Posted On: January 31, 2010

Who Dat? Who Dat Say Dey'll Sue For Trademark Infringement? Duuhh NFL, Dat's Who!

who-dat-trademark-nfl-cease-desist-t-shirts-saints.jpgDuring Super Bowl week, the NFL is usually busy cracking down on church congregations showing the game in violation of the league's copyrights. After not caring about the New Orleans Saints for over the last forty years (aka, the "Ain'ts" years), the NFL thought it would be a good public relations boost to send numerous cease and desist letters to merchants that were selling "Who Dat?" t-shirts and memorabilia. Who Dat? Who Dat trying to jump on Da Who Dat bandwagon?

After local merchants complained, it became an issue ripe for Congress. Louisiana Senator David Vitter wrote the NFL Commissioner urging him to "drop this obnoxious and legally unsustainable position and instead agree that 'Who Dat' is in the public domain, giving no one exclusive trademark rights." Sen. Vitter makes valid trademark points. First, the NFL can't prove ownership via first use because "Who Dat" was "first heard in New Orleans minstrel shows well over 130 years ago" and "St. Augustine High School in New Orleans" used it prior to the NFL. Second, there's wide spread use by others and lack of enforcement because "Who Dat" "has become part of New Orleans and Louisiana popular culture." Finally, as for fair use, Sen. Vitter challenges the NFL to sue him because he's printing t-shirts with "WHO DAT say we Can't print Who Dat!" for widespread sale in commerce.

The NFL has only now -- apparently after Senators intervened -- realized the public relations blunder, chalking it all up to a "significant misunderstanding as to the scope of the [League's] trademark enforcement efforts."

Posted On: January 27, 2010

Upper Deck Settles Yu Gi Oh! Counterfeiting Case

UPDATE 2/2/2010: Major League Baseball sues Upper Deck for trademark infringement and quotes from Yu-Gi-Oh! counterfeiting case. Click here for details.

trademark-attorney-yu-gi-oh-counterfeit-upper-deck.pngLos Angeles, CA – Instead of settling the case after it was caught selling counterfeit Yu Gi Oh! cards, Upper Deck fought a losing battle and the Court's summary judgment ruling found that Upper Deck counterfeited Yu Gi Oh! cards (details here). After the parties' opening statements were delivered to the jury yesterday, Upper Deck and Konami settled the case, wherein Upper Deck will pay an undisclosed sum to Konami and will enter into a permanent injunction -- which appears to be an adoption of the Court's previously issued preliminary injunction (details here). The Court's order regarding the settlement is available here.

The case is Konami Digital Entertainment, Inc. v. Vintage Sports Cards, Inc. et al., CV08-06630 VBF (C.D. Cal. 2008)

Posted On: January 27, 2010

Jury Trial Begins In Upper Deck Yu Gi Oh! Counterfeiting Case

UPDATE 1/27/2010: Upper Deck settles Yu Gi Oh! counterfeiting case. Details here.

trademark-attorney-yu-gi-oh-counterfeit-upper-deck.pngLos Angeles, CA – Despite the Court’s finding that Upper Deck counterfeited Yu Gi Oh! cards (details here) and advising the parties to settle the damages phase through mediation, the jury trial to determine damages has commenced (Court’s calendar is here). If there ever was a case to settle early to avoid damage to a company’s reputation – which reputation and lifeline is founded on authenticating autographs and memorabilia, this would have been it.

The Cult-Stuff provides a chronology of events in the Konami v. Upper Deck Yu Gi Oh! counterfeiting battle here.

The case is Konami Digital Entertainment, Inc. v. Vintage Sports Cards, Inc. et al., CV08-06630 VBF (C.D. Cal. 2008)

Posted On: January 24, 2010

Uncharitable Trademark Dispute Over Eagles Word and Design – Grand Aerie vs. Eagles Clubs

trademark-attorney-aerie-eagles-clubs-fraternal-foundation.jpgLos Angeles, CA – Grand Aerie of the Fraternal Order of Eagles (FOE) sued Eables Clubs International, Inc. and Eagles Clubs International Foundation, Inc. for trademark infringement and unfair competition. FOE is a non-profit fraternal organization that has been engaged in social, civic and charitable activities since the 1890’s. FOE uses numerous “Eagles” trademarks, including logos, which have been registered with the U.S. Patent & Trademark Office.

Defendants are also a non-profit fraternal organization engaged in social, civic and charitable activities. Defendants use “Eagles” trademarks and logos incorporating an eagle design. FOE alleges that Defendants have registered the domain name in bad faith in an effort to divert consumers from FOE’s online location. Defendants are accused of adopting the confusingly similar marks with prior knowledge of Plaintiff’s trademarks. The case is Grand Aerie of the Fraternal Order of Eagles v. Eagles Clubs International, Inc., et al., CV10-0357 RSWL (Cal. 2010).

Posted On: January 17, 2010

Shaquille O’Neal Files “SHAQTUS” Trademark Infringement Lawsuit In Las Vegas

las-vegas-nevada-trademark-attorney-shaqtus-shaquille-oneal-trademark-infringement.jpgLas Vegas, NV – Shaquille O’Neal has had numerous nicknames throughout his NBA basketball career. But his SHAQTUS nickname, which he assumed when he was traded to the Phoenix Suns in 2008, has become the prickly subject of a trademark infringement, cybersquatting, and right of publicity lawsuit. O’Neal has exclusively licensed his “Shaq” trademarks and his name, image, and likeness to his Mine O’Mine, Inc. corporation – the Plaintiff in the case.

Michael Calmese, Dan Mortensen, and their True Fan Logo, Inc. are the named defendants. On the day that Shaquille was traded to Phoenix, Mortensen registered the domain name and, shortly thereafter, the domain name. Defendants’ website features a cactus character that allegedly has O’Neal’s facial features and wears an orange number 32 basketball jersey – Shaq’s number with the Suns. Defendants sell clothing and other products bearing the SHAQTUS trademark and/or the character.

In 2008 and 2009, ESPN aired commercials featuring O’Neal and a cactus with O’Neal’s facial features. On December 4, 2009, Defendant Calmese allegedly sent a letter to ESPN claiming ownership of the SHAQTUS trademark and proposing a joint-development business arrangement to resolve the dispute. On December 29, 2009, Plaintiff’s counsel sent a cease and desist letter to Defendants demanding the transfer of the domain names. On January 4, 2010, Defendant Calmese responded and allegedly claimed that O’Neal consented to his use of the SHAQTUS mark when O’Neal agreed to take a picture with Calmese and autograph a T-shirt.

The case is Mine O’Mine, Inc. v. Calmese, et al., CV10-00043 KJD (D.Nev. 2010).

Posted On: January 14, 2010

UGG® Competitor Sued For Patent Infringement & Lanham Act Unfair Competition Over Boots

boot-design-patent-attorney-cardy-ugg-shoe.jpgLos Angeles, CA – UGG® boot manufacturer, Deckers Outdoor, filed a patent infringement and unfair competition lawsuit against Claire’s Stores and CBI Distributing. UGG® boots have set a fashion trend with young ladies wearing the lamb-skinned boots – to keep their feet and calves warm – with shorts, thereby allowing their knees and thighs to freeze. That’s not in the complaint, it’s just a personal observation. Now back to the regularly scheduled complaint: the UGG® line of boots includes the Classic Cardy™, which was introduced in 2007 and has a crochet upper with buttons on the lateral side. The Classic Cardy™ boot is the subject of U.S. Design Patent No. D582,650 (“the ‘650 Patent”).

Deckers alleges that Defendants sell allegedly infringing boots under the “Claire’s Botts” mark at significantly lower price points, thereby diminishing the market place for the genuine Cardy Boots™. Plaintiff’s Lanham Act claim derives from the alleged sales of infringing boots creating a false association or affiliation with Deckers’ UGG® line of boots.

It’s unclear from the complaint whether Plaintiff is asserting a trade dress infringement claim, but at least they obtained a design patent for the boot – which is not a work protectable by copyright. By doing so, they avoid some costs and expenses in having to conduct surveys to establish trade dress rights and, further, a likelihood of confusion among consumers. The following Federal Circuit opinion provides a great comparison of the level of proof needed for each:

[T]he difference in weight given to empirical evidence is fully understandable in light of the stark differences between the elements required to show design patent infringement and trademark and trade dress infringement. ... [P]urchasers' likelihood of confusion as to the source of a good is a necessary factor for determining trademark and trade dress infringement. ... To show infringement, the holder of a trademark or trade dress therefore must have progressed to the manufacture and distribution of a 'purchasable' product. As a result, consumer behavior in the marketplace is a highly relevant factor in determining trademark and trade dress infringement. Since surveys and other empirical studies are ordinarily probative evidence of consumer behavior in the marketplace, such evidence has significance in determining trademark and trade dress infringement. In contrast, ... a different quantum of proof applies to design patent infringement, which does not concern itself with the broad issue of consumer behavior in the marketplace. ... The single element here required to show design patent infringement involves a much narrower field of inquiry. In short, a design patentee may prove infringement simply by showing that an ordinary observer would be deceived by reason of an accused device's ornamental design. ... Therefore, in showing design patent infringement there is ordinarily no compelling need for empirical evidence. Braun Inc. v. Dynamics Corporation of America, 975 F.2d 815, 828 (Fed. Cir. 1992)

The case is Deckers Outdoor Corp. v. Claire’s Stores, Inc., et al., CV09-09498 CBM (C.D. Cal. 2009).

Posted On: January 10, 2010

Court Rules That Upper Deck Sold Counterfeit Yu Gi Oh! Cards

UPDATE 1/27/2010: Upper Deck settles Yu Gi Oh! counterfeiting case. Details here.

trademark-attorney-yu-gi-oh-counterfeit-upper-deck.pngLos Angeles, CA – Yu Gi Oh! owner Konami sued Upper Deck, its former distributor, for selling counterfeit trading cards. (Details here) After hearing both parties’ motions for summary judgment, the Court found that Konami had “presented evidence to establish every element of liability [for] counterfeit activity and violation of federal unfair competition law, pursuant to the Lanham Act, on the part of the [Upper Deck] Defendants.” (Order available here) The Court also found that Upper Deck was liable for common law trademark infringement and California unfair competition under Business & Professions Code § 17200. On the copyright infringement claim, the Court partially found that Upper Deck infringed the “Reverse Art” copyright, which refers to the text that appears on the back of the trading cards. The statement of undisputed facts is available here.

In another order, available here, the Court ruled in Konami’s favor because the “reproduction and/or manufacture of unauthentic cards does not fall within the ‘Approval’ clause of the 2006 Letter of Intent.” Conversely, the Court denied Upper Deck’s motion to limit its liability. In yet more bad news for Upper Deck, in another order that’s available here, the Court found for Konami on Upper Deck’s counterclaims for breach of contract and slander per se.

The case is scheduled for trial on January 26, 2010. The case is Konami Digital Entertainment, Inc. v. Vintage Sports Cards, Inc. et al., CV08-06630 VBF (C.D. Cal. 2008)

Posted On: January 4, 2010

T-Mobile Sued For Music Copyright Infringement Over Ringback Tones by Music Publishers

copyright-music-bmi-ringback-t-mobile.jpgLos Angeles, CA – Broadcast Music, Inc. (“BMI”), a music performing rights organization that licenses public performance of over 6.5 million copyrighted songs, sued T-Mobile for copyright infringement over use of songs in ringback tones. A ringback tone is a customer selected song that is heard by a caller instead of a regular ring. The ringback tones are stored on T-Mobile’s servers and are streamed to the caller’s phone. T-Mobile sells its Ringback tone services to its users for $1.49/month and the songs are purchased for $1.99 each. The complaint lists at least fifty-six songs that were allegedly infringed, but contends that the true number could be in the thousands. BMI alleges that despite its demands that T-Mobile cease its infringing conduct, T-Mobile has refused to do so. Thus, BMI demands statutory damages for the willful infringement of each copyrighted song.

With BMI's prediction that U.S. ringback tone sales surpassed $235 million, it's not surprising that they're trying to cash in on that market. Of course, BMI has to avoid Section 110(4) of the Copyright Act that silenced ASCAP's royalties claim for musical ringtones. The case is Broadcast Music, Inc. et al. v. T-Mobile USA, Inc., CV09-09316 RSWL (C.D. Cal. 2009).