Articles Posted in Trademark and Copyright Litigation

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Furniture sold in Illinois through Bon-Ton Stores was the subject of a recent trademark infringement case before the Ninth Circuit Court of Appeals (Stone Creek, Inc. v. Omnia Italian Design, Inc., No. 15-17418 (9th Cir. 2017)).

Phoenix-area furniture maker and retailer Stone Creek, Inc., obtained state and federal trademark protection for the signature red oval encircling the words “Stone Creek” imprinted on its furniture. In 2003, the company entered an agreement with leather furniture maker Omnia Italian Design to sell Omnia furniture branded with the Stone Creek label in Stone Creek stores.

Stone Creek later learned that Omnia was using its brand mark without authorization on competing products, specifically furniture sold through Bon-Ton Stores in the Midwest. Omnia digitally copied the mark from Stone Creek products and used it in marketing and warranty materials displayed at Bon-Ton galleries. Stone Creek was tipped off when, among other things, consumers began contacting them about warranties for furniture purchased at Bon-Ton.

Stone Creek sued Omnia for federal and common-law trademark infringement and unfair competition. The district court found for Omnia on the ground that consumers were not likely to be confused by the mark as defined under the Lanham Act.

A “likelihood of confusion” under trademark law turns on whether a “reasonably prudent” marketplace consumer is “likely to be confused as to the origin of the good or service bearing one of the marks.” Determining factors include the similarity of the marks and the proximity of the goods, the recognition and distinctiveness of the protected mark, evidence of actual confusion, and common marketing channels. Continue reading ›

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When a company changes its logo to just the letter, “P” it’s hard to believe a single letter of the alphabet could be trademarked, but that’s what PayPal appears to be claiming.

According to a recent trademark infringement lawsuit PayPal filed against Pandora, it’s more than just the letter. It’s also the color and style, both of which are very similar to the logo PayPal has had for the past three years.

Currently, PayPal’s logo is two blocky, overlapping Ps in sans serif, with no counter. A very dark blue P overlaps a light blue P.

Pandora’s new logo is a single, blocky, dark blue P, on the same color spectrum as PayPal’s logo. It also has the sans serif and absence of counter as PayPal’s logo. According to PayPal, the new Pandora logo goes beyond resembling PayPal’s logo and openly mimics it.

Despite the fact the two companies are working in very different industries, PayPal’s trademark infringement lawsuit is claiming that Pandora recently changed its logo in a deliberate attempt to cause confusion among consumers. Continue reading ›

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Many people and organizations have long tried to get the NFL team known as the Redskins to change their name. The name is certainly offensive to most Native Americans and is a racial slur, but it’s not illegal to use it.

The football team has maintained a trademark on the Redskins name since 1967, but when they went to renew it in 2014, the trademark office refused, saying the name disparaged Native Americans. The team sued the trademark office in Virginia, where a trial judge ruled in favor of the trademark office. The team appealed the decision to the United States Court of Appeals for the Fourth Circuit, which is also located in Virginia, but that court put off ruling on the case until after the U.S. Supreme Court had given its ruling on Matal v. Tam, in which an Asian-American dance-rock band is seeking a trademark for their name: the Slants.

While the trademark office insisted the name was offensive, the band members said that was not their intention in coming up with the band’s name. Instead, they were looking to empower themselves and other Asian Americans by repurposing a derogatory term, much like the way homosexuals have taken ownership of the term “queer.”

All eight of the judges were unanimous in ruling in favor of the Slants, though their reasoning differed (Neil Gorsuch was not included in the decision, as the hearing was in January, prior to his appointment). Half the judges maintained a ban on trademarks for disparaging names would be in violation of the First Amendment, even when taking into account that judicial scrutiny for commercial speech tends to be relatively relaxed compared to other forms of speech. The judges pointed out that the First Amendment protects all speech, however hateful or offensive. Continue reading ›

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Streaming services such as Netflix, Hulu, Amazon, and Spotify, are all wonderful for consumers, but they can create problems for copyright attorneys.

In traditional retail, copyright holders are the only ones who maintain the right to reproduce and sell published content, including books, articles, videos, and music. But there’s a specific type of publishing license, called a mechanical license, that distributors can get to cover their reproduction of copyrighted works (such as the songs Spotify makes available to its customers).

According to a class action copyright infringement lawsuit recently filed against Spotify, the music streaming company allegedly violated copyright laws by failing to pay for mechanical licenses for numerous songs it was distributing to its listeners.

Shortly after the lawsuit was first filed, a representative of the company released a public statement, claiming the information necessary to identify the proper copyright holder is not always available. He insisted that, in such instances, Spotify sets aside licensing money for when the proper copyright holders could be found.

But according to David Lowery, the musician who filed the class action lawsuit, the statement is as good as an admission of guilt. Even if Spotify felt it was doing the best it could, the fact remains that copyright law requires you to pay the copyright holder before you can distribute their work. Lowery and his attorneys maintain that, by failing to do so, Spotify was violating U.S. copyright laws. Continue reading ›

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They say great minds think alike, but how do we determine the difference between thinking alike and stealing ideas? Thanks to copyright and trademark laws, some ideas are given a certain level of protection in this country, although the line between stealing an idea and having the same (or a similar) idea can get very blurry. This is especially true of creative professions, such as comedy.

According to a recent lawsuit filed against Conan O’Brien and the writers of his show, at least five of the jokes used in some of O’Brien’s opening monologues were stolen from Alex Kaseberg’s blog. Kaseberg is a freelance comedy writer who claims to have written comedy for Jay Leno, as well as several publications.

According to Kaseberg, the jokes in question allegedly appeared on his blog from December 2014 to June 2015 and it wasn’t long afterwards that they started appearing in the opening monologues of O’Brien’s late-night show on TBS.

One of the examples listed in the complaint includes a joke about the University of Alabama-Birmingham cancelling its football program. Aside from changing the name of a second football team, the joke appeared almost word for word on O’Brien’s show the day after Kaseberg posted it on his blog. Both the similarity between the two jokes and the timing seem a bit too much to be taken for mere coincidence and the judge presiding over the case agreed. Continue reading ›

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The internet contains so much content, and social media allows it all to be distributed so far and so fast, that the question of who owns exactly what content online, and the extent of that ownership, is constantly being debated.

Distractify and 22 Words are both sites that combine content from various sites and social media platforms and repurpose that content into articles that can be written up quickly and easily and disseminated throughout the internet. The result is what is commonly referred to as clickbait.

But now Distractify has sued 22 Words for allegedly violating its copyright at least 51 times. The examples provided in the complaint never involved a word-for-word copy of Distractify’s headlines or article content, but 22 Words did publish articles that contained the same ideas as previous Distractify articles, with similar headlines. Continue reading ›

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With the economy still unsteady after the recession, more and more people are attracted to the idea of starting their own business. But one of the biggest challenges when doing that is making sure you have something unique to offer the market.

For people who have spent most of their career working at one company, that’s often all they know. If they’re going to try to branch off on their own, they’d better make sure their new operation is significantly different from their employer’s, or at least has a new approach to the industry. Either way, it’s important to note that just copying and pasting your employer’s business is not only unethical – it’s illegal.

According to officials, David Newman, a 34-year-old trader who worked in Chicago, stole more than 400,000 electronic files from his employer. Those files contained all of WH Trading LLC’s proprietary computer code and trading software. Continue reading ›

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If a patent holder is allowed to control what happens to their patented products after the first sale, where would it end? Would they be able to take a cut from thrift shops? Garage sales?

Lexmark International, a technology company that makes printers and ink cartridges for those printers, has been selling its ink cartridges on the condition that they could not be refilled and resold after the initial sale. Despite that contingency, Impression Products, a small company based in West Virginia, was buying Lexmark’s ink cartridges (in the U.S. as well as abroad), refilling and refurbishing them, and reselling them at a reduced price.

Lexmark responded by suing Impression Products, claiming the company’s refusal to abide by the limitations Lexmark provided constituted trademark infringement. The case went before the U.S. Court of Appeals for the Federal Circuit, which is located in Washington. That court supported both of Lexmark’s claims concerning the resale of patented items that were initially purchased both in America, as well as those bought in other countries.

The appeals court agreed that, in most cases, anyone who bought a patented product was free to use it however they saw fit once they had paid for it, but that the conditions Lexmark had placed upon the sale of its ink cartridges was valid. Continue reading ›

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What’s in a name? While some claim it’s nothing more than a word (or combination of words), some people work really hard to maintain their good name. So when something comes along that might threaten that good name, they’ll do whatever it takes to put a stop to the potential harm before it gets out of hand.

Christopher Bray said he was aware of Ariel Investments at the time he created his own firm, Ariel Capital, in early 2014. But Bray claims Ariel Investments had nothing to do with the naming of his own company. Instead, he claims he drew his inspiration for his company’s name from the Bible and his daughter, who is also named Ariel.

Although a federal judge found Bray’s reasoning credible, he said it didn’t change the fact that the name of Bray’s company could cause confusion for consumers, especially given the fact that both firms are operating in the same industry. Continue reading ›

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They say imitation is the highest form of flattery, but Louis Vuitton doesn’t seem to think so.

The luxury brand has filed numerous trademark infringement lawsuits against small companies that parody the designer bags in some way. The lawsuits have been so far fetched as to have been called “bullying” and one judge even laughed out loud at some of the claims Louis Vuitton was making.

The latest such lawsuit to gain media attention was filed against a small company called My Other Bag that made inexpensively, canvas bags with “My Other Bag” printed on one side and a parody of a well-known luxury bag printed on the other side. In the case of Louis Vuitton, the print evoked the famous Vuitton bag design, but the LV emblem was replaced by MOB. My Other Bag also sells canvas bags that include parody prints of other luxury bags, but Louis Vuitton was the only one to file a lawsuit.

Trademark infringements like this one are generally considered to be a bullying tactic because they involve a giant company filing a practically baseless lawsuit against a much smaller company that’s not even operating in the same market. While the canvas bags have been promoted as great for things like carrying groceries and going to the beach, true Louis Vuitton bags are more likely to be used by women carrying around their personal effects to high-end shops, restaurants, and entertainment venues. They’re the kinds of bags to be shown off, whereas the canvas bags are clearly meant to be fun and practical and used in more casual settings. Continue reading ›

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