Articles Posted in Trademark and Copyright Litigation

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The Federal Circuit Court of Appeals has ruled that a century-old provision in the Lanham Act disallowing registration of “immoral” or “scandalous” trademark names violates the constitutional right to free speech. Consequently, plaintiff Erik B. will be allowed to trademark the “FUCT” label on his apparel brand.

Section 2(a) of the Act permits the Patent and Trademark Office to refuse to register a trademark that comprises “immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute.”

To determine whether matter is immoral or scandalous, PTO decides whether a “substantial composite of the general public” would find the mark shocking, disgraceful, or offensive.

Erik founded the “FUCT” brand in 1990, and in 2011 filed an intent to-use application with PTO for the mark to be displayed on clothing. The examining attorney refused to register the mark under Section 2(a), finding it comprised immoral or scandalous matter because it could be interpreted as the past tense of the “F” word.

Erik appealed to the Trademark Trial and Appeal Board, which affirmed the denial on the grounds that dictionary definitions uniformly characterize the “F” word as offensive, profane, or vulgar. Further, the Board found the mark was used in the context of what it called explicit and degrading sexual imagery depicting extreme misogyny and other violent and anti-social imagery. Continue reading

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The line between inspiration and theft continues to be blurry in the world of music, and as it turns out, Lana Del Rey is not exempt from copyright claims arising from those fuzzy definitions.

The latest controversy revolves around Del Rey’s new song, “Get Free,” which is featured on her “Lust for Life” album. According to Warner/Chappell, the music publisher for the band Radiohead, “Get Free” sounds enough like Radiohead’s song, “Creep,” which was a hit in 1993, that the songwriters of “Creep” allegedly deserve at least partial credit for “Get Free,” as well as a percentage of the song’s royalties.

What makes this dispute different is the lack of consensus as to whether a copyright lawsuit actually exists.

On January 7th, Del Rey posted a tweet saying that Radiohead’s song was not an inspiration for her own hit, but that the band continued to demand 100% of the song’s royalties. Del Rey said she had offered as much as 40% of the song’s royalties in negotiations that had lasted a few months, but that Radiohead’s attorneys refused to accept anything less than 100%. Del Rey concluded the tweet by saying they would settle the dispute in court. Continue reading

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An important ingredient in an allegation of stealing trade secrets is that you must be able to prove you suffered financially as a result of the alleged theft. With technology changing as quickly as it is these days, it’s important for anyone thinking about suing over misappropriated software to consider how much the technology is really worth.

According to a jury, attorney Peter Francis Geraci failed to account for these two factors before filing his lawsuit against another attorney, Thomas G. Macey, and a computer coder, R. William Amidon.

Amidon had created GapC for Geraci’s law firm, Geraci Law, LLC. According to the federal trade secrets lawsuit, Amidon allegedly stole Geraci’s proprietary software and gave it to Macey, a competitor of Geraci Law, LLC. Macey then allegedly used the stolen software to create a similar program for his own law firm, Legal Helpers P.C., which has since gone out of business.

Geraci used GapC from 1996 to 2006, at which point he switched to a different software to perform the same function. He sued Amidon and Macey for $30 million, although U.S. District Judge Manish S. Shah capped the possible damages awards at just over $2 million before sending the jury off to make their decision.

Amidon and his attorneys argued that, not only was the software not proprietary, but that it was already out of date when he wrote it. Continue reading

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Some companies’ products have become so associated with a particular symbol or color in the public mind that it is effectively impossible to separate them. Think of McDonald’s “golden arches” or the Apple logo.

Almost everyone is familiar with the green-and-yellow logo with the leaping deer found on John Deere tractors, lawnmowers, and caps. Deere & Co. wants to make sure that those colors remain associated with Deere products and only Deere products, and it is celebrating a recent trademark victory in a Kentucky federal court.

The Illinois-based farm equipment giant brought a trademark infringement suit against FIMCO, Inc., a South Dakota-based maker of pesticide sprayers, for its use of green and yellow on its equipment. The complaint alleged federal trademark infringement, unfair competition, and trademark dilution, as well as trademark infringement under Kentucky state law.

Deere’s iconic color scheme was registered as a trademark in 1988, and the company has been aggressive about enforcing it in court. Deere claimed that by using the recognizable color combination, FIMCO knowingly attempted to associate its products with the Deere brand in the public mind, with the effect of diluting the value of the trademark. Continue reading

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Shoes were hitting the legal dockets in numbers and mainly for Trademark reasons.  Some examples of cases where shoes became courtroom drama will be discussed in this post.  Let’s now look to see just who walked all over who:  

  1.  Shoes and branding became a reason to sue on the grounds of Racial Discrimination

An employee at a boutique shoe outlet called a tennis star to her face “disgusting,” and refused to give the similar rate of discount that was offered to white celebrities.  The suit has moved forward with the shoe store not even have conducted an investigation and have not received a courtesy of a reply yet.  They allege that the claim is possibly baseless.  Still, the treatment received was based off the purchase of shoes and discrimination received as a result.

  1. Being the daughter of a President does not give immunity to suit when a designer alleges Trademark Infringement against you when you design shoes

A designer whose label came to an end agreed to finally withdraw a case.  The case had seen the first daughter’s company accusing her of copying a fringe sandal and a pump in her line of footwear.  The court date was set for March 2018 and the Judge ruled that testimony would be required.  Perhaps the added pressure of that pushed a momentum towards the case being amicably settled or withdrawn.  The battle lasted a year for whatever that was worth.  Settling is much more suitable when you do not wish to face backlash and especially when you are at the forefront of American politics. Continue reading

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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