York in July of this year. As modified, the Wordscraper application will continue to be available on Facebook and Lexulous will be available on the Lexulous.com website.


Lexulous screenshot

The Wordscraper game is similar to Scrabulous except that players could devise their own scrabble-type board rather than having a board with the “trademark” look of the original Scrabble board (shown above).

Wordscraper screenshot





Wednesday, December 10, 2008

On break until December 17th

I'm taking a brief vacation from blogging about the always entertaining world of trademark law. I expect to return sometime next week.

Meanwhile, enjoy this little bit of nostalgia courtesy of the Los Angeles Intellectual Property Trademark Attorney Blog, which wrote about a trademark and copyright infringement lawsuit by the Bagdasarian Productions, LLC – the company which owns the intellectual property associated with “Alvin and the Chipmunks” – against a company putting out an unlicensed chipmunk “tribute” album by the so-called “Chipper Three.”

The Chipmunks I knew growing up

Friday, December 5, 2008

Eleventh Circuit remands district court decision on attorneys fees for successful defendant



For those following the long running trademark infringement saga between Welding Services, Inc. (“WSI”) and Welding Technologies, inc. (“WTI”), the Eleventh Circuit decided last year that there was no likely confusion between the stylized WSI logo and the stylized WTI logo for welding services and affirmed the district court’s summary judgment in favor of WTI. A summary of the court’s decision can be read at Filewrapper®.

The case went back to the district court where WTI, the successful defendant, renewed its motion for attorney's fees under 15 U.S.C. § 1117(a) as the “prevailing party.” The district court awarded WTI $104,463.71 in fees and costs and WSI appealed.

The Court of Appeals, in an unpublished per curiam opinion, reversed and remanded the case back to the district court on the grounds that the court made a clear error in one of its findings and did not seem to have considered a declaration that was submitted. See Welding Services, Inc. v. Terry Forman, Appeal No. 08-13287 (11th Cir. December 2, 2008) (per curiam).

Since the district court applied the correct legal standard for determining if the case was exceptional, the Court reviewed the district court's award of attorney's fees for an abuse of discretion (i.e., clear error in the court’s findings of facts in its decision).

The district court found that WSI had an improper motive for bringing the infringement claim given that WSI had filed its complaint only after three former WSI employees acquired WTI even though WTI had actually been using the same mark for two years before the lawsuit was filed. The district court also found that WTI attempted to resolve the infringement issue without litigation by "volunteering" to change the allegedly infringing mark in its response to WSI's cease and desist letter. Finally, the district court found WSI’s trademark infringement claims to be “weak” and yet WSI “persisted with expensive, time-consuming litigation in spite of that.” Based on such findings, the district court awarded the fees and costs.

The one basis for clear error cited by the Court of Appeals was the district court’s finding that WTI had “volunteered” to stop using the WTI mark in a response to WSI's cease and desist letter. The actual language of WTI’s response reflected more of a willingness to compromise, but not volunteering to stop using the WTI mark. On remand, the Court directed the district to reconsider that letter and “reassess its conclusion to the extent necessary to correct any misapprehension the court had about the content of the letter.”

The Court also noted that the district court had not commented in its findings about a sworn declaration of a former WSI employee stating that WSI's chief executive officer told him that he intended to “sue WTI out of business.” The Court determined that the district court should make a credibility determination regarding the alleged statement and, if it finds that statement was made, should consider it in deciding whether WSI litigated with an improper motive.

Finally, the Court also directed the district court to, on remand, decide whether WSI’s weak trademark infringement claims was “coupled with evidence of bad faith and improper motive” by WSI, and thus making the case an “exceptional” one in which the prevailing defendant is entitled to attorney's fees. [ed. – in other words, please make it perfectly clear that you applied the legal standard, so that we can simply affirm you next time.]

This case is a nice reminder that with respect to the language in 15 U.S.C. § 1117(a) which states that “The court in exceptional cases may award reasonable attorney fees to the prevailing party,” a “prevailing party” can include a prevailing defendant sued for trademark infringement case. While an “exceptional case” for a prevailing plaintiff is normally characterized by willful or deliberate infringement on the part of the defendant, an “exceptional case” for a prevailing defendant is usually characterized by a plaintiff that brings an “obviously weak” infringement claim along with evidence showing that the plaintiff acted in bad faith and with an improper motive. See Tire Kingdom, Inc. v. Morgan Tire & Auto, Inc., 253 F.3d 1332, 1336 (11th Cir. 2001)

Wednesday, December 3, 2008

Monster Mini-Golf uses eBay to raise money for defense against Monster Cable trademark infringement lawsuit


Techdirt has an interesting article (link here) about a small mini-golf course in Rhode Island that goes by the name Monster Mini Golf that has been embroiled in a trademark infringement lawsuit with Monster Cable Products, Inc. – the company behind “Monster” cables and which is well-known for filing trademark infringement lawsuits against other small companies in the U.S. that use the name “Monster” in connection with any goods or services (although the company apparently has no beefs with the likes of energy drink maker Monster Energy or job hunting website Monster.com). Justia.com has a link to the court filings in a similar case filed by Monster back in May against a different, California-based mini-golf course also named Monster Mini Golf. See Monster Cable Products v. Monster Mini Golf, et al., Case No. 08-cv-01037 (E.D. Cal.).

The Rhode Island Monster Mini Golf decided to ask the public to contribute to its defense fund via eBay – the link was subsequently taken down as a violation of eBay’s terms of service agreement (for bidding on “no item”), so now the company has put up a new auction for a “coupon” at Monster Mini Golf that serves the same purpose.

The title of the item is “Buy a Monster Mini Golf Coupon, fight Corporate bully!” Here are the “item specifics”:

  • Weirdness : Totally Bizarre
  • Subject Area: Stop bullys now!
  • Year : 2008
  • Type: Sad, Very Sad

There is a lot more in the detailed description of the item, but you can check out the listing for yourself (click here). I think the company at least deserves some credit for its creative thinking.

Of course, how long do you think it will be before Monster files a VeRO Notice of Infringement with eBay against the listing for infringing its MONSTER mark?

[Note: Make sure to read the one comment to this post. Quite lengthy, but very insightful for those interested in the "Monster" cases]

Monday, December 1, 2008

Chippendales Fight Over the Inherent Distinctiveness of Famed “Cuffs & Collars” Uniform


Ron Coleman’s Likelihood of Confusion® beat me to the trademark blog punch with his analysis (link here) of the ex parte appeal filed by Chippendales USA, LLC -- the owner of the intellectual property behind the famed Chippendales dancers -- appealing the USPTO’s final refusal to register its “unique” apparel configuration (pictured below) as a trademark for "adult entertainment services, namely exotic dancing for women in the nature of live performances" on the basis that the trade dress is not inherently distinctive. See In re Chippendales USA, LLC, Serial No. 78666598 (the hearing of which is scheduled for Thursday, as reported by The TTABlog®).


What’s interesting about this pending application being appealed is that Chippendales actually already has one trademark registration on this particular trade dress – U.S. Trademark Registration No. 2,694,613 (for adult entertainment services, namely exotic dancing for women). That application was filed back in November 2000. After the PTO initially refused registration on the basis that the trade dress was not inherently distinctive, Chippendales amended the application to state Section 2(f) acquired distinctiveness as its basis for registration on the Principal Register (along with 400 pages of evidence). The PTO had no problem recognizing that the Chippendales trade dress had acquired distinctiveness.

Then in 2003 (about five months after the above application had registered), Chippendales filed a second application to register the same trade dress – only this time, Chippendales did not want to enter a Section 2(f) claim of acquired distinctiveness. One basis for the PTO’s refusal to register was that the application would result in a duplicate registration; however, Chippendales’ attorney explained that “the objective of this application is to have the Cuffs and Collar mark deemed inherently distinctive and registered on the Principal Register with no Section 2(f) claim.” This particular application was subsequently abandoned (for reasons not entirely clear although it may have had something to do with an untimely appeal) in favor of a third application filed in 2005 (the application which is subject to the aforementioned hearing).

As Coleman states,
TMEP 1301.02(c) provides for registration of a “three-dimensional costume design . . . for entertainment services.” In other words, clothes worn as a costume, not as “apparel” per se, are clearly amenable to protection as a trademark. The question appears to be whether a “configuration” of apparel such as that in the illustration constitutes a “costume” — i.e., whether the concept of using a costume to portray a particular character (Mickey Mouse, the San Diego Chicken) can be extended to a situation where, here, there is a concept, but not an identifiable, personal persona meant to be evoked.
The PTO agrees that the Chippendales “costume” is product packaging (as opposed to a product design), and thus, under Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 215, 54 USPQ2d 1065, 1069 (2000), may be inherently distinctive and registrable on the Principal Register without a showing of acquired distinctiveness. However, the PTO just doesn’t seem to believe that this particular product packaging is distinctive. The PTO focused on the factors set forth in Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.2d 1342, 1344, 196 USPQ 289, 291 (C.C.P.A. 1977) for determining the inherent distinctiveness of configuration marks comprising product packaging:
  1. Whether the applied-for mark is a “common” basic shape or design;
  2. Whether the applied-for mark is unique or unusual in the field in which it is used;
  3. Whether the applied-for mark is a mere refinement of a commonly-adopted and well-known form of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation for the goods; and
  4. Whether the applied-for mark is capable of creating a commercial impression distinct from the accompanying words.

Regarding the first factor, the PTO found that there is nothing unique or distinctive about a male dancer wearing cuffs and a bow tie and collar and that it is considered to be one of various ways for strippers and male entertainers to dress. As for the second factor, “The collar and cuffs are but one style of accouterments that are worn during the performance of a dance number or show. . . . This is practically an integral element of live acts, exotic dancing and strip tease performances in the world of entertainment and burlesque.” Regarding the third factor, the PTO noted that “Exotic dancers and striptease performers, particularly in the early days of burlesque, often began their routines in formal evening attire. . . . Though this particular form of dress may have been innovative, it was not source recognizing at the outset.” The fourth factor was inapplicable because no word mark was involved.

The test suggested by Chippendales as an alternative to the Seabrook test with respect to costume source indication is: 1) Is the costume used in a channel of trade where consumers are conditioned through their past experience to presume a source identification function? and 2) Is the costume immediately associated with an iconic larger than life character where the costume acts as an intrinsic symbol for the character?

Because the Chippendales "Cuffs & Collars" outfit has become so famous in connection with Chippendales, one can overlook the issue behind inherent distinctiveness -- namely, was the trade dress inherently distinctive when it was first adopted. The PTO maintains that despite the "iconic" status that Chippendales' trade dress may have presently reached, it did not have such status when the services first took place using the trade dress.

Wednesday, November 26, 2008

New York District Court Denies MGM Mirage's Motion to Dismiss MONTE CARLO Lawsuit


I previously wrote (link here) about the long-running and contentious dispute between Société des Bains de Mer et du Cercle des Etrangers à Monaco (“SBM”), the owner of Le Casino de Monte-Carlo (pictured above), and MGM Mirage, Inc. (“MGM Mirage”) and its subsidiary, Victoria Partners, L.P. (“Victoria Partners”), the owner of the Monte Carlo Resort and Casino in Las Vegas (pictured below).


On March 28, 2008, SBM filed a lawsuit against MGM Mirage and Victoria Partners (the “Defendants”) in the U.S. District Court for the Southern District of New York over the Defendants' use of the MONTE CARLO name. See Societe Anonyme Des Bains De Mer ET Du Cercle Des Etrangers A Monaco Cercle Des Etrangers A Monaco v. MGM Mirage, Inc. et al, Case No. 08-cv-03157 (S.D.N.Y.).

MGM Mirage and Victoria Partners filed a motion to dismiss the case for lack of personal jurisdiction and for failure to state a claim or alternatively to transfer the case to Nevada District Court. On November 24, 2008, United States District Judge Harold Baer, Jr. denied the motion.

The court found that the Defendants were subject to personal jurisdiction in New York under New York’s long-arm statute (N.Y. CPLR §302(a)(1)), on the basis that the Defendants transacted business in New York through its highly interactive http://www.montecarlo.com/ website which allowed a New York resident to book a flight (the website had a drop-down menu with a finite list of potential departure cities which included LaGuardia and Kennedy), book a room at the Monte Carlo, and to sign up for a Monte Carlo players club account. Moreover, SBM’s claims arise from Defendants’ transaction of business in New York through the use of the MONTE CARLO mark on the website which SBM contends suggests a connection between Defendant’s Las Vegas casino and SBM’s Casino de Monte-Carlo. Finally, the court found that the Defendants, by transacting business in New York, purposefully availed themselves of the privileges of this forum, and thus it does not offend “traditional notions of fair play and substantial justice” to force Defendants to defend against SBM's claims in New York.

MGM Mirage attempted to dismiss the complaint against it on the basis that SBM failed to allege direct unilateral action by MGM Mirage in the infringement of SBM’s trademark rights. However, the court read the complaint “generously” and noted that it did cite MGM Mirage as being a direct actor by maintaining the Monte Carlo website. On the basis, the court denied MGM Mirage’s motion.

The defendants next argued that SBM’s lawsuit was barred by laches. The court noted that while laches is normally an affirmative defense (and not appropriate for a motion to dismiss), a “court may consider the defense of laches on a motion to dismiss ‘[w]hen the defense of laches is clear on the face of the complaint, and where it is clear that the plaintiff can prove no set of facts to avoid the insuperable bar.’” (quoting Lennon v. Seaman, 63 F. Supp. 2d 428, 439 (S.D.N.Y. 1999)). The Second Circuit applies New York’s six-year fraud statute of limitations to Lanham Act claims to determine which party bears the burden of proof with respect to the laches defense.

The Defendants argued that SBM had knowledge of Defendants’ use of the MONTE CARLO trademark when the hotel/casino opened in June 1996, but waited until 2008 to file an action – long after the six year statute of limitations had expired.

However, the court sidestepped the laches issue at this stage of the case by noting that SBM had alleged intentional infringement which, if true, would bar consideration of the laches defense:

I find that dismissal based on laches at this stage of the litigation would not be proper because even if the instant action was filed after the applicable limitations period, Plaintiff’s Amended Complaint alleges intentional infringement, a set of facts that, if true, would avoid application of the laches defense altogether. Hermes Int’l v. Lederer de Paris Fifth Ave., Inc., 219 F.3d 104, 107 (2d Cir. 2000).
SBM’s allegations of Defendants’ willful infringement included Defendants’ representations to the United States Patent and Trademark Office that the name Monte Carlo was selected in order to invoke the image, in the minds of its consumers, of the real Casino de Monte Carlo. Based on SBM’s allegations that Defendants’ trademark infringement and dilution was willful and intentional (which if true would bar the defense of laches), the court declined to invoke the equitable doctrine of laches at this stage of the case and denied the motion to dismiss for failure to state a claim.

Finally, the court chose not to transfer the case to Nevada – finding the convenience factors either neutral (not favoring either party) or not weighing heavily in favor of transfer.

While Defendants argued convenience of the witnesses on the basis that they intended to call a number of non-party witnesses who live in the Las Vegas area, Defendants did not specify which witnesses would be their key witnesses and the nature of their testimony. The court also noted that unavailability of witnesses does not compel transfer when videotape and deposition testimony is available. Defendants also argued that they would want the jury to visit the Monte Carlo Resort & Casino, but the court determined that such a trip would be extremely prejudicial and therefore barred by Rule 403 of the Federal Rules of Evidence (while noting that pictures and video are suitable alternatives). The court also noted that while many of the operative facts of the case would pertain to events that took place in Las Vegas, there is no dominant center of gravity for likelihood of confusion claim. And while Nevada would be more convenient for the Defendants, SBM’s U.S. operations are based in New York and “this forum is much closer to Monaco than is Las Vegas.”

As such, the court denied the Defendants' alternative motion to transfer the case to the District of Nevada.

Friday, November 21, 2008

Taco Bell's Answer to 50 Cent's Trademark Infringement Lawsuit

Yo Yo Yo No Quiero Taco Bell !

The trademark infringement story du jour on Thursday was the Answer filed by Taco Bell in the trademark infringement lawsuit filed by Curtis James Jackson, III (better known as the rapper 50 Cent) on July 23, 2008. See Jackson v. Taco Bell Corp., Case No. 08-cv-06545 (S.D.N.Y.). A copy of the answer filed in September is available here (courtesy of TMZ.com which ran a story on the filing yesterday). News articles on the originally filed lawsuit can be found here and here.

50 Cent filed the lawsuit after Taco Bell sometime in July sent an open “letter” to 50 Cent, signed by Taco Bell President Greg Creed, which offered to make a $10,000 donation to 50 Cent’s charity of choice if he agreed to change his name from 50 Cent to 79, 89, or 99 Cent and stop by any Taco Bell restaurant of his choosing and rap his order at the drive-thru using the new name. See news reports here and here.

The letter, which was part of Taco Bells’ “Why Pay More” value menu campaign advertising the company's 79, 89, and 99 cent food items, read “We know that you adopted the name 50 Cent years ago as a metaphor for change. We at Taco Bell are also huge advocates for change... We encourage you to 'Think Outside the Bun' and hope you accept our offer.” Taco Bell also agreed to feed for free all of the guests at the Taco Bell location where 50 Cent decided to place his order.

50 Cent felt that the letter used, without his authorization, his name, persona and trademark (the the registered mark 50 CENT) for commercial purposes and led consumers to mistakenly believe that he was endorsing Taco Bell. 50 Cent also felt that the campaign had made his fans think that he had “sold out” by endorsing Taco Bell, thus harming his rap image.

In Taco Bell’s Answer, 50 Cent is described as only lawyers would describe:

Plaintiff Jackson is a self-described former drug dealer and hustler. He is now a rap music performer who uses the term “50 Cent” to identify himself. His work falls in the subgenre of hip hop music known as “gangsta rap”, a style associated with urban street gangs and characterized by violent, tough-talking braggadocio.

Jackson has used his colorful past to cultivate a public image of belligerence and arrogance and has a well-publicized track record of making threats, starting feuds and filing lawsuits. At the same time, Jackson holds himself out as a giver to charity and one who wants to give back to his community.

This lawsuit is another of Jackson's attempts to burnish his gangsta rapper persona by distorting beyond all recognition a bona fide, good faith offer that Taco Bell made to Jackson.

Taco Bell describes its “challenge” of asking 50 Cent to change is name as a “soft ridicule and good-natured lampoon of the rapper's moniker, 50 Cent, and his public image as a tough gangsta rapper.” Taco Bell argues that the offer was a good natured parody of the rapper's name and provided 50 Cent with “an opportunity to give back to his community and a public forum to showcase a softer, playful side for his fans.”

Taco Bell claims it did not disseminate the letter in advertising or otherwise use Jackson's name in an advertising campaign, but rather sent the letter directly to 50 Cent’s agent. Of course, the letter was provided to the press, but only “because of the legitimate public interest in a charitable offer to a celebrity of Jackson's stature.” [Comment: Isn’t it up to 50 Cent to decide whether he would want to accept such an offer and have the public know about it – was Taco Bell trying to guilt 50 Cent into accepting the offer by publicizing it?] 50 Cent’s complaint described the letter as reading like “a poorly written voice-over for one of Taco Bell's television commercials.”

Taco Bell maintains that “The public had a right to know about the offer and whether Jackson would accept it, and Taco Bell had a Constitutionally protected right to make it.” [Comment: Taco Bell certainly had the right to make the offer, but the public had a right to know about the offer?]

Taco Bell concludes that 50 Cent could have simply answered Yes or No to the offer – and that “If Jackson simply had rejected the offer, that would have been the end of the matter.” [Comment: Of course, Taco Bell had already reaped the benefit of using 50 Cent’s name in connection with the "offer".]

Rather than 50 Cent just accepting or rejecting the offer, as Taco Bell puts it,

[I]nstead of responding to Taco Bell's sincere offer in the friendly and humorous spirit in which it was issued, Jackson launched an aggressive, offensive attack on Taco Bell in the press. In a heavily publicized sound bite, Jackson threatened legal action against Taco Bell stating, “When my legal team is finished with them, Taco Bell is going to have a new corporate slogan: 'We messed with the bull and got the horns.'“ Jackson then brought this lawsuit.”

Taco Bell describes 50 Cent’s actions as “a transparent attempt at self-promotion.” [Comment—not to be confused with a company that would send out "humourous" charitable offer that it knows full well will not be accepted by the recipient but which will garner some publicity for the company nonetheless.]

Taco Bell says that 50 Cent’s lawsuit “has garnered significant media coverage – considerably more, in fact, than Taco Bell's offer.” [Comment—But doesn’t Taco Bell also get publicity from the lawsuit?] Taco Bell argues that his claims fail as a matter of law because “Taco Bell did nothing more than make a legitimate, newsworthy offer to him and provide the public with information about that offer.”

Wednesday, November 19, 2008

Gallup Survives Motion to Dismiss in Trademark Infringement Lawsuit Against Gallup Pakistan

Gallup, Inc. (“Gallup”), the organization famous for its surveys and public opinion polls, filed a trademark infringement and trademark dilution lawsuit in March against Business Research Bureau and Ijaz Shafi Gilani (the “Defendants”) over the use of the mark GALLUP.

Gallup owns numerous United States trademark registrations and applications containing the GALLUP mark including, among other goods and services, public opinion polls and business management consulting services.

Defendants, operating under the name Gallup Pakistan, provide survey and opinion polls on political, social, and business topics to international agencies and educational institutions, including some in the United States. Between January 11 and February 22, 2008, Defendants released six polls regarding Pakistani public opinion of issues surrounding the Pakistani parliamentary elections. The polls were promoted on Defendants’ website, which is in English and accessible to the United States. Defendant Gilani, the chairman of Gallup Pakistan, also made an appearance at a conference in Chicago in 2007 where he presented a paper that bore the Gallup Pakistan name. He also spoke on National Public Radio on February 12, 2008, to discuss his organization’s poll results and was introduced as the head of “the Pakistani chapter of the Gallup polling organization.” Gilani also made an appearance on an internet broadcast around the same time. Gilani was not in the United States during either of those broadcasts.

In response to Gallup’s lawsuit for trademark infringement and dilution, the Defendants moved to dismiss the complaint on the ground that the court did not have subject-matter jurisdiction (Defendants did not challenge the exercise of personal jurisdiction – possibly because Gilani appeared pro se). Specifically, Defendants argued that there was no basis to exercise extraterritorial jurisdiction under the Lanham Act. Gallup countered by arguing that the exercise of extraterritorial jurisdiction was not necessary because Defendants’ committed infringing acts in the United States sufficient to establish subject-matter jurisdiction.

U.S. District Court Judge William Alsup found that Gallup’s complaint had sufficiently alleged that Defendants’ infringing activities occurred in the United States to meet its burden of establish subject-matter jurisdiction under the Lanham Act. See Gallup, Inc. v. Business Research Bureau et al, Case No. 08-cv-01577, 2008 U.S. Dist. LEXIS 93462 (N.D. Cal. November 10, 2008).

Under the Lanham Act, courts have jurisdiction which extends to “all commerce which may lawfully be regulated by Congress.” (see 15 U.S.C. 1127). The court noted that the phrase “in commerce” does not necessarily require that the infringing acts take place “‘in commerce’ which is subject to congressional regulation, but that the acts have an adverse effect on that commerce.” Wells Fargo & Co. v. Wells Fargo Exp. Co., 556 F.2d 406, 427 (9th Cir. 1977).

Gallup alleged that Defendants’ trademark infringement occurred “in commerce” in three ways. The first way was Defendants’ publishing of poll results in the United States using the Gallup name. Gallup alleged that Defendants’ trademark infringement not only occurred in commerce, but also has the potential to adversely affect that commerce. The infringement was “in commerce” because Congress regulates the use of trademarks on published materials and the infringement adversely affects that commerce by impairing Gallup’s right to capitalize on its registered mark in its publications. Further, it did not matter that the Defendants do not advertise, market, or promote any goods or services in the United States: “The test is whether the alleged infringement occurred within an area of commerce that Congress regulates or whether the infringement adversely affected that commerce. Even if defendants did not ‘advertise, market, or promote’ their services in the United States, plaintiff sufficiently alleges that defendants’ use of the Gallup mark occurred within commerce and adversely affected that commerce.”

The second way was Defendant Gilani’s appearance in the U.S. promoting his poll results under the Gallup mark. The court found that Gallup had sufficiently alleged that Defendants’ presentations at conferences in the United States using the Gallup mark as well as Gilani’s interview on NPR and participation in the internet broadcast adversely affected commerce regulated by Congress. Specifically, Gallup’s allegations that a) Defendants’ use of the Gallup mark in connection with opinion polls, surveys, and management consulting occurs in the same markets and channels of trade as those offered by Gallup under the Gallup mark and b) Defendants’ use of the Gallup mark has caused or is likely to cause confusion, to cause mistake, or to deceive customers of both Gallup and the defendants and to cause the dilution of the distinctive quality of the Gallup mark.

The third way in which Gallup argued that Defendants’ trademark infringement occurred “in commerce” was Defendants’ operating of a website prominently featuring the Gallup mark. The court found that Gallup had sufficiently alleged that Defendants’ trademark infringement occurred “in commerce” by alleging that the web site was accessible in the United States and that use of the Gallup mark had an adverse effect on commerce.

Because the court found that Gallup’s complaint sufficiently alleged actions “in commerce” and action having an adverse effect on commerce in order to give the court subject-matter jurisdiction over Gallup’s claims against the Defendants, the court did not consider Defendants’ argument that there was no basis for extraterritorial jurisdiction. The court noted that the question of whether a court can exercise extraterritorial jurisdiction under the Lanham Act is only reviewed if the plaintiff seeks to reach foreign activities of the defendant, and, in this case, Gallup clarified in its opposition brief that it was not seeking to enjoin Defendants’ activities in Pakistan or to determine rights to the Gallup mark in Pakistan.

Monday, November 17, 2008

Jones Day Lives to Fight Another Day In Trademark Infringement Lawsuit Against Blockshopper

Those liberal pleading rules have allowed Jones Day to survive a Motion to Dismiss Under Rule 12(b)(6) for Failure to State a Claim with respect to its trademark infringement lawsuit against BlockShopper, a website which collects publicly available information on real estate transactions, for identifying two law firm associates (Dan Malone and Jacob Tiedt) who purchased some expensive condos as being employed by “Jones Day” and linking their names to their Jones Day website bios. See previous blog posts here and here.

News reports of the court’s opinion can be read here, here and here. The actual opinion can be downloaded here.

The court, accepting all well-pleaded factual allegations set forth in Jones Day’s complaint as true, found that Jones Day had plead sufficient facts to make out “plausible” claims for trademark infringement and trademark dilution.

While the court allowed the case against BlockShopper to proceed, the court did dismiss claims against the company’s principals, Brian Timpone and Edward Weinhaus, on the basis that the complaint did not have sufficient allegations to plausibly state a claim of individual liability against the two principals for infringement by the company.

Vegas™Esq. Comments:
I wonder how many people out there can truly appreciate how much this lawsuit is going to cost Blockshopper to defend in terms of legal fees. To the extent that Blockshopper is being charged for time spent by its attorneys, Blockshopper has probably already spent about $10,000 to $20,000 up to this stage. And since the court has chosen not to dismiss the complaint, BlockShopper will now have to file an answer (another $5,000 and possibly up to $10,000 if counterclaims are included). Discovery will soon begin thereafter. Jones Day will use its behemoth resources to deluge BlockShopper’s counsel with document requests and other discovery – all of which BlockShopper’s counsel will have to treat seriously and spend countless hours reviewing such discovery and preparing responses thereto (another $10,000 to $20,000). And that’s just the beginning of discovery. Add $25,000 to $50,000 for additional discovery (assuming Jones Day comes out guns blazing) and then $25,000 for the Summary Judgment Motions.

All of this just for posting public domain information online.

And the truly sad part of it all is that even if Blockshopper ultimately wins this case (and is there anybody out there not employed by Jones Day who thinks they won’t?), the company might not be able to recover its attorney’s fees for having to defend this case. The court has the authority under 15 U.S.C. § 1117(a) to award a winning defendant in a trademark case attorney’s fees in “extraordinary circumstances” – however, so long as the claims are deemed to be not frivolous or unreasonable (and Jones Day will certainly fight hard to show that even though it lost, its claims were not frivolous or unreasonable), then an award of attorney’s fees will be denied.

Saturday, November 15, 2008

Article Highlights Intel’s Aggressive Trademark Enforcement


Back in July, I highlighted (link here) an opposition filed Intel against a company that was seeking to register the mark INTELLEQUITY (an opposition which is still pending with the parties continuing to extend the time for the applicant to answer while the parties engage in settlement discussions). See Intel Corporation v. Business Development Partners, LLC, Opposition No. 91185394 (T.T.A.B. Filed July 23, 2008).

An article by Zusha Elinson published on Law.com earlier this week (link here) highlights some of Intel’s other aggressive trademark infringement lawsuits.

According to the article, Intel has filed 15 trademark infringement and/or trademark dilution actions this year against companies with the word “intel” in their name. You can see the list for yourself on Justia (although I only count 14 actions, one of which is likely a declaratory judgment filed in Florida three days before Intel brought suit in California).

The article spotlights one particular suit against Barry Hood who received a 108-page trademark-infringement lawsuit from Intel for using the name Intellelectric for his sole proprietorship. The article also notes Hood’s unsuccessful attempt to get help from Pre-Paid Legal Services because the “trademark dispute was a pre-existing condition and not covered by his plan.” Interestingly, however, Hood’s accountant apparently negotiated a payment from Intel of $3,500 to allow Hood to change his name (Intel having apparently originally offered him $1,500 to change the name).

Intel also sued a travel agency (Intellife Travel), an investment advisory business (Insider Intel), and an Ohio telecom company (Intelcom). The travel agency, acting pro se, fought back against Intel for about a month (their cause having caught the attention of TechCrunch blogger Erick Schonfeld in his post “Intel Is Worried You Might Think It Is A Chinese Travel Agency” which includes a copy of the complaint received and some of the back and forth correspondence). The agency apparently reached its own confidential settlement with Intel – but as of today, the agency’s website www.intellifetravel.com is still up and running.


Friday, November 14, 2008

Fractional Villas Files Trademark Infringement Lawsuit Against Competing Fractional Ownership Company


On November 12, 2008, Fractional Villas, Inc. (“FVI”) filed a trademark infringement lawsuit against LVPalmsplace, LLC and Las Vegas residents Yvonne Milko and Janet Armkenect (“Defendants”) in the U.S. District Court for the Southern District of California. See Fractional Villas, Inc. v. LVPalmsplace, LLC. et al, Case No. 08-cv-02072 (S.D. Cal. November 12, 2008). A copy of the complaint can be viewed here.

FVI, a company based in Del Mar, California, is in the business of marketing fractional ownership of luxury properties. The company markets its services on its website http://www.fractionalvillas.com/ and has two federal service mark registrations for the mark FRACTIONAL VILLAS – a supplemental registration for the word mark alone for “Real estate consultation; Real estate equity sharing, namely, managing and arranging for co-ownership of real estate” and a principal registration for the FRACTIONAL VILLAS logo pictured above (with the words “FRACTIONAL VILLAS” disclaimed) for two classes of services (“Real estate marketing services in the field of high-value properties” and “Real estate consultation; Real estate equity sharing, namely, managing and arranging for co-ownership of real estate; Real estate time-sharing; Vacation real estate time share exchange services; Vacation real estate time-sharing; Vacation real estate timeshare services.”).

According to the complaint, FVI has been marketing its services since 2003 – although according to the Internet Archive, the website has only been up since December 2005 (which FVI pretty much admits by claiming on its website that its contents are Copyright 2005-2008). The complaint is not specific about the extent of FVI’s marketing efforts prior to the website – it does mention that FVI’s owner, Robert Vicino, was a guest on Fox News and several radio programs and has been featured in numerous print and online articles, but such appearances came after the launch of the website.

Sometime around August 2008, Defendants began marketing fractional ownership of luxury properties under the website http://www.lvfractionalvillas.com/. The Defendants also own the website http://www.lasvegasfractionalvillas.com/, which is currently focused on marketing the Palms Place Hotel & Spa at the Palms Casino Resort in Las Vegas.

Palms Place, Las Vegas, Nevada

FVI argues that as a result of its ongoing advertising and promotion, the “FRACTIONAL VILLAS” mark has acquired a secondary meaning (i.e., has come to be a unique identifier of FVI’s services) and the Defendants’ use of the similar mark Las Vegas Fractional Villas (and the http://www.lvfractionalvillas.com/ domain name) is likely to cause confusion.

Vegas™Esq. Comments:
Since FVI’s trademark registration for the word mark FRACTIONAL VILLAS is only on the Supplemental Register, the registration provides no additional rights beyond what FVI has under the common law and reinforces that the mark is not inherently distinctive (and thus FVI must make a case for acquired distinctiveness). And FVI, in its registration on the Principal Register, concedes that it does not have exclusive rights to use the mark FRACTIONAL VILLAS apart from that mark as shown.

FVI will have an uphill battle in attempting to show that FRACTIONAL VILLAS has acquired a secondary meaning in the marketplace as identifying FVI’s services. The greater the degree of descriptiveness of a mark, the heavier the burden is on the mark holder to prove that the mark has acquired a secondary meaning. In this case, FRACTIONAL VILLAS is no doubt very descriptive of the services offered by FVI under the mark. As the PTO stated in rejecting registration of FRACTIONAL VILLAS on the Principal Register on the basis that it was merely descriptive:

The wording FRACTIONAL VILLAS describes luxury villa properties having a fractional, or shared, ownership. See web sites previously provided describing FRACTIONAL VILLAS. When the mark is applied to the applicant’s services, the consumer is immediately informed that the real estate consultation is specifically in the area of FRACTIONAL VILLAS, and that the equity sharing is specifically for FRACTIONAL VILLAS. See attached pages from applicant’s own website.
The complaint also attempts to make out a cause of action for trade dress infringement based on the website’s “distinctive, non-functional protectable trade dress,” but falls short on details regarding what such trade dress is.

Curiously, while the complaint notes that the contents of the http://www.fractionalvillas.com/ website, authored by Vicino, have been registered with the U.S. Copyright Office (TX-6-613-055 and TX-6-856-810 ), the complaint does not go on to make any claims for copyright infringement. Most likely because there is not enough content on the http://www.lvfractionalvillas.com/ to make out a prima facie case that the Defendants copied any part of the http://www.fractionalvillas.com/ website (other than maybe the concept itself, which copyright does not protect).

But the inclusion of these copyright registrations may have been a carryover from another lawsuit complaint – it turns out that this particular lawsuit is one of many that FVI has filed in the last few months. It would appear that FVI has decided to mount an aggressive intellectual property enforcement campaign against other competitors involved in the “fractional” ownership business.

Filed November 12, 2008
Fractional Villas, Inc. v. WorldFractionals.com et al
Fractional Villas, Inc. v. Paine et al
Fractional Villas, Inc. v. Harbor Light Villas et al
Fractional Villas, Inc. v. Windsor Capital Mortgage Corp. et al
Fractional Villas, Inc. v. Friedman et al

Filed September 23, 2008
Fractional Villas , Inc. v. MWS Fractional et al
Fractional Villas, Inc. v. Panama Fractional Real Estate et al
Fractional Villas, Inc. v. The Fractional Concierge, LLC. et al
Fractional Villas, Inc. v. Walker et al
Fractional Villas, Inc. v. Desert Quarters et al

Filed July 25, 2008
Fractional Villas, Inc. v. Rodgers et al

Filed July 22, 2008
Fractional Villas, Inc. v. Katz et al

Filed May 30, 2008
Vicino et al v. Allen et al
Vicino et al v. Starfish Coastal Properties, LLC et al
Vicino et al v. Coastal Resort Homes LLC et al

But with the exception of the above lawsuit against the Defendants, FVI’s lawsuits have all been copyright lawsuits (of course, trademark claims may have been asserted, but the lawsuits were classified primarily as copyright infringement lawsuits). FVI may be reaping the benefit of having registered its website with the U.S. Copyright Office since, with registered copyrights, FVI can assert statutory damages (rather than having to prove actual damages) against any other website that may have copied its website’s protected content. Of course, this also presumes that the infringement began after registration and not beforehand in which case statutory damages might be unavailable if the websites copied FVI’s website before registration even if such infringement continued after registration – see Derek Andrew, Inc. v. Poof Apparel. Corp., 528 F.3d 696 (9th Cir. 2008).

And one final unrelated note -- I wonder if the owners of Palms Place (Fiesta Palms, LLC -- see pending trademark applications here, here and here) will try to stop the Defendants from operating under the company name LVPalmsPlace, LLC.

Tuesday, November 11, 2008

First Amendment Protects Grand Theft Auto from Strip Club’s Trademark Infringement Lawsuit


Much has already been written about the Ninth Circuit’s decision in E.S.S. Entertainment 2000, Inc. v. Rock Star Videos, Inc., Case No. 06-56237 (9th Cir. Nov. 5, 2008) finding that the First Amendment protected the makers of the video game Grand Theft Auto from trademark infringement claims brought by the owner of the Los Angeles strip club “Play Pen” over a depiction of a fictional strip club named “Pig Pen” in the video game.

Rather than do my own write-up , I’m opting to provide links to authors who have already written eloquently about the decision:

  • Link to the district court’s decision (here) and commentary at Gamasutra.

Saturday, November 8, 2008

The Naked Cowboy Settles Trademark Infringement Lawsuit with Mars Incorporated


I’ve previously written (here and here) about the trademark infringement lawsuit filed by Robert Burck, better known as “The Naked Cowboy,” against Mars Incorporated, the maker of M&Ms candies, over an M&M ad featuring a cartoon M&M guitar-playing street performer wearing a cowboy hat, boots, and underwear – all reminiscent of Burck’s alter ego. See Burck v. Mars, Incorporated et al, Case No. 08 Civ. 01330 (S.D.N.Y. June 23, 2008

As reported by the New York Post today, the parties stipulated to dismiss the lawsuit with prejudice (a copy of the dismissal can be read here). Naturally, the terms of the settlement were not disclosed and Burck’s only comment was that the “matter had been resolved.”

Tuesday, November 4, 2008

Sprinkles Cupcake Denied Motion for Default Judgment Against Famous Cupcakes


I previously wrote (link here) about the trademark infringement lawsuit filed by California cupcake maker Sprinkles Cupcakes against rival cupcake maker Famous Cupcakes over Sprinkles’ registered "nested circle design" for "bakery goods."


The news reports out yesterday (link here) report that U.S. District Judge Percy Anderson denied Sprinkles’ Motion for Default Judgment in its lawsuit to stop Famous Cupcakes from using its “toppers” in the center of its cupcakes (see picture below). The court supposedly cited “problems with Sprinkles' court filing.” Sprinkles’ attorneys have said they will refile their Motion after making the required corrections.

Anybody know what was wrong with Sprinkles’ Motion?

[Ed. Note: This post was subsequently edited to correct an error in the type of Motion that was filed with the court, as clarified by Bobby Ghajar in the comments.]

Thursday, October 30, 2008

Hershey Wins TRO Against Furniture Company Based On Trade Dress Dilution


Hat Tip to Marty Schwimmer for posting the complaint filed by Hershey Company (“Hershey”) against Art Van Furniture (“Art Van”), a Michigan furniture company over its use of the above picture on its furniture trucks as well as the somewhat surprising decision by the court to grant a temporary restraining order on the basis of dilution. See Hershey Company et al v. Art Van Furniture, Inc., Case No. 08-cv-14463 (E.D. Mich. Filed October 21, 2008). Reports on the actions of the parties leading up to the lawsuit have been published by the AP and The Detroit New.

Most of the court’s decision is spent analyzing, and ultimately rejecting (ed.—rightly so), a likelihood of success on the merits for Hershey’s trademark/trade dress infringement claims given the balance of the likelihood of confusion factors favoring Art Van.

However, the court then, with a relatively brief analysis of Hershey’s trademark dilution claim, concludes that Hershey has established a likelihood of success on the merits for a claim of trademark dilution by blurring.
Granted, Hershey had the advantage in meeting the primary elements necessary to show dilution under 15 U.S.C. §1125(c) – specifically a famous and distinctive trademark in the nature of the Hershey’s candy bar trade dress, use of the Art Van ad by Art Van after Hershey’s trade dress became famous, and a similarity between the Art Van ad and Hershey’s trade dress that gives rise to an association between Hershey’s trade dress (Comment: Based on the pictures above, I’m not so sure I would agree with the court's finding that Art’s candy bar would give rise to an association with Hershey’s candy bar).

As for whether such association is likely to impair the distinctiveness of the famous mark, when you start to analyze the six factors set forth in 15 U.S.C. § 1125(c)(2)(B) that courts consider in deciding if a junior mark is likely to dilute a famous mark through blurring (degree of similarity, degree of inherent or acquired distinctiveness of the famous mark, exclusive use of famous mark, degree of recognition, intent to create an association with the famous mark, and any actual association), they tend to favor Hershey’s as well (comment--although again, I’m not sure I agree with the degree of similarity in this case).

But what I found curiously odd was the court’s short shrift of Art Van’s parody defense. Naturally, as support for its argument that its use was protected by parody, Art Van cited to the last year’s “Chewy Vuitton” decision in Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252, 260 (4th Cir. 2007), which rejected a dilution cause of action by Louis Vuitton against the makers of “Chewy Vuitton” dog toys.

The following is the sum total of the court’s distinguishing of the instant case and the Louis Vuitton decision (emphasis added):
The [Louis Vuitton] court dismissed the plaintiff’s infringement and dilution claims; there was no mistaking the intentional, yet irreverent nature of the defendant’s miniature handbags. Id. at 260-61.
“It is a matter of common sense that the strength of a famous mark allows consumers immediately to perceive the target of the parody, while simultaneously allowing them to recognize the changes to the mark that make the parody funny or biting.” Id. at 261. Defendant’s “couch bar” may be funny, but it is not biting; its resemblance to Plaintiff’s famous trade dress is too muted to poke fun, yet too transparent to evoke a generic candy bar.
An important theme running through Louis Vuitton is that, while a parody may be nearly identical to the original in some respects, in others it is so different that no one could possibly mistake it for the real thing. Id. Defendant’s design is neither similar nor different enough to convey a satirical message.
So there is no mistaking that a dog toy that sells under the name “Chewy Vuitton” and made to look like (and yet obviously not be) a mini “Louis Vuitton” purse is so intentionally irreverent that it constitutes a parody – yet a sign on a furniture truck showing a brown couch emerging from a candy bar wrapper that looks somewhat like a Hershey candy bar wrapper is not irreverent? Surprisingly, the key appears to be "somewhat like a Hershey candy bar."

Basically, the court is saying that Art Van’s ad, while capturing an image that consumers would associate with Hershey’s trade dress, is not so strong enough that Art Van can claim it to be a parody of Hershey’s trade dress. The court uses the word “biting” although I’m not so sure I would call a “Chewy Vuitton” dog toy a “biting” parody (although I’m sure there are numerous dogs out there that find such toys quite “biting”).

While I’m not so sure I agree with the court’s decision that Art Van’s ad is not “biting” enough (i.e., neither similar nor different enough to convey a satirical message), the lesson learned is that if you are going to parody a famous mark, you had better make sure that you go all out to not only make an obvious association with the famous mark, but also to make an obvious disassociation with the famous mark.

Apparently, if you attempt to parody a Hershey bar, but it’s not clear enough that you are parodying an actual Hershey bar, then such ad, while apparently sufficient for dilution purposes with respect to such Hershey bar, is insufficient for parody purposes.

One wonders if the court would have decided the parody issue differently had the lettering more closely resembled the Hershey candy bar lettering (or even used a word like “Couchey’s” inpace of “Hershey's” and then “Fine Furniture” instead of “Milk Chocolate”) and had the color of the candy bar looked more like the famous dark brown color of a Hershey bar? What is the point where Art Van’s ad would have been intentionally irreverent enough to constitute a parody?