Twilight Domain Name Cybersquatting

It could be argued that twilight.com’s owner Tom Markson simply likes the movies, books, and whole Twilight franchise and has no intention of cybersquatting.  But Summit Entertainment, the very lucrative Twilight Franchise’s owner isn’t buying that argument.  Mr. Markson is in no way related to Summit Entertainment, and has owned the twilight.com web site since 1994, far before the rise of the Stephanie Meyer books, and their Hollywood versions.  Twilight.com is being sued by Summit Entertainment for copyright and trademark infringement.   But Markson’s argument seems a little flimsy considering there are Adsense ads on the page, and he’s probably made at least some amount of revenue from such a high profile page and it’s Adsense links.  Making matters worse, the site looks very unprofessional and could give fans the impression that Summit Entertainment is either shabby and clueless, or at least very strange about their marketing efforts.  Markson responded to a cease and desist letter from Summit in 2009 by denying their claims.

Hells Angels Trademark Infringement

A Hollywood clothing manufacturer, Wildfox Couture, LLC is being sued by Hells Angels Motorcycle Corporation, otherwise known as Hells Angels. Although the name Hells Angels may seem generic, or at least non-corporate, they own the registered trademark and aren’t afraid to defend it. According to a story in the L.A. times on Tuesday, this suit is the latest in a long string of Hells Angels trademark cases. It was filed as Hells Angels Motorcycle Corporation v. Wildfox Couture, LLC and Amazon.com, et al 2011-cv-11-4141 PSG, in the U.S. District Court for Northern District of California.




According to Hells Angels attorney Fritz Clapp:

“We bring these lawsuits from time to time not just to punish but to educate. Somebody thought erroneously that Hells Angels is a generic term."



The T-shirts feature the slogan “My Boyfriend is a Hells Angel” on the front, and Hells Angels official trademarked angel wings on the back.

Louboutin's Trademark Suit Against YSL

Can a color be trademarked? The answer is it could be. Trademark registrations have been granted for colors in the past. (See here for the USPTO's standard). But it appears, for shoe designer Christian Louboutin, the answer is…no. Louboutin has been making shoes for the last few years with a trademarked “lacquered red sole.” The ubiquitous soles have turned up on many a red carpet, on the feet of many a celebrity. In fact, as CNN.com reports, even Jennifer Lopez has a song that mentions Louboutin’s in the lyrics. But recently, fellow shoemaker and competitor Yves Saint Laurent announced a new line of shoes featuring shiny red soles, and began production. Not surprisingly, the shoes sold well. But when Louboutin sued Laurent for trademark infringement and sought an injunction, things got sticky. Can something as simple as a color be trademarked? Well, Louboutin did in fact obtain a trademark registration for the red heels in 2008. But according to last week’s decision by a U.S. District Court Judge Victor Marrero in the Southern District of New York, it can’t. At least not in this case. The decision was based on the idea that any rule that denies an artist the use of a certain color in his or her craft is too restrictive. Specifically, Judge Marrero states, “Because in the fashion industry color serves ornamental and aesthetic functions vital to robust competition, the court finds that Louboutin is unlikely to be able to prove that its red outsole brand is entitled to trademark protection, even if it has gained enough public recognition in the market to have acquired secondary meaning.”


Although, it seems unlikely that Laurent just happened to start making red soled shoes a couple years after Louboutin had a hit with them. Both parties are scheduled to meet for a case management order this Wednesday. I think Louboutin clearly has attained a high level of secondary meaning for the public to associate the red heals strictly with Louboutin's and not other designer shoes. The outcome of this case will be a significant one for designers and artists of many types, no doubt.

Bratz Trade Secret Litigation $309 million



Bratz Dolls



As an update to the Bratz litigation, the Court has ordered Mattel, Inc. to pay MGA Entertainment $309 million.  In one of our prior posts which can be read here, Mattel initially sued MGA for trade secret and copyright infringement over the popular Bratz dolls, and received a judgment against MGA in 2008.  However, in a reversal, the Court then issued a judgment against Mattel finding them liable for trade secret misappropriation.  Now, the Court has finalized its judgment as follows: $85 million, plus another $85 million in punitive damages for trade secrets misappropriation.   Plus another whopping $137 million was awarded for legal fees, totaling close to $309 million against Mattel.  Ouch!  However, no word yet as to Mattel's appeal.

Chinese Apple Counterfeits Stores Popping Up

Local officials from Kunming, the capitol city of the province of Yunnan, China, have begun to crack down on the much-publicized “fake” apple stores that came to light last week. Two of the five stores have been shut down by the local industry and commerce administration. According to China Daily’s U.S. edition, the remaining 3 stores are awaiting a response from Apple as to whether or not they may continue operating.  Apparently, so far the products sold in the store have not been alleged to be counterfeit products.  But the store itself is unauthorized, thus selling gray marketing goods.


This is interesting news since foreign businesses have been skeptical about China’s responsibility to intellectual property. Patent trolls, knockoff brands, and gray markets have hurt China’s IP reputation. But this response from the local government could be a sign things are headed in the right direction. Granted, the news comes from China Daily, and Chinese news sources aren’t known for objective reporting. But the fact that certain of the stores have been closed down means that China didn’t simply turn a blind eye to the situation, as it has done in the past. Perhaps this was due to the extensive news coverage of the fake Apple stores, whose own employees didn’t even know they weren’t working for Apple.

However, it also appears that the reason the two stores were closed was the lack of a proper business license, not because of their intellectual property infringements. The remaining three stores (that have a business license) are awaiting a response from Apple.
Currently Apple only has four authorized stores, in Beijing and Shanghai. Maybe Apple should be expanding its Chinese market more quickly.

Lamborghini Trademark Infringement Lawsuit

The Italian car maker Lamborghini wasted little time in filing a lawsuit (US District Court, State of Nevada, Case No. 2:11-cv-01154-ECR –RJJ) against the Palazzo resort in Las Vegas. The Palazzo recently opened an exotic car showroom, an Italian restaurant, and a merchandise gallery called Dal Toro. The Dal Toro logo bears an all-too-similar resemblance to Lamborghini’s classic raging bull logo. According to the Las Vegas Sun, the suit claims that the logos are “studied imitations of the Lamborghini trademarks.”

The owner of these businesses, Lorenzo Barracco, seemed unconcerned with the trademark infringement suit, and called it frivolous. But the fact that the logo represents businesses that are upscale and clearly Italian car-themed doesn’t help. Given that the logo’s color scheme, overall design and Italian name are all similar to Lamborghini, the coincidence is a little far-fetched.

The suit continues:
“Defendants’ advertisement, promotion and sale of the knockoff products is part

of a sophisticated and elaborate scheme to target Lamborghini, to create products that are similar in appearance to well-known Lamborghini products, and to trade upon the goodwill and reputation associated with Lamborghini and its high quality, distinctive product lines, including by deliberately misleading the public and the trade as to the authenticity, source, affiliation or sponsorship of defendants’ operations and products.”

Sprinkles Cupcakes Wages Trademark Lawsuit

Sprinkles Cupcakes gained huge popularity due to its delicious cupcakes and also to a helping hand from the PR gained from getting on the Oprah Winfrey and Martha Stewart show. The company which has locations in Beverly Hills, Chicago, New York and throughout the country, is taking aim at a newer store which opened in 2009, called Pink Sprinkles . Sprinkles Cupcake, owned by Candace Nelson, a celebrity judg

e on the reality television show Cupcake Wars, has filed a lawsuit for trademark infringement and under the Anti-cybersquatting Consumer Protection Act (regarding the domain name it uses) in the U.S. District Court of Connecticut, all in connection with its federal registration for SPRINKLES CUPCAKE U.S. Reg. No. 3,250,609.

The case is a fairly straight forward trademark infringement claim. Will Pink Sprinkles claim that their addition of the word "Pink" is different enough to avoid infringement, or possibly do they have some other defense? Stay tuned.