Articles Posted in Trademark and Copyright Litigation

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Although it’s a problem most of us will probably never face, a battle currently being fought in Texas state court demonstrates why you may not want to sign away rights to your identity if you’re a celebrity chef. Kent Rathbun, a high-profile Dallas chef best known for his signature Abacus restaurant, is fighting for the right to use his own name and likeness in new business ventures while his former partner and financer claim exclusive ownership of them.

There is more drama than anything to be seen on a Master Chef episode.

It all goes back to an agreement which Rathbun now claims he signed under financial duress, allowing H2R Restaurant Holdings, the company majority-owned by his investor William H., to use his identity. Rathbun partnered with William in 2007 to form H2R Holdings in order to finance his restaurant ventures.

According to Rathbun’s complaint for declaratory relief, two years later William presented him with a document entitled “Assignment of Rights to Use of Name and Likeness.” William told him it needed to be “immediately executed as a condition to moving forward with company business.” At issue in the litigation is whether the agreement amounts to a covenant not to compete and is thus subject to state laws governing such covenants. Continue reading

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A trademark infringement suit recently filed in Chicago federal court shows how it doesn’t pay to have the same initials as a reality TV queen. Kim Kardashian West has won the right to have the case against her newly launched cosmetics company transferred from Illinois to her home base of California.

A Danish makeup artist and cosmetics producer is accusing Kardashian West and her company, Kimsaprincess Inc., of promoting a similar-sounding product line that could potentially get consumers confused between the two brands. Kirsten Kjaer Weiss, who brands her own products with her name and initials, KW, filed the trademark suit in the Northern District of Illinois, claiming that Kardashian West’s KKW brand sounds too much like hers.

U.S. District Judge Robert M. Dow Jr. ruled that even though the suit was properly brought in Illinois because both companies’ products are sold in the Chicago area, the Central District of California is a more appropriate venue because that is where Kimsaprincess is based, and where key witnesses for the company are subject to jurisdiction. Both KW and KKW products are also sold in California. Weiss’s line is sold in retail stores, while Kardashian’s are sold only online.

Weiss launched her organic cosmetics and skincare line in 2010, through Kjaer Weiss LLC, which is based in New York. She had argued for the Southern District of New York as an alternate venue to Illinois. Continue reading

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Celebrities who were superstars in life are often bigger moneymakers in death, their estates raking in huge revenues from posthumous sales of their music, memorabilia, or commercial use of their image. One need look no further than the lucrative afterlife of Elvis Presley and Michael Jackson.

Professional sports icons are no different. Heavyweight boxing legend Muhammad Ali has been gone for over a year now, but his name and image are still worth big bucks to advertisers. Now the company he formed during his lifetime to manage the commercial use of his persona is suing Fox Broadcasting Co. for $30 million for unauthorized use of the late champion’s identity in a pre-Super Bowl promotional ad in February 2017.

Muhammad Ali Enterprises LLC (MAE) filed the complaint Oct. 10 in federal district court in Illinois, charging that Fox used Ali’s name and likeness as the centerpiece of its three-minute promotional spot. The ad depicts Ali along with living NFL legends including Joe Montana and Joe Namath and makes repeated reference to Ali’s “The Greatest” title.

According to the complaint, the video begins with a narrator saying, “Walk with me as I confront greatness” while the viewer sees the back of a boxer representing Ali and wearing a robe that says “The Greatest. The Lip.” The viewer sees actual film footage of Ali and hears Ali shouting, “I am the Greatest!” The narrator again says, “Walk with me.  I can show you what it means to be the greatest.” Continue reading

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While colleges give promising athletes a free education in exchange for playing on the school’s sports teams, colleges and universities earn it all back and much more, not just through ticket sales and advertising space at games, but other promotional opportunities featuring their student athletes. With schools raking in millions of dollars that the athletes never get to see, many students are left wondering just what a college athlete’s image is worth, and how much (if any) of a claim those athletes have to their own images.

This issue has been addressed most recently in a lawsuit against Ohio State University, which named Honda and IMG Worldwide, Inc. as co-defendants. The lawsuit was filed in federal court by Chris Spielman, a former linebacker for Ohio State, after his image, along with images of other former Ohio State athletes, appeared on a series of banners that were sponsored by Honda and displayed around Ohio Stadium.

The series of banners is just one of several such programs listed by the lawsuit, which accuses Ohio State, Honda, and IMG of unjustly monopolizing the images of former student athletes for profit. The lawsuit is seeking an end to the marketing program, as well as $75,000 in compensation for the former Ohio State athletes whose images appeared in the program. Although that dollar amount is standard for these kinds of claims, the complaint points out that Ohio State is currently making millions of dollars through merchandising programs like the banners that were displayed around the stadium.

In September, the university filed a motion to dismiss the lawsuit, arguing that the case hasn’t met the requirement for this type of antitrust lawsuit, and that federal courts don’t have jurisdiction over this case. Continue reading

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Advertising name-brand products that don’t actually have anything to do with the brand being named is called false advertising. It’s illegal, not only because it causes potential harm to the brand whose name is being abused, but to consumers who are misled as a direct result of the false advertising.

Costco has allegedly been selling diamond engagement rings that were marked “Tiffany” rings, and Costco salespeople allegedly told customers the rings were “Tiffany” rings. Although the wholesale retailer has never sold jewelry from the famous Tiffany & Co., and has never used the company’s trademark blue boxes, the wholesale company does sell diamond rings with a pronged setting, which it claims is commonly known as a “Tiffany” setting.

The problem was that Costco did not call them “Tiffany setting” rings or “Tiffany-style” rings. It just called them “Tiffany” rings, which understandably led to some confusion.

Despite the fact that customers got upset when they realized the rings labeled “Tiffany” were not actually from the famous jewelry store, Costco allegedly still did not see a problem with how they were marketing their generic diamond engagement rings. Tiffany & Co. disagreed and sued the wholesale company for trademark infringement. Continue reading

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Furniture sold in Illinois through Bon-Ton Stores was the subject of a recent trademark infringement case before the Ninth Circuit Court of Appeals (Stone Creek, Inc. v. Omnia Italian Design, Inc., No. 15-17418 (9th Cir. 2017)).

Phoenix-area furniture maker and retailer Stone Creek, Inc., obtained state and federal trademark protection for the signature red oval encircling the words “Stone Creek” imprinted on its furniture. In 2003, the company entered an agreement with leather furniture maker Omnia Italian Design to sell Omnia furniture branded with the Stone Creek label in Stone Creek stores.

Stone Creek later learned that Omnia was using its brand mark without authorization on competing products, specifically furniture sold through Bon-Ton Stores in the Midwest. Omnia digitally copied the mark from Stone Creek products and used it in marketing and warranty materials displayed at Bon-Ton galleries. Stone Creek was tipped off when, among other things, consumers began contacting them about warranties for furniture purchased at Bon-Ton.

Stone Creek sued Omnia for federal and common-law trademark infringement and unfair competition. The district court found for Omnia on the ground that consumers were not likely to be confused by the mark as defined under the Lanham Act.

A “likelihood of confusion” under trademark law turns on whether a “reasonably prudent” marketplace consumer is “likely to be confused as to the origin of the good or service bearing one of the marks.” Determining factors include the similarity of the marks and the proximity of the goods, the recognition and distinctiveness of the protected mark, evidence of actual confusion, and common marketing channels. Continue reading

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When a company changes its logo to just the letter, “P” it’s hard to believe a single letter of the alphabet could be trademarked, but that’s what PayPal appears to be claiming.

According to a recent trademark infringement lawsuit PayPal filed against Pandora, it’s more than just the letter. It’s also the color and style, both of which are very similar to the logo PayPal has had for the past three years.

Currently, PayPal’s logo is two blocky, overlapping Ps in sans serif, with no counter. A very dark blue P overlaps a light blue P.

Pandora’s new logo is a single, blocky, dark blue P, on the same color spectrum as PayPal’s logo. It also has the sans serif and absence of counter as PayPal’s logo. According to PayPal, the new Pandora logo goes beyond resembling PayPal’s logo and openly mimics it.

Despite the fact the two companies are working in very different industries, PayPal’s trademark infringement lawsuit is claiming that Pandora recently changed its logo in a deliberate attempt to cause confusion among consumers. Continue reading

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Many people and organizations have long tried to get the NFL team known as the Redskins to change their name. The name is certainly offensive to most Native Americans and is a racial slur, but it’s not illegal to use it.

The football team has maintained a trademark on the Redskins name since 1967, but when they went to renew it in 2014, the trademark office refused, saying the name disparaged Native Americans. The team sued the trademark office in Virginia, where a trial judge ruled in favor of the trademark office. The team appealed the decision to the United States Court of Appeals for the Fourth Circuit, which is also located in Virginia, but that court put off ruling on the case until after the U.S. Supreme Court had given its ruling on Matal v. Tam, in which an Asian-American dance-rock band is seeking a trademark for their name: the Slants.

While the trademark office insisted the name was offensive, the band members said that was not their intention in coming up with the band’s name. Instead, they were looking to empower themselves and other Asian Americans by repurposing a derogatory term, much like the way homosexuals have taken ownership of the term “queer.”

All eight of the judges were unanimous in ruling in favor of the Slants, though their reasoning differed (Neil Gorsuch was not included in the decision, as the hearing was in January, prior to his appointment). Half the judges maintained a ban on trademarks for disparaging names would be in violation of the First Amendment, even when taking into account that judicial scrutiny for commercial speech tends to be relatively relaxed compared to other forms of speech. The judges pointed out that the First Amendment protects all speech, however hateful or offensive. Continue reading

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Streaming services such as Netflix, Hulu, Amazon, and Spotify, are all wonderful for consumers, but they can create problems for copyright attorneys.

In traditional retail, copyright holders are the only ones who maintain the right to reproduce and sell published content, including books, articles, videos, and music. But there’s a specific type of publishing license, called a mechanical license, that distributors can get to cover their reproduction of copyrighted works (such as the songs Spotify makes available to its customers).

According to a class action copyright infringement lawsuit recently filed against Spotify, the music streaming company allegedly violated copyright laws by failing to pay for mechanical licenses for numerous songs it was distributing to its listeners.

Shortly after the lawsuit was first filed, a representative of the company released a public statement, claiming the information necessary to identify the proper copyright holder is not always available. He insisted that, in such instances, Spotify sets aside licensing money for when the proper copyright holders could be found.

But according to David Lowery, the musician who filed the class action lawsuit, the statement is as good as an admission of guilt. Even if Spotify felt it was doing the best it could, the fact remains that copyright law requires you to pay the copyright holder before you can distribute their work. Lowery and his attorneys maintain that, by failing to do so, Spotify was violating U.S. copyright laws. Continue reading

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Super Lawyers named Illinois business trial attorneys Peter LubinVincent DiTommaso, Patrick Austermuehle and Andrew Murphy Super Lawyers or Rising Stars in the Categories of Class Action, Business Litigation and Consumer Rights Litigation. DiTommaso Lubin Austermuehle’s Illinois business trial lawyers have over thirty years experience in litigating complex class action, copyright, non-compete agreement, trade mark and libel suits, consumer rights and many different types of business and commercial litigation disputes including lawsuits between businesses or between shareholders and owners of the same business.  Our Naperville business dispute lawyers handle emergency business law suits involving copyrights, trademarks, injunctions, and TROS, covenant not to compete, franchise, distributor and dealer wrongful termination and trade secret lawsuits and many different kinds of business disputes involving shareholders, partnerships, closely held businesses and employee breaches of fiduciary duty. We also assist businesses and business owners who are victims of fraud. You can contact us by calling (630) 333-0000 or our toll free number (877) 990-4990.  You can also contact us online here.