December 2011

December 28, 2011, by Mandour & Associates, APC

Los Angeles – Chicago Bulls point guard Derrick Rose has been asked by a Zion, Illinois-based church to convince athletic footwear and apparel company Adidas to drop a trademark dispute it has waged. Pastor E. James Logan of the Christian Faith Fellowship is imploring the help of Rose, whose name is on an Adidas brand of highly-publicized athletic shoes, to ask his deep-pocketed sponsors to show mercy on the church.

The dispute began last year when the United States Patent and Trademark Office (USPTO) denied Adidas’ application to trademark “AdiZero”, which is the name of one of its popular sub-brands. Apparently, Logan’s church had already trademarked the phrase “Add A Zero” as part of a campaign to boost church donations from its congregation. The phrase was meant to encourage church-goers to add a zero to the annual amount that they donated. According to the church website, it uses the donated funds to operate a food pantry and day-care center, among other things.

Adidas, the German-owned athletic sportswear manufacturer, initially offered the church $5,000 to abandon its trademark. Not surprisingly, the church refused the offer. Reportedly, Adidas won a $300 million jury verdict in a 2008 trademark infringement lawsuit against Payless Shoesource Inc.

In a December 2nd letter to the NBA star, Pastor Logan urged Rose to ask Adidas to abandon the issue. The Adidas AdiZero line has recently released three pairs of the signature shoes from the Derrick Rose line, which was inspired by his childhood days playing basketball in Chicago’s South Side.

A statement from the letter written to Rose, who recently signed a five-year, $94.8 million extension with the Bulls, read, “We are not an affluent congregation, but a working class church in a working class community; and given the state of the economy we are working hard to keep our doors open.

A spokesperson for Adidas said the company would not offer any comment on legal matters but did state that it was open to working with the church to resolve the issue. Neither Rose or his agent were available for comment.

December 27, 2011, by Mandour & Associates, APC

Los Angeles – Disney’s Pixar Animation Studios is embroiled in trademark dispute with the Major League Baseball outfit, the Atlanta Braves. Apparently, owners of the Atlanta National League Baseball Club are objecting to Disney/Pixar’s changing the name of its upcoming animated film from “The Bear and the Bow” to “Brave.” The team has formally filed an objection to many of the trademarks Pixar is seeking for its new movie, to be released in June.

The Atlanta Braves possess trademarks for the plural word ‘Braves’ and they are concerned that damages will be incurred as a result of Pixar using the singular trademark, ‘Brave.’ The MLB team has used the singular word ‘Brave’ on items such as apparel and insist that it is common for fans and media to use the singular term when referring to an individual player, whereas the plural form is used in reference to the entire team.

The team which has been established for 140 years is worried that people will confuse its products with products from Disney that relate to the film. The two parties are reportedly in negotiations over the trademark.

About Pixar: Pixar Animation Studios, based in Emeryville, California, is a computer animation film studio, best-known for its CGI-animated feature films created with PhotoRealistic Renderman. Pixar was founded in 1979 as part of the computer division of Lucasfilm, before being acquired in 1986 by Apple Computer co-founder Steve Jobs. Pixar, which is now owned by the Walt Disney Company, has created many animated films that have made over $6.3 billion worldwide.

December 20, 2011, by Mandour & Associates, APC

Los Angeles – HomeVestors of America, Inc. (HomeVestors), known for its registered trademark We Buy Ugly Houses was successful in a dispute regarding a Uniform Domain-Name Dispute-Resolution Policy (UDRP). The UDRP complaint was filed before the National Arbitration Forum against Freedomsoft LLP, which will now have to the domain name over to HomeVestors.

HomeVestors is the largest cash buyer of distressed properties in the United States. The company, which has over 200 franchisees in 33 states, purchases unattractive homes for cash, flipping them, and then selling or renting the rehabbed properties to investors, buyers, and tenants. Having capitalized on the We BUY UGLY HOUSES trademark, HomeVestors has been diligent in protecting its intellectual property against third parties that insist upon using its federally registered trademarks as part of their domain names and websites without the permission of HomeVestors.

In addition to committing trademark infringement, third parties who use the registered trademark in their domains are also committing cyber piracy under the Lanham Act, 15 U.S.C., Section 1125(d)(1) for which statutory damages can be up to $100,000 for each domain infringed.

Since its most recent UDRP victory, HomeVestors has filed another UDRP complaint, for which it expects a decision before the end of the year. Over the past two years, the company has successfully had more than eight domain names transferred back to it that were illegally registered to third parties and has managed to disable many infringing websites and Facebook pages as well.

In a statement from the trademark attorney representing HomeVestors, he said, “All domain registrars are required to follow the UDRP. Under the UDRP, the dispute is resolved by an arbitration committee. If HomeVestors wins, it can elect to cancel, suspend, or transfer the domain name at issue. Many times we find cyber squatters who think that it is enough to add the name of a city along with the WE BUY UGLY HOUSES trademarks. It is very clear from past decisions that such modifications are not sufficient to avoid cyber squatting.”

No information was available as to whether any statutory damages were awarded to HomeVestors in this particular case.

December 16, 2011, by Mandour & Associates, APC

Los Angeles – On December 6, 2011, Judge Arthur J. Schwab of the Western District of Pennsylvania granted summary judgment in favor of the Pittsburgh Steelers and the Allegheny Valley School Foundation, in a case involving the Steelers’”Terrible” trademarks. The trademarks, “The Terrible” and “Terrible Towel” are owned by the Allegheny Valley School Foundation, a Pennsylvania 501(c)(3) non-profit corporation. Steelers fans have been using these “Terrible” symbols for 35 years on a variety of products, and the trademarks are licensed exclusively to the Steelers.

The Defendants, Eugene Berry Enterprise and Eugene Berry, filed an application to register “The Terrible T-Shirt” with the U.S. Patent and Trademark Office on May 13, 2011. Shortly thereafter, on June 15, 2011, the Allegheny Valley School Foundation’s legal counsel wrote to the Defendants expressing its intent to oppose the application and requesting that Defendants withdraw the application. Despite this letter, during the week of August 15, 2011, the Defendants asked a textile printer to print t-shirts inscribed with “The Terrible T-Shirt A Pittsburgh Original” in a black and gold color palate – the same colors used by the Steelers in connection with their “Terrible” products.
When the textile printer asked if Defendants had any relationship with the Allegheny Valley School Foundation or the Steelers, the Defendants produced a letter purporting to give the Defendants the right to use the trademark. The t-shirts were printed and the Defendants began to sell them. Unsurprisingly, the Pittsburgh Steelers and the Allegheny Valley School Foundation sued, claiming trademark infringement under the Lanham Act.

Judge Schwab reviewed the plaintiffs’ claims under the three prongs of the Lanham Act: whether (1) the use of the trademark is valid and legally protectable; (2) is owned by the Plaintiffs; and (3) whether the defendant’s use of the trademark to identify goods and services is likely to create confusion concerning the origin of the goods and services. On the third prong, the Judge held that “A black and gold T-Shirt with the words ‘The Terrible T-Shirt A Pittsburgh Original’ is strikingly similar to plaintiffs’ trademarks” and “represented an apparent attempt to create confusion.”

December 15, 2011, by Mandour & Associates, APC

Los Angeles – It would seem quite unusual for an academic institution like Brigham Young University (BYU) with a long tradition of conservative Mormon values to be interested in purchasing domain names that end in the newly created .xxx name, but that is exactly what is happening. However, the purpose is one of protecting BYU’s image. BYU along with other academic institutions and companies were given the opportunity to purchase .xxx trade domain names from ICM registry, the exclusive dealer in .xxx domain names, months before the .xxx names would be available to the public. The cost of each .xxx name is $200 dollars with at least one school, Indiana University, spending $2200 dollars to protect the school’s name from being confused with a pornography site.

Along with several academic institutions, companies such as Disney and Target have also followed suit to ensure that their consumers do not confuse their good name with an illicit pornography website. Meanwhile, ICM registry is likely to be the beneficiary of an enormous financial windfall. It’s expected that companies will spend up to $200 million purchasing between 3 to 5 million domain names in an effort to act defensively.

The creation of the .xxx domain name has been the result of a long and contentious 10 year legal battle between ICM registry and the Internet Corporation for Assigned Names and Numbers (ICANN). In March 2011, ICANN gave final approval of the .xxx domain name. Parent groups and employers supported the decision believing it would be easier to monitor children and their employees, respectively, by using filtering systems that could block the .xxx domain. Ironically, the pornography industry has been opposed to the .xxx domain decision due to what they believe is isolating the pornography industry into a “digital ghetto” on the internet.

December 5, 2011, by Mandour & Associates, APC

Los Angeles – The family of legendary reggae singer, Bob Marley, has filed a lawsuit citing both copyright and trademark infringement against Marley’s half brother, Richard Booker.

The lawsuit, filed Thursday in federal court by Marley’s widow Rita and their children, alleges that Richard Booker and companies that he is associated with have been using the now-deceased Rastafarian’s image, music, and other intellectual property without the permission of Marley’s family members.

Some of Booker’s businesses and projects that have been using Marley’s intellectual property are the annual Nine Miles Music Festival and the Bob Marley Movement of Jah People Inc., which handles all promotions for the music festival. Marley’s half brother is also said to own a restaurant in Jamaica, called Mama Marley’s. Richard Booker is the son of Marley’s mother, Cedella Booker. He currently resides in Miami, where he operates most of his businesses.

The lawsuit also claims that Marley’s heirs have long been in opposition to Booker’s attempts to trademark Marley-related names. They claim that at one point, they had reached a licensing deal with Booker but that he has since failed to carry out his end of the deal.

The Marley family is seeking unspecified damages and is also asking the judge to order an injunction on Booker’s use of any Marley-related references and imagery in present and future business ventures.

Marley, who died of cancer in 1981, was best-known as the lead singer and rhythm guitarist for the reggae band, Bob Marley and the Wailers. He is credited for introducing both Jamaican music and the Rastafari movement to a worldwide audience. Some of Marley’s best-known hits include, “Buffalo Soldier,” “I Shot the Sherriff,” “Could You Be Loved,” “No Woman, No Cry,” “Three Little Birds,” “Redemption Song,” “Stir It Up,” and “One Love.”