Articles Posted in Trademark and Copyright Litigation

Published on:

Fox Broadcasting Co. has come out swinging against a $30-million lawsuit by the estate of Muhammad Ali for unauthorized use of the late boxing legend’s image in a 2017 Super Bowl promotional spot entitled “The Greatest.”

Last October, Muhammad Ali Enterprises, LLC (MAE), filed a complaint against Fox in the Northern District of Illinois alleging violation of Ali’s publicity rights under Illinois and federal law. The parties later agreed to transfer the case to the Northern District of California, where both parties are located.

In its motion to dismiss filed January 16 in Oakland federal court, Fox claims the suit is barred by the First Amendment, Illinois and California statute, and preempted by the federal Copyright Act. Its primary defense is that the Super Bowl, and Ali himself, are matters of public interest and therefore exempt from statutory publicity protections, and also that the spot is exempt as part of a sports broadcast.

Fox argues that Illinois has no meaningful relationship to the case, therefore its law should not apply. Further, Fox asserts that Illinois choice-of-law rules allow it to invoke California anti-SLAPP law, which prohibits legal actions designed to chill exercise of free speech. (SLAPP stands for Strategic Lawsuit Against Public Participation.) Continue reading

Published on:

In this blog post, we will look at the federal courts and the need to evaluate the protection of customer lists as trade secrets. Contextually speaking, the federal statute is in place for the purposes of misappropriation.

In order to meet the standard of a misappropriation, there must be:

(1) acquisition of a trade secret of another by a person who knows or has reason to know that the trade secret was acquired by improper means or  (2) disclosure or use of a trade secret of another without express or implied consent. When the alleged misappropriation is based on disclosure or use, the person who disclosed the information must have: “(i) used improper means to acquire knowledge of the trade secret; (ii) at the time of the disclosure or use, knew or had reason to know that the trade secret was; (I) derived from or through a person who had used improper means to acquire the trade secret; (II) acquired under circumstances giving rise to a duty to maintain the secrecy of the trade secret or limit the use of the trade secret; or (III) derived from or through a person who owed a duty to the person seeking relief to maintain the secrecy of the trade secret or limit the use of the trade secret; or (iii) before a material change of the position of the person, knew or had reason to know that—(I) the trade secret was a trade secret; and (II) knowledge of the trade secret had been acquired by accident or mistake.” 18 U.S.C. § 1839(5).

Customer lists can be considered one of the most valuable assets that a company can have.  Theft or trade of such information can cost some companies up to hundreds of thousands, if not millions.  That is why there has been a move to guard the trading of this within the United States of America.  The scope of the internet and the way we interact in the current climate is affected by digital marketing, online purchasing and through the selling of products via social media.  This often requires tracking of customers via a list or database of clientele that is accumulated by business over the years.

In the past, violations have been met with a lawsuit.  Now there has been a change in legislation and at a Federal level.  Misappropriation now equals a breach of law in the absence of a suit.  Previously, such claims were subject to diversity in legislation. Under the legislation, a company whose customer list is misused is entitled to equitable relief, actual damages, punitive damages, and attorney fees. Continue reading

Published on:

Owners of a cat became rich by marketing their cat as a “Grumpy Cat.” As a result, all sorts of products including toys and even a movie were made in the name of being a visibly, unhappy cat.  In a one of a kind suit and type of case, copyright infringement was discussed when it came to a cat.

The corporate entity that handled all licensing for Grumpy-cat took a beverage company to suit for violations made in the business of selling coffee.  The beverage company had a valid contract that was enforceable and permitted the production of “Grumpy Cat.” Problems came when Grenade Beverage decided to extend that agreement to a line of Grumpy Cat-branded ground coffee without Grumpy Cat Ltd.’s prior consent and approval.  As such the question arose as to the infringement of trademark and of copyright.  The lawsuit began over the sale of coffee that was unlicensed and marketed under its name. The time span of litigation lasted for over two years. In addition, there was a failure to provide an accounting of sales and profits with no pay a percentage of profits.  Shirts were also being sold in the name of that coffee.

This is one of those cases where a lot of time and money that went into having these contracts and joint ventures chartered.  However, it was all done for a cat and in the name of its face.  Prior to the commencement of litigation, exactly all terms and conditions had been laid out for every variation of the Grump Cat image and brand each time they wanted a new item branded with the cat’s name.  The brand name had even extended to memes.  Internet culture shapes behavior and the culture that we are talking about.  People had started to co-opt into memes which have now become the talk of legal rulings.  Once upon a time, memes were free and harmless.  Back then, no one would admit to owning anything. The intellectual property associated with Grumpy Cat has changed all that.  Any time that someone wants to co-opt a meme, it must be legally sanctioned.  Continue reading

Published on:

With the rise of social media and “personal branding,” everyone has begun to recognize the need to protect their name as part of their own brand. For many people, not only does it control opportunities for income, but it also reflects their reputation in general and their standing in the community.

But the need to protect one’s good name has been around for centuries and celebrities (such as actors, musicians, writers, etc.) have been working to control how their names are used since long before the internet came on the scene. The members of the band, the Eagles, have been especially careful about protecting their names from misappropriation. They’ve spent decades working hard to build and maintain their reputations and they’re not about to let anyone else infringe on all that hard work – and possibly compromise it in the process.

Among the lawsuits, the band members have filed to protect their names is one filed by Don Henley against Duluth Trading Co. The clothing maker allegedly put out an email ad for their Henley T-shirts that made Henley’s name into a pun by telling customers to “Don a Henley and Take It Easy,”

The last part of the phrase refers to the song, “Take It Easy,” which became the band’s breakthrough hit song. However, although Henley did co-write a number of songs for the famous band, “Take It Easy” was not one of them. Instead, Glenn Frey and Jackson Browne wrote the song and Frey sang it. Continue reading

Published on:

Bands work hard to build and maintain a certain image, which is why they have to react quickly when someone tries to infringe on that image.

According to a recent trademark lawsuit, a Mexican hotel, located in Baja, California, was allegedly trying infringe on the image of the famous rock band, the Eagles, by changing the hotel’s name to Hotel California. The hotel was also allegedly playing the band’s music in and around the hotel, and selling T-shirts and other merchandise with “Hotel California” emblazoned across them as part of the hotel’s marketing campaign for their new name.

The hotel’s original title was actually “Hotel California” when it was founded back in 1950. Over the years, it acquired new owners and new names, but when John and Debbie Stewart bought the hotel in 2001, they decided to restore its original name.

The hotel is now owned by a company called Hotel California Baja LLC, which applied for a trademark for the name of the hotel, and that’s when the Eagles filed their lawsuit against the hotel company in the U.S. District Court of Los Angeles. Continue reading

Published on:

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

Published on:

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

Published on:

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

Published on:

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

Published on:

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