District Court Dismisses Tiffany’s Final Claim Against eBay

Tiffany & Co.’s last chance at any kind of legal claim against eBay, Inc. in the long-running contributory trademark infringement lawsuit between the parties arising from the alleged sale of counterfeit Tiffany goods on eBay’s auction website came to an end today when District Court Judge Richard Sullivan concluded that there was “insufficient evidence” to support the false advertising claim that remained after the Second Circuit Court of Appeals in April of this year affirmed (decision here) most of the District Court’s earlier decision (previously blogged here) in favor of eBay. See Tiffany (NJ) Inc. and Tiffany and Company v. eBay, Inc., Case, No. 04-cv-04607 (S.D.N.Y. September 13, 2010). A copy of the court’s order can be viewed here. New stories on the decision from Reuters, Bloomberg, and WSJ. For blog posts on the Second Circuit’s April 2010 decision dismissing nearly all of Tiffany’s claims, see Ron Coleman and Eric Goldman.

Vienna Beef Sues Chicago Restaurant for Counterfeiting and False Advertising

As much as I enjoy reading trademark infringement lawsuit complaints, even I will concede that they all pretty much read the same after a while – multiple paragraphs of factual allegations about trademark rights and infringing activities followed by paragraphs of causes of action (leave it to lawyers to take 20 pages to state what could probably be set forth in 5 pages and still be considered a sufficient “short and plain statement of a claim” for purposes of satisfying Rule 8). The lawsuit filed by Vienna Beef, Ltd. (“Vienna Beef”) against a Chicago restaurant, and its owner, Ferzi Emini, is no different. See Vienna Beef, Ltd. v. Freddy's Fast Food, Inc. et al, Case. No. 10-cv-04313 (N.D. Ill. July 12, 2010). (Complaint here).

Vienna Beef is the owner of the registered trademark for VIENNA BEEF for various items including frankfurters, wieners, and polish sausage. According to the complaint, the Defendants’ restaurant, Freddy's Fast Food (located at 5364 W. Gale Street, Chicago, Illinois 60630) serves hot dogs and polish sausages. A purported picture of the exterior of the Defendants’ Restaurant showing a large sign displaying the mark VIENNA BEEF was included as an exhibit to the complaint.

A Vienna Beef representative supposedly went to Defendants’ restaurant and observed that the restaurant was selling hot dogs and polish made by some other company (an unnamed Vienna Beef competitor).

Which leads to the one factual allegation in this complaint that stands out among the other routine allegations (and makes this complaint a little unusual). According to the complaint, when the Vienna Beef representative notified Mr. Emini that his use of the VIENNA BEEF mark was not proper because he was not selling Vienna Beef products and that he must either begin selling genuine Vienna Beef products or else take down the sign, Mr. Emni “wielded a weapon, chased Vienna Beef’s representative from Defendants’ Restaurant, and threatened Vienna Beef’s representative with death or bodily harm.” [ed.—hmm, I wonder what kind of weapon? A deadly Kielbasa perhaps?] Naturally preferring to avoid any further confrontation, Vienna Beef followed-up with a formal cease and desist letter the next day [ed.—no police report?]. Defendants apparently refused to comply, promptly Vienna Beef to file the instant action.

Vienna Beef maintains that Defendants, by promoting VIENNA BEEF and then selling hot dogs and polish sausages that are not genuine Vienna Beef products, are deceiving customers into believing that they are purchasing genuine VIENNA BEEF branded hot dogs and polish sausages, when, in fact, such customers are purchasing some other company’s brand of hot dogs and polish sausages.

Pepsi Loses Motion for Preliminary Injunction Against Coke’s Energy Drink Ads

I previously wrote (link here) about the false advertising lawsuit filed in U.S. District Court for the Southern District of New York by Stokely-Van Camp, Inc. (owned by Quaker Oats which is controlled by PepsiCo Inc.) – the maker of the Gatorade energy drink – against The Coca-Cola Co. and its energy drink division, Energy Brands Inc. , which makes the Powerade energy drink.

On Tuesday, a U.S. District Court denied Pepsi’s Motion for Preliminary Injunction after determining that Pepsi had not shown either a likelihood of irreparable injury or a likelihood of success on the merits. See Stokely-Van Camp, Inc. v. The Coca-Cola Company et al., Case No. 09-03741 (S.D.N.Y. August 4, 2009). A copy of the 54 page decision can be downloaded here. Reuters and Courthousenews both ran news coverage of the decision.

Pepsi came up with the idea for Gatorade ION+, its planned calcium-enriched sports drink formula with its “sweat-emulating reformulation,” when it learned of Coke’s Powerade's ION4 product that was coming to market. Unfortunately, Pepsi’s supply of calcium dried up and so Pepsi had to change its advertising to eliminate references to calcium and magnesium – something that Coke took advantage of in some comparative ads as part of its Powerade marketing campaign that sparked the lawsuit by Pepsi in the first place. The court noted that while Pepsi complains about Coke’s claims regarding the presence of calcium and magnesium in Powerade ION4, Pepsi had made virtually the same claims about its own Gatorade formula (before being forced by circumstances to eliminate such references). The court stated that Pepsi “cannot, having jumped on the bandwagon of calcium and magnesium first, now jump off and claim that Coca-cola must get off too.”

Of course, both sides have their own spin on the outcome. Coke described the decision as “a complete win” for its sports drink [ed. - leave it to PR people to turn a legal decision into a product endorsement]. On the other hand, Pepsi notes that Coke stopped its “disparaging claims” against Gatorade in its advertising (a campaign that Coke described as short-lived anyway) after the lawsuit was filed, so Pepsi feels that it accomplished what it set out to do [ed. – unless, of course, Coke decides to start the campaign back up again now that there is no threat of a preliminary injunction enjoining Coke from doing so].

Incorp Services Sues Nevada Corporate Services for False Advertising

I previously wrote (link here) regarding the lawsuit filed by Incorp Services, Inc., (“Incorp”), a corporate formation company which also offers registered agent services for business entities nationwide, against Legalzoom.com over some allegedly false statements being made by Legalzoom representatives about Incorp’s registered agent services. That case ultimately was settled by the parties.

On Friday, Incorp filed another action to fight against what it describes as false statements made by another competitor – Nevada Corporate Services, Inc. (“NCS”). See Incorp Services, Inc. v. Nevada Corporate Services, Inc., Case No. 09-cv-01300 (D. Nev. July 17, 2009). A copy of the complaint can be downloaded here.

Incorp claims that NCS sent out a letter in May to many of Incorp’s clients claiming that Incorp “may be discontinuing its services” and that such discontinuance of services may leave the client “vulnerable and at risk.” The letter supposedly included some criticisms about registered agent services and insinuating that such statements were about Incorp. Finally, the letter stated that Incorp’s clients may be “victimized by a lack of service and professionalism” by Incorp, that they may be “devastated by” and opened up to “strategic vulnerabilities” by Incorp’s failure to fulfill its statutory duties.

Incorp argues that NCS’s statements are false and defamatory, have caused Incorp immediate and irreparable harm, and were sent out knowingly, willfully, maliciously, and with the intent to harm Incorp. Incorp’s causes of action are for false advertising under 15 U.S.C. §1125(a) and defamation.

July 21, 2009 Update: Las Vegas Sun reporter Steve Green also reports (link here) on the lawsuit filing along with some interesting background regarding past litigation involving Incorp.

Incorp and Legalzoom Settle Trade Libel Lawsuit

I previous wrote (link here) about the lawsuit filed by Incorp Services, Inc., (“Incorp”), a company that helps parties form corporations and other business entities throughout the United States and which also offers registered agent services for business entities nationwide, filed a lawsuit against Legalzoom.com, Inc. (“Legalzoom”), the “document preparation” company that also helps interested parties form corporations and other business entities. See Incorp Services, Inc., v. Legalzoom.com, Inc., Case No. 09-cv-00273 (D. Nev.).

Incorp alleged that customers who formed business entities through Legalzoom and who wanted to use Incorp as their registered agent had been told by LegalZoom’s representatives that Incorp “is not in good standing” with several states, that Incorp “cannot be used” as a registered agent; that InCorp is “not licensed to do business in” certain states: that Incorp “cannot legally do business in” certain states; that InCorp is “not legal” in certain states; and other similar statements – all of which Incorp maintained are false given its good standing status in all fifty states and the District of Columbia.

On May 27, 2009, the parties notified the court that the dispute had been resolved. A stipulation for dismissal with prejudice was filed with the court on June 2, 2009. No terms of the settlement were disclosed. Both sides will bear their own attorneys fees and costs.

PepsiCo Sues Coca-Cola For False Advertising Over Energy Drink Campaign

Another Pepsi v. Coke battle

(Photo Credit: USA George)

Reuters and Dow Jones reported today on the false advertising lawsuit filed in U.S. District Court for the Southern District of New York by Stokely-Van Camp, Inc. (owned by Quaker Oats which is controlled by PepsiCo Inc.) – the maker of the Gatorade energy drink – against Coca-Cola Co. and its energy drink division, Energy Brands Inc.

The crux of the suit is Coke's recent ad campaign for its Powerade ION4 sports drink which showed pictures of Pepsi’s Gatorade drink with the phrase "Don't settle for an incomplete sports drink".

Apparently, Coke’s advertising also makes the claim that Gatorade is "missing two electrolytes" – calcium and magnesium – that are found in Powerade. According to the complaint, the trace amounts of calcium and magnesium found in Powerade are so minute that it really has no nutritional benefit.

Pepsi’s causes of action are for false advertising, unfair competition, trademark dilution, deceptive trade practices, and injury to business reputation.

Is "The Good Guy" the next "Heavy Hitter"?

There’s a new personal injury lawyer in town (or at least a new one advertising on TV) . . . Sam Harding (pictured above -- complete with cowboy hat).

You know times must be tough … even for lawyers…based on the amount of lawyer ads running on TV these days -- or perhaps it is an indication that TV stations have lowered their ad rates for TV commercials to such a level that such advertisements are now more cost effective for attorneys, but I digress.

Anyway, I got a smile when I saw Mr. Harding’s TV commercial the other night (which you can see on his website http://www.lvjustice.com/). He promotes himself as “The Good Guy” – and even has a TM next to the phrase (pictured above). While it would be more accurate to use SM instead of TM since Mr. Harding is using the phrase in connection with the sale of services and not goods, Mr. Harding is a personal injury lawyer, not a trademark lawyer, so I’ll give him a pass on that. However, I’m not so sure about the actual mark “The Good Guy.”

When lawyers in Las Vegas think about advertisements using a catchphrase that begins with “The,” most of us immediately think of “The Heavy Hitter” . . . excuse me, “Heavy Hitter” Glen Lerner. Described in my prior blog post here, Lerner once had a run in with the State Bar of Nevada over his use of “The Heavy Hitter.” Sometime in 2001, Lerner began promoting himself as “The Heavy Hitter” in connection with his legal services. While the ad campaign grabbed the attention of the Las Vegas public (indeed, I think most people still describe Lerner as “The Heavy Hitter” although they’ll say it with a grin), it also got the attention of the State Bar of Nevada, who told Lerner that calling himself “The” Heavy Hitter was false and misleading because it’s a statement that he is the only heavy hitter. Instead, the Nevada Bar told Lerner that he could only be “a” heavy hitter. Click here for a Las Vegas Review Journal article on the “heavy hitter” dispute between Lerner and the State Bar of Nevada.

(I'm sure Lerner considers himself a Good Guy too)?

Which begs the question – is Sam Harding calling himself “The” Good Guy false and misleading because it’s a statement that he is the only good guy? Of course, I know several people who would argue that any lawyer using the phrase “Good Guy” in connection with their services is false and misleading, but that’s another issue.

The Nevada Supreme Court changed its rules on attorney advertising back in 2007 (click here for article on the change). On the one hand, the rules were relaxed to no longer prohibit advertising that was been considered “bad taste” in the past. On the other hand, the Nevada Supreme Court also implemented a much stricter requirement that attorneys submit copies of their ads to the State Bar for review within 15 days after publication or broadcast – and if the Bar deems an ad to be inaccurate or misleading, then it must be pulled.

So assuming that Harding followed Supreme Court Rules and submitted his ad, then, depending on how long ago it was submitted, there is a chance that the ad may have already been reviewed and deemed suitable by the State Bar.

So if Harding can call himself “The Good Guy,” does that mean that Lerner can finally go back to calling himself “The Heavy Hitter”? Assuming, of course, that Lerner can overcome the trademark infringement battle in which he is currently embroiled over his use of the “Heavy Hitter” mark (discussed in my prior blog post here).

Incorp Services Sues Legalzoom Over False Statements

This lawsuit is a little stale in the blogging world (filed about a month ago), but since it doesn’t seem to have gotten much press anywhere and it involves three of my favorite things (Nevada, business formation, and trademark law), I could not help but give it a passing mention.

On February 10, 2009, Incorp Services, Inc., (“Incorp”) a company that helps parties form corporations and other business entities throughout the United States and which also offers registered agent services for business entities nationwide, filed a lawsuit against Legalzoom.com, Inc. (“Legalzoom”), the “document preparation” company that also helps interested parties form corporations and other business entities, in the U.S. District Court for the District of Nevada. See Incorp Services, Inc., v. Legalzoom.com, Inc., Case No. 09-cv-00273 (D. Nev.). A copy of the complaint can be downloaded here.

Incorp alleges that since at least 2008, customers who have formed business entities through Legalzoom and who wanted to use Incorp as their registered agent have been told by LegalZoom’s telephone representatives that Incorp “is not in good standing” with several states, that Incorp “cannot be used” as a registered agent; that InCorp is “not licensed to do business in” certain states: that Incorp “cannot legally do business in” certain states; that InCorp is “not legal” in certain states; and other similar statements – all of which Incorp asserts are false given its good standing status in all fifty states and the District of Columbia.

Incorp’s causes of action are for “trade libel” under 15 U.S.C. 1125(a)(1)(B) (i.e., misrepresenting the qualities of Incorp’s services and commercial activities), defamation, and deceptive trade practices under Nevada law (N.R.S. § 598.0915). Incorp seeks injunctive relief along with a retraction from Legalzoom as well as compensatory and punitive damages, costs, and attorneys fees.

Query: I don’t suppose Legalzoom’s “document preparation” services covers preparing an Answer to this complaint.

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.

Eleventh Circuit Decision Highlights Importance of Expeditious Prosecution of Trademark Applications

Rebecca Tushnet’s 43(B)log has a good summary (link here) of the Eleventh Circuit Court of Appeals decision in Natural Answers, Inc. v. SmithKline Beecham Corp., Case No. 06-15084 (11th Cir. June 13, 2008) affirming a lower court’s decision granting summary judgment in favor of SmithKline Beecham, the maker of a stop-smoking lozenge named Commit Lozenges, and rejecting trademark infringement and false advertising claims brought by Natural Answers, which at one time sold a stop-smoking lozenge under the name HERBAQUIT.

The case demonstrates once again the importance of obtaining federal registration for trademarks and service marks early and expeditiously. Here, Natural Answers’ case was hurt in part because it had not followed through with its two trademark applications for the marks HERBAQUIT and HERBAQUIT LOZENGES (both for dietary supplements). The court’s opinion notes that neither of these federal trademark applications were approved, which left Natural Answers with the uphill task of having to prove common law trademark rights

What is strange is that if you look more closely at the actual prosecution history of the applications, both of the applications did receive notices of allowances from the PTO. However, because both were filed as Section 1(b) intent-to-use applications, the marks could not be registered until Natural Answers submitted specimens of use.

The HERBAQUIT mark was allowed February 29, 2000. Natural Answers filed a statement of use on August 29, 2000 (the last day without requesting an extension of time). Unfortunately, the statement of use was defective and the case went abandoned because Natural Answers did not file an extension of time to file a statement of use, which it could have done even though a statement of use was filed (lesson to be learned -- better safe than sorry).

According to the court’s decision, HerbaQuit Lozenges entered the market in January 2000 and were sold by Natural Answers in drugstores, supermarkets, convenience stores, and over the Internet. If this indeed was the case, one wonders how come Natural Answers was unable to provide a specimen of use in March 2000 promptly after the notice of allowance was issued.

A similar question is raised for the HERBAQUIT LOZENGES mark, which was allowed September 5, 2000. The application was abandoned about a year later when no statement of use was ever filed. However, according to the court’s decision, Natural Answers did not discontinue selling its HerbaQuit Lozenges until March 2002. Again, one wonders why Natural Answers was unable to provide a specimen of use in September 2000 promptly after the notice of allowance was issued.

Would having registrations had made a difference in the outcome of the case? Probably not given the evidence of abandonment, which would have been just as relevant had Natural Answers actually obtained registrations for its marks. Nonetheless, the court does suggest in dicta that actual registrations might have been an additional factor which would have favored Natural Answers (“On this record, it is undisputed that the HERBAQUIT LOZENGES mark (which has never been registered) has not been used in commerce since, at the latest, March 2002.”). Instead, the fact that Natural Answers allowed both applications to go abandoned only reinforced the notion that Natural Answers intended to abandon use of the marks.

Las Vegas Creator of HAREM BODY CHAINS Files Trademark Infringement Lawsuit Against eBay Competitor

On March 4, 2008, Trinity's Jewelry LLC filed a trademark infringement lawsuit in the U.S. District Court for the District of Nevada against Inquisition Tattoo, Inc. and its husband and wife owners, Tatiana Metaxa (aka Tatiana Eivin or Tatiana Metaxa-Rosenfeld) and Michael Metaxa (collectively, the "defendants"). See Trinity's Jewelry LLC v. Inquisition Tatto, Inc. et al, Case No. 08-cv-00273 (D. Nev. March 4, 2008). A copy of the complaint (excluding exhibits due to the large number of exhibits and my limited blogging budget) can be downloaded here.

In the summer of 2003, Lori Jeanne Foell started making and selling her own style of body chains under the business name Trinity’s Jewelry. She sells one line of her body chains under the marks HAREM and HAREM BODY CHAINS through her website http://www.trinitysjewelry.com/ and http://www.harembodychains.com/. On March 15, 2007, Foell filed a federal trademark application for the mark HAREM BODY CHAINS ("body chains" disclaimed) for jewelry chains (claiming first use in commerce on September 1, 2003). The mark was subsequently registered on November 13, 2007.

On January 25, 2008, Foell organized Trinity's Jewelry LLC ("TJ"), and assigned all of her right, title and interest in and to the Trinity’s Jewelry business to TJ. On January 30, 2008, TJ filed a second federal trademark application for the mark HAREM for jewelry (claiming the same first use in commerce date of September 1, 2003). That application is currently pending. On February 14, 2008, Foell executed a Nunc Pro Tunc assignment of the HAREM BODY CHAINS trademark registration to TJ, which was recorded by the USPTO on February 28, 2008.

Defendants, under the eBay username "inquisition-tattoo," operate the online eBay store "Sexy Naughty Crotchless." According to the complaint, the defendants are using TJ’s HAREM mark to sell its own body chains through the defendants’ eBay store, website, and MySpace page, including using the HAREM mark in the title of its body chain eBay listings and displaying the HAREM mark on several other pages in combination with other various words serving as search engine "keywords."

Without the benefit of actually reviewing the multitude of exhibits attached to the complaint, one can glean from a quick search of defendants’ eBay store and some pending auctions for body chains that they do use the word "harem" in numerous places in connection with body chains:

"exotic dancer harem chain"
"harem neck to waist chains"
"Full Body HAREM Belly Chain Figaro 925 Silver sep SEXY"
"That makes this harem chain so sensual"
"This beautiful harem belly chain is totally adjustable, one size fits all."
"Looking for ultimate HAREM belly chain which will include ALL IN ONE?"

On December 22, 2007, TJ sent a cease and desist letter to defendants. Defendants promptly responded by claiming that they were not infringing TJ’s marks because they use the word Harem in different combinations of words that do not overlap with TJ’s registered mark HAREM BODY CHAINS. Defendants’ counsel wrote to TJ on January 4, 2008, attempting to argue that the defendants are justified in using the name HAREM as they do based on an alleged prior third party use of the term to identify body chains by someone identified as "Strangeblades," which also has a web page devoted to selling various "harem chains" (along with the claim "Harem Body Chains™ is a trademark name for Strangeblades & More exclusive designs first published by December 2002.") TJ maintains that Strangeblades assertion of superior rights is without basis.

TJ’s first cause of action alleges willful infringement of TJ’s federally registered mark in violation of §32 of the Lanham Act (15 U.S.C. §1114) and willful use of TJ’s marks as a false designation or origin and false and misleading representation of fact in violation of §43(a) of the Lanham Act (15 U.S.C. §1125(a)(1)(A)). The complaint alleges that defendants’ are using TJ’s HAREM mark on similar goods (body chains) sold to similar customers ("women seeking accessories that will make them more attractive to male partners") through similar marketing channels (online) with the intent of deceiving and misleading consumers and wrongfully trading on TJ’s goodwill and reputation.

TJ argues that the defendants’ use of TJ’s marks allows the defendants to take advantage of and benefit from TJ’s name and reputation in order to create confusion and divert sales from TJ by offering similar-looking lesser-quality body chains at much cheaper prices. The complaint cites several examples of similar jewelry sold by the defendants at a fraction of TJ’s price (e.g., a body chain that would sell for $179 by TJ sells for $49 by the defendants).

TJ seeks injunctive relief to stop the defendants from using the mark "harem" in connection with jewelry as well as actual damages, treble damages, costs and attorney’s fee.

TJ’s second cause of action alleges false advertising by the defendants in violation of §43(a)(1)(B) of the Lanham Act (15 U.S.C. §1125(a)(1)(B) (for misleading representation of fact in the defendants’ promotion of its goods misrepresenting the nature, characteristics, and qualities of their goods).

TJ argues that the defendants regularly advertise their body chain jewelry as "solid gold" or "solid silver" when in fact such items are actually gold-plated or silver-plated. The defendants allegedly use such descriptions as "SOLID 18K GOLD Gep Full Body Bell Chain Chains HOT" and "Solid 925 SILVER sep Full Body Belly Chain chains Eros." TJ argues that such descriptions are false and misleading because the goods are not solid gold or silver, but rather gold or silver electroplated. The defendants use the little-known abbreviations "gep" (for gold electroplating) and "sep" (for silver electroplating) in the titles of their product offerings. However, TJ argues that the abbreviations are typically presented in lower case lettering (along with the description of the product) in stark contrast to the ALL UPPERCASE description of SOLID 18K GOLD or Solid 925 SILVER, which makes the gep/sep abbreviations appear to be associated with the product description and not the gold/silver description. In addition, TJ argues that the defendants mislead consumers by directly contradicting the gep/sep abbreviations by using the qualifiers "SOLID" "18K GOLD" and "925 SILVER."

TJ maintains that such misleading advertising harms TJ’s sales and damages TJ’s reputation by making TJ’s truthfully advertised goods appear overpriced compared to the defendant’s cheap, but deceptively advertised goods. TJ seeks injunctive relief to stop the defendants from such false and misleading advertising as well as actual damages, treble damages, costs and attorney’s fee.

Harry Potter and the Trademark Infringement Lawsuit

I’m a few days late on this one because most published reports about the lawsuit have focused on the copyright infringement aspect of the case with little publicity about the accompanying trademark infringement allegations.

On October 31, 2007, J.K. Rowling (author of the widely popular Harry Potter series of books) along with Warner Brothers Entertainment Inc. (the producer of the Harry Potter movies) filed a lawsuit in U.S. District Court for the Southern District of New York against RDR Books (“RDR”), a book publisher, and John Does 1-10 for copyright and trademark infringement. See Warner Bros. Entertainment Inc. et al v. RDR Books et al, Case No. 1:2007-cv-09667 (S.D.N.Y.). A copy of the complaint can be downloaded here.

At issue is RDR’s plan to publish a 400 page book entitled the “Harry Potter Lexicon” which is apparently just a print version of the free-of-charge Harry Potter Lexicon fan website website (http://www.hp-lexicon.org/). The book is scheduled to be released in the United Kingdom on or about November 5, 2007, and in the United States on November 28, 2007. The author is Steve Vander Ark, the editor of the Harry Potter Lexicon fan website and a noted librarian of all things Harry Potter (even Rowling herself has admitted to occasionally perusing the website to check a fact while writing her books).

Despite the fan website having Rowling’s explicit endorsement, this repackaging of the website’s contents from a free website into a commercial book apparently goes against Rowling’s own plans to publish her own Harry Potter companion book, the proceeds of which would be donated to charity (as she has done with two other such companion books).

Much of the complaint is spent educating about the history of the Harry Potter books. (I can now say that I know what a Quidditch is.) The complaint also details the back and forth communications between Plaintiffs’ counsel and RDR over the pending publication of the book leading up to the filing of the lawsuit.

On September 18, 2007, counsel for Plaintiffs sent a cease and desist letter to RDR citing two federal court cases where companion books were found to be copyright infringement. RDR did not respond other than to indicate its own legal counsel was reviewing the issues raised. In an interesting turn, however, on October 11, 2007, RDR sent its own cease and desist letter to Warner Bros. claiming that a timeline appearing on some of the Harry Potter DVDs infringes on the copyrighted content of the Lexicon website.

While the complaint’s main count is the copyright infringement allegations, Plaintiffs also wield their magic trademarks to help fight this dastardly battle against the evil RDR. The complaint cites to the fact that, pursuant to an agreement between Warner Bros. and Rowling, Warner Bros. holds over 15 federal trademark registrations for the HARRY POTTER mark (along with several other registrations and pending applications based on the various titles of the Harry Potter books). The two most relevant registrations are Reg. Nos. 2,450,788 (word mark) and 2,685,932 (stylized), both for “Printed matter and paper goods” which covers books featuring characters from animated, action adventure, comedy and/or drama features, comic books, and children's books.

Plaintiffs allege Section 32(1) federal trademark infringement (15 USC §1114(1)) against RDR’s use of Plaintiff’s registered HARRY POTTER marks in connection with the sale of the Lexicon book. Plaintiffs further allege that RDR’s book, through its use of the HARRY POTTER marks and lack of adequate disclaimer, will create a likelihood of confusion as to the affiliation, connection, association, origin, source, and sponsorship of the book (amounting to Section 43(a) unfair competition and false designation of origin (15 USC §1125(a)(1)(A)) as well as a likelihood of confusion as to the nature, characteristics and qualities of the book (amounting to Section 43(a) false advertising (15 USC §1125(a)(1)(B))).

The complaint also includes allegations of deceptive trade practices under New York General Business Law §349 (New York Deceptive Trade Practices Act) and unfair competition under New York common law. Finally, Plaintiffs seek a declaratory judgment regarding Defendant’s allegations of copyright infringement over the timeline that Plaintiff Warner Bros. included in DVD versions of several Harry Potter films. The complaint requests a permanent injunction against RDR, actual damages, statutory damages (for the copyright infringement claim), treble damages, costs and attorneys fees.

It is interesting that the Plaintiffs explicitly state in the complaint that “Plaintiffs intend to donate any monetary award that may result from Defendant’s activities prior to an injunction being entered to charity.” This may be a preemptive measure on the part of Rowling and Warner Bros. to assuage any negative publicity arising from the lawsuit from fans who might be alienated by the impression of the big bad evil wizards (Rowling and Warner Bros.) going after a loyal Harry Potter fan.

If you are interested in commentary on the copyright aspects of the lawsuit, I recommend Prof. William Patry’s post (link here) on “The Patry Copyright Blog” as well as the comments by Sharmil McKee at the McKee Law Office Small Business Blog (link here).

As for the trademark aspects of the lawsuit, in addition to a fair use defense, which will also be claimed as part of RDR’s defense to the copyright infringement allegations, I would suspect RDR to claim laches on the part of the Plaintiffs who not only allowed the Lexicon website to use the HARRY POTTER marks in the same way that the alleged Lexicon book likely will, but also endorsed such use,

How effective a fair use defense may be will depend on the extent to which RDR attempts to prevent any likelihood of confusion (through a disclaimer on the cover, etc.). The complaint’s allegations that no such disclaimer will be on the cover of the book was based on information and believe since RDR apparently did not provide Plaintiffs with a copy of the book or its cover before the complaint was filed.

Regardless of where this case ends up, one wonders if Dumbledore would be happy or upset that this lawsuit has taken away from the media coverage surrounding the recent revelation by Rowling of his sexual orientation.