Liz Claiborne, Lucky Brand Escape Trademark Infringement Lawsuit

September 27, 2012, by Mandour & Associates, APC

Los Angeles – Liz Claiborne Inc. and its Lucky Brand Dungarees Inc. denim unit won summary judgment from a Manhattan federal court Tuesday on a fashion group’s claims that Lucky Brand infringes its “Get Lucky” trademark.

Marcel Fashions Group Inc. already had its trademark claims against Lucky adjudicated in an earlier action, Judge Laura Taylor Swain ruled.

Lucky has been selling vintage-inspired jeans and casual apparel for over 20 years, and is the owner of numerous trademarks registered with the U.S. Patent and Trademark Office, including “Lucky Brand,” a clover-shaped design trademark and “Lucky brand Dungarees of America.”

Marcel sued Lucky Brand in September 2001 in Florida federal court asserting claims for trademark infringement and unfair competition based on Lucky’s use of the “Get Lucky” trademark, which Marcel owns. It later sued Liz Claiborne in the same court with similar allegations, and the two cases were rolled together into consolidated litigation.

The companies settled the 2001 action in May 2003, providing that Liz Claiborne and Lucky would desist from the use of “Get Lucky” as a trademark in connection with clothing sales.

In 2004, meanwhile, Marcel licensed the “Get Lucky” trademark to Ally Apparel Resources LLC, which launched a “Get Lucky” line of jeans that competed with Lucky. Lucky filed its own lawsuit in 2005 alleging Ally’s products infringed its “Lucky Brand” trademarks.

Marcel and Ally counterclaimed that Marcel was the senior user of the “Get Lucky” trademark, and that Lucky’s use of that trademark and others infringed Marcel’s rights and violated the 2003 settlement agreement. In 2010 a jury found that Lucky had infringed the trademarks, and awarded Marcel several hundred thousand dollars in damages.

Marcel then filed its current lawsuit in April 2011, seeking an injunction based on Lucky’s continued use of the Lucky Brand trademarks. It conceded that the action was based on the identical manner and form of trademark infringement and on the same goods for which Lucky was found liable for infringement in the 2005 lawsuit.

“Marcel merely seeks broad injunctive relief prohibiting Lucky Brand from using the same trademarks that were the subject of the 2005 action, and further damages for use of those marks,” Judge Swain said.

The company could have obtained such relief in the 2005 action, and did actually seek it, but the negotiated final order in that case did not provide for such an injunction, she said.

Judge Swain also denied Marcel’s motions for leave to file an amended complaint and for contempt sanctions against Lucky and Liz Claiborne.

3Taps Says Craigslist Trademark, Copyright Lawsuit Is Anti-Competitive

September 26, 2012, by Mandour & Associates, APC

Los Angeles – Public listing database service 3Taps Inc. struck back on Monday at Craigslist Inc.’s copyright and trademark infringement claims against it, accusing Craigslist of exploiting its dominant position in the online classified ad business.

Craigslist sued 3Taps and PadMapper Inc. in the Northern District of California in July alleging their use of data gleaned from Craigslist’s listings violates Craigslist’s copyrights and trademarks.

“For their own commercial benefit, defendants 3Taps and PadMapper are unlawfully and unabashedly mass-harvesting and redistributing postings entrusted by Craigslist users to their local Craigslist sites,” Craigslist’s complaint says.

3Taps, on the other hand, contends in its counterclaims filed Monday that Craigslist’s legal actions constitute unfair competition and interference with economic advantage, and that Craigslist is a monopolist of certain markets for online classified advertising in violation of antitrust laws.

“Craigslist has an overwhelming share in numerous online classified ad markets and improperly maintains those monopoly shares through a broad-based, anti-competitive scheme,” 3Taps says. “Certainly, Craigslist has not maintained this power by competing on the merits. Indeed, for years, craigslist has espoused the classic principles of a monopolist that believed it did not need to compete: a “strategy” of “unbranding,” “demonetizing,” and “uncompeting” — the epitome of a lethargic monopolist.”

As an “unchallenged monopolist” across various markets, Craigslist has generated revenues of $100 milion to $300 million per year without sinking any significant costs into research and development or innovation, according to 3Taps.

To protect its position, Craigslist files serial sham cease and desist letters and shaw lawsuits like the one in question against 3Taps and PadMapper, 3Taps says.

The data indexed by 3Taps is factual material not subject to copyright protection, and to the extent the user postings are entitled to copyright protection, Craigslist does not have standing to enforce these copyrights because it is neither the owner nor exclusive licensee of this content, 3Taps says. Craigslist’s conduct also amounts to copyright misuse, according to 3Taps.

“Nevertheless, even with knowledge that its claims utterly lack merit, Craigslist has threatened and filed lawsuits as part of a policy intended to intimidate innovators and force them to cease competing with Craigslist,” the counterclaims say. “Craigslist has sucked the oxygen out of the innovation demanded by consumers and will continue to do so unless enjoined by this court.”

Craigslist already has caused 3Taps significant injury in the form of millions of dollars of lost sunk cost investments and lost opportunities with its partners, the company claims.

NoHo Barcade Fights East Coast Doppelganger’s Trademark Infringement Claims

September 21, 2012, by Mandour & Associates, APC

Los Angeles – A new arcade game and craft beer themed bar under construction in North Hollywood struck back this week against a trademark infringement lawsuit filed in August by the proprietor of three bars in the Northeast that also use the name “Barcade.”

The trademark Barcade is not used in interstate commerce, and Barcade LLC should be barred form asserting its claims by the fair use doctrine and the first sale doctrine, among other reasons, NoHo Barcade says in its Monday answer to Barcade LLC’s complaint in the Central District of California.

Barcade LLC’s claims should also be barred due to a general lack of fame of the trademark, NoHo Barcade says. NoHo Barcade acted with innocent intent in using the name, it says.

The alleged trademark is merely functional, and so is therefore contestable, not a trademark from its inception and incapable of protection under the law, NoHo Barcade says. The claimed trademark is simply a generic name for goods and services, is not inherently distinctive and has not acquired distinctiveness, since consumers do not associate the trademark with Barcade LLC alone, it says.

Moreover, there is no actual confusion or even a likelihood of confusion between Barcade LLC’s name or trademark and that of NoHo Barcade, according to NoHo Barcade.

Barcade LLC registered the trademark for the name Barcade with the U.S. Patent and Trademark Office in March 2008 in relation to bars and bar services. It says it used the trademark as early as October 2004.

The plaintiff company registered the trademark Barcade in April 2011 to cover beverage glassware, foam drink holders, sports caps and hats, sweatshirts and T-shirts, as well. It claims to have used the trademark as early as October 2005 with respect to those categories of goods.

The East Coast company owns three bars that operate under the Barcade trademark in Brooklyn, Philadelphia and Jersey City.

The Barcade trademark is inherently distinctive and represents exceedingly valuable good will, Barcade LLC says. It claims the trademark has become well known throughout the general community of adults looking for an entertainment establishment with arcade games.

“Plaintiff has developed a very positive reputation for its products and services and has been recognized as a leader and a pioneer in the field of arcade themed entertainment establishments that combine bar service and a variety of arcade games,” the complaint says.

Barcade LLC contacted NoHo Barcade to request it stop using the trademark, and NoHo Barcade refused, according to Barcade LLC.

Gym Accuses NBC Of Poaching “Wicked Fit” Reality Series Name

September 21, 2012, by Mandour & Associates, APC

Los Angeles – NBCUniversal Media LLC has come under fire for misappropriating the name for its Style Network reality television show “Wicked Fit” in a new trademark infringement lawsuit a similarly named South Carolina fitness center filed Wednesday.

Since as early as January 2009, Wicked Fitness LLC has been in the business of operating a fitness center which includes physical fitness training and conditioning classes. The company has always provided its services under the service trademark Wicked Fitness, and has offered to license the right to use the trademark to others, with the intent of franchising the business concept.

Wicked Fitness’s success is due substantially to its branding and the quality control exercised over the use of its trademark, the company says. The gym has obtained federal trademark registrations from the U.S. Patent and Trademark Office for the name Wicked Fitness, as well as many other variants including Wicked Power Yoga, Wicked Belly Dancing, Wicked Boot Camp and Wicked Prenatal.

NBC has begun broadcasting a show based on physical fitness and training through its Style Network under the name Wicked Fit, which has caused and will continue to cause confusion in the marketplace, in addition to infringing the gym’s trademark, Wicked Fitness says.

NBC’s unauthorized use of the trademark creates a likelihood of confusion, mistake, and deception as to the source and sponsorship of their goods and services, according to the complaint. Consumers are likely to mistakenly believe that NBC’s business is associated or affiliated with the gym and that NBC’s business is an authorized licensee, which it is not, Wicked Fitness says.

NBC has, by its infringement, injured Wicked Fitness’s valuable goodwill and well established business reputation, the complaint claims.

Confusion is not only likely, but is actually occurring in the here and now, as the gym has received inquiries from customers about the relationship between its business and the reality show, Wicked Fitness says.

Wicked Fit takes place in a women-only gym in which Katie Boyd, a beauty queen turned trainer, puts a set of clients through their paces. The series debuted in October 2011 but did not garner good reviews.

Microsoft Renews “Killer Instinct” Trademark, Stokes Hopes Of Game Revival

September 19, 2012, by Mandour & Associates, APC

Los Angeles – Microsoft Inc. sent waves through the video game world on Monday when it issued a cryptic announcement saying it is renewing the trademark for the classic 1990s fighter game series Killer Instinct.

“With all due respect to our friends in the media who like to frequent trademark sites, we thought we’d break this one ourselves,” a post on Microsoft’s playxbla.com, the official site for its Xbox Live Arcade, said. “Our legal eagles have authorized us to say: ‘We have either renewed or refiled a trademark application in various jurisdictions.’” The post was accompanied by the classic Killer Instinct logo.

Sure enough, the U.S. Patent and Trademark Office shows a listing for the word trademark Killer Instinct filed on Microsoft’s part on Sept. 12. The trademark is registered for video game software and entertainment services providing video games online.

The trademark registration instantly sparked hopes in the gaming community that Microsoft will reboot the iconic fighting series for its Xbox 720 next-generation gaming system with a third installment of the game. Gaming websites also predicted Microsoft will reissue the original two entries in the series on XBLA.

Killer Instinct was developed by the game studio Rare and was originally put out in an arcade format, in addition to versions for Nintendo’s Super Nintendo and Game Boy gaming systems. It became highly popular quickly after its 1994 release, and inspired the arcade sequel, Killer Instinct 2, which Nintendo released in 1996. KI2 was released in a modified form for the Nintendo 64 gaming system later that year, under the name Killer Instinct Gold. Microsoft acquired Rare in 2002.

Numerous Rare executives have publicly said in recent years that while everyone at the studio would like to make Killer Instinct 3, no such game was in development. The classic fighting game model that thrived in the 1990s has ceded significant ground in popularity to the first-person shooter in the last decade. Microsoft, however, may now be hoping to cash in on a surging cultural wave of 1990s nostalgia.

Libya Doesn’t Own Trademarks To Embassy Name, Judge Rules

September 14, 2012, by Mandour & Associates, APC

Los Angeles — The nation of Libya and its embassy lost their bid to bar an individual from his alleged infringement of the country’s claimed trademarks for the embassy’s own name when a District of Columbia federal judge ruled last week that Libya does not have valid, protectable trademarks.

Ahmad Miski allegedly infringed what Libya claimed to be trademarks for the country’s name in his work as an “expediter” of documents for the Libyan embassy’s “document legalization” process, according to Judge Reggie B. Walton’s Sept. 6 opinion. Under that process, all commercial and legal documents must be “legalized” to verify their authenticity and validity to those receiving the documents.

Miski, through his Arab-American Chamber of Commerce, facilitates the legalization of documents at the certification stage, before the embassy formally legalizes them. He registered several domain names using the name of the Libyan embassy to increase the internet search rankings for his own Arab-American Chamber of Commerce website, according to the opinion.

It is undisputed that the names at issue in the case, “Embassy of Libya” and “Libyan Embassy,” are not registered trademark, the judge said.

Libya and its embassy maintained that they have rights in the embassy trademarks based on their actual use in commerce in conjunction with specific services in the United States, namely the document legalization process, but Judge Walton disagreed.

“Because the plaintiffs have failed to show that they have valid marks entitled to protection, they cannot prevail on their claims under either the Lanham Act or the AntiCybersquatting Conusumer Protection Act,” Judge Walton said.

The judge also shot down Miski’s counterclaims against Libya for tortious interference.

“Because the defendant has failed to meet his evidentiary burdens with regard to his counterclaim, he cannot prevail on either his claim of tortious interference with contract or his claim of tortious interference with prospective economic advantage,” he said.

The case was filed in 2006, well before the Arab Spring uprising that toppled the rule of Col. Muammar Qaddafi. Judge Walton put the case on hold in April 2011, when that uprising was in full force and the country’s political situation was unstable, but resumed proceedings in October.

Velvet Underground’s Banana Trademark Suit V. Warhol Foundation To Proceed Even As Copyright Claim Fails

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.

Pinterest Goes After Cybersquatter Imposter For Trademark Infringement

September 7, 2012, by Mandour & Associates, APC

Los Angeles — Pinterest Inc. filed a trademark infringement action in California federal court last week against a Chinese national it accuses of buying up domain names and attempting to register trademarks that are confusingly similar to the social network’s name.

Pinterest’s complaint, filed August 31, asserts claims against Qian Jin for cyberpiracy, trademark infringement and dilution, false designation of origin and unfair competition.

Pinterest is a social network that lets users gather images and other content and curate that content into themed collections it calls “pinboards.” Founded just over two years ago, the network has millions of active users and has become a major force in social media.

Jin has sought to trade on Pinterest’s fame by registering a large number of domain names that are nearly identical to Pinterest.com, and filing a trademark application for the word Pinterests base on his use of the pinterests.com domain for advertising.

Pinterest, which has used its name and mark since March 2010, gained widespread fame before Jin registered and began to use the infringing domains, the company says.

Jin selected the infringing domains specifically because of their similarity to the famous Pinterest mark and pinterest.com, Pinterest alleges.

He also applied in March to register Pinterest and Pinterests as trademarks in the U.S. with full knowledge of the company, its services and its brands. Jin attempted to claim trademark protection for the terms as they relate to hotels, restaurants and similar services, based on his use of pinterests.com as a trademark since March 2011.

Jin has also applied to register Pinterest as a trademark in China, along with the marks Twitter, Foursquare and Instagram, the company alleges.

“Pinterest is not the only target of defendant’s infringement,” the complaint says. “Defendant has engaged in a similar pattern of infringing behavior against other famous web services and is well aware that his actions are in bad faith and violate others’ trademark rights.”

Jin’s infringement is widespread, including domains that appear to infringe on the marks of popular companies across the globe, including Google, Facebook, Twitter, Etsy, Foursquare, Hotmail, Hulu, Spotify, Scribd and Zynga, according to Pinterest.

“In short, defendant is a serial cybersquatter who has registered and owns hundreds of infringing domain names,” the complaint says.

Ninth Circuit Shuts Down Marilyn Monroe Estate’s Likeness Claims

August 31, 2012, by Mandour & Associates, APC

Los Angeles – The Ninth Circuit on Thursday demolished an attempt by the estate of iconic actress Marilyn Monroe to claim the right of publicity to her likeness under California law, saying the estate has repeatedly and forcefully argued in the past that she was a New York resident at the time of her death.

Marilyn Monroe LLC began a legal wrangle in 2005 with Milton Greene Archives Inc. and Tom Kelley Studios Inc., in which the estate claimed Milton Greene was violating the estate’s rights by using Monroe’s image and likeness for unauthorized commercial purposes. Milton Greene argued that the estate owned no such right of publicity.

The estate asserted that it inherited Monroe’s right of publicity, which was created and deemed posthumous by the states of California and Indiana decades after her death, through a residual clause in her last will and testament. The will was subject to probate in the state of New York, which does not recognize a posthumous right of publicity, the court said.

Because Monroe’s executors consistently represented during the probate proceedings and elsewhere that she was domiciled in New York at her death to avoid payment of California estate taxes, among other things, the estate is now judicially estopped from asserting California’s posthumous right of publicity, the appeals court ruled, affirming the Central District of California’s ruling in the case.

Monroe was found dead in her Brentwood, California home on August 5, 1962, a few months after being kicked off 20th Century Fox’s production of Something’s Got To Give, but she maintained her New York apartment and staff throughout that period, according to the appeals court. She had executed her last will and testament in New York a year and a half prior to her death, and named a New York attorney as executor, the court said.

In May 2007 the California district court ruled in favor of Milton Greene. In direct response California State Senator Sheila Kuehl introduced Senate Bill 771 in June 2007. The bill stated that the California statutory right of publicity could be deemed to have existed at the time of death of any deceased personality who died before January 1, 1985 and is a transferable property right that could pass through the residual clause in the will of the deceased personality.

After the bill passed, the estate sought reconsideration of the district court’s grant of summary judgment for Milton Greene. The district court said the law did apply retroactively and, as amended, permitted Monroe’s right of publicity to pass to Monroe LLC through the residual clause of her will, if California’s substantive right of publicity law applied.

Unlike the California legislature, though the New York legislature had rejected Monroe LLC’s efforts to amend its laws to enact a similar descendible, posthumous right of publicity, the district court said. If New York law applied, which it would if Monroe was domiciled in New York at the time of her death, Monroe’s right of publicity would have been extinguished at her death, the court said.

Given the estate’s many efforts over more than 40 years to argue that Monroe was living in New York when she died, principles of judicial estoppel preclude Monroe LLC from advocating that Monroe was domiciled in California when she died, the district court ruled and the appeals court affirmed.

“Marilyn Monroe is often quoted as saying, “If you’re going to be two-faced, at least make one of them pretty,” the Ninth Circuit’s opinion said. “There is nothing pretty in Monroe LLC’s about-face on the issue of domicile.”

“We observe that the lengthy dispute over the exploitation of Marilyn Monroe’s persona has ended in exactly the way that Monroe herself predicted more that fifty years ago: ‘I knew I belonged to the public and to the world, not because I was talented or even beautiful but because I had never belonged to anything or anyone else,’” the appeals court said.

Thermador Maker Sues Julia Child Foundation To Assert No TM Infringement

August 27, 2012, by Mandour & Associates, APC

BSH Home Appliances Corp., which makes Thermador ovens, preemptively sued the Julia Child Foundation for Gastronomy and the Culinary Arts on Friday, claiming its promotional use of photos of Child using its ovens does not infringe on the foundation’s rights to her likeness and trademarks.

BSH is seeking a judgment declaring that its use of or reference to Child’s name, image, likeness, celebrity identity and related trademarks in connection with presentations of the company’s heritage and history in various media does not infringe any trademark rights, copyrights, or rights of publicity claimed by the foundation, according to its complaint filed in Massachusetts federal court.

The action arises out of the foundation’s allegations that BSH has infringed one or more of the foundation’s trademarks and copyrights, and the foundation’s ownership of publicity rights related to the late Julia Child, according to the complaint.

“Ms. Child’s preference for and use of Thermador products, both on the set of her popular television show “The French Chef” and in her personal kitchen, is well-known and widely documented,” the complaint says.

Child’s personal kitchen was donated to the Smithsonian Institution in Washington, D.C., upon her passing, and remains on display to this day much as it appeared in her Massachusetts home, including her Thermador oven, the complaint points out.

BSH has used images of Child and references to the well-known historical fact of her use of Thermador products in various media, including on its website and on its social media web pages, the company says.

“These uses do not state or imply any endorsement by Ms. Child of Thermador products,” the complaint says. “Rather, plaintiff’s use of these photos and references to Julia Child’s name and use of Thermador products reflect on the long history, significance and influence of Thermador products on American society and culture, and Ms. Child’s documented and well-known use of those products.”

BSH claims its uses of Child’s image and name are not directly connected to the sale of any merchandise, but rather are factual references to her well-known use of Thermador products, placed in proper context, including on a timeline chronicling the company’s history and in the historical “Our Heritage” section of the Thermador website.

The foundation allegedly sent BSH a letter in July claiming exclusive ownership and control of Child’s image and trademarks, and demanded the appliance maker cease and desist from using references to Child.

Representatives for the Julia Child Foundation did not respond to emails seeking comment.

The passage of Child’s 100th birthday earlier this month served as an occasion for many tributes to her life and work.

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