Sunday, June 24, 2012

Hamilton Ventura Trade Dress Infringement Against Stuhrling Original

Did any of you moviegoers notice Will Smith’s watch during Men in Black III? Apparently Will Smith wore the same watch, a “Hamilton Ventura”, in all three of the Men in Black movies. The watch has also graced the wrists of Elvis Presley in Blue Hawaii and Rod Sterling on The Twilight Zone.

The Swatch Group Inc., which manufactures Hamilton brand watches, has filed a trade dress and trademark infringement lawsuit against Stuhrling Original LLC for “intentionally copying” the Ventura watch.

A product can only receive trade dress protection if there is public recognition of its “look.” This can be achieved through years of advertising, promotion, and popularity. The Swatch Group Inc. will likely bring up that Hamilton released the Ventura watch in 1957 and since then it has been labeled as one of the “most iconic wrist watches ever designed.”

Stuhrling sells the “Stuhrling Ricochet,” a watch that features a triangular design that could make it look similar to the Men in Black watch. The CEO of Stuhrling has said: “there are a lot of triangular watches out in the marketplace…we really don’t feel that the lawsuit has any validity.”

Supposedly what got Swatch Group Inc. really upset was a comment made by a ShopNBC host when the Stuhrling watch appeared on the segment. Shortly after the release of MIB, the show aired and the host said: “if memory serves, there is another motion picture release now where this is once again being touted.”

The Swatch Group has also named ShopNBC in the lawsuit against Stuhrling. It claims trademark infringement unfair competition, false advertising, and demands a permanent injunction. The Swatch Group has reportedly spent millions of dollars to promote the watch and now wants to ensure that people don’t get confused over the source of the “Hollywood favorite.”

Wednesday, June 20, 2012

Havana Club Trademark Dispute with US and Bacardi

Cuba and the US are at war…over Rum! Cuba’s state distillery sells the popular rum “Havana Club” in over 120 different countries (distributed through Pernod Ricard, a French company). But entry of Cuba’s delectable national drink is barred into the U.S. because of the embargo. The USPTO did however granted Havana Club International the U.S. trademark rights for “Havana Club.” However, the U.S. Treasury Department’s Office of Foreign Assets Control, which administers and enforces economic and trade sanctions, did not issue a license to the company to make a $200 renewal payment. Thus, a court recently refused the “Havana Club” trademark renewal.

Bacardi, which is the Havana Club brand’s global competitor, sold its own version of rum called “Havana Club” in Florida. Now that Havana Club International no longer owns the trademark “Havana Club” in the U.S., Bacardi may be free to apply for the trademark rights. The USPTO would surely not approve Bacardi’s application for “Havana Club” as long as Havana Club International held the rights to that trademark because there would be a likelihood of confusion between the two.

Bacardi plans on expanding sales of its “Havana Club” rum across the 50 states. Bacardi’s version reportedly uses the same recipe as Cuba’s “Havana Club. “ So for the first time, rum drinkers in the U.S. (40% of the world’s rum drinkers) may now get to enjoy a glass of the famous “Havana Club” rum.

For Bacardi, this decision represents more than an opportunity for economic profit. When the communist government took control of Cuba, it also seized Bacardi’s distilleries in the country. The VP of Corporate Communications at Bacardi has said:

“This is not a question of market share. Rather, this comes from our own experience as Bacardi’s assets in Cuba were illegally confiscated in 1960.”

The “Havana Club” makers have decided to create a new name for the rum to push back against what the brand feels is a trade bias against Cuba. Pernod Ricard has already registered “Havanista” as a trademark in the U.S. and plans on selling the rum under that name if the U.S. embargo is lifted.

Friday, June 15, 2012

No Doubt Lawsuit with Activision Right of Publicity

No Doubt enjoyed mainstream success during the 90s with hits like “Don’t Speak” and “Just a Girl.” Last week, the band announced its plans to reunite and release an album this September. The same day that the band shared the news of their planned comeback, a judge gave permission for the band’s lawsuit against video game maker Activision to be heard by a jury. “Hella Good” day for No Doubt.

The video game created by Activision, Band Hero, features the band members’ likenesses as video game characters. Players of this video game can select a character that is modeled after a No Doubt band member’s likeness and make the character sing a song selected by the player. No Doubt did allow Activision to use of the likeness its band members, but alleges that Activision overstepped the terms of this contractual agreement.

Supposedly, No Doubt had agreed to allow the use of its band members’ likenesses in 3 songs, but the video game allows the appearance of the likenesses in about 60 songs. Additionally, the video game allows the No Doubt characters to sing songs besides those that No Doubt previously approved of, which are songs that No Doubt sang or performed in real life.

The Los Angeles Times reported that No Doubt feels that the video game “transformed No Doubt band members into a virtual karaoke circus act” and “the Character Manipulation Feature results in an unauthorized performance by the Gwen Stefani avatar in a male voice boasting about having sex with prostitutes.”

This lawsuit includes a right of publicity claim, but is more complicated than a mere unauthorized use of a celebrity’s likeness.

No Doubt did authorize Activision to use each band members’ likeness in the video game, but now challenges how the video game uses and manipulates a band member’s likeness. While No Doubt will likely emphasize that it did not agree for the likenesses to be used in such ways, Activision may argue that some flexibility is needed to make the video game functional. Although the specifics of the contract between No Doubt and Activision are unclear, this cases raises questions about what the scope of permitted uses should be when a celebrity authorizes use of his/her likeness for a video game character.

Monday, June 11, 2012

Google's Fair Use Defense to Authors Copyright Infringement

Last month, Google got the vote for “most popular technology brand,” beating out Facebook, Twitter, and Apple. Google has grown to include its own specialized search tool for Maps, News, Shopping, Videos, etc.

A few years back, Google started Google Books and made an agreement with several research libraries to scan books for its Google Books Library Project. It has scanned 12 million books over the course of the project.

The website for Google Books describes that you can view a few “snippets” or sentences of copyrighted books and you can fully view a book that is out of copyright. The website states:

“The Library Project’s aim is simple: make it easier for people to find relevant books – specifically, books they wouldn’t find any other way such as those that are out of print …”

Members of the Authors Guild are alleging that Google scanned their copyrighted books without authorization. Last week, a federal judge gave the ok for the members of the Authors Guild to sue jointly (a class-action lawsuit). So now thousands of authors can sue Google since the class includes: “all U.S. authors and their heirs with a copyright interest in books scanned by Google as part of its Library Project.”

Google’s plans to create the world’s largest digital book library could come to a halt depending on whether a court agrees with the authors that Google’s e-books infringed their copyright protection. But wait a minute. Google may have a claim to “fair use” of these works under copyright law, which Google will reportedly use as its primary defense in this case.

The line between fair use and infringement can get blurry. The doctrine of fair use, section 107 of copyright law, says that certain purposes can qualify as “fair” such as scholarship, research, etc. Section 107 also says a court should consider:

1. The purpose and character of the use, including whether such use is of commercial nature or is for nonprofit educational purposes

2. The nature of the copyrighted work

3. The amount and substantiality of the portion used in relation to the copyrighted work as a whole

4. The effect of the use upon the potential market for, or value of, the copyrighted work.

The outcome of this case will undoubtedly have effects on the future of ebooks and digitization. It’ll be up to a judge whether Google’s actions qualify as fair use, but what’s your opinion based on what you know about the case and considering the fair use factors?

Monday, June 4, 2012

Charlie Sheen Trademark Infringement and Right of Publicity

For $250, guests of a New York Gentlemen’s Club could eat sushi off the body of an almost-naked woman in the “Charlie Sheen Room.” At least until Sheen’s lawyer sent the Cheetahs Gentlemen’s Club a cease and desist letter threatening a lawsuit for millions, which the club complied with.

The “Charlie Sheen Room” featured Sheen’s name and images. It sounds a little creepy, but hey, to each his own. The president of the company owning Cheetahs, Sam Zherka, denied that it used Sheen’s name to promote the business. Rather, he says that the strip club used the name for comical effect and felt that it would help, not harm, Sheen’s reputation.

Sheen apparently did not appreciate the effort. Sheen’s lawyer, Marty Singer, reportedly commented: “You can’t use any celebrity name to promote a business without permission. They had no right to use his name.”

Sheen’s lawyer likely relies on the right of publicity laws in California. California Cal. Civ. Code Section 3344 states:

“Any person who knowingly uses another’s name, voice, signature, photograph, or likeness, in any manner, on or in products, merchandise, or goods, or for purposes of advertising or selling, or soliciting purchases of, products, merchandise, goods or services, without such person’s prior consent…shall be liable for any damages sustained by the person or persons injured as a result thereof.”

Although Zherka says that the purpose of using Sheen’s name and images did not include promoting business and customers did not visit the club to see the “Charlie Sheen Room,” Sheen may have had a good argument. Sheen’s reputation may not be the best, but his controversial reputation has helped attract attention and profits. In 2011, Sheen set a new Guinness World Record for the “Fastest Time to Reach 1 Million Followers” on Twitter and his nationwide tour “My Violent Torpedo of Truth/Defeat is Not An Option” sold out in 18 minutes.

We will never know which way a court would have ruled in this case, but it seems like Cheetahs took the smart route by taking down its unauthorized use of Sheen’s name and images from its VIP room.

Friday, June 1, 2012

Gucci Trademark Infringement Against Guess

After three years, the Gucci v. Guess trademark infringement battle finally ended earlier this month when Gucci received a settlement of $4.7 million in damages (Gucci initially demanded $221 million). The judge’s words: “Over the past three years, the parties have put in countless hours and spent untold sums of money, all in the service of fashion — what Oscar Wilde aptly called ‘a form of ugliness so intolerable that we have to alter it every six months.’”

Ever since the end of the case, the web has been abuzz with talk about what this decision means for future trademark disputes and how it relates to the now-infamous Louboutin v. YSL lawsuit. In that case, a judge ruled that Louboutin could not protect its red-soled shoes from use by YSL based on the idea that denying an artist the use of a certain color is too restrictive. Louboutin appealed that decision, but the appeal is still pending.

The Gucci v. Guess case echoes aspects of Louboutin v. YSL because one of the marks that Gucci alleged that Guess copied was its green-red-green color stripe pattern. Additionally, Gucci claimed that Guess copied its “quatro G” pattern of interlocking G’s. Along with the settlement mentioned above, the judge awarded a permanent injunction, which means that Guess is now barred from using the “quatro G” pattern, the green-red-green color pattern, and other square G marks on Guess merchandise. Gucci reportedly says that it will file similar cases in Italy, China, and France.

It’s possible that this case could lead to stricter restrictions in the fashion industry with respect to using a similar pattern to another brand. However, it doesn’t seem that a win for Gucci signals a sure victory for Louboutin on appeal. While Louboutin disputed the use of the color red, Gucci argued against the use of a striped pattern of color. It’s unclear whether this would make a difference to the district court judge that decided the Louboutin case, but the fact that Guess used a similar color pattern and not just a solid color does seem to make the two cases distinguishable. It also gives less weight to the idea of artistic freedom to use a certain color because it involves a specific pattern.

A judge could decide though that the use of the red-sole deserves trademark protection based on public recognition and secondary meaning associated with the red-sole (partly thanks to “Sex and the City”). Louboutin continues to fight for protection against similar use and it will be interesting to see the outcome of the case after appeal.