LIKELIHOOD OF CONFUSION®

Originally posted 2009-01-17 23:52:25. Republished by Blog Post Promoter

Pamela Chestek reports on the dizzying fallout of the Bratz litigation.

Originally posted 2010-12-28 08:30:01. Republished by Blog Post Promoter

First posted July 12, 2010.

The essential role played by credit card companies in online trademark infringement was recognized in Gucci America, Inc. v. Frontline Processing Corp. In that case, the court allowed contributory infringement claims to go forward against companies that had established credit card processing for an online counterfeit merchant. The payment for the counterfeit goods sold on its website was part of the infringing process, the court reasoned, drawing on Judge Kozinski’s dissent in Perfect 10, Inc. v. Visa Intern. Serv. Ass’n, and most of the infringing sales – of which the companies allegedly knew or should have known – were consummated using credit cards.

Gucci v. Frontline arose out of successful trademark infringement litigation brought by Gucci, the well-known manufacturer of luxury goods, against an online merchant operator of a website called “TheBagAddiction.com,” in which the owners admitted to liability for selling counterfeit Gucci products. Thereafter, Gucci turned to the three companies that had helped the merchant obtain credit card services, alleging both vicarious and contributory liability for trademark infringement. One of the three defendants, Durango Merchant Services acted as a middleman, while the other two, Frontline Processing Corporation and Woodforest National Bank, provided credit card processing services to the merchant.

In rejecting the defendants’ motion to dismiss, the court allowed the contributory liability claims to go forward as to all three defendants, but on different legal theories in accordance with their roles. As to Frontline and Woodforest, the court found the pleadings sufficient to allege contributory trademark infringement, based on their knowledge and control over the infringing activity on the website. As to the middleman, Durango, the court found the pleadings sufficient to allege contributory infringement based on an inducement theory.

As to Frontline and Woodforest, the court also found the pleadings stated a claim for contributory trademark infringement, based on the defendants’ knowledge and control over the infringing activity on the website. Citing eBay and Perfect 10, the Gucci court reiterated the direct control and monitoring test, stating that

[e]ven if a defendant does not seek out and intentionally induce a third-party to commit trademark infringement, it may still be held liable for the infringement if it supplied services with knowledge or by willfully shutting its eyes to the infringing conduct, while it had sufficient control over the instrumentality used to infringe.

Moreover, an allegation of the defendants’ general knowledge that infringement is taking place is not sufficient. “[A] service provider must have more than a general knowledge or reason to know that its service is being used to sell counterfeit goods,” the court emphasized, citing further language in Tiffany that “’Some contemporary knowledge of which particular listings are infringing or will infringe in the future is necessary.’”

Both credit card processing companies either knew or should have known that they were servicing an infringing site, under the facts alleged, the court concluded. In both cases, a Durango agent had a dual role as both an employee of his company and a sales representative for the two credit card companies, and the court consequently accepted the allegations charging the companies with his knowledge. Thus, regarding Frontline, Gucci alleged that that company was aware of customers’ written acknowledgement of purchasing “replicas” as directed by the Durango agent. Read More…

Originally posted 2011-08-01 21:56:29. Republished by Blog Post Promoter

That’s the  Innovative Design Protection and Piracy Prevention Act, back up for another shot at the big leagues.

We need more laws right?

And just like last year, Susan Scafidi, the original to-die-for fashion-IP blogger, is in favor.  And though I haven’t heard from her lately on this, I’m guessing Staci Riordan is still fairly, uh…

“Con.”

But maybe not.  Interestingly, you have to pretty much go to the frozen north for an in-depth blog article about this statute — in this case, the Canada Fashion Law blog, whose Ashlee Froese interviewed my new blog-buddy and quasi-namesame Charles Colman on the topic.  He suggests that this year’s bill is not just a knockoff of the 2010 version, and that many of the concerns of the previous bill’s critics have been addressed in the current version.  An excerpt:

Some members were troubled by language in the bill – “likely to be mistaken” – that seemed to pull the infringement inquiry back toward trademark law [i.e., as in "likely to be confused" -- RDC (duh)], contrary to its apparent purpose.  We also spent a lot of time examining what might be considered the “core” language of the bill – the threshold requirement that a qualifying design display “a unique, distinguishable, non-trivial and non-utilitarian variation over prior designs” – and whether that requirement was too stringent… or not stringent enough. . . .

I wasn’t involved in the debate at that time, but my understanding is that the [American Apparel and Footwear Association] was primarily concerned about frivolous lawsuits.  (Of course, this is a point of controversy anytime proposed legislation would create a new cause of action.)  The bill’s advocates eventually managed to get the AAFA on board, in large part by changing the required showing for liability from “substantial similarity” (the standard applied in copyright infringement lawsuits) to a higher standard that would require a plaintiff to prove that an alleged knockoff is “substantially identical” to her design.

“Her design”?  Interesting.  Charles seems to know which side his bread is buttered on! Read More…

Tomorrow night TONIGHT (October 24th) at Fordham Law School I will be speaking on a panel with fashion lawyers Bernice K. Leber of Arent Fox, Ted Max of Sheppard Mullin and Jeff Trexler of Fordham about “Fashion Lawyers’ Advertising.”  It’s “a Fashion Law Ethics & Professionalism CLE program”!  The distinguished panel will discuss “strategies for maintaining professional standards while promoting a practice in this newly defined and growing field.”

DATE: Tuesday, October 24, 2012
TIME: 6:30-8:30 pm
PLACE: Fordham Law School, 140 W. 62nd Street, Room 430 B/C

Click here to register if you’re a lawyer.  Click here to register if you’re something else.  Don’t ask, just click.

I am going to really have to be a “fashion lawyer” for this, I think.  I presume that means I will have to wear something nice.  Or extra nice!

And, of course, this is the “advertising.”  Seems ethical and professional, no?

We can discuss it tomorrow night, uptown.  See you there!

Originally posted 2006-04-07 12:39:52. Republished by Blog Post Promoter

Counterfeit Chic reports that the world really does revolve around intellectual property!

Last week in Maryland, a traffic stop yielded a cache of counterfeit Nike sneakers, LV and Coach handbags, additional illegal merchandise — and a CD titled “Jihad Freedom for the Slaves.”

OK, well. As Susan says, “Not dispositive, but at least suspicious.”

Originally posted 2008-05-01 23:24:11. Republished by Blog Post Promoter

Fabulous filings for fashionistas — and those who just want to look like them!

Susan Scafidi seems genuinely shocked – no, I mean, genuinely!  – over this comment by Ralph Lauren:

Nit fun unzer

When the New York Times‘ Eric Wilson listened to Oprah Winfrey and Ralph Lauren chat for charity, one exchange stood out:

“How do you keep reinventing?”

“You copy,” he said. “Forty-five years of copying, that’s why I’m here.”

Of course, everyone knows that the signature looks of the Ralph Lauren family of brands are inspired by classic Americana — with an occasional detour around the globe — but coming from the guy who was on the losing end of the best-known design piracy case of the late 20th century, the admission strikes a chord.

Honestly, honesty?  Now, when the U.S. may be on the brink of finally passing a law that, while it wouldn’t come anywhere near the level of the French protection that wrangled Ralph, would have a similar effect in some cases?

Oh, that law!

Well, a litigation dust-up here and there notwithstanding, Ralph can afford to be honest, honestly.  I think, indeed, Mr. Lifshitz is referring not to copying other proprietary designs, but to that talent that turned him into a gazillionaire:  Mastering the art of assimilating and replicating the look and feel not, with all due respect, of “classic Americana” but a very focused upper-crust Northeastern WASP sub culture and making it his own.

I when I was in college, I observed plenty of Jewish kids from backgrounds like mine, but a generation or two deeper entrenched in assimilation, do this on a personal level.  Some pulled the copying it off, some didn’t.  (I mainly went in the other direction.)  Ralph went beyond accessorizing social climbing mobility and ethnic metamorphosis to selling them.  And he did  it brilliantly, tastefully and very, very profitably.

He’s a real gem.  Why should he lie about “stealing”?

The better question is a question on the one Susan asks at the end of her article:  ”Now, when the U.S. may be on the brink of finally passing a law that, while it wouldn’t come anywhere near the level of the French protection that wrangled Ralph, would have a similar effect in some cases?

Of course it would.  Absolutely.  But the real question is not what would effect would the substantive provisions of the IDPPPA have had, in the abstract.  It’s what effect would the cost of the IDPPPA have had on the young House of Lauren. Read More…

Guest blogger Matthew David Brozik

In a case that has everyone seeing red —

No, let me start over. And without the jokes. Because in a decision in Christian Louboutin S.A. v. Yves Saint Laurent America, Inc. — a case about colored outsoles of high-end ladies’ footwear — the Honorable Victor Marrero of the United States District Court for the Southern District of New York made nearly every color, foot, and/or shoe pun imaginable, and I don’t want to step on His Honor’s toes. (Sorry, that was my last one.)

The factual background, in brief: The plaintiffs are one Christian Louboutin, a fashion designer, and his eponymous companies. Those companies sell, among other things, expensive shoes for women. In or around 1992, Monsieur Louboutin had an idea—he would sell shoes with colored outsoles (that is, the outermost layer of the sole; usually the least interesting part of a shoe). Specifically, he would sell shoes with red outsoles. This was something (arguably) that no one had done before. Over time, those who care about such things/notice the bottoms of shoes came to associate red outsoles with Louboutin. So Louboutin did another smart thing: He applied for federal registration of a trademark, and on January 1, 2008, the PTO granted him Registration no. 3,361,597 for a mark consisting of “a lacquered red sole on footwear.”

Come 2011, and Yves Saint Laurent (the luxury fashion house co-founded in 1962 by… well, French fashion designer Yves Saint Laurent) is selling four styles of shoes, each with colored outsoles. Each model of shoe comes in red (among other colors). But it’s the red that matters, because Louboutin has a registered trademark for a lacquered red sole on footwear. Not a lacquered colored sole on footwear—just a lacquered red sole on footwear. So YSL’s blue, yellow, and other colored-soled shoes are in the clear.

(This is a good point to mention that according to the decision, there is evidence that shoes with red outsoles have appeared occasionally in YSL’s collections dating back to the 1970s. This fact did not matter, but it’s interesting to note. Maybe it would have made a good… yes, footnote.)

Louboutin sued YSL, asserting several causes of action, all of which live or die with the protectability of Louboutin’s claimed mark. (Spoiler alert: They all die.) YSL counterclaimed, most significantly, for cancellation of the PTO registration, arguing that a color for a shoe sole (lacquered or otherwise) can not be protected as a trademark. Louboutin moved for a preliminary injunction, which prompted the court’s early consideration of the merits of the plaintiffs’ claims (and specifically the likelihood of success on the merits thereof). Judge Marrero found Louboutin decidedly unlikely to succeed.

By now, anyone with even passing knowledge of the intersection of trademark law and colors should be shouting, “Qualitex! QUALITEX!” Read More…

Originally posted 2009-11-16 12:52:26. Republished by Blog Post Promoter

Marty Schwimmer (via @trademarkblog) updates us on the latest, and floats a novel idea of his own for getting in on the action, in the ongoing legal war between the United States Polo Association and Ralph Lauren’s faux-Aryan-fashion empire.  As I said in the comments there,

Man, this is the litigation series that just keeps on giving!

Which I mean in a good way, of course!

Originally posted as a comment
by Ron_Coleman
on The Trademark Blog using DISQUS.

Originally posted 2008-02-28 15:29:48. Republished by Blog Post Promoter

“Bag Borrow or Steal™ – Borrow or Rent the Latest Authentic Designer Handbags Purses Jewelry and Accessories.”

You know they — the Big IP guys — are sitting in conference rooms trying to figure out how to stop this.

Soon enough when you buy a Gucci bag, it will come with a non-transferable “licensing” agreement!

My actual prediction:  They will make IP claims preventing the display of their merchandise in connection with promotion of this service, claiming, preposterously, a LIKELIHOOD OF CONFUSION as to affiliation, sponsorship, ownership… something.

First posted on June 1, 2010.

Supreme's website as of today's date

The new Case Clothesed blog out of New York Law School has a very interesting, if lightly sourced, piece about how Supreme Skateboard has managed for years to infringe a little bit here and a little bit there in order to maintain its status as a stylish, trendy “lifestyle/skateboard brand” without ever really getting in much trouble:

So how has Supreme managed to avoid liability for so long? Why has Supreme been excused for trademark and copyright infringement while countless other brands like Steve Madden and Ed Hardy bear the brunt of legal action? While it may be difficult to provide a definitive answer, the reasons could be a combination of many different factors. When pursuing a claim, a company must conduct a cost-benefit analysis. The cost of litigation is the driving factor in the determination; therefore a company must be fairly certain that their trademark is in need of protection and that the chance of success is likely. In addition, a company wants to consider the impact that the action will have on their reputation. Sometimes, when it appears that a bigger one is victimizing a smaller company, a consumer backlash against the bigger company may occur. Most important, while it may appear that a claim exists, in reality, current law may lack the necessary protection and remedy.

Maybe.  I can tell you in the Supreme Skateboards Vuitton infringement case, illustrated above and discussed in the blog post, there was plenty of protection and remedy; as the post says, “Where else can you get a Louis Vuitton monogram skateboard? Nowhere! The Supreme Vuitton collection was pulled from shelves shortly after release due to a cease and desist letter from Louis Vuitton.”  Supreme did that because it was infringing down the middle and all over the place.  I know because I wrote that letter, and along with my associate Matt Carlin oversaw the destruction of quite a nice collection of merchandise.

There were other terms of settlement, too–not that I remember them, or even if they were confidential, but I’d think the screen capture above would be an interesting version of “compliance” if I still represented LVMH.  But give the Malletier credit:  We got the goods on Supreme, and then we had ‘em ground up. If these funky lifestyle whatevers got schooled in the process, well, perhaps there’s your answer right there.  That’s life in the concrete canyons!

First published on March 2, 2010.

Louis Vuitton Malletier and its lawyers demonstrate how to make sure a few seconds of what they say is trademark dilution get a lot less diluted–they’re suing Hyundai over this commercial played at the Super Bowl.  Now, concentrate:

(Download Luxury Made Available in the Hyundai Sonata)

I’m not trying to hide the ball.  Far from it; take a look below and to the right–there’s your tort right there.  Now Marty Schwimmer, who also picked up this story (and who has posted a copy of the complaint), demands of readers, “Spot The Lawsuit In This Commercial — (‘)(‘) <- me rolling my eyes.”  Is Marty right?  Is this civil action just an air ball?

The complaint is easy to make fun of, both as a legal matter and on sort of flat-footed “common sense” grounds.  (Come on, it’s just a second or two on the screen!  Come on, now everyone’s going to just see the commercial over and over again!)  But that’s not entirely the same as saying it’s indefensible.*  In fact, I think that while LVMH is shooting aggressively from beyond the three-point line, it is doing what it has to make sure its trademark rights don’t fade away.

Tarnishment -- Something might rub off?

First, though, let’s put the two dilution claims (federal and New York), which are the real meat here, aside.  As I will urge below, there is a colorable, and arguably very winnable, argument for them.  But first, the shootaround:  Yes, it is time for me to put on my Professor Pendatic hat, unable as ever to resist needling good lawyers who have clients I’d also like to have and fully aware of my own lack of game, about the double-dribbles in their submissions.

The technical foul here is the fact that, besides trademark dilution, LVMH also sued Hyundai on three other legal theories:  false designation of origin under Lanham Act’s section 42; common law trademark infringement under New York law trademark law; and infringement of LVMH’s registered trademarks.

A little practitioner’s hint:   The last count in a multi-count commercial complaint can be viewed as meritless, mere ballast, about 95% of the time.  I don’t believe in ballast, but lots of lawyers (about 95% of them) do.  And as a trademark litigator who often represents defendants, when I see that the registered trademark infringement claim is the last one in the complaint, that tells me, “Oh, good, so there’s no trademark infringement here, at least.”  And of course there isn’t; Hyundai doesn’t sell or offer either cars or basketballs bearing anything likely to be confused with an LVMH registered mark, plus a million other reasons.

Hey, wait though–what about the other two trademark claims?  How about the section 42 and New York unfair competition claims, which are counts three and four?  Well, sorry kids, but you can’t have three last counts!  Only one can be the lastest.  And big-boy trademark registration infringement, being usually the proudest and loudest thing you can sue an infringer for, as a matter of dignity obviously insisted on being discreetly tucked away at the end–damned to sitting next to the ad damnums but at least not exposed to the glare up front.

But if that’s the case, then why still throw in the other two non-registration-based trademark claims at all?

To answer that question, children, you’ll have to ask one of the other 95% of lawyers.

Now, having said all that, we are left with the dilution claims.  So what justification can there be for filing this lawsuit at all?

Well, what is dilution, after all?   Read More…