Planet Hollywood sues to stop local Las Vegas music band from using the name SUNSET STRIP

On April 16, 2008, OpBiz, LLC (“OpBiz”), the owner and operator of the Planet Hollywood Resort & Casino (“Planet Hollywood”) in Las Vegas, filed a trademark infringement lawsuit in the U.S. District Court for the District of Nevada against The Production Group, LLC (“TPG”) and its managing member, Glenn Medas, and Shay/Chambers, LLC d/b/a M/C Productions (“MC Productions”) and its managing member David Michael Chambers. See OpBiz, LLC v. Production Group, LLC et al, Case No. 08-cv-00482 (D. Nev. April 16, 2008). A copy of the complaint can be downloaded here.

The mark at issue is the name SUNSET STRIP for use by a live musical band.

OpBiz purchased the formerly bankrupt Aladdin Hotel and Casino in 2004 and began rebranding the entire hotel using the Planet Hollywood name. As part of this effort, OpBiz began developing ideas for the type of entertainment that would be offered in connection with the hotel under its new Planet Hollywood identity.

Sometime in early 2005, a decision was made for the hotel to have its own house band that would “symbolize the PLANET HOLLYWOOD brand – a high-energy, live music and entertainment group performing within the Planet Hollywood property.” OpBiz, supposedly in consultation with Defendants Medas and Chambers and after a clearance search was performed, chose to name this house band “The Sunset Strip Band.”

According to the complaint, OpBiz planned to use THE SUNSET STRIP BAND as a mark designating Planet Hollywood’s ubiquitous house band – and not meant as the name of a specific band. In correspondence between OpBiz and the Defendants, however, the Defendants claim that name was always meant to be for this specific band.

OpBiz hired the Defendants (TPG and MC Productions are in the business of staffing entertainers for various venues) to assemble a music band and dance group for THE SUNSET STRIP BAND, which had its first performance at Planet Hollywood on August 22, 2005.

The complaint notes the Defendants provided the performers and was in charge of what songs, music, and dance would be performed, but that OpBiz “controlled the overall production, including lighting, sound, and final approval on overall style and content.”

On September 28, 2005, OpBiz filed a Nevada state trademark application for the mark THE SUNSET STRIP BAND for “entertainment services rendered by a musical group.” On October 8, 2005, OpBiz filed a federal trademark application for the mark THE SUNSET STRIP BAND (“band” disclaimed) for “entertainment, namely live performances by a musical band.” The mark was registered on January 1, 2007.

The complaint asserts that OpBiz has spent “several hundred thousand dollars” promoting its entertainment services offered under its mark THE SUNSET STRIP BAND in print and broadcast media as well as online through its websites and that consumers have come to recognize Planet Hollywood as the source of the entertainment services offered under the name THE SUNSET STRIP BAND.

From August 2005 to June 2006, Defendants' performers performed regularly at the Planet Hollywood until supposedly they were notified that OpBiz was “temporarily discontinuing performances” while the venue where the band performed was being renovated. OpBiz acknowledges that it is not currently performing any entertainment services under the mark THE SUNSET STRIP BAND, but that it does have a “bona fide intent” to resume use after the renovations are completed.

According to the complaint, sometime in July 2006, Medas asked OpBiz for permission to use the name THE SUNSET STRIP BAND outside of Planet Hollywood for a period of six months so that Medas could help his performers finding another “gig.” Supposedly, OpBiz verbally agreed to such use and sent a written memo confirming such (although a copy of such memo cannot currently be found).

OpBiz maintains that the Defendants continued to use the mark in connection with a musical band and dance group long after the six months had expired. The Defendants registered the domain name http://www.sunsetstriplasvegas.com/ in April 2006, but subsequently linked the domain to a website with information about Defendants' music and dance group. The Defendants continue to promote their group on TPG’s website and MC Productions’ website and have offered their services under the mark to other Las Vegas hotels.

On June 15, 2007, TPG filed its own Nevada service mark application for the mark SUNSET STRIP for “entertainment services, namely performers[sic] by singers, dancers, & musicians & related miscellaneous product[sic] and merchandise" and claiming first use date of August 15, 2005 (7 days prior to OpBiz's claimed first use date).

OpBiz contacted the Defendants on several occasions to demand that the Defendants stop using the SUNSET STRIP name and to cancel its Nevada state service mark. OpBiz contacted Medas by phone on June 22, 2007 and by letter three times (July 18, 2007, September 25, 2008, and October 16, 2007). Medas supposedly ignored the first three contacts, but responded to the October letter asking for OpBiz’s “authority” for its demands – and also mentioning that the name of the group was always SUNSET STRIP and always intended as the name of the group.

When OpBiz provided copies of its federal and state registrations, Medas, on April 3, 2008, responded by denying any infringement and maintained that there was no likelihood of confusion between OpBiz’s THE SUNSET STRIP BAND and its mark SUNSET STRIP.

The Defendants, under the name SUNSET STRIP (pictured below), are currently performing at the Las Vegas Hilton hotel and casino (link here), having secured a long-term contract to provide its musical entertainment services. See also here and here.

OpBiz’s causes of actions are for federal trademark infringement, false advertising, unfair competition/false designation of origin, cybersquatting, trademark infringement and deceptive trade practices under Nevada law, common law trademark infringement, and intentional interference with prospective economic advantage.

OpBiz seeks a preliminary and permanent injunction against the Defendants to stop them from performing under the name SUNSET STRIP and from registering any more domain names with the mark SUNSET STRIP (and ordering the transfer to OpBiz of sunsetstriplasvegas.com domain name). OpBiz also seeks cancellation of TPG’s Nevada State service mark registration, a disgorgement of profits earned by the Defendants for any performances using the SUNSET STRIP mark, the usual damages (compensatory, consequential, statutory, and punitive damages) as well as interest, costs, and attorneys' fees.

The "Sunset Strip" performers

Vegas™Esq Comments:
Noticeably missing from the exhibits attached to the complaint is any type of agreement between OpBiz and both TPG and MC Productions memorializing the understandings of the parties back when the Defendants were first hired by OpBiz to help develop the show. Such agreement might also show what kind of understanding there was with respect to OpBiz’s promotion of the show.

One must always remember that a trademark registration, unless incontestable, is just “prima facie” evidence of the registrant’s ownership of the mark and registrant’s exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the certificate (see §7(b) of the Lanham Act, 15 U.S.C. §1057(b)). As such, a defendant faced with allegations of trademark infringement, but armed with some contradictory evidence to suggest that the registrant might not be the owner of the mark nor have the exclusive right to use the mark, has a fighting chance against such allegations.

One can imagine Medas and Chambers coming back with a different story that they were hired to come up with a band and worked with OpBiz executives to come up with a name for the ban that OpBiz felt was consistent with the Planet Hollywood brand and which also would not infringe any other trademark (thus the clearance search by OpBiz) – but with an understanding among the parties that the name was for Defendants' specific band, and not a Planet Hollywood house band as the complaint alleges.

Also curious is that OpBiz waited several weeks until after the first use of the name to apply to register the mark. If OpBiz was serious about using that name as a mark for a Planet Hollywood house band, why did it not file a Section 1(b) intent-to-use application right away? Perhaps because OpBiz did not think to even claim any ownership rights to the name at that time – and only after recognizing the popularity of the band that had been created by the Defendants did it seek to claim the exclusive right to that name.

Of course, to the extent that Medas claims that the name was always meant to be for Defendants’ band, evidence that Medas asked for permission to use the name following June 2006 could be quite detriment to the Defendants’ position. However, as the complaint acknowledges, there is no evidence of such “verbal agreement” yet (and the OpBiz executive who supposedly gave the consent to use the name is not even identified in the complaint). And if that purported memorandum is never found, then it will be a case of who do you believe between Medas and whomever Medas supposedly received permission from at OpBiz.

What’s in a name? Ask Roscoe and Patsy.

It was quite a week for restaurant name trademark disputes.

Earlier this week, I wrote (link here) about a North Carolina pancake house that was doing business under the name “It’s Hop’n” that was sued for trademark infringement by IHOP

On Thursday, the big story (here and here) was about the Los Angeles-based chicken and waffles chain “Roscoe's House of Chicken 'n Waffles” (“Roscoe’s”) The restaurant chain filed a trademark infringement lawsuit against the owner of “Rosscoe's House of Chicken and Waffles” (“Rosscoe’s”) in Chicago (two “S”’s and the word “and” instead of an ampersand), for infringement of its service mark ROSCOE'S HOUSE OF CHICKEN N WAFFLES (pictured below). See East Coast Foods, Inc. v. VFJ Enterprises, Inc. et al, Case No. 08-cv-01990 (N.D. Ill. April 8, 2008).

At the court’s hearing on Roscoe’s motion for a temporary restraining order, it was announced that the parties had reached an agreement as to a temporary restraining order. Rosscoe’s agreed to remove the name from all signs and menus by next Wednesday and change the name to Chicago's House of Chicken and Waffles. Meanwhile, attorneys for Roscoe's are indicating that they still plan to seek damages for Rosscoe’s infringement of its trademark. At the conclusion of the hearing, U.S. District Judge Samuel Der-Yeghiayan was quoted as saying: "I see that both parties understand the issues and facts of life and none of the parties are waffling on the issue."

One interesting aspect of the case is that Roscoe's apparently allowed Rosscoe's to operate a “Rosscoe's House of Chicken and Waffles” in New York for eight years without any claims of infringement. Roscoe's founder and long-time owner, Herb Hudson, was quoted as saying that he had no plans to expand to the New York market, and thus did not have a problem with the New York Rosscoe’s. But Hudson did have plans to open in Chicago next year, thus the reason behind the lawsuit to stop Rosscoe's this time.

One wonders whether Roscoe's considered the consequences of not enforcing its trademark rights throughout the entire U.S. Roscoe's lack of enforcement with respect to a confusingly similar mark in New York ultimately diminishes the ability of the mark to serve as a unique source identifier, and thus it value as a service mark. The story below demonstrates what can happen to a prior user’s trademark rights when an owner does not take steps to vigorously enforce such rights.

The dueling "Patsy's"

On Friday, the trademark news story of the day (link here) was about a jury verdict in an ongoing trademark battle in the New York city area over the name “Patsy’s” between Patsy's Italian Restaurant and Patsy's Pizzeria (background articles here, here, here, and here). Patsy's Italian Restaurant filed this particular trademark infringement lawsuit against the owners of Patsy's Pizzeria in October 2006. See Patsy's Italian Restaurant, Inc. v. Banas et al, Case No. 06-cv-05857 (E.D.N.Y. October 30, 2006).

Patsy's Italian Restaurant, located in Manhattan's theater district, was founded in 1944 by Pasquale "Patsy" Scognamillo and claims to have been patronized by celebrities from Frank Sinatra and Tony Bennett to Jennifer Lopez and George Clooney. Patsy's Pizzeria, on the other hand, opened up in Syosset, New York in 2006, after obtaining a license to use the name from the owner of the original Patsy's Pizzeria located in East Harlem which was founded in 1933 by Patsy Lancieri. In 1991, Lancieri's widow sold Patsy's Pizzeria, and the new owner soon after began expanding the pizzeria chain to six locations in Manhattan, one in Long Island, and then to Syosset.

While the jury found that there was a likelihood of confusion between the two restaurant names, the court did not yet order an injunction stopping Patsy's Pizzeria from using the name nor has the issue of damages been determined. A hearing on Patsy's Italian Restaurant’s request for injunctive relief is set for sometime in August.

This dispute between the two “Patsy’s” restaurants goes back almost ten years, and has quite an interesting procedural posture both in federal court and at the Trademark Trial and Appeal Board (“TTAB”). For a detailed background on one part of the dispute, read the published decision Patsy’s Brand, Inc. v. I.O.B. Realty, Inc., 317 F.3d 209, 65 USPQ2d 1442 (2d Cir. 2003).

The two businesses coexisted for nearly half a century. In 1993, the owners of Patsy's Italian Restaurant decided to begin selling pasta sauces in jars for retail distribution and formed Patsy's Brand Inc. (“PBI”), which filed an intent-to-use application to register its mark PATSY’S PR SINCE 1944 (stylized) for sauces. The mark was registered January 17, 1995 (with Patsy’s claiming first use in February 1994). Meanwhile, Patsy’s Pizzeria, through I.O.B. Realty, Inc. (“IOB”), had received two registrations for the marks PATSY’S and PATSY’S PIZZERIA (both for restaurant services) registered in May 21, 1996 and December 29, 1998, respectively.

On October 9, 1998, IOB filed a petition to cancel PBI’s registration for sauces alleging likelihood of confusion over its registrations. See I.O.B. Realty, Inc. v. Patsy's Brand, Inc., Cancellation No. 92028142 (TTAB October 9, 1998). Not only did PBI deny the allegations and assert the affirmative defense of estoppel, laches, and acquiescence, PBI turned around and filed its own petition to cancel IOB’s two registrations based on likelihood of confusion over its registered mark as well as fraud on the part of IOB. See Patsy's Brand, Inc. v. I.O.B. Realty, Inc., Cancellation No. 92029614 (TTAB October 28, 1999).

Theses cancellation proceedings were suspended sua sponte by the TTAB on June 21, 2000, when the TTAB was informed of a lawsuit filed by PBI on September 30, 1999 in the U.S. District Court for the Southern District of New York, alleging inter alia, trademark infringement, seeking cancellation of IOB’s registered mark PATSY’S, and seeking an order withdrawing IOB’s cancellation petition. See Patsy's Italian Restaurant, Inc. v. IOB Realty et al, Case No. 99-cv-10175 (JSM) (S.D.N.Y.). The district court in that case granted PBI’s motion for summary judgment, finding infringement, entered an injunction, and ordered the PTO to cancel IOB’s PATSY’S registration.

On appeal to the Second Circuit, the court affirmed the district court’s decision regarding likelihood of confusion. The court also held that while IOB may have originally had priority with respect to the name PATSY’S, its long-standing tolerance of the use by Patsy’s Italian Restaurant prevented IOB from stopping Patsy’s Italian Restaurant from using the name for restaurant services. Because the parties’ rights to use the PATSY’S name for restaurant services was equal, IOB had no grounds for objecting to Patsy’s Italian Restaurant's expansion into the “related market” for sauces. The Court of Appeals, however, did find the district court exceeded the scope of the litigation by restricting IOB’s use of the mark PATSY’S in connection with restaurant services and modified the district court’s injunction to remove the order to the PTO to cancel IOB’s PATSY’S registration.

Unfortunately, PBI, soon after the district court’s decision but before IOB had filed its appeal, filed a motion with the TTAB on October 18, 2001, to resume the cancellation proceeding. PBI did not notify the TTAB of IOB’s appeal to the Second Circuit. Because IOB did not file a response to PBI’s motion, the TTAB granted PBI's motion and granted PBI's petition to cancel IOB’s PATSY’S registration and dimissed with prejudice IOB’s cancellation proceeding against PBI.

On March 28, 2003, the TTAB sua sponte issued an order to IOB to show cause why judgment should not be entered against IOB on the PATSY’S PIZZERIA registration, which was also part of PBI’s original cancellation petition. By this time, the Second Circuit decision had been rendered, and IOB informed the TTAB of the decision by the Court of Appeals reversing the district court’s order to cancel IOB’s registration. PBI continued to maintain that IOB’s registrations should be canceled because IOB “had lost interest” and because of IOB’s false statement that it had exclusive right to use the mark, when the Second Circuit had held that both parties have an equal claim to the name.

Unfortunately for IOB, on May 27, 2003, the Commissioner for Trademarks went ahead and ordered the cancellation of both of IOB’s registrations because the TTAB had erroneously prepared and forwarded an order for the Commissioner to sign – even though the TTAB’s original order did not formally order IOB’s PATSY’S PIZZERIA registration to be canceled.

Further complicating matters is that when PBI filed its lawsuit against IOB, PBI also filed a new application to register the mark PATSY’S PR (stylized) for restaurant services and for PATSY’S (for restaurant services not including pizza). While these applications were at first rejected as likely to be confused with IOB’s registrations, when those registrations were prematurely canceled, the PTO withdrew its rejections and allowed PBI’s marks to be published and subsequently registered on November 1, 2005.

On that same day, IOB filed another application to register the mark PATSY’S PIZZERIA for (restaurant services, namely, take-out restaurant services). That application was rejected by the PTO on grounds of likelihood of confusion over the above two registrations held by PBI for restaurant services as well as two additional pending applicaitons filed by PBI (PATSY'S OF NEW YORK for restaurant services and PATSY'S for frozen eggplant parmigiana). Perhaps because of the PTO's rejections, on January 9, 2007, I.O.B. Realty filed two petitions to cancel each of PBI’s new registered marks. See I.O.B. Realty, Inc. v. Patsy’s Italian Restaurant, Cancellation Nos. 92046912 and 92046867 (TTAB Jan. 9, 2007). Of course, these cancellations were subsequently suspended once they became the subject matter of the federal district court lawsuit filed by Patsy’s Italian Restaurant. Interestingly, the Examining Attorney, in a subsequent non-final office action, maintained the 2(d) refusal to register IOB's mark, but only citing the PATSY'S OF NEW YORK and PATSY'S (eggplant parmigiana) registrations. Further proceedings on this particular application were suspended December 30, 2007.

To add insult to IOB’s injury, the TTAB, on June 28, 2007, upon reviewing and recounting the “tortured procedural history” of the case (link here), cancelled IOB’s registrations under §8. After PBI noted that IOB had not made the required filings under §8 (declaration of use) of the Lanham Act, the TTAB ordered the register to be corrected to reflect that IOB’s registrations were canceled on such basis – even though such a filing would not have been approved given its cancelled status. The TTAB refused IOB’s request for reconsideration.

On August 28, 2007, the judge in the above district court case ordered the PATSY’S PIZZERIA registration restored under §37 of the Lanham Act (15 USC §1119), but no action has been taken until such time as the court’s order is final (the court was unwilling to certify the order as final to allow IOB to pursue an immediate appeal).

Only time will tell if the most recent jury verdict will start to bring some order to the "procedural morass" (the TTAB's own words) in this case. Given the long-running nature of the dispute, however, one highly doubts that this dispute will end at the district court level.

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.

Trivia game maker sues Sony over Buzz! video game

The internet was buzzing (pun intended) today about the news of a trademark infringement lawsuit filed by a Carlsbad, California-based electronic trivia game company against Sony, the maker of a series of trivia video games for the Sony PlayStation 2 under the name “Buzz!” Nearly all of the news reports of the lawsuit cite back to an article from Gamespot.com (link here).

On January 23, 2008, Buzztime Entertainment Inc. and NTN Buzztime Inc. (together “Buzztime”) filed a lawsuit in the U.S. District Court for the Southern District of California against Sony Computer Entertainment Europe Limited (“Sony”). See Buzztime Entertainment Inc et al v. Sony Computer Entertainment Europe Limited, Case No. 08-cv-00122 (S.D. Cal.).

Buzztime, founded in 1985, produces a line of electronic trivia game machines found in many restaurants and bars (although probably not in Vegas, where the video poker machine reigns supreme). Buzztime claims that approx. 13 million players play at its machines each month. Buzztime also provides quiz game services over mobile phones, digital cable and satellite systems and also offers a home version that hooks-up to a television.

Buzztime alleges that Sony’s “Buzz!” line of video games as well as the tagline “It's time to get buzzing” infringe on Buzztime’s trademarks. Buzztime argues that Sony’s sale of a similar product to similar consumers through similar marketing channels is likely to cause consumer confusion or to deceive consumers as the source, origin, sponsorship, or approval of Sony’s goods and services by Buzztime. In addition to seeking injunctive relief (including having all infringing products recalled and destroyed), actual damages, punitive damages (for Sony’s alleged “malicious, fraudulent, knowing, willful and deliberate” trademark infringement), and legal fees, Buzztime also seeks an order from the court ordering the USPTO to deny registration to Sony’s pending trademarks.

While Buzztime has not registered the mark BUZZ for its goods and services, it does hold registrations for BUZZTIME (for card games and video game machines), BUZZHEAD (for an on-line computer game), SHARE THE BUZZ (for interactive game with electronic rewards and points program played over radio, television, cable, telephone, and a global computer network), and BUZZKIDS (for providing interactive games via a global computer network).

Meanwhile, Sony currently has three trademark applications pending for the mark BUZZ – none of which were opposed by Buzztime when they were published for opposition.

Sony filed its first Section 1(b) intent-to-use application for the mark BUZZ on December 1, 2004 for three classes of goods and services (computer video games, handheld electronic games, providing online computer games). The mark was published for opposition on March 3, 2006, and, with no opposition filed, the notice of allowance was issued on September 5, 2006. A second request for an extension of time to file a statement of use was granted back on August 15, 2007.

Sony filed a second Section 1(b) intent-to-use application for the mark BUZZ on May 9, 2005 for a single class of goods (instructional manuals, video game strategy guides, and trivia books). The mark was published for opposition on September 12, 2006, and, with no opposition filed, the notice of allowance was issued on December 5, 2006. A second request for an extension of time to file a statement of use was granted back on November 26, 2007. However, on December 26, 2007, Sony filed a petition to the Director of the U.S. Patent & Trademark Office (“USPTO”) seeking to amend the application after the notice of allowance to change the basis of the application from Section 1(b) to Section 44(e) on the basis of Sony’s European Union trademark registration (European Community Trade Marks Certificate of Registration No. 004266706, registered February 2, 2006) and seeking republication on this basis. The petition was granted on January 8, 2008, and the application was sent back to the examining attorney for consideration of the amendment.

Sony filed a third Section 1(b) intent-to-use application for the mark BUZZ! (and design) (see picture above) on May 26, 2006 for three classes of goods and services (computer video games, hardware, and peripherals; instructional manuals, video game strategy guides, and trivia books; and handheld units for playing electronic games). The mark was published for opposition on July 17, 2007, and, with no opposition filed, the notice of allowance was issued on October 9, 2007. The application is awaiting Sony’s statement of use.

Fashion Maven Diane von Furstenberg Sues Target for Copyright and Trademark Infringement Over “Spotted Frog” Design

The media was abuzz today about the lawsuit filed against Target Corp. (“Target”) by Diane von Furstenberg Studio, L.P. (“DVF”), the limited partnership established by Diane von Furstenberg in 1997 to sell her “signature” line of dresses, over alleged copies of her famed “wrap dresses” being sold at Target stores. The news stories on the lawsuit in Reuters and Associated Press were picked up by numerous news outlets.

DVF has a history of filing similar lawsuits against retailers that sell dresses and other products that copy her “signature” designs. While most of the press about DVF’s lawsuits have focused on the allegations of “copyright infringement” (because most of DVF’s designs are copyrighted), the complaints typically include some trademark infringement allegations – specifically, false designation of origin and unfair competition.

Although I haven’t seen the actual complaint against Target, it is likely to be similar to the lawsuit DVF filed last year against Forever 21, which involved allegations that Forever 21 was selling dresses and blouses with nearly identical print designs (the same scale and colorway) as those copyrighted by DVF in several copyright registrations (“Small Dentelle,” “Flower Lace Band,” “Mimosa,” and “Scattered Stones”). See Diane Von Furstenberg Studio, LP v. Forever 21, Inc. et al, Case No. 07-cv-02413 (S.D.N.Y.). A copy of the first amended complaint in that case can be downloaded here. A good blog posting on this particular case (with pictures) can be found here.

In the instant complaint, DVF is going after Target for dresses which copy the “scale, pattern, and colorways” of DVF’s copyrighted “Spotted Frog” Design that DVF registered with the U.S. Copyright Office on September 13, 2006. See Copyright Registration No. VAu-704-976.

"Spotted Frog"

The design was apparently introduced at Furstenberg's Spring 2007 fashion show during New York Fashion Week in September 2006 – and appears on dresses, luggage, handbags and other items.

While DVF sent a letter to Target last Friday notifying Target about the allegedly infringing dress, and Target subsequently removed the dress from its website, the complaint alleges that the dress is still being sold at Target’s retail stores.

Vegas™Esq. Comments:
Given DVF’s past success with these types of lawsuits, I see no reason to believe this case will be any different. The parties will reach some kind of settlement.

I will leave the copyright issues raised by DVF's lawsuits to others (i.e., DVF’s use of its design copyrights to essentially stop the sale of a dress style that clothing manufacturers are typically free to imitate).

As for the false designation of origin and unfair competition claims, DVF’s complaint in Forever 21 described its “products” as high-quality and superb design that have achieved outstanding reputation among customers, especially fashion conscious women. In addition, the complain bragged how DVF’s products are sold in high-end department stores such as Barney’s, Neiman Marcus, and Saks Fifth Avenue as well as on DVF’s website.

However, given the worldwide renown and high-end reputation garnered by DVF’s products, can the company really argue that consumers are likely to be confused with respect to the origin of similar looking dresses sold at Target? Without sounding too condescending to Target customers (after all, I’m a Target shopper myself), most Target customers seeing a dress on the racks with a pattern resembling the above “frog” pattern on it (or anything similar) are not likely to remotely associate it with DVF (much less be confused as to its source or origin). And those fashion conscious shoppers who know enough about fashion to recognize a DVF design when they see one are also savvy enough to know that a genuine DVF dress would never be sold at a not-so-high-end store like Target, and therefore, they are not likely to be confused as to source or origin or believe that the dress is somehow approved by DVF.

Clint Eastwood files lawsuit over “The Eastwood” home theater chairs

On January 16, 2008, Clint Eastwood filed a lawsuit in the U.S. District Court for the Central District of California against Palliser Furniture, Ltd, Palliser Furniture Corp. and several John Does (together “Palliser”) over a line of home theater chairs manufactured and sold by Palliser under the name “The Eastwood.” See Clint Eastwood v. Palliser Furniture, Ltd et al, Case No., 08-CV-00266 (C.D. Cal.). A copy of the complaint (courtesy of TMZ) can be downloaded here.

Eastwood’s lawsuit follows a similar lawsuit against Palliser filed in the same court on November 20, 2007, by the Executors of the Estate of Marlin Brando. See Morris Medavoy, et al v. Palliser Furniture Ltd., et al, Case No. 07-CV-07595 (C.D. Cal. November 20, 2007). At issue in that case is a similar line of home theater chairs made by Palliser named “The Brando” (apparently now renamed Sequelle). A press release from the Marlon Brando Estate regarding the dispute can be read here (although it should be noted that the press release discusses the filing of a lawsuit dated March 23, 2007, and may be referring to an earlier court action that apparently was unsuccessful because otherwise, why would the Marlon Brando Estate be pursuing a similar action in federal court eight month s later).

The Eastwood

According to Eastwood’s complaint, Palliser, a Canadian-based major manufacturer of home furnishings distributed throughout the Western Hemisphere, has been willfully manufacturing and selling “The Eastwood” home theater chair without Eastwood’s permission. Much of the complaint focuses on describing Eastwood’s film background and fame. The complaint notes that Eastwood has a long history of rejecting solicitations from third parties to license his name, image and likeness for commercial purposes so that he can use his publicity rights and goodwill associated therewith for his own motion picture and entertainment projects as well as his own personal ventures. Some of Palliser’s other home theater chairs named after celebrities noted in the complaint include “The Cagney,” “The Cooper,” “The Bronson,” and “The Connery.”

The complaint sets forth three causes of action: 1) false designation of origin and false description under Section 43(a) of the Lanham Act (15 U.S.C. §1125(a)); 2) violation of Eastwood’s right of publicity in his name in violation of California Civil Code §3344; and 3) common law violation of Eastwood’s right of publicity in his name. Eastwood claims that Palliser’s use of the name “Eastwood” on its chairs will create a false impression that “The Eastwood” home theater chairs are endorsed or associated with Eastwood and constitutes a misleading description of Palliser’s goods. Eastwood also alleges that Palliser committed such actions willfully in order to trade off of Eastwood’s reputation and goodwill. Eastwood further claims that Palliser’s intentional use of the name Eastwood is causing harm to his name by being falsely associated with Palliser’s home theater chairs.

In addition to injunctive relief, Eastwood seeks the usual damages under 15 U.S.C. §1117(a) (Palliser’s profits, damages, and costs) and also maintains that Palliser’s willful conduct makes the case exceptional entitling Eastwood to treble damages and attorney’s fees. Eastwood also requests damages, attorney’s fees, and punitive damages under California law.

Vegas™Esq. Comments:

Eastwood unquestionably has a strong mark in his own last name, especially with goods and services that are related to the movie industry (although one should note that there are many registrations for the mark EASTWOODfor other goods and services such as guitars and insurance brokerage services as well as a multitude of goods and services across four registrations held by Easthill Group, Inc.).

In addition, the goods are related albeit tenuously – Eastwood’s name is commonly associated with the movies and the goods at issue are for home theater chairs (no doubt purchased by movie fans). And to the extent that Palliser named its chairs “The Eastwood,” then the marks are similar – although if you click on the above links, you will note that Palliser appears to be changing the name of its various lines of chairs and moving away from “The …” celebrity names (see also here).

I do question whether the relevant consumers in this case – wealthy homeowners with home theater systems – would honestly believe that these goods (home theater chairs) are truly endorsed by the individuals after which they are named. In addition, home theaters are not cheap – consumers purchasing these chairs are likely to exercise a high degree of care. They will select a chair based on its features – and not because of the “movie actor” after which it is named. The names of these chairs would be recognized by such movie-fan consumers as playful references to famous movie actors – not as an endorsement by those stars. In addition, I doubt that either Eastwood or Brando’s estate is going to be branching out into home theater furnishings anytime soon (although Brando’s estate does have a trademark application for THE BRANDO pending for towels, spa products, and clothing, which was recently published for opposition).

While Eastwood may be able to unearth evidence to the contrary, it would seem that Palliser’s intent in choosing to name its movie theater seats after famous movies stars was not to take advantage of the goodwill in Eastwood’s name, but rather to appeal to the interests of movie aficionados (Palliser’s primary customers for such seats) who are likely to be fans of such great actors as Marlon Brando, Clint Eastwood, James Cagney, and Sean Connery, but who are not likely to buy a particular theater chair simply because a particular celebrities name is tied to it.

So while I would like to believe that the factors tend to favor a finding of no likelihood of confusion, I recognize that Eastwood asked for a jury trial for a good reason, namely so that Eastwood can make such arguments before a group of jurors who will certainly have heard of Eastwood and who may be more easily swayed into finding a likelihood of confusion under the circumstances.

As for Eastwood’s right of publicity claim, Palliser did knowingly use Eastwood’s name on its products without Eastwood’s permission and did so in part to take advantage of the Eastwood's movie actor, which doesn’t bode well for Palliser. However, California Civil Code §3344(e) does provide an exception for the use of a person’s name without such person’s consent even though the use is commercially sponsored. Of course, it becomes a question of fact (for the jury in this case) whether or not Palliser’s use of the name “Eastwood” was “so directly connected with the commercial sponsorship” as to create a use for which consent is required.

Of course, the above assumes that this case even goes to trial, which I can’t imagine to be the case given the steps Palliser is taking to move away from such allegedly infringing use actors’ names for its chairs. More than likely, the parties reach a confidential settlement whereby Palliser agrees to stop using the name and possibly pays some monetary compensation for past infringing use (perhaps a donation to Eastwood's favorite charity).

“A man’s got to know his limitations.”
- Clint Eastwood as Dirty Harry Callahan in “Magnum Force”

The Red Hot Chili Peppers Sue Showtime over “Californication”

I had a feeling that this one was coming. I have been an avid watcher of Showtime’s new series “Californication” since it first aired back in August. For those not familiar with the show, it stars David Duchovny as a middle-aged writer living in Los Angeles and coping with a mid-life crisis in his own mature-audiences-only way. The title “Californication” is most apropos -- combining fornication, which Duchovny’s character does a lot of in the series, with California, the geographical backdrop of the show. Of course, for anyone between the ages of 20 to 45, the show’s title also brings to mind the famous Red Hot Chili Peppers’ (“RHCP”) song “Californication” from their 1999 multi-platinum album of the same title.

New stories were abound today (e.g., here and here) reporting that on Monday, November 19, 2007, the four members of the RHCP filed a lawsuit in Los Angeles Superior Court against Showtime Networks, Inc., Twilight Time Films, Inc.; Aggressive Mediocrity, Inc., and Tom Kapinos (collectively “Showtime”) alleging false designation or orgin under Section 43(a) of the Lanham Act (15 USC §1125(a), unfair competition under California law, trademark dilution under federal and California law, and unjust enrichment arising from Showtime’s use of the name “Californication.” See Anthony Kiedis et al v. Showtime Networks, Inc. et al, Case No. BC 380894 (L.A. Super. Ct.). A copy of the complaint can be downloaded here (courtesy of Past Deadline Blog).

RHCP wants Showtime to stop using the name and is seeking treble damages and an accounting and disgorgement of profits made by Showtime while using the name. In a press statement (link here), the band’s lead singer, Anthony Kiedis, was quoted as saying “'Californication' is the signature CD, video and song of the band's career. For some TV show to come along and steal our identity is not right.”

Much of the complaint details the “extraordinary critical and commercial recognition” of both the “Californication” album and song. The album has sold over 14 million copies, received two Grammy nominations, was voted by “Rolling Stone” magazine as one of the Top 500 Albums of All Time, and has gone multi-platinum in over 35 countries worldwide. The song has been “legally” downloaded nearly half a million times in the last two years, has been played on domestic radio alone nearly 200,000 times, and received a Grammy nomination. The video for the song has been played over 1500 times in the U.S. alone and was voted by VH-1 as one of the 35th Greatest Videos of All Time.

One interesting part of the complaint is that not only does RHCP have a problem with the name of the show, but the group also has a problem with a “compilation CD” of music used on the show put out by Showtime. As such, when a search is done for the name “Californication” (in iTunes for example), this music compilation appears alongside the album and songs of RHCP.

RHCP is also fighting with Showtime in the USPTO over the title of the series. On April 10, 2007, Showtime filed a Section 1(b) application to register the mark CALIFORNICATION (for entertainment in the nature of an on-going comedy series). The mark was published for opposition on October 2nd. RHCP have filed an extension of time to file an opposition (link here) – currently due January 30, 2008.

Comments:
There are a few obvious flaws with the complaint (nothing that a First Amended Complaint can’t fix – if this dispute goes that far). The second claim for relief is supposed to be for unfair competition under California law – but instead, the complaint copied and pasted the Lanham Act section – without changing the relevant cites. In addition, the complaint cites to Section 43(a) as the basis for federal dilution – rather than Section 43(c) of the Lanham Act. Furthermore, the language of the dilution seems to pattern the false designation of origin section rather than addressing the specific factors that must be proven under 15 U.S.C. §1125(c)(1).

Prediction #1: Confidential out-of-court settlement. In the RHCP’s favor – strong mark and likelihood of confusion. In Showtime’s favor – First Amendment and Fair Use.

The parties should just reach an amicable settlement and let the show’s creators (the lawsuit identifies Kapinos as the creator, writer and executive producer of the show) get back to creating what is arguably one of the best new shows on TV. “Californication” is to Showtime what “The Sopranos” was to HBO – a quality series with some themes, scenes, and dialogue that could not be aired on mainstream television, but which make you want to subscribe to the pay-channel just to watch.

And while it may be awkward to rename the show after such a stellar first season (the name encapsulates so much about the theme of the show), the writing is so good that you could call this show anything and it would be just as good (how about “The Showtime Adult Comedy Formerly Known as Californication”?).

Prediction #2: And the Golden Globe for Best Television Comedy goes to . . .

Hallmark Files Motion to Dismiss Against Paris Hilton

On November 2, 2007, Hallmark Cards, Incorporated (“Hallmark”) filed its Rule 12(b)(6) Motion to Dismiss for failure to state a claim upon which relief can be granted against Paris Hilton’s right of publicity and trademark infringement lawsuit over a Hallmark greeting card that used her image and her registered trademark “That’s Hot” (the “Card”) (Vegas™Esq blogged here). A copy of the motion can be downloaded here (courtesy of pitch.com).

The filing gave news reporters today great fodder for witty headlines. See MSNBC (“Hallmark thinks Paris’ lawsuit is not hot”), the Post Chronicle (“Hallmark Cold To Paris Hilton Over "That's Hot" Lawsuit”), Entertainmentwise.com (“Hallmark To Paris Hilton: 'You're A Publicity Seeker!'”), and Glosslip.com (“Hallmark: When You Care Enough To Make Fun Of Paris Hilton”).

From the very first paragraph of Hallmark’s Memorandum of Points and Authorities (“Memo”), Hallmark comes out with guns blazing: “Paris Whitney Hilton (‘Hilton’) is a privileged, jet-setting heiress to the Hilton family fortune, the center-of-attention ‘celebutante’ at the most lavish parties and exclusive events, and a consummate self-promoter who, by her own admission, considers working ‘manual, low-paying jobs’ and serving the public to be her ‘private nightmare.’” Memo at 1.

Hallmark seeks to dismiss Hilton’s claims for misappropriation of her common law right of publicity, false designation of origin, and federal trademark infringement.

First Amendment Argument
Hallmark’s primary argument is that its greeting cards constitute expression protected by the First Amendment. Hallmark cites to Tenth Circuit’s decision in Cardtoons, L.C. v. Major League Baseball Players Assn., 95 F.3d 959 (10th Cir. 1996) which found parody baseball cards to be protected speech. Hallmark argues that its greeting cards are just as expressive if not more so than trading cards and that greeting cards have been recognized as “the embodiment of humor, praise, regret or some other message in a pictorial and literary arrangement.” Memo at 8. Hallmark characterizes the Card as “not only entertainment and parody, but also social commentary and criticism of Hilton’s lifestyle and belief system.” Id.

Right of Publicity Claim
With respect to Hilton’s common law right of publicity claim, Hallmark argues that its use of Paris Hilton’s name and likeness was not for a commercial purpose (i.e. advertising, endorsements, or commercials) as required to state a right of publicity claim, but rather expressive speech (citing Cardtoons).

Hallmark then goes through a long discussion regarding the “transformative use” test to “determine whether a work merely appropriates a celebrity’s economic value, and thus is not entitled to First Amendment protection, or has been transformed into a creative product that the First Amendment protects.” Winter v. DC Comics, 30 Cal. 4th 881, 888 (2003). In short, the use of a celebrity’s image is protected by the First Amendment and does not violate such celebrity’s right of publicity when the work using the image contains such transformative elements as parody, caricature, and other types of distortion as to create a new expression (in contrast to a literal depiction of such celebrity). Hallmark argues that the Card used Hilton’s image in a transformative way – placing an oversized photograph of Hilton over a cartoon body making her appear as a waitress (which Hilton apparently calls her own “private nightmare” in her Amended Complaint) with a dialogue that uses her catchphrase in a literal sense in describing the patron’s food.

Finally, Hallmark cites the “public interest” as a defense to Hilton’s right of publicity claim citing Hilton’s notoriety and public figure status make her a fair target for Hallmark’s expression.

False Designation of Origin
With respect to Hilton’s allegations that Hallmark’s use of her name and likeness create a false designation of origin in violation of Section 43(a) of the Lanham Act (15 USC §1125(a)), Hallmark cites to several cases for the proposition that the First Amendment bars Hilton’s Lanham Act claim in much the same way it bars her right of publicity claim. See Kirby v. Sega of America, 144 Cal.App.4th 47 (Cal. App. 2nd 2006); ETW Corp. v. Jireh Publ’s, Inc., 332 F.3d 915 (6th Cir. 2003); Hoffman v. Capital Cities/ABC, Inc., 255 F.3d 1180 (9th Cir. 2001).

Hallmark also argues that the “nominative use doctrine” protects Hallmark’s use of Hilton’s name and likeness (the mark at issue in the Lanham Act claim) which were used to express commentary about and parody of Hilton. The doctrine (sometimes called the “nominative fair use defense”) allows a party to use or refer to another party’s trademark if the product or service in question cannot readily identifiable without use of the trademark, the use is only so much as is reasonably necessary to identify the product or service, and the use does nothing that would suggest sponsorship or endorsement by the trademark holder. See New Kids on the Block v. News America Publishing, Inc., 971 F.2d 302 (9th Cir. 1992). Without commenting on the first two prongs of the test, Hallmark argues that its use of Hilton’s name and likeness, as a parody, did not suggest sponsorship or endorsement by Hilton.

Finally, Hallmark argues that the likelihood of confusion test is inappropriate for expressive works that incorporate a trademark. Hallmark cites the Ninth Circuit’s decision in Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894 (9th Cir. 2002), where the court found that the use of the term “Barbie” in the “Barbie Girl” song was not trademark infringement and was protected by the First Amendment because the mark was relevant to the work and the use was not misleading as to sponsorship or endorsement. Hallmark asserts that in the case of Hilton’s “image and likeness,” Hallmark’s use in the Card was artistically relevant and not specifically misleading as to sponsorship or endorsement. Furthermore, even if the likelihood of confusion test were applied to Hallmark’s use of Hilton’s “image and likeness,” the parodic nature of the Card is so obvious that it would not cause any consumer to believe that Hilton created the Card or otherwise endorsed the Card.

Hallmark also adds that Hilton, as a public figure, fails to plead and prove with clear and convincing evidence that Hallmark’s use of her “image and likeness” was done with actual malice. Citing Hoffman, Hallmark argues that Hilton has not shown clear and convincing evidence that Hallmark intended to create a false impression in the mind of consumers that the image of Hilton on the Card was her or that Hilton was somehow endorsing the Card.

Federally Registered Trademark Infringement
With respect to Hilton’s allegations that Hallmark’s use of the word “That’s Hot” on the Card infringes Hilton’s registered trademark for THAT’S HOT, Hallmark reiterates most of the same arguments set forth to dispute Hilton’s false designation of origin claim. First, Hallmark’s Card is protected speech under the First Amendment, and Hilton’s allegation of infringement of the “That’s Hot” trademark is barred. Second, the use of the words “That’s Hot” is protected by the nominative use doctrine – such use was for parody and not to designate any goods or services or to serve as an indicator of source, sponsorship, or affiliation. Third, the likelihood of confusion test should not apply because the use of “That’s Hot” on the Card was artistically relevant to the Card and was not misleading as to suggest that the Card was sponsored or endorsed by Hilton. And even if such test were applicable, the obvious parodic nature of the Card would not cause any consumer to believe that Hilton created the Card or otherwise endorsed the Card.

Finally, Hallmark adds that Hilton’s registration for THAT’S HOT does not cover greeting cards. When Hilton originally filed her Section 1(b) intent-to-use application, it included among various goods and services “paper goods” and “printed materials” (in Class 16). However, on September 9, 2005, in response to the USPTO’s office action dividing her goods and services into several different classes, Hilton chose to delete the Class 16 goods and proceeded to prosecute the application for various clothing items in Class 25, and which was the scope of the application when it ultimately registered on February 13, 2007.

Summary
Hallmark summarizes its argument against Hilton very well early on in the Memo: “Hallmark’s Card parodies Hilton, her silver-spoon upbringing, her lavish lifestyle and her oft-repeated, vapid use of the catchphrase ‘that’s hot.’ Like the countless other parodies, comic strips and editorials that have taken aim at this self-described ‘cultural icon’ of society, the Card is fully protected speech under the United States and California Constitutions.” Memo at 2.

I should add that the Memo is full of interesting descriptions and characterizations of Hilton and her notoriety that could only come from a lawyer. My favorite -- “Hilton indisputably attracts vast amounts of attention and publicity – much of it as a result of her own efforts and actions. Seemingly every aspect of her life is fodder for the press and for water cooler conversation – form her television appearances, to the lavish lifestyle she leads, to her party hopping, to her romances and sexual escapades (whether videotaped or not), to her high fashion clothing, to her idioms, to her incarceration (and controversial early release) and to various other legal issues – including even the filing of this lawsuit.” Memo at 13-14

Now that’s hot!

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.

Merrill Lynch files trademark infringement lawsuit to stop anonymous Merrill Lynch imposter from sending racist e-mails

On Tuesday, October 30, 2007, Merrill Lynch & Co., Inc. (“Merrill Lynch”) filed a trademark infringement lawsuit in the U.S. District Court for the Southern District of New York against “John Doe” – the unknown sender of e-mails containing some explicit racially denigrating remarks directed to be offensive towards African-Americans (e.g., using the “N-word” and the Don Imus-inspired "Nappy Headed Hoes”). See Merrill Lynch & Co., Inc. v. Doe, Case No. 1:07-cv-09649 (S.D.N.Y.). The e-mails went out to several African-American investment brokers within Merrill Lynch as well as the Reverend Al Sharpton back in September. Links to various news articles on the lawsuit can be found here, here, here, and here.

According to Merrill Lynch’s complaint, the defendant sent the e-mail using a Hotmail e-mail address but signed using the name of an actual Merrill Lynch regional administrative manager. The e-mail, made to appear as thought it had been sent from this Merrill Lynch manager, included a reference to the MERRILL LYNCH trademark. Given Merrill Lynch’s efforts to “foster an inclusive workplace environment that promotes mutual respect, acceptance, cooperation, and productivity among people from varying backgrounds, . . . defendant's fraudulent emails have not only cast the Merrill Lynch employee whose name has been used for these racially explicit emails in a negative light, they tarnish the reputation and good will associated with the Merrill Lynch name and mark.”

Merrill Lynch plans to subpoena the defendant’s Internet service provider as well as Microsoft (which owns Hotmail) in an effort to discover the identity of John Doe, which Merrill Lynch suspects lives in the Midwest.

In addition to seeking unspecified damages, Merrill Lynch is asking for injunctive relief to stop the further dissemination of such emails to its employees as well as any further false designation of origin of such e-mails to Merrill Lynch or its employees.

Sharpton was quoted as hailing the Merrill Lynch as “necessary and timely” given the sharp increase in threats and hate mail/emails this year directed towards himself and his National Action Network. Sharpton hopes that the lawsuit will encourage law enforcement to stop this kind of unchecked and illegal behavior.

Las Vegas Sands Files Federal Lawsuit Against “Venetian” Cybersquatter

On October 9, 2007, Las Vegas Sands Corp. (“Las Vegas Sands”) filed a lawsuit against Joshua Murega, a California resident, in the U.S. District Court for the District of Nevada. A copy of the complaint can be downloaded here (courtesy of me).

As most people who live in Las Vegas know, Las Vegas Sands operates The Venetian Resort Hotel and Casino. In addition, Las Vegas Sands holds numerous registered trademarks and service marks for various goods and services that are variants of the mark VENETIAN. See, e.g., VENETIAN, THE VENETIAN, and THE VENETIAN RESORT HOTEL CASINO.

At issue in the complaint is Murega’s registration and ownership of various .COM domain names which contain the word “venetian,” including the following (for which I have purposely not included any hyperlinks):

• Venetian-weddings
• Venetianaccomodations
• Venetiandeals
• Venetiandining
• Venetiancasinos
• Venetianshows
• Venetianreservations
• Venetianshopping
• Venetian-reservations
• Venetiangambling
  

Mr. Murega registered the domain names on or about August 29, 2007. On September 25, 2007, Las Vegas Sands’ counsel sent a cease and desist letter to Murega demanding that Murega cease all use of the domain names and that the domain names be transferred to Las Vegas Sands. Murega responded with a letter offering to transfer the domain names “if your response is favorable.” It is not clear from the complaint what, if anything, happened after that.
Las Vegas Sands alleges that the domain names were not registered in good faith and that Murega derives income from the links posted on the website. The complaint sets forth five counts: cybersquatting under 15 U.S.C. §1125(d), false designation of origin/unfair competition under 15 U.S.C. §1125(a), common law trademark infringement, deceptive trade practices under NRS 598.0903 et seq., and intentional interference with prospective economic advantage.

Las Vegas Sands is asking for an injunction prohibiting Murega from using the VENETIAN mark and from registering any more domain names containing the VENETIAN mark. Las Vegas Sands also requests an order to the domain name registrar of Murega’s domain names transferring the domain names to Las Vegas Sands. Finally, Las Vegas Sands asks for damages (compensatory, consequential, statutory, exemplary, and/or punitive) as well as interests, costs, and attorney’s fees.

Vegas™Esq. Comments:
Focusing on just the § 1125(d) cyber squatting count, the law states that a domain name registrant is liable to a trademark owner if the registrant (i) registers, traffics in, or uses a domain name that a) is identical or confusingly similar to a distinctive mark or b) is identical or confusingly similar to or dilutive of a famous mark and (ii) has a bad faith intent to profit from that trademark, including a personal name, which is protected as a trademark under Section 43 of the Lanham Act. See 15 U.S.C. § 1125(d)(1)(A).

It is safe to say that Mr. Murega has registered and is using a domain name that is confusingly similar to and possibly even dilutive (for some of the domain names) of a famous mark. So his liability for cybersquatting rests of the question of bad faith. The law sets forth the nine factors that courts can consider in determining whether a person had a “bad faith intent to profit.” See § 1125(d)(1)(B).

I seriously doubt Mr. Murega can show any other trademark rights to the name. He has no prior use of the domain name in connection with a bona fide offering of any goods or services. Upon receiving Las Vegas Sands’ cease and desist letter, he offered to transfer the sites without having used or having a bona fide attempt to use the domain name to offer any goods or services. Given the fame of the VENETIAN mark, he could not have legitimately believed or had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful. The combination of the word VENETIAN with such words as weddings, casinos, shows, and dining clearly shows a connection of the mark VENETIAN to the Las Vegas hotel and casino (and not as an adjective pertaining to Venice). Finally, the complaint alleges that his domain names went to directory websites that provided "click-through" links to various other hotel websites which compete with The Venetian. All of these factors favor a finding of “bad faith intent to profit.”

However, Mr. Murega may be setting up to assert a “fair use” defense. I did not download all of the exhibits to the complaint, and therefore, do not know what the websites looked like before today. But when I visited a few of Murega’s sites (the few that were even working), what I discovered was a page with a 10 second countdown that said “You Are Being Redirected to The . . . .” (origin of gaming, beautiful city of the world, etc.) On this page (for at least one of the sites), there was a Vegas.com banner ad that one could click on. Then after the 10 second countdown, a page appears providing eleven paragraphs of factual data about Venice. If you are really curious and have to see it to believe it, click here and have a good laugh at a web page that looks like it was put together by a 12-year old.

Very clever, Mr. Murega. But judges are not as naïve as you may think. They have a great deal of discretion in this area, and will likely see this lame attempt to make some “fair use” out of your website as further evidence that your original registration of such domains was indeed in bad faith.

I would be surprised if Mr. Murega even answers the complaint. If he does, I would suspect it will be “in pro per” as I doubt any attorney would want to represent Mr. Murega in defending his domain names – at least not without making sure to get a large retainer upfront.

As for why Las Vegas Sands did not first pursue arbitrations under ICAAN’s Uniform Domain-Name Dispute-Resolution Policy, the most likely reason is that Las Vegas Sands wanted a legal order in place that it can assert to prevent Mr. Murega , under penalty of the law, from ever doing this again. After all, now that Las Vegas Sands has opened The Venetian Macao, Mr. Murega may try again. http://www.venetianmacaocasinos.com/ is available!

To be Ric Flair, you gotta beat Ric Flair . . . in court.

MyrtleBeachOnline.com ran a story today entitled “Wrestler smacks S.C. car dealer with lawsuit” about a lawsuit filed by a World Wresting Entertainment (WWE) wrestler against a South Carolina car dealership.

On October 4, 2007, Richard Fliehr, better known to WWE fans as Ric “Nature Boy” Flair, filed a lawsuit in the U.S. District Court for the District of South Carolina against Stivers Automotive of Columbia, Inc., the owner of a Columbia, South Carolina car dealership named Freedom Suzuki which allegedly used Flair's name, likeness and slogans in some of its car advertisements without Flair's permission (see Case Number 3:2007cv03315).

The car dealership allegedly used two of Flair’s famous catchphrases "Woooooo!" and "To be the man, you gotta beat the man!" One radio ad had a character named Captain Freedom saying “Whoeee ... To be the man you got to beat the man! Ric Flair was right all you other car dealers out there." Captain Freedom also told listeners to "Come check out me and the WWE" at the Colonial Center on Aug. 21, which was around the time when Flair was scheduled to appear at a WWE event at the Colonial Center. According to Flair’s lawyer, Stivers Automotive apparently contacted the WWE to get permission to use Flair’s name in their ads, but permission was denied.

Without seeing the complaint, its not clear if Flair is alleging Section 43(a) false designation of origin or a state-law based right of publicity filed in federal court on the basis of diversity jurisdiction, which would explain why he is seeking actual and punitive damages of more than $75,000.

As most people familiar with the WWE (formerly WWF, which is an interesting trademark story of its own) know, Mr. Flair does not hold the trademark to his own name, or at least not the one under which he wrestles. That would be the intellectual property of World Wrestling Federation Entertainment, Inc., which holds the trademark RIC FLAIR for clothing, for various toy items, and, most importantly, for entertainment services, namely wrestling exhibits and performances by a professional wrestler and entertainer.

Chicken Restaurant Franchisor Says “Cluck-U” to Chicken Product Distributor

On September 25, 2007, Cluck-U, Corp. filed a lawsuit in the U.S. District Court for the Eastern District of New York against Chicken Holiday, Inc., Maximum Quality Foods, Inc., and Gary Roccaro (the “Defendants”) alleging trademark infringement, false designation of origin, dilution, unfair competition, deceptive trade practices, and intentional interference with contractual relations. A copy of the complaint (courtesy of me) can be found here.

Cluck-U operates and franchises the Cluck-U Chicken fast-food restaurant chain, which has 30 locations in the U.S., mostly in Maryland, New Jersey, and the District of Columbia. Click here to see the Wikipedia entry on the company.

Until recently, Cluck-U held two registered service marks with two other related applications pending, including CLUCK-U-CHICKEN, CLUCK U, CLUCK-U CHICKEN (design) and CLUCK U (design) (the “Cluck Marks”). I qualify the statement with “until recently” because what the complaint fails to mention (and which the Defendants surely will) is that ten days earlier on September 15, 2007, the CLUCK-U-CHICKEN mark (the oldest registered mark) went abandoned for failure to file a Section 8 Declaration of Use in Commerce and Section 9 Application for Renewal of Registration of Mark, which were due to be filed sometime between 12/9/05 and 12/9/06 (which could’ve been extended for an extra $100 to 6/9/07). Having failed to file, the registration was canceled (or allowed to expire depending on your perspective) – and there is no recourse for Cluck-U other than to file a new application.

Defendant Chicken Holiday, Inc. owns the registered trademark CLUCK U 'RE WINGS for chicken and dipping sauces. The trademark was registered on January 1, 2004, with date of first used alleged to be March 11, 2003.

While Cluck-U may have lost its oldest registered mark, it still has the CLUCK U registered service mark, which was registered on May 15, 2007, but claims use in commerce going back to January 1986.

The first part of Cluck-U’s complaint relates to Defendant’s registration and use of the CLUCK U 'RE WINGS trademark, which Cluck-U maintains is likely to be confused with the Cluck Marks. Cluck-U sets forth counts for a) §32 trademark infringement (for infringement of its registered service marks, even though Cluck-U now has one less trademark than it used to); b) §43(a) trademark infringement, false designation of origin, false representation, and unfair competition (for infringement of all of the Cluck Marks); and c) deceptive trade practices under New York Gen. Bus. Law §349 and dilution under New York Gen. Bus. Law §360-1.

Cluck-U also asks that the CLUCK U 'RE WINGS trademark registration be cancelled. Cluck-U did initiate a cancellation proceeding with the TTAB on February 23, 2007 (Cancellation No. 92047110), but it was suspended on August 29, 2007 pending settlement negotiations, and set to resume November 29, 2007 (unless resumed earlier by either party). Because the CLUCK U word mark was not registered at the time the cancellation complaint was filed, the entire complaint was based on the now-cancelled CLUCK-U-CHICKEN mark, which just raises the question further as to how the §8/§9 filings could have been overlooked. And is Defendant now going to fight back with allegations of “unclean hands”? After all, Cluck-U’s website still reflects the CLUCK-U-CHICKEN as a registered trademark (with the ® symbol) (see related blog posting here). One must also ask why it took Cluck-U nearly three years to file this cancellation and why someone didn’t catch the CLUCK U 'RE WINGS mark when it was published for opposition?

Getting back to the lawsuit, the second part of Cluck-U’s complaint involves Defendant’s distribution activities and an alleged unauthorized use of the Cluck Marks. Apparently, Cluck-U’s rights to the Cluck Marks were acquired through an Assignment Agreement dated May 22, 2000, from Cluck-U Chicken, Inc. and Robert Ilvento (together, “Cluck NJ”). However, Cluck NJ retained some rights to use the Cluck Marks in connection with certain preexisting Cluck-U restaurant franchises and to procure distribution of food products branded with the Cluck Marks for use in connection with the preexisting Cluck-U restaurant franchises. Cluck NJ entered into a distribution and sublicense agreement with the Defendants whereby Defendants were granted the limited right to produce or acquire, package, and brand with, on in connection with the Cluck Marks, frozen chicken wing products, blue cheese products, and sauces and dips and to sell and distribute such products to the preexisting Cluck-U restaurant franchises.

According to Cluck-U, the Defendants have been selling additional unauthorized products, such as fresh chicken and paper products (probably napkins) using the Cluck Marks. Cluck-U also alleges that the Defendants have falsely represented themselves to Cluck-U franchisees, including the preexisting Cluck-U restaurant franchises, as authorized to sell such products, which such franchisees have purchased from the Defendants.

These allegations are the basis for similar counts for a) §32 trademark infringement; b) 43(a) trademark infringement, false designation of origin, false representation, and unfair competition; and c) deceptive trade practices under New York Gen. Bus. Law §349 and dilution under New York Gen. Bus. Law §360-1. In addition, because the franchise agreements between Cluck-U and the preexisting Cluck-U restaurant franchises provide that such franchisees can only purchase branded Cluck-U food products solely from authorized distributors of such products, Cluck-U argues that Defendants are inducing a breach of contract between Cluck-U and those franchisees by inducing such franchisees to purchase its unauthorized goods. This is the basis for Cluck-U’s count for intentional interference with contractual relations.

Cluck-U seeks the usual remedies: injunctive relief, money damages, treble damages, lost profits, punitive damages, costs and attorney fees as well as a declaration that the CLUCK U 'RE WINGS mark is invalid and unenforceable and a court order to the Commissioner of Trademarks to cancel the registration.

Regarding the baseline question of likelihood of confusion between CLUCK-U and CLUCK U 'RE WINGS, the analysis that will be invoked by the District Court (within the Second Circuit) in determining whether consumers are likely to be confused when looking at the products as a whole, involves analyzing the following eight factors (courtesy of, who else, Ronald Coleman’s Likelihood of Confusion®):
(1) strength of the trademark;
(2) similarity of the marks;
(3) proximity of the products and their competitiveness with one another;
(4) evidence that the senior user may “bridge the gap” by developing a product for sale in the market of the alleged infringer’s product;
(5) evidence of actual consumer confusion;
(6) evidence that the imitative mark was adopted in bad faith;
(7) respective quality of the products; and
(8) sophistication of consumers in the relevant market.
Polaroid Corp. v. Polarad Electronics, Corp., 287 F.2d 492 (2d Cir. 1961); Nora Beverages, Inc. v. Perrier Group of Am., Inc., 269 F.3d 114, 119 (2d Cir. 2001).

Factors favoring Cluck-U

• Cluck-U mark, having likely been used in the New Jersey area since at least 1986, is fairly strong.
• Cluck-U’s sells chicken in its restaurants (and likely includes some dipping sauces). In this regard, Cluck-U’s products are similar to and do compete with Defendant’s products.
• Cluck-U already sells chicken and sauces as part of its restaurant services – as such, Cluck-U has already “bridged the gap” and is selling such products in the same market.
• Given the defendant’s prior involvement with the Cluck-U franchise, the evidence does suggest that Defendant’s adoption of the CLUCK U 'RE WINGS mark may have been in bad faith.
• The respective quality of the products are likely to be similar.
• The consumers of Cluck-U’s chicken and sauces are not likely to be of the level of sophistication where they would recognize a distinction between CLUCK U and CLUCK U 'RE.

Factors favoring Defendants

• The marks are very similar in appearance -- both prominently have the words CLUCK U – which favors Cluck-U. However, one important difference is their verbal pronunciations -- CLUCK U will be pronounced “Cluck You” whereas the CLUCK U 'RE will be pronounced “Cluck Your.” I think this actually tends to favor the Defendants.

Factors favoring neither party

• The complaint does not set forth any evidence of actual consumer confusion.
• The complaint does not set forth sufficient information regarding the sophistication of the consumers

At this stage with the limited facts set forth in the complaint, the factors tend to favor Cluck-U. But it’s still early in the game, and who knows what facts may come to light that could change picture entirely.

Personal Sidenote:
As a big fan of all things hot and spicy (anyone interested in seeing my Tabasco® sauce collection?), I was intrigued by Cluck-U’s 911 sauce (although I’ve always felt that the liability waiver gimmick is a little corny). I’ve visited many chicken wing restaurants and always try the “hottest” sauce. While many of them are indeed very spicy, the taste of not always that great. In my opinion, just because a sauce is spicy does not make it good – if a sauce doesn’t taste good, then who cares how spicy it is. That’s why I’m a big fan of Wing Stop and their “Atomic” sauce. This is by far the best tasting and spiciest “hot” sauce I’ve ever encountered.