Posts Tagged ‘Trademark’

“Life is Rad” Legal Strategy All Wet

Posted on June 1st, 2010 • Filed under Uncategorized • 1 Comment

An entity selling radiology-themed apparel using the mark “Life is Rad” (groan) attempted some radical moves in a suit against a surfing-themed competitor using the mark “Life’s Rad” and the Internet t-shirt behemoth CafePress recently, only to emerge from the waters of the Northern District of California with an ice-cream headache.

“Life’s Rad” (surfing) and “Life is Rad” (radiology) both sold merchandise on CafePress. Life’s Rad filed a takedown notice with CafePress, asserting a violation of Life’s Rad’s federal trademark, which CafePress honored. Life is Rad then filed a lawsuit against both Life’s Rad and CafePress.

Unfortuntely, Life is Rad’s owner, apparently representing himself pro se, asserted a number of sunstroke-induced legal arguments against CafePress, including interference with prospective economic advantage (sorry, dude, CafePress is just one place to sell shirts on the ‘Net, and they had a legit reason to deep-six the Life is Rad goods) and violation of the Digital Millennium Copyright Act’s takedown provisions (bro, the DMCA only applies to copyright, not trademark, bro!)

Life is Rad’s suit against Life’s Rad proceeds, but all the claims against CafePress were dismissed without leave to amend.

As Eric Goldman writes on his Technology and Marketing Law Blog, “This is a great win for CafePress, especially because the court implicitly upholds CafePress’ user agreement. Further, this ruling is yet another data point showing that vendors have a lot of discretion to take down their users’ offerings without fear of liability to the user.”

 

This Week in Junk Food Trademark Fiascos

Posted on May 19th, 2010 • Filed under Uncategorized • 2 Comments

Those of you not following us on Twitter (we’re at @95years) might have missed out on a remarkable run of news stories about questionable trademark enforcement efforts by fast food companies.

First out of the gate in the mad dash towards trademark enforcement infamy was Subway, which, as detailed by NPR’s Planet Money blog, sent a cease and desist letter to the Coney Island Drive Inn, a hot dog vendor which owns and uses the URL GotFootlongs.com.

The C & D stated that “DAI [Subway's parent company] has applied for the trademark FOOTLONG(TM) in association with sandwiches . . . DAI has become aware that your restaurant is using the term FOOTLONG(TM) in violation of DAI’s trademark rights.”

As TechDirt noted, “There are all sorts of problems with this.” DAI has only attempted to register a federal trademark in “footlong”; it hasn’t yet established that it has any rights to the mark. Immediately after DAI concedes in its own letter that DAI doesn’t yet hold the trademark, however, DAI invokes its “trademark rights” and accuses the hot dog vendor of violating those rights. Mind you, a federal trademark registration isn’t necessary to assert trademark rights, but “footlong” is a common term, and one which Coney Island Drive Inn has been using in its domain name since at least 2006, years before Subway’s “$5 Footlong” campaign took flight.

A separate issue is that DAI is asserting rights in the word “footlong” — a word which is almost certainly merely descriptive of the length of Subway’s sandwiches, and thus not registrable as a trademark (and if the photo above is to be believed, “footlong” doesn’t accurately describe every full-size Subway sandwich).

Even Subway conceded that they only sought to trademark “footlong” with regard to sandwiches, and hot dogs aren’t necessarily sandwiches.

(An aside: Subway is free to use the TM symbol in connection with “footlong” in its letter because the TM symbol may be used by any party which wishes to put other parties on notice that it asserts rights in a mark, regardless of whether its mark has been registered. The circle-R symbol is reserved solely for registered trademarks.)

Chik-fil-A got into the act this week as well, sending a cease and desist letter to a Florida produce stand named “Eat More Produce,” which Chick-fil-A’s counsel claims is “playing off of and imitating Chick-fil-A’s valuable Eat Mor Chikin Intellectual Property by using a domain name and trade name that are confusingly similar to Chick-fil-A’s.”

Arguing that “Eat More Produce” is “confusingly similar” will likely be a legal dead end for Chick-fil-A, as Eat More Produce is a produce stand, has a tomato as a logo, and doesn’t sell fried chicken sandwiches, meaning that the likelihood of any sort of consumer confusion between Eat More Produce and Chick-fil-A is basically nil.

We can assume that Chick-fil-A will additionally assert, though, that the use of “Eat More Produce” as a mark will result in trademark dilution. Under the doctrine of trademark dilution courts will allow holders of famous marks (and “Eat Mor Chikin” is certainly famous if you live in the South like I do) to enjoin uses of similar marks if the use of such similar marks would tend to lessen the association between the famous mark and the product or products which it advertises. Trademark dilution has a little more heft as a legal theory in these circumstances, but if I were representing Eat More Produce, I’d argue that the “Eat More Produce” mark is actually a parody of “Eat More Chikin,” since it serves to advertise (healthy) vegetables and implicitly mocks Chick-fil-A’s trade in (unhealthy, though delicious) fried chicken sandwiches, and is therefore potentially exempt under at least federal anti-dilution statutes.

For those of you who are not well-versed in trademark law and therefore inclined to conclude that these companies are completely nuts, they have merely gotten carried away in necessary efforts to do what’s known as trademark policing. In American trademark law, holders of trademark rights must consistently patrol the marketplace for infringement upon those rights and assert those rights against competing users — or risk losing them. It’s usually better to be overzealous in one’s policing than insufficiently aggressive, though overzealous policing may lead to enforcement actions which confound common sense.

Two bonus food-related trademark stories (what is it about this week?):

In Spain, the term “donut” is trademarked, so Dunkin Donuts is known as Dunkin Coffee.

A Pakistani restaurant across the street from the New York Times displeased the Gray Lady by changing its name to the Times Cafe and employing a certain famous font on its awning.

 

Milkcrate Athletics Files Trademark Suit Against Nike Over LeBron James’s Milkcrate-Themed Shoes

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.

Now Aaron LaCanfora, AKA DJ Aaron LaCrate, owner of a clothing company named Milkcrate Athletics (pictured), is accusing Nike of stealing his Milkcrate trademark.

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.

In an interesting footnote for electronic music fans, LaCrate’s attorney in this matter, Gary Adelman, was one of the founders of the label Liquid Sky.

 

Craft Brewers Shun Product Name Dispute, Create “Collaboration not Litigation Ale”

Posted on April 19th, 2010 • Filed under Uncategorized • 3 Comments

In 2004, two craft brewers, Adam Avery of Avery Brewing of Colorado and Vinnie Cilurzo of Russian River Brewing of California, met at the Great American Beer Festival. Comparing notes about their respective product lines, they came to the uncomfortable realization that one of Avery’s beers shared the name “Salvation” with one of Cilurzo’s. Worse, both beers were Belgian ales — Avery’s Salvation is a Belgian golden ale and Russian River’s Salvation is a Belgian strong ale.

The two brewers found themselves on the brink of a product name dispute. Rather than calling in the lawyers, however, they drew upon their brewing talents to concoct a unique solution. Together, they set to work on a blend of the two Salvations. Cilurzo’s wife dubbed the blend “Collaboration Not Litigation Ale.” Two years later, the blend went into production as a seasonal brew.

Collaboration Not Litigation Ale, variously categorized as a Belgian strong ale or a Belgian brown ale, gets fairly high marks at RateBeer. At 8.97% ABV, however, lawyers with court in the morning might want to opt for something a little tamer.

While perusing the beer aisle in my local Whole Foods yesterday, I came across a fresh shipment of Collaboration Not Litigation Ale. As a conscientious lawyer, I was happy to see people avoid unnecessary litigation, and as a beer drinker, I was even happier to see that creative negotiation had brought more delicious beer into the world.

 

Burlesque Law News, Part I: Pussycat Dolls Tribute Acts Take Copyright and Trademark Dispute to Court

Posted on April 5th, 2010 • Filed under Uncategorized • 2 Comments

In burlesque-law news, a Seattle woman, Kristen Colliander, has sued her former employer, Goldberg Entertainment Inc., for whom she claims she created and developed “The Angels: A Pussycat Dolls Tribute.” (For those of you unfamiliar with mid-2000s pop-dance music, the Pussycat Dolls, per Wikipedia, are “an American pop girl group and dance ensemble founded by choreographer Robin Antin in 1995 as a burlesque troupe.”)

Colliander and Goldberg parted ways and are now competitors. Goldberg has continued to use the name “The Angels” for its PCD tribute act. Colliander, nonplussed, alleges that she holds a common-law trademark in the word “Angels” for the show, and that Goldberg is infringing not only upon that trademark, but upon her copyright in various promotional materials and on the “unique pseudonyms, images and likeness [sic]” allegedly created by Colliander for “The Angels.” She also alleges Lanham Act violations and violation of Washington’s right of publicity statute. We’ve made Colliander’s complaint available here. (Read more about the case at Seattle Trademark Lawyer and at Property, intangible.)

I’ve never looked into legal issues surrounding tribute acts, but asserting one’s intellectual property rights in material created in the process of performing another group’s songs while dressed up like that group is courageous, to say the least. However, there are indeed some distinct similarities in the two groups’ promotional material that might support Colliander’s allegations.

Colliander’s current PCD tribute group, the “Pussycat Angels,” is featured here on the website of Titan Entertainment. Goldberg Entertainment’s website advertises the Colliander-less “Angels” here.

A glance at both pages (see above) reveals that the “Pussycat Angels” and “Angels” logos are basically identical. The complaint alleges only common-law copyright infringement in what it describes as “Plaintiff’s ‘Angels’ common-law trademark” (see Complaint, p. 7.). However, the complaint doesn’t distinguish between a mark in the common word “Angels” and the more distinctive “Angels” logo used by both acts. Assuming Colliander created the “Angels” logo, a comparison of the logos at the very least suggests something is awry. (Additional trademark or unfair competition analysis would require information not provided in the complaint, such as whether Colliander has any evidence supporting a finding of a likelihood of confusion, or actual confusion, between the two groups due to the similarity of the marks.)

Additionally, Goldberg’s “Angels” are advertised as “[o]ne part dance. One part vocal chops. Mix well with personality plus, sexy costumes, and a band that rocks the house.” Colliander’s “Pussycat Angels” are advertised as, you guessed it, “[o]ne part dance. One part vocal chops. Mix well with personality plus, sexy costumes, and a band that rocks the house.”

If Colliander wrote the advertising copy, her copyright infringement claims might well survive a motion to dismiss. I would expect Goldberg Entertainment’s defense to focus on the extent to which there is evidence that, because Colliander was a Goldberg employee, her efforts were work for hire and therefore the property of Goldberg, not Colliander.

We’ll be bringing you more burlesque law news shortly. No, I am not kidding.

 

Wordle and Cloudy Trademark Claims

Posted on February 28th, 2010 • Filed under Uncategorized • No Comments

Early this morning, TechCrunch reported that Wordle, a popular text cloud generator, was down because the site’s admin was facing a trademark dispute from the owner of the registered Wordle trademark.  The Internet went nuts.  We here at 95years care about things that make the Internet go nuts, so I’ve decided to skip my usual Sunday morning ritual of watching Face the Nation and Meet the Press followed by a marathon of horrible VH1 reality TV to provide a little bit of clarity on the issues at hand. This should in no way be construed as legal advice, and is simply my ruminations on what is a somewhat murky area of trademark law.

Wordle is a registered trademark, belonging to Mark Jordan Koeff, a photographer from California.  Mr. Koeff  registered the mark under classes protecting, amongst other things, paper goods, board games, and textiles.  This may prove pivotal in sorting out the dispute.  When a trademark is registered, the registrant must provide classes of goods for which they are registering the mark.  That’s why Apple, for instance, can trademark the word for protection over computers, but has no claim over fruit, or perhaps more notably, record labels bearing the same name.  Thus, identical trademarks can in fact coexist on dissimilar products.  Jonathan Feinberg, the owner of wordle.net, probably has no intention of creating a Wordle board game or Wordle textiles.  I dare not speak for the man, but gut instinct tells me I’m probably not wrong on this one.  As such, he may in fact be in the clear.  As we’ve mentioned before,  a trademark claim generally rests on a likelihood of confusion for consumers.  The burden is on Mr. Koeff to show that consumers will be confused as to the origin of the Wordle site in relation to Koeff’s goods or services, none of which I can track down after a rather cursory search.  Koeff could also bring a claim for trademark dilution, stating that the wordle site lessen’s the uniqueness of Koeff’s mark.  This will get shot down with a quickness, though, as dilution claims are generally reserved for famous marks.  No offense to Koeff, but I’ll eat my hat if Wordle is a famous mark.

At its face, Koeff’s not wrong to dispute the name of the site.  An owner of a trademark is required to actively police his mark in order to avoid dilution.  Monster Cable is infamous for adamant policing of their mark.  Feinberg didn’t necessarily have to take the extreme measure of taking down his site, but it can be extra scary when someone with a piece of paper from the government threatens legal action.  There’s a chance Feinberg will have to rebrand his site, but that really does rest upon the class registration and whether the marks are used in concurrent channels. Hopefully this will come to a speedy resolution for all parties involved.

 

Can You Copyright Your Tweets?

Posted on February 26th, 2010 • Filed under Uncategorized • 3 Comments

Ross Grady (@rossgrady) just alerted me to a blog post by graphic designer Jeffrey Zeldman that’s generating discussion on Twitter today. Zeldman assures his readers that they don’t need to worry about copyright issues with regard to Twitter because tweets, as “short phrases,” can’t be copyrighted. If you have a really good one, you can trademark it, but otherwise, “they are in the public domain the instant you publish them,” because “your Tweets are like the air. Anyone can do anything like to them, including quoting them with or without your permission.”

This is bracing advice! Of course, it’s also completely wrong.

Zeldman’s post relies heavily on a circular from the Copyright Office entitled “Copyright Protection Not Available for Names, Titles or Short Phrases.” The circular explains that “[u]nder section 102 of the Copyright Act (title 17 of the U. S. Code), copyright protection extends only to ‘original works of authorship.’ The statute states clearly that ideas and concepts cannot be protected by copyright. To be protected by copyright, a work must contain a certain minimum amount of authorship in the form of original literary, musical, pictorial, or graphic expression. Names, titles, and other short phrases do not meet these requirements.”

If Zeldman had read a little more closely, he would have seen that the Copyright Office is explaining that short phrases in the manner of names and titles are not copyrightable, not all short phrases.

What the Copyright Office is hoping to get across to the thousands of people who send in copyright applications each year is that you cannot copyright, say, the name of a book or a movie. You have to trademark it, because the name alone isn’t a freestanding work of original expression, it’s a means of distinguishing that work in the marketplace, which is a function protected by the issuance of a trademark.

The Copyright Office is also trying to keep people from attempting to register copyrights in, say, movie pitches – “astronaut falls in love with robot.” There’s not enough original expression in that sentence — it’s just an idea written down, and you can’t copyright ideas.

If you write an original and distinctive twelve-word poem about an astronaut falling in love with a robot, however, there may be protectible expression in that poem despite its brevity. As Richard Stim explains in “I May Not Be Perfect but Parts of Me Are Excellent: Copyright in Short Phrases,” copyright protection of short phrases is disfavored, but it is available in certain circumstances where the short phrase demonstrates originality and distinctiveness. For instance, as one of Zeldman’s commenters pointed out, the epigrammatist Ashleigh Brilliant successfully sued to prevent a t-shirt transfer company from appropriating two of his epigrams. The epigrams were twelve and fifteen words, respectively (one of them became the title of Stim’s article). The court found that the phrases were entitled to copyright protection despite their brevity because of their distinctiveness and cleverness. The case is Brilliant v. W.B. Productions, Inc. Civ. No. 79-1893-WMB (S.D. Cal Oct. 22, 1979).

Zeldman’s statement regarding trademarking short phrases — “If you write a clever Tweet and wish to assert ownership (and if money is no object), you may apply for a trademark” – also misreads the Copyright Office circular, which explains that “[s]ome brand names, trade names, slogans, and phrases may be entitled to protection under laws relating to unfair competition, or they may be entitled to protection and registration under the provisions of state or federal trademark laws. The federal trademark statute covers trademarks and service marks—words, phrases, symbols, or designs that distinguish the goods or services of one party from those of another.”

Here, the key phrase is “distinguish . . . goods and services.” As noted above, trademarks distinguish goods and services. A “clever tweet” that is not used to distinguish goods and services in the marketplace is not amenable to trademark registration. For instance, the phrase “life is good” is not eligible for copyright protection, but when it is combined with a stick figure strumming an acoustic guitar with its dog at a campsite and slapped on a whole line of products, it becomes a means of distinguishing that particular line of products, and thus may be registered as a trademark.

Zeldman’s post is full of other confident misstatements of copyright law, such as, “[y]ou needn’t ask for permission to quote me. This is covered under fair use. You will not break any copyright law in quoting a short excerpt. This is covered under fair use.” In fact, I direct Mr. Zeldman to the case of Harper & Row v. Nation Enterprises, in which the United States Supreme Court found that republishing even brief verbatim quotes can amount to infringement under certain circumstances.

Twitter has largely avoided copyright disputes among its users by creating its own attribution and licensing convention, the retweet, which essentially supplants copyright in the Twitterverse. The functionality of this alternative system is proof that copyright law has not caught up with the reality of the Internet. However, it doesn’t mean that copyright law doesn’t apply to the Twitterverse. As always, it lurks in the background wherever people are creating reproducible works of expression.

 

Law Students Win Downloading Victory; Corporations Contemplate Political Speech; Gaga Trademarks Self

Posted on February 25th, 2010 • Filed under Uncategorized • 1 Comment

Students from Franklin Pierce Law Center’s clinics are declaring victory for their client in a music downloading suit against the Recording Industry Association of America (RIAA). Students from the Consumer and Commercial Law and Intellectual Property and Transaction Clinics aided a New Hampshire woman, Mavis Roy, in reopening a default judgment lodged against her for allegedly illegally downloading hundreds of songs. The case was then set for trial and the students spent months preparing. After Roy’s counsel obtained an expert report which “seriously challenged RIAA’s evidence linking the downloading activity to Roy’s computer,” the two sides reached a settlement highly favorable to Roy — the suit was dismissed with prejudice and she paid no damages. Thanks to @piercelaw for the tip.

As you might expect, law firms are already advising corporate clients about how to direct corporate spending to political campaigns in the wake of Citizens United v. FEC. According to K & L Gates, they should proceed with caution and keep a low profile. For more information on Citizens United, see our earlier post, “Citizens United v. FEC: Eight Unanswered Questions.”

Gawker reports that Lady Gaga has applied for a trademark in her name for use in conjunction with an extremely wide range of products, including gift cards, tank tops, and pens. The application is here.

 

Don’t Mess With “Don’t Mess With Texas”

Posted on February 8th, 2010 • Filed under Uncategorized • 1 Comment

I first encountered the phrase “Don’t Mess With Texas” on t-shirts and stickers sometime in the 1990s. At the time, I thought it was just a generic expression of Texan bravado — it took a few years for me to find out that it was actually an anti-littering slogan adopted by the Texas Department of Transportation (TxDOT).

Apparently I’m not the only one who thought the slogan was free for the taking. In a recent case, Texas Department of Transportation v. Richard Tucker, TxDOT was forced to lay the smackdown on an interloper for messing with “Don’t Mess With Texas.”

Tucker, a businessman, attempted to register “Don’t Mess With Texas” with the United States Patent and Trademark Office for use on two different categories of articles of clothing in 1995 and 2000, claiming first use in 1993 and 1999, respectively. TxDOT filed a petition to cancel with the Trademark Trial and Appeal Board in 2000 and an opposition to trademark renewal in 2004, claiming prior use going back as far as 1985. Interestingly, TxDOT did not actually file its first trademark registration for the slogan until 2000.

Tucker argued, among other things, that TxDOT did not use its slogan outside Texas, but TxDOT presented plenty of evidence of prior use of the mark, including use on t-shirts, and evidence that the mark is a famous mark due to its use in a “massive and far-reaching publicity campaign.” Worse for Tucker, he admitted in his own filing that TxDOT had actually used the slogan first.

Read the rest of this entry »

 

Thursday Afternoon Link Explosion

Posted on February 4th, 2010 • Filed under Uncategorized • 1 Comment

The owner of a restaurant called the Heart Attack Grill has filed a trade dress lawsuit against a similarly themed eatery called Heart Stoppers Sports Grill. Reading about this suit will either turn your stomach or make you ravenously hungry. [Story and photo courtesy the  Wall Street Journal Law Blog]

I can haz damajes? ICanHasCheezburger and Failbooking owners sue alleged competitor who supposedly just stuck Failbooking in a frame to provide content for his own (some say better) URL, Failbook. [Techdirt via Erik J. Heels]

The first textbook on fashion law has just been published. It covers everything from intellectual property to employment disputes. [Stylelist]

Remember the FTC’s new stricter rules for blogger endorsements? Jezebel is highlighting why they might have come into existence by pointing the finger at a number of fashion bloggers who received gift cards from Ann Taylor in exchange for covering an Ann Taylor event. Was the coverage favorable? Guess. [Jezebel via Erik J. Heels]

A great post on “Ten Smart Reasons to Learn About IP Law” from the new blog IP Law for Startups. Aspiring entrepreneurs should read this post twice.