Articles Posted in Trademark and Copyright Litigation

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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.

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They say great minds think alike, but how do we determine the difference between thinking alike and stealing ideas? Thanks to copyright and trademark laws, some ideas are given a certain level of protection in this country, although the line between stealing an idea and having the same (or a similar) idea can get very blurry. This is especially true of creative professions, such as comedy.

According to a recent lawsuit filed against Conan O’Brien and the writers of his show, at least five of the jokes used in some of O’Brien’s opening monologues were stolen from Alex Kaseberg’s blog. Kaseberg is a freelance comedy writer who claims to have written comedy for Jay Leno, as well as several publications.

According to Kaseberg, the jokes in question allegedly appeared on his blog from December 2014 to June 2015 and it wasn’t long afterwards that they started appearing in the opening monologues of O’Brien’s late-night show on TBS.

One of the examples listed in the complaint includes a joke about the University of Alabama-Birmingham cancelling its football program. Aside from changing the name of a second football team, the joke appeared almost word for word on O’Brien’s show the day after Kaseberg posted it on his blog. Both the similarity between the two jokes and the timing seem a bit too much to be taken for mere coincidence and the judge presiding over the case agreed. Continue reading

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The internet contains so much content, and social media allows it all to be distributed so far and so fast, that the question of who owns exactly what content online, and the extent of that ownership, is constantly being debated.

Distractify and 22 Words are both sites that combine content from various sites and social media platforms and repurpose that content into articles that can be written up quickly and easily and disseminated throughout the internet. The result is what is commonly referred to as clickbait.

But now Distractify has sued 22 Words for allegedly violating its copyright at least 51 times. The examples provided in the complaint never involved a word-for-word copy of Distractify’s headlines or article content, but 22 Words did publish articles that contained the same ideas as previous Distractify articles, with similar headlines. Continue reading

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With the economy still unsteady after the recession, more and more people are attracted to the idea of starting their own business. But one of the biggest challenges when doing that is making sure you have something unique to offer the market.

For people who have spent most of their career working at one company, that’s often all they know. If they’re going to try to branch off on their own, they’d better make sure their new operation is significantly different from their employer’s, or at least has a new approach to the industry. Either way, it’s important to note that just copying and pasting your employer’s business is not only unethical – it’s illegal.

According to officials, David Newman, a 34-year-old trader who worked in Chicago, stole more than 400,000 electronic files from his employer. Those files contained all of WH Trading LLC’s proprietary computer code and trading software. Continue reading

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If a patent holder is allowed to control what happens to their patented products after the first sale, where would it end? Would they be able to take a cut from thrift shops? Garage sales?

Lexmark International, a technology company that makes printers and ink cartridges for those printers, has been selling its ink cartridges on the condition that they could not be refilled and resold after the initial sale. Despite that contingency, Impression Products, a small company based in West Virginia, was buying Lexmark’s ink cartridges (in the U.S. as well as abroad), refilling and refurbishing them, and reselling them at a reduced price.

Lexmark responded by suing Impression Products, claiming the company’s refusal to abide by the limitations Lexmark provided constituted trademark infringement. The case went before the U.S. Court of Appeals for the Federal Circuit, which is located in Washington. That court supported both of Lexmark’s claims concerning the resale of patented items that were initially purchased both in America, as well as those bought in other countries.

The appeals court agreed that, in most cases, anyone who bought a patented product was free to use it however they saw fit once they had paid for it, but that the conditions Lexmark had placed upon the sale of its ink cartridges was valid. Continue reading