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 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 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 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 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 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 The Defendants also own the website, 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 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 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 to make out a prima facie case that the Defendants copied any part of the 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. 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.]