Posts Tagged ‘Lanham Act’
Posted on April 29th, 2010 • Filed under Uncategorized • 2 Comments
The humble milkcrate has a special place in the urban landscape. Nailed to a telephone pole, the milkcrate becomes a basketball hoop. Filled with vinyl records, the milkcrate becomes an essential component of a DJ rig.
Sturdy, useful, and poorly kept track of, milkcrates were routinely stolen from shopping center sidewalks before supermarkets wised up and stopped storing them outside.
LaCrate, an enterprising sort who has DJed for Lily Allen and peddles his own brand of Baltimore club music under the name B-More Gutter Music, has been operating an urban clothing line called Milkcrate Athletics since the 1990s, advertising the line with a logo of a milkcrate full of records.
Since 2007 or so, Nike has been manufacturing a line of shoes endorsed by superstar LeBron James featuring images of milkcrates and milkcrate-inspired details and soles (see Milkcrate Digest for images). Some of the shoes bear the legend “Milk Crate Technology.” Nike has also manufactured “Crate”-branded clothing, like these LeBron Crate Men’s Basketball Shorts. According to Nike, the milkcrate-related branding was inspired by James’s formative years playing basketball on a milkcrate hoop.
LaCrate’s trademark suit against Nike, filed today in the U.S. District Court for the Southern District of New York and made available on The Trademark Blog, asserts claims of trademark infringement and Lanham Act false designation of origin against Nike, arguing that Nike’s LeBron Milkcrate shoes and apparel are confusingly similar to Milkcrate Athletics shoes and apparel (in addition to his clothing line, LaCrate released a limited-edition Milkcrate shoe with Vans in 2006).
Does LaCrate have a LaCase? His federal trademark registration seems solid (he registered “Milkcrate” in connection with “clothing” in 2001 and in connection with “basketball sneakers” in 2009). However, as always, the fundamental question in trademark infringement analysis is whether there is a likelihood of confusion. Applying the factors set out in Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492, 495 (2d Cir. 1961) (factors include the strength of the plaintiff’s mark, the degree of similarity between the parties’ respective marks, and the existence of actual confusion), I think Nike has the advantage. The marks are similar and used on somewhat similar products, but the marks themselves just don’t look that much like each other. Nike’s products don’t use a drawing of a milkcrate, as LaCrate’s do; they use photographs of milkcrates or stylized criss-cross patterns, which suggests Nike is not using the milkcrate as a mark, but rather as a design element. When it does employ some variant of the word “milkcrate” as a mark, Nike generally uses the words “Milk Crate” or “Crate” rather than “Milkcrate,” suggesting the company has consciously attempted to avoid confusion with the Milkcrate trademark. If LaCrate’s suit makes it past summary judgment, LaCrate and Milkcrate will need to present the court with strong evidence of actual consumer confusion, usually obtained through consumer surveys, to persuade the court that an infringement has taken place.
If “Milkcrate” was a famous mark, LaCrate would have an easier time with a “dilution-by-blurring” claim under the Trademark Dilution Revision Act (“TDRA”) (see this post regarding Starbucks Corp. v. Wolfe’s Borough Coffee Inc., a recent Second Circuit case, for an example of TDRA analysis). I don’t think, though, that there is much of an argument to be made that Milkcrate is presently a famous mark.
Posted on April 1st, 2010 • Filed under Uncategorized • 1 Comment
LL Cool J and Toby Keith are accusing Fox News of passing off old interview footage of the two stars as new content, according to the New York Times and the Village Voice.
Fox announced that former Alaska governor and current Fox News talking head Sarah Palin’s new show “Real American Stories” would include interviews with the two stars. LL Cool J says the Fox interview footage in which he appeared was recorded in 2008; Keith says his is from 2009. Ads for the show merely say that it is “hosted by Sarah Palin,” not that she interviewed the two stars, but some news outlets have mistakenly reported that the two stars will be guests on Palin’s show. According to the Times, LL Cool J has lodged a complaint with Fox, and Fox will not air his segment.
Now for the the legal angle: if Fox had refused to drop the segment, could LL Cool J have sued to prevent its airing?
I believe the answer is yes, based on Palin’s status as former governor, former Republican vice-presidential candidate and rumored 2012 presidential candidate. If she were just another Fox news anchor, and Fox had already obtained LL Cool J’s written consent to use the footage, as we can safely assume is standard procedure at the network, LL Cool J would have a tough time arguing that airing an interview with a public figure obtained for news-gathering purposes would violate any of his legal rights.
Palin, on the other hand, is no ordinary newscaster. Because she is seen primarily as a politician, LL Cool J, who supported President Obama’s candidacy, could plausibly argue that his appearance on her show would amount to a false endorsement of Palin. False endorsement is actionable under 15 U.S.C. 1125(a), one of the provisions of the Lanham Act, the primary federal trademark statute.
Left-leaning singer-songwriter Jackson Browne filed a similar suit against Palin’s running mate John McCain, alleging false endorsement, as well as copyright infringement and violation of Browne’s right of publicity, as a result of a McCain ad that used Browne’s song “Running on Empty” without Browne’s permission. (Read his original complaint here.) McCain moved to dismiss all of the claims and argued that the Lanham Act did not apply to political speech. The United States District Court for the Central District of California denied McCain’s motion to dismiss, and McCain later settled the suit and apologized to Browne.
All of the above, of course, assumes that LL Cool J needs lawyers to defeat foes. After all, this is the battle rapper who “crushed Moe Dee, Hammer, and Ice-T’s curl.” Shouldn’t Sarah Palin know better than to tangle with the Greatest Of All Time?