IP News Roundup Archive

Marilyn Monroe

Estate of Marilyn Monroe sues intimate apparel company for trademark infringement
On November 9, 2016, plaintiff Estate of Marilyn Monroe filed suit against defendant Fashion Central in the Southern District Court of New York for trademark infringement, trademark dilution, and unfair competition, among other things. See Estate of Marilyn Monroe, LLC v. Fashion Central LLC. The Estate of Marilyn Monroe is a brand development and licensing company that owns various trademark rights relating to the deceased, iconic celebrity, Marilyn Monroe. Plaintiff also owns exclusive rights to Marilyn Monroe’s identity, image, name, and likeness for licensing to third-parties.

Michael Jordan

Michael Jordan prevails in trademark case, earns right to use Chinese character mark for his name on merchandise
In December 2016, famed basketball star Michael Jordan was partially successful in a legal action filed in Chinese courts over the use of his name and likeness on shoes and sportswear marketed by a domestic Chinese firm. The case is further proof of a major change in the fortunes of foreign intellectual property owners in the highest courts of the world’s second-largest economy. The Jordan trademark suit goes back to 2012 when the suit was filed against Qiaodan Sports, a sportswear manufacturer operating thousands of retail locations in China which was founded in 2000 according to business information reported by Bloomberg. According to Bloomberg coverage of the Jordan trademark suit, Qiaodan is pronounced “Chee-ow-dahn” and it is how Jordan’s name is pronounced in the country. Not only was Qiaodan utilizing the Chinese version of Michael Jordan’s name but Jordan’s counsel also took aim at the use of Jordan’s number 23 and the “Jumpman” logo used to market Air Jordan shoes produced by Nike Inc.

Kylie Jenner vs. Vlada Haggerty

Kylie Jenner Acknowledgement of Vlada Haggerty Artwork Leads to Speculation about Copyright Settlement
Throughout her short career marketing makeup products, reality TV personality Kylie Jenner has been repeatedly accused of copying and profiting from the ideas of others. In November 2016, these accusations came to a head when makeup artist Vlada Haggerty threatened to sue Jenner for copyright infringement regarding the marketing and packaging of some of her products. Emboldened by myriad supporters, Haggerty provided multiple examples of Jenner’s work closely resembling her own. Now Jenner is openly acknowledging and praising Haggerty’s work on her Instagram feed, leading to speculation that the two parties may be headed towards a settlement of the copyright infringement case.

Iceland vs. Iceland

Iceland Drags British Frozen Food Retailer into Court over “Iceland” Trademark
UK-based Iceland Foods — a supermarket specialising in frozen food — was granted the EU-wide trademark for the word “Iceland” in 2014. The effect of this has proven to be controversial in the country of Iceland — which is not a member of the EU, but is a major exporter of frozen fish and seafood to the EU — because native companies claim they are being restricted from promoting their Icelandic goods due to the existence of the frozen food specialist’s EU-registered mark. “Iceland Gold”, an Icelandic fish company, and “Clean Iceland”, a specialist seller of Icelandic national products, have reportedly had trouble doing business in the EU due to the supermarket’s ownership of the trademark. The Icelandic government has now begun legal proceedings to cancel the trademark at the EU Intellectual Property Office in Alicante, Spain.

Taylor Swift

Why Taylor Swift Is Asking Congress To Update Copyright Laws
Congress is in the midst of a review of the copyright laws to make sure they’re up to date. Some of the recording industry’s biggest stars, among them Taylor Swift, Katy Perry and Paul McCartney, recently signed a letter urging lawmakers to make reforms. The artists say that aspects of the law that were written in the late 1990s make it too easy for tech companies to ignore rampant piracy on their sites and put too much responsibility on the artists themselves to find the illegal music files.

Budweiser: Budejovicky Budvar vs. Anheuser Busch

Anheuser Busch Loses Again in European Budweiser Trademark Dispute
Czech brewery Budejovicky Budvar says a Portuguese court has upheld a previous ruling prohibiting rival, Anheuser-Busch InBev, from selling beer under the Budweiser name in Portugal. State-owned Budvar has been fighting with Anheuser-Busch for over a century over use of the Budweiser brand name.

Tasty Burger vs. Chipotle

Tasty Burger challenges Chipotle’s Tasty Made name, logo
Tasty Burger, a six-unit chain, is challenging Chipotle Mexican Grill Inc.’s decision to name its new burger concept Tasty Made, citing trademark violations. Chipotle confirmed last month that it is planning to launch a new burger concept this fall in Lancaster, Ohio, called Tasty Made, featuring a simple menu of burgers, shakes and fries using sustainable ingredients and beef raised without hormones or antibiotics.
“This has caused a great deal of confusion among our customers and consumers in general, because Tasty Burger has no association or affiliation with Chipotle,” said DuBois, CEO of Tasty Burger Corp., based in Boston.

Tiffany & Co.

Costco owes Tiffany at least $13.75M over mislabeled rings
Costco should pay Tiffany & Co at least $13.75 million for selling engagement rings labeled “Tiffany” that did not come from Tiffany & Co., a federal jury in New York determined. The high-end jeweler sued Costco three years ago, saying the rings were not Tiffany rings and alleging trademark infringement, counterfeiting, and deceptive business practices, among other things. Costco claimed in a countersuit that “Tiffany” is a generic term for a pronged ring.

Kanye West & Jay Z

Jay Z, Kanye West & Frank Ocean Win ‘Made in America’ Copyright Lawsuit
Jay Z, Kanye West and Frank Ocean have won another victory against allegations of copyright infringement. On Friday, a federal appeals court upheld a lower court’s ruling from last year, dismissing a lawsuit by musician Joel McDonald that alleged the Watch the Throne track “Made in America” by Jay Z and West and featuring Ocean had ripped off one of his songs.

Abbott & Costello

Abbott and Costello heirs strike out in ‘Who’s on First?’ lawsuit
A U.S. appeals court on Tuesday threw out a copyright lawsuit by the heirs of comedians Abbott and Costello against the producers of a Broadway play in which a character performed part of their classic “Who’s on First?” routine. The 2nd U.S. Circuit Court of Appeals in New York ruled that the heirs, while suing the producers of “Hand to God,” had failed to establish they held a valid copyright to the routine, which Bud Abbott and Lou Costello first performed in the late 1930s.

Star Athletica vs. Varsity

In a Copyright Case, Justices Ponder the Meaning of Fashion
The immediate question for the justices at a Supreme Court argument on Monday was whether designs on cheerleaders’ uniforms were subject to copyright protection. As the argument progressed, though, it became increasingly clear that the case raised broader issues, with vast financial consequences for the fashion industry and deep philosophical implications for how clothing signifies meaning. The case, Star Athletica v. Varsity Brands, No. 15-866, concerned stripes, zigzags and chevrons copyrighted by Varsity Brands, the leading seller of cheerleading uniforms. The company sued Star Athletica, a rival company, after it started to market uniforms with similar designs.

Frank Zappa

Dweezil Zappa Says Zappa Family Trust Is Applying To Trademark The Surname ‘Zappa’
2016 has been a contentious year for the relations between the children of late guitarist Frank Zappa. Frank and Gail Zappa’s four children are squabbling over a number of issues with the biggest stemming from Dweezil Zappa’s use of the name Zappa Plays Zappa. This sad tale has taken an even more unpleasant turn as Dweezil told the Chicago Sun-Times the Zappa Family Trust is looking to trademark the surname “Zappa”, which if successful would leave him unable to use his own surname as a professional performer.

Gucci vs. Guess

Guess? Victorious in Latest Round of Gucci Trademark Fight
Gucci has lost yet another round in its ongoing battle against Guess?. The Florentine design brand accused the comparatively lower-end brand of perpetrating a massive trademark infringement scheme, initially filing suit against Guess? in 2009 in New York, claiming that the interlocking “G” trademarks that adorn an array of Guess accessories infringe its own “G” trademarks. Gucci was awarded only a small fraction of the $221 million damages award it was seeking (a mere $450,000) in that case, and subsequently filed suit against Guess? on the same grounds in Italy, Australia, China, and France, and initiated proceedings with the European Union (“EU”) Intellectual Property Office.

Sephora

LVMH-owned Sephora sues Indian firm for trademark infringement
Sephora, a cosmetics company owned by LVMH, has dragged an Indian company to court for registering its name as a trademark and selling Sephora-branded footwear. LVMH, the parent of several luxury brands including Louis Vuitton, has filed half a dozen cases in India against companies and individuals for selling counterfeit products and for trademark infringement.

McAfee and Intel Company

Intel asserts its trademark rights against John McAfee
Intel does not object to John McAfee using his personal name in connection with his business, but it objects to the use by the maverick entrepreneur and security expert of the McAfee trade name and trademark in a way that could confuse or deceive consumers or dilute the brand. The issue came up when John McAfee teamed with MGT Capital Investments, which had been until recently mainly into gaming sites, and announced in May that it is in the process of acquiring a diverse portfolio of cybersecurity technologies. MGT also announced that it intended to change its corporate name to “John McAfee Global Technologies, Inc.” with John McAfee at the helm of the new company.

Snapchat

‘Snap’ Trademark Fight Waged Ahead of Snapchat IPO
Snap Inc, the newly named parent company of U.S. messaging and photo-sharing app Snapchat is facing a new lawsuit claiming it stole the trade name and reputation of an online dating services company called Snap Interactive Inc. In a trademark lawsuit filed on Tuesday in U.S. District Court in Manhattan, Snap Interactive said the harm it is suffering is heightened by Snap’s plans to go public next year in what is expected to be one of the biggest tech initial public offerings of the year.

Head and Shoulders

P&G sues competitor over alleged trademark infringement
P&G (NYSE: PG) sued St. Louis-based Vi-Jon in U.S. District Court for the Middle District of Tennessee on Oct. 28, alleging that the company is using packaging that rips off the design of its Head and Shoulders brand. Vi-Jon makes generic versions of brand-name products for retailers like CVS, Kroger and Dollar General. According to the lawsuit, that includes a generic version of P&G’s Head and Shoulders shampoo. An attorney for Vi-Jon declined to comment on the lawsuit.

M22

In Michigan, A Highway Sign Is At Center Of An Unusual Trademark Dispute
There’s an unusual fight underway in Michigan over a simple black-and-white sign that identifies a state highway. That highway runs through a popular vacation region. And one business claims it has the exclusive right to use the road sign as a product brand. But the state disagrees, and the trademark dispute is now in federal court.

DMCA

Copyright Holders Dominate Closed-Door DMCA Hearings
As discussions over DMCA reform continue, a number of closed-door hearings have taken place in San Francisco. Representatives from Fight for the Future and YouTube’s Channel Awesome were there and they report that discussions were dominated by copyright holders seeking new powers to permanently disappear content and even whole sites from the Internet.

Acquazzura

Aquazzura Calls out Ivanka Trump for Copying
Aquazzura’s founder took to the brand’s Instagram account this past week to call out Ivanka Trump for copying. The presidential candidate’s spawn maintains a New York-based clothing and accessories collection, which released a shoe that was just a bit too close for comfort to Aquazzura’s Wild Thing fringe sandal for the brand’s creative director, Edgardo Osorio.

Quaker Oats

Quaker Oats misspells tree farm’s name in trademark blunder
Food brand The Quaker Oats Company has accused a group of Quakers of trademark infringement despite the fact that the group’s business, a Christmas tree farm, is called Quaker Oaks. The PepsiCo-owned company sent a cease-and-desist letter to Quaker Oaks Christmas Tree Farm, an organisation run by the Orange County Friends Meeting in California.

Google - Oracle

Oracle v. Google Copyright Trial Heads Into Second Week
Oracle President Safra Catz and Android lead developer Dan Bornstein were the spotlight witnesses on the stand May 16 on Day 6 of the third Oracle v. Google copyright case. Litigation has been going on for six. Oracle is seeking $9.3 billion in damages and lost profits because it claims Google has made more than $42 billion on the extremely popular Android mobile device operating system, which Oracle says borrows heavily from the open-source Java programming language without obtaining licenses.

Tyson Park's finest

Tyson Foods Wins Hot Dog Trademark Fight
Tyson Foods Inc. has won a summary judgment motion ending a trademark infringement suit brought against its “Park’s Finest” frankfurters. The U.S. District Court for the Eastern District of Pennsylvania granted the motion on May 10, finding that plaintiff Parks LLC’s unregistered “Parks” trademark did not deserve protection because it lacked the necessary secondary meaning.(Parks LLC v. Tyson Foods Inc., 2016 BL 148589 (E.D. Pa. 2016). The court sided with Tyson, even though Parks presented evidence that there was a relatively high likelihood of confusion.

Apple

Apple Loses iPhone Trademark in China
Last week, Apple lost a four-year trademark case on iPhone to a Beijing leather products maker. The plaintiff in this case was Xintong Tiandi? Technology, a company which sells leather products such as handbags, wallets and ironically, smartphone cases under the label “IPHONE”. The case was ruled in favour of the plaintiff by the Beijing Municipal High People’s Court. Apple will further appeal.

Gucci

Gucci Apologizes for Policing its Trademark
Gucci and its parent company have apologized after drawing heavy criticism for threatening legal action against an array of Hong Kong-based shops, accused of selling novelty paper offerings for the deceased that resembled the fashion brand’s luxury products. The brand and its Paris-based owner, Kering, also said in a statement on Friday that they regret any misunderstanding caused by the letters, which were sent to six shops last month. After meeting with the shop owners, “Kering and Gucci would like to reiterate their utmost respect with regards to the funeral context,” the statement said.

Milano

Trader Joe’s settles Milano cookies infringement spat
Trader Joe’s and Pepperidge Farms have ended a months-long dispute about their rival sandwich cookies, reaching an out-of-court settlement. The terms of the settlement were not disclosed. The cookies, which look similar in appearance and share the same basic ingredients, were the subject of a federal lawsuit filed in December. WebTM Post from 12/2015