Posts Tagged ‘trademark lawsuit’

Facebook Has No Case For Trademark Suit Against Faceporn

Friday, 25 May, 2012 05:06 Written by Mark Malek 0 Comments
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By: Mark R. Malek

You may recall a while ago that I posted an article about how Facebook was suing Faceporn for trademark infringement. At the time that I wrote that article, Faceporn was taken down.  I believe that the Faceporn that was the subject of that article, however, was the .com version.

This case is about a Norwegian site called Faceporn.  To tell you the truth, I’m not even sure if they are the same site, but I’m sure they are peddling the same stuff.  I’ll give you three guesses about the content!  Be that as it may, according to this CNET article, the Court in California indicated that Facebook has no case against Faceporn because there was no evidence submitted that Faceporn has corrupted anyone in California with its product.  Really?

I suppose I am a bit surprised that Facebook was not successful this time.  As you know, Facebook is notorious for a little bit of over-enforcing its trademark rights.  For example, we know that Facebook as gone after all sorts of websites that use either “Face” or “Book” in anything that even remotely resembles social networking.  I remember them going after “Lamebook” which they settled (see this article) as well as “Shagbook” (see this article), the “Facebook Of Sex” (see this article) , “FriendFinder” (see this article) and, of course, my all time favorite, “Teachbook” (see this article).

I understand that there is a desire to protect the brand, but isn’t Facebook a victim of its own success?  Would anyone be trying to play off the name if it wasn’t successful?  Of course not.  I am a bit frustrated at the notion of companies thinking that they own words, but at the same time, I am somewhat surprised that the Judge in this case did not believe that there was any damage to the Facebook trademark.  It seems as though there was at least a potential claim for trademark dilution here.

This is the perfect example, however, of the ultimate litigation tactic – spend the opponent into the ground.  As we all know from the recent IPO, although it did not go as well as planned, Facebook still has a ton of money, and access to the resources to make anyone’s life a living hell.  Don’t kid yourself about the price of the stock being in the low $30’s after being initially offered at $38.  I think they are not going to have any trouble paying their attorney bills, and I think the attorneys on these cases are not going to have much trouble paying for college tuition for their kids.

My Invention Has All The Elements Of A Patent…And Then Some

Friday, 30 March, 2012 13:12 Written by Mark Malek 1 Comment
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By: Mark R. Malek

This is yet another article in the series of “questions that Mark Malek gets all the time when playing attorney at Zies Widerman & Malek.”  Every now and again, I get the phone call from a very creative person who has really gone above and beyond what most inventors do initially.  This person has laid out their invention in great detail, then has taken the time to do a little bit of prior art searching and, the following is the best part in the world – has actually taken advantage of a quick, free consultation that most patent attorneys offer (at least the ones at our firm do) to determine if they can move forward.

The details of the call are quite interesting, generally.  Normally, the client has identified a piece of prior art, and has figured out that their invention has every element identified in the patent that they have located, but that their invention adds a little bit more to it.  Now what?  Recall my article a couple of weeks ago where I indicated that it is perfectly acceptable to design around a patent.  There is a discussion about the steps you need to take to design around a patent during our conversation.  The thing is, however, that you can’t design around a patent by simply adding to it.

For example, let’s say that there is a patent out there for a chair that has four legs, a seating surface, and a back.  Let’s now say that the invention in question is a chair that has five legs, a seating surface and a back.  Let’s also assume that there is no other prior art out there that is at all related to this technology.  As my movie-quoting partners would now say “and then the space ship lands.”  Yes – that is a quote from one of the best comedies of all time, “City Slickers.”  Back to the story, however, the question to be answered now shifts around where does the inventor on the phone stand?  Has this inventor come up with something patentable?  Does this new invention read on the patent for the chair with four legs that the inventor uncovered?  The answer to both is YES!

Big help I am, right.  Here is the thing about it.  The invention for the chair with five legs still incorporates all the limitations of the patent on the chair with four legs.  Therefore, one cannot make the chair with the five legs without infringing on the patent on the chair with four legs.  Here’s the real rub – the invention on the chair with five legs may still be patentable.  Put your self in the Examiner’s shoes for a second.  The Examiner may have on his/her desk a patent application for a chair that has five legs.  During the Examiner’s prior art search, the only thing that shows up is a patent for a chair that has four legs.  The Examiner cannot seem to find any related prior art that is related to any five-legged device.  Therefore, the Examiner may decide to allow the case.

The next two articles that I will put up are related to this situation.  The first will be an analysis of the situation where you have a patent, but you may still be infringing on another patent – does having a patent gives you the right to manufacture the device that is covered by the patent?  The next article that I will post is directed to options when your patentable invention infringes a patent.

 

Trademark Infringement: One Name, Two Restaurants, Two Blocks Away

Monday, 23 January, 2012 05:29 Written by Aaron B. Thalwitzer 0 Comments
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You are not alone!

I’m in Orlando, Florida, this weekend, visiting my family, and an old friend has asked me a question.

Question: I’ve owned and operated a restaurant under the name [JR's] for 20 years. A month ago a restaurant opened up less than a mile away with the exact same name, [JR's] [ed. note - names have been changed to protect the innocent]. They serve barbecue, we serve Tex-Mex. Both are casual, moderately-priced, serve beer, and are generally ‘fun’ places to eat. They stole my name, right?

Answer: You are alleging trademark infringement, which, once proved, could warrant an injunction, damages, or both. You have a good claim.

First, let’s again review the Lanham Act, which creates a cause of action against any person who, in connection with goods or services, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin … which (A) is likely to cause confusion, or to cause mistake, or to deceive as to the… connection … of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, [or] services… See 15 U.S.C. § 1125(a)(1).

The key for a plaintiff in proving infringement of its trademark is to show the likelihood of consumer confusion. See Restatement (Third) of Unfair Competition § 21 cmt. a (1995) (“The test for infringement is whether the actor’s use of a designation as a trademark … creates a likelihood of confusion ….”).

An injunction will force the new JR’s to stop using the mark “JR’s”. A party seeking a preliminary injunction must establish (1) irreparable harm and (2) either (a) a likelihood of success on the merits or (b) a sufficiently serious question going to the merits and a balance of hardships tipping decidedly in the moving party’s favor. See Jackson Dairy, Inc. v. H.P. Hood & Sons, Inc., 596 F.2d 70, 72 (2d Cir.1979) (per curiam). In a trademark infringement case, proof of a likelihood of confusion establishes both a likelihood of success on the merits and irreparable harm. See Hasbro, Inc. v. Lanard Toys, Ltd., 858 F.2d 70, 73 (2d Cir.1988).

Relief may be available under 15 U.S.C. §§ 1114 (imitation of registered mark) and 1125(a) (false designation of origin). To prevail on a claim of trademark infringement, a plaintiff must show, first, that its mark merits protection, and, second, that the defendant’s use of a similar mark is likely to cause consumer confusion. I will assume you have have validly registered your mark (if not please do so; a registered mark in continuous use for five consecutive years after registration, and still in use, becomes incontestable under 15 U.S.C. § 1065) and turn consider the pivotal question: the likelihood of confusion.

Now we apply the multi-factor test, which requires analysis of several non-exclusive factors, including: (1) the strength of the mark, (2) the degree of similarity between the two marks, (3) the competitive proximity of the products, (4) actual confusion, (5) the likelihood the plaintiff will bridge the gap, (6) the defendant’s good faith in adopting its mark, (7) the quality of the defendant’s products, and (8) the sophistication of the purchasers. This will give us a good idea of the likelihood of confusion, but the court is not limited to these factors, and all must be viewed in the context of whether the consumer will be confused as to the source of the product.

I’ll go factor by factor.

(1) Your restaurant has been around for 30 years, so I will assume you have a strong mark. (2) The marks are identical. (3) You are directly competing geographically (6) and in terms of markets and could walk from one location to the other. (7) Good faith is impossible to determine without additional facts, but it may be inferred that the new JR’s is aware of your mark. (7) I don’t know anything about the quality of Defendant’s products. (8) I’ll assume the purchasers are an average sampling of the population, since the prices are moderate and you both serve beer.

There is an additional factor. The mark, “JR’s” probably derives from someone’s proper name. If both restaurants have proprietors named “JR”, things get mucked up. “[C]ourts generally are hesitant to afford strong protection to proper names, since to do so preempts others with the same name from trading on their own reputation. ‘To prevent all use of [a man's personal name] is to take away his identity; without it he cannot make known who he is to those who may wish to deal with him; and that is so grievous an injury that courts will avoid imposing it, if they possibly can.’” Brennan’s Inc. v. Brennan’s Restaurant, L.L.C., 360 F. 3d 125 (2d. Cir. 2004). The name of a person, therefore, like other descriptive marks, is protectible only if it has acquired secondary meaning.

The ultimate answer will depend on the overall impression of the name. I believe, on these facts, that you would probably prevail on an infringement claim. However, if the new JR’s added “BBQ” to their name, you would have an uphill battle. You will have to show that consumers will be confused by the names. Given the extreme proximity of the restaurants, one can envision two people meeting at disparate JR’s if an address wasn’t specified. You may want to consider hiring a trademark attorney. There are other claims and options beyond the scope of this article.

Can I use a comic book trademark in my business?

Monday, 02 January, 2012 05:44 Written by Aaron B. Thalwitzer 0 Comments
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I’ve been noticing something a lot lately.

Maybe it’s because I’m a fan of superhero stuff and/or because I practice intellectual property law. Maybe due to all the superhero movies, and the fact that people not only don’t mind being associated with comics, they would LOVE some of that comics mojo to rub off on their business.

Sometimes, a company taking an item from an existing comic and using it to market their business. For example, a new mom and pop pizza chain near my house recently distributed a promotional flyer using Superman, Batman, Spider-Man, and some other superheroes all enjoying their pizza. You can bet they didn’t have a license for those trademarks. That’s a one-off that realistically caused little if harm and probably won’t be noticed. But I’ve also noticed other companies utilizing what familiar comic book-related names. For example, there’s Wayne Enterprises, which has nothing to do with Bruce Wayne. Then there’s Stark Industries, which doesn’t make flying robotic armored suits (although they do manufacture “seismic gun compressed air supply systems”). There are lots of LexCorps out there. I’m not saying they infringe (most of them probably don’t). But when does this cross the line and become infringement under the Lanham Act?

This has been litigated before. For example, in a highly publicized 2004 case, DC Comics sued Kryptonite Corp. (KC), a bike locks and accessories manufacturer alleging, among other things, trademark infringement and dilution. KC countered that DC’s trademark registration should be cancelled. DC and KC had licensing agreements over the word “Kryptonite“, but KC was prohibited from using the word “super” and other things associated with the Superman universe, in marketing its products.

For the trademark infringement claims, the plaintiff must demonstrate (1) that it has a valid mark that is entitled to protection under the Act and (2) that there exits a likelihood of confusion that consumers will be misled or confused as to the source of the goods in question.

1. Ownership of a valid mark

KC argued that DC Comics’ use of Kryptonite does not qualify for protection under the Lanham Act because DC Comics has not used Kryptonite as a brand name or trademarkto indicate the source of its goods. KC argued that DC Comics does not own the trademark in Kryptonite because DC Comicshas never used the mark in commerce the only evidence of use is as a story element. KC argues that Kryptonite is simply a fictitious substance that appears in the Superman story for narrative—not source identifying purposes. According to KC, Kryptonite is one small part of the overall content of a comic book story used in the story to describe a fictitious substance and enhance the story -not to identify or designate the source of a real product or service. KC contends that the word “Kryptonite” (except as a name for KC’s locks and other products) has no commercial meaning identifying the source of goods or services.

DC Comics,countered that it has made significant use of Kryptonite as a trademark on products other than comic products and motion picture products. For example, DC Comics argues it has used Kryptonite with merchandise such as toys, apparel, books, calendars, games, greeting cards, novelty items, and video games. In addition, DC Comics argues that it owns two trademark registrations for the use of Kryptonite on t-shirts which are incontestable.

This was not a close call. The Court held that DC Comics owned a trademark in Kryptonite. The law holds that:

where the product sold by plaintiff is ‘entertainment’ in one form or another, then not only the advertising of the product but also an ingredient of the product itself can amount to a trademark protectable under § 43(a) because the ingredient can come to symbolize the plaintiff or its product in the public mind.

DC Comics, Inc. v. Filmation Associates, 486 F.Supp. 1273, 1277 (S.D.N.Y.1980).

Protectable “ingredients” include the names and nicknames of entertainment characters (“bionic” man and woman), as well as their physical appearances and costumes, but not their physical abilities or personality traits.

For example, in an earlier case, DC Comics, Inc. v. Powers, which is directly on point, an infringer attempted to publish a magazine under name “The Daily Planet”—the same name as the fictitious newspaper that employs Superman’s alter ego, Clark Kent. Apparently, the Court did not find that DC Comics had used “The Daily Planet” on a product in the traditional trademark sense. Still, the Court found that, because over time there had grown such a close association between the “The Daily Planet” and Superman, that DC Comics Owned protectable rights in “The Daily Planet.”

The same goes for Kryptonite. The Court held, “Kryptonite is an ingredient of an entertainment property (Superman) and is a protectable symbol under the Lanham Act. Kryptonite is closely associated with Superman resulting from DC Comics’ 60 years of use of Kryptonite with Superman . . . For example, several recurring characters created by DC Comics are based entirely around Kryptonite: the Kryptonite Kid, the Kryptonite Man, and Metallo (a villain powered by Kryptonite).” The Court found that DC Comics had, for many decades, used Kryptonite to sell all manner of schlock, thereby strengthening its claim on the trademark.

Therefore, because Kryptonite, is so intimately associated Superman, it serves to identify DC Comics’ products. Kryptonite, its green glowing appearance, and other related indicia thus represent trademarks of DC Comics.

2. Likelihood of Confusion

KC argue there is not a likelihood of confusion as to the origin of the goods. The question is whether, as a result of KC’s mark being in the marketplace, numerous ordinary purchasers are likely to be misled or confused as to the source of the product in question. Factors to consider in determining whether a likelihood of confusion exists:
  1. the strength of DC Comics’ mark;
  2. the similarity of the DC Comics’ mark;
  3. the competitive proximity of the products;
  4. the likelihood that the DC Comics will “bridge the gap” by entering KC’s market;
  5. actual confusion between the products;
  6. good faith on KC’s part;
  7. the quality of KC’s product; and
  8. sophistication of buyers.

 

The Court held that there were triable issues. In cases with this many intent-based factors, summary judgment is generally unlikely, and trial (or, more realistically, settlement via a licensing agreement) more likely. Be careful using comic trademarks. The best advice is to talk to a lawyer first. You don’t want to build up a brand, and then have to change everything midstream — or, worse, get involved in costly litigation with a deep pockets plaintiff.

Louis Vuitton Files Trademark Suit Over the Hangover II.

Saturday, 31 December, 2011 09:52 Written by Rene Dial 0 Comments
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By Rene Dial

I have heard a lot of on the edge lawsuits before but I believe this one has jumped over the edge and landed on its head.  According to the Guardian.co.uk, Louis Vuitton filed a federal trademark suit against Warner Bros over the line in the Hangover II “careful, that is a Louis Vuitton.”  To be honest I saw the movie, my brother and brother in law saw the movie and at no point in time have I heard them or any of my friends use that tag line.  To give a little background, our group of friends, quote movie tag lines a lot.  So much that it can become quite annoying at times.  The main comment and the funniest and most disturbing parts of the movie is trying to figure out what the monkey is playing with towards the beginning.  I will spare you and not go into details.

I was able to locate a copy of the complaint at paidcontent.org.

One of the first allegations that jumps out is Louis Vuitton’s claim that they did not approve Warner Bros’ use of any products bearing the LVM marks or any products bearing knock-off monograms.  It is a scary thought to think that every time someone wears a pair of jeans, shoes, socks, or virtually every item used in life then used in a movie the company can be sued because the item was not approved prior to the movie.

Louis Vuitton can make an argument that Warner Bros’ directly used the name of the bag in the movie.  If the entire movie was about a Louis Vuitton bag and it was the notoriety of the bag that drew crowds to the theater to see the movie and Warner Bros’ profited by their use of the mark we would have a different situation.  This is not the case here.  The mention of the bag is no more than a parody.  Are they making fun of the bag that it is so delicate and expensive or are they making fun of the character by showcasing his eccentric character.

Louis Vuitton’s fight is with Diophy not Warner Bros’. If anything Louis Vuitton should have paid to have their bag featured as a tag line in the movie or have Warner Bros’ buy a LV bag to compensate them for the lost profits of the one bag.  That kind of advertising is expensive.  Look at all of the advertising that they are getting by filing this lawsuit albeit bad advertising but still advertisement.  Makes you wonder if hiring an attorney, filing a complaint for around $400.00, and making a fuss gets you hundred of thousands of dollars in advertising?

Have a safe and happy New Year and let’s make 2012 the best year ever.

Be safe tonight!!

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