Trademark License

September 11, 2012, by Mandour & Associates, APC

Los Angeles — A New York federal judge on Friday junked the Velvet Underground’s copyright claim against the Andy Warhol Foundation for the Visual Arts Inc. over Warhol’s iconic banana cover art for the band’s debut album, but the band’s trademark infringement claims will proceed forward.

Judge Alison Nathan dismissed the portion of the Velvet Underground’s complaint that sought a declaratory judgment that the foundation has no copyright in the banana image. The foundation had already previously agreed not to sue the Velvet Underground for copyright infringement, so there is no justiciable controversy between the two over any copyright in the banana design, she said.

The remainder of the suit, which now comprises three claims for trademark infringement concerning the foundation’s plans to license the banana image to a company for a series of Warhol-themed iPhone covers, will still go on as planned. Fact discovery in the case is currently scheduled to wrap up by the end of the year, and expert discovery is due in February.

The Velvet Underground broke up in 1972 and has not performed in concert since a set of European reunion shows in 1993, but earlier this year frontman and primary songwriter Lou Reed and multi-instrumentalist John Cale sued the Warhol foundation in their capacity as the general partners of the band.

The band’s landmark 1967 album bearing the banana cover, The Velvet Underground & Nico, sold few copies upon its release but eventually came to bear great influence on many musicians following the disparate musical trails the band blazed. The album is now widely recognized as one of the finest and most prescient rock albums of all time.

On that basis, Reed and Cale asserted in their complaint that the banana artwork has become so identified with the band that it is immediately recognized among the public as the band’s symbol. The band has itself licensed the banana for use on a variety of consumer goods, from t-shirts to key chains to pillowcases.

The foundation wrote to the band in December 2009 claiming that the band’s use of the banana infringed the foundation’s copyright. The band rejected the copyright claim, and countered that the banana was in fact a trademark of, and had secondary meaning associating it with, the Velvet Underground.

In 2011 the band learned of the foundation’s plans to license four Warhol works including the banana to Incase for a new series of iPhone and iPad cases, sleeves and bags. The band demanded that the foundation cease its licensing activities, claiming trademark infringement.

After the Velvet Underground originally filed the action but before it filed its second amended complaint, which included the copyright infringement declaratory judgment claim and the three trademark infringement claims, the foundation gave the band a covenant not to sue for copyright infringement.

The foundation argued that the court had no jurisdiction to hear the declaratory judgment claims because the covenant not to sue eliminated any actual controversy between the parties over the banana’s copyright, and the judge agreed.

Los Angeles – President Obama recently gave a speech to members of the military and their families where he spoke about his outrage that members of the military and their families were being targeted and taken advantage of because of their GI Bill. The President said to the crowd, “Sometimes you’re dealing with folks who aren’t interested in helping you” and “they don’t care about you, they care about the cash.” For this reason, President Obama ordered the Department of Veterans Affairs to file for the trademark ‘GI Bill’. The Obama Administration believes that trademark filing will help to stop for-profit schools with “deceptively and fraudulently” targeting military families.

In 2010, President Obama created a Consumer Financial Protection Bureau that was formed to specifically aid veterans, members of the military and their families. Within this Bureau was a special Office of Service Member Affairs which worked with these families to “make better informed decisions regarding consumer financial products and services.” However, after two years it seems as though military families are still being targeted by private for-profit colleges and universities that are eager to enlist these individuals for federal money in its pocket, also known as the GI Bill.

In his speech this week, Obama gave an example of a for-profit college that recruited marines with brain injuries who couldn’t remember what they signed up for. He called this example “appalling and disgraceful” and urged the crowd to be aware of these types of people by saying, “they’re trying to swindle and hoodwink you.” Many of these colleges and universities have created websites to give the appearance that it is connected to the government in order to appeal to these families in particular.

President Obama is scheduled to sign an order that includes programs such as “Know Before You Owe”, which schools can participate in through a voluntary basis. The “Know Before You Owe” program will allow potential students to get an estimate of just how much their education may cost them in total so that they are not blindsided by additional fees, interest, and/or penalties. This will also help with determining if a college or university is considered accredited before enrolling.

In an opposing view of the President’s actions, Sgt. 1st Class Brian Cain stated, “To me the president needs to be taking care of world-sized problems” and “this is kind of like trying to kill a fly with an M-1 Abrams tank.” Sgt. Cain stated that his chain in command already has programs set up to look out for these scams. The Association of Private Sector Colleges and Universities, a representative of for-profit schools, stated it was “disappointed Obama decided to bypass the Congress.”

The GI Bill is estimated to pay out a staggering $9 billion this year alone to educate approximately 600,000 veterans. It is no wonder that according to a recent report by the Senate, for-profit schools spend a combined total of $3.7 billion on recruiting and marketing alone.

February 1, 2012, by Mandour & Associates, APC

Los Angeles – Sara Lee announced that it has signed an exclusive nine-year licensing agreement with Royal Philips Electronics. The agreement will cover all Philips-branded consumer coffee systems and will give Sara Lee full rights to use the SENSEO trademark.

Both companies currently co-own the SENSEO brand, with each having a fifty percent stake. Under the terms of the new agreement, Sara Lee will reportedly pay a total of $220.5 million in royalties to Philips over nine years.

According to a statement issued by Sara Lee Corp., the goal of the partnership with Philips is to drive innovation and expansion into new markets for its SENSEO brand, a global leader in the single-serve coffee segment. Since 2001, the two companies have collaborated on SENSEO, developing it into one of the world’s leading single-serve coffee systems, with over 33 million appliances sold worldwide. Sara Lee has been the manufacturer of the individual coffee pods, and Philips is the designer, manufacturer, and distributor of the single-serve coffee machines.

Under the agreement, Philips will continue to control the design, production, and distribution of the coffee machines, with Sara Lee taking full control of the SENSEO trademark, expanding it to new markets across the world. Sara Lee reportedly plans to accomplish this through its recent acquisitions of two overseas coffee and tea companies, CoffeeCompany, a chain of sixty cafes in the Netherlands, and House of Coffee, a beverage foodservice company with customers in Denmark and Norway.

“Owning 100 percent of SENSEO, our most global coffee brand, is a major step for ‘CoffeeCo’ as we prepare for our upcoming spin-off into a separate, publicly-traded company,” said Michiel Herkemij, chief executive officer of Sara Lee Coffee and Tea. Herkemij added, “With increased innovation, we believe this move will enable us to build on our leading position and further position SENSEO as a global power brand in the coffee segment.”

Sara Lee Corp., established in 1956, owns a large portfolio of well-known trademarked brands, including Ball Park, Hillshire Farm, Jimmy Dean, Pickwick Teas, Douwe Egberts, Sara Lee, and SENSEO. The company, which employs approximately 20,000 people worldwide, brings in nearly $8 billion in annual net sales from its brands of food and beverage products. With its announcement that the company will divide into two publicly-traded entities, Sara Lee will continue its focus on the North American meat market while it seeks expansion into the international coffee and tea markets as well.

January 5, 2012, by Mandour & Associates, APC

Los Angeles – Bakers Footwear Group, Inc. announced today that it has entered into a Trademark Sale and License Agreement with Steve Madden, Ltd. for its Wild Pair trademark and related trademarks.

The deal requires Steve Madden to purchase the Wild Pair trademark for up to $4 million and enter into a non-exclusive, non-transferable, royalty-free perpetual license for the trademarks with Bakers Footwear. The agreement also gives Bakers the right to continue selling Wild Pair footwear in its stores, online, and in Wild Pair retail shops. Bakers’ profits are estimated to be around $3.6 million.

“We are pleased to continue the growth of the Wild Pair brand with this transaction,” stated Bakers’ Chairman and Chief Executive Officer, Peter Edison. “Wild Pair, an iconic label known for its sexy, fashion footwear with a 39-year heritage and a highly-loyal following has tremendous potential and we believe Steve Madden is the best possible company to take advantage of the significant opportunity that exists to broaden the appeal and reach of the Wild Pair label,” Edison went on to say.

Edison also stated that Bakers is pleased with the structure of the transaction because it will give the company the freedom to expand on the Wild Pair brand. He elaborated by saying that with a great wholesaling partner like Steve Madden, Bakers will be able to capitalize on increased market share from current Wild Pair growth in its stores and website. The Wild Pair brand consists of brightly-colored stiletto and wedge-style high-heeled shoes, including many with animal prints and studs. The women’s shoes retail from $49.00-$139.00 per pair.

Edward Rosenfeld, Chairman and Chief Executive Officer for Steve Madden, said, “We are pleased to once again expand our diversified portfolio of brands with the addition of Wild Pair. We look forward to broadening the distribution and reach of the brand while maintaining the brand DNA that has made Wild Pair successful for almost 40 years.”

Steve Madden was named “Company of the Year” for 2006 at the Footwear News Achievement Awards in New York City.

Bakers Footwear Group, a St. Louis-based company, is a leading specialty retailer of fashion-forward footwear and accessories for style-driven women. The company’s footwear portfolio includes private label and national brand dress, sport, and casual shoes, boots and sandals. Bakers’ trendy merchandise is mainly marketed to women between the ages of 16 and 35.