Tag Archives: Trials

Cardiac counterfeiting

Originally posted 2012-12-30 15:00:15. Republished by Blog Post Promoter

It’s not a defense to trademark infringement or counterfeiting that your heart is full of good intentions.

Someone dropped in an extra zero, right? RIGHT?

Originally posted 2008-10-16 00:01:17. Republished by Blog Post Promoter

It’s a month-old story, and how it got past us here notwithstanding, it’s not getting past us now.  Per the ABA Journal, remember the Bratz litigation?  Well, you haven’t read half of it yet:

Two toy companies battling for rights to the Bratz dolls-with-attitude have racked up legal fees of at least $93 million in the case.

MGA Entertainment has spent $63 million in fees since 2004 defending a lawsuit by Mattel Inc. that contended the doll’s designer conceived of the idea before leaping from Mattel to MGA, the Daily Journal reports (sub. req.). Plaintiff Mattel has spent $30 million in just the first half of the year, the story says.

Mattel was awarded $100 million in the case, far short of the more than $2 billion in damages it had sought.

The Daily Journal got MGA’s figures in a lawsuit it filed against its insurers seeking full payment of the Bratz fees, while the publication got the Mattel figure from a stock analyst.

The ABA item quotes a Jones Day litigation partner who is flummoxed at the idea that there is any conceivable way to get to $93 million for a trademark case, even over the course of four years.  We sure are, too.  And re-read this ‘graph:

MGA Entertainment has spent $63 million in fees since 2004 defending a lawsuit by Mattel Inc.  . . . Plaintiff Mattel has spent $30 million in just the first half of the year, the story says.

That $30 million was just the first half of ’08!  That means Mattel spent WAY more than $30 million since the suit began in ’04, and that the total legal fees must have blasted way, way past $100 million since the case began.

Is there anyone out there who can even remotely do this math and explain how you can get to numbers like this — not how they can be justified, for, given the business interests involved, they are not irrational.  But how many widgets, and of what kind, does a law firm have to spit out to get to these kinds of numbers?


Originally posted 2009-05-24 11:03:12. Republished by Blog Post Promoter

Cartier sued Apple last week, and before I had a chance to figure it out, they either un-sued them or announced that they were about to withdraw the complaint, which isn’t even available yet on the Southern District of New York’s PACER system.   As the Wall Street Journal explains, “The suit alleged that two applications for the iPhone infringed on the trademark for the luxury brand’s Tank watches.”   Per CNET News:

At the heart of Cartier’s infringement claim was a pair of apps called Fake Watch and Fake Watch Gold Edition. The apps are made by Digitopolis Game Studio, which interestingly enough, was not named in the lawsuit.

Filed in the U.S. District Court in Manhattan, the lawsuit claimed the applications give people the ability to tell time on the iPhone and iPod Touch with a display that simulates famous wristwatches.

Jonathan Lagarenne, Cartier’s lawyer, said the lawsuit would be withdrawn because the company was satisfied that Apple had removed the apps from the store.

That Jonathan Lagarenne is pretty darned effective!  Brings a lawsuit against a major technology manufacturer based, presumably, on contributory infringement, without even, “interestingly enough,” naming the alleged direct infringer, and gets results so fast that he and the rest of his Fox Rothschild colleagues are already riding into the sunset, back to Jersey across the George Washington Bridge!  (More here.)

It is odd, though, isn’t it?  You may not have thought that Cartier would necessarily hire a Philadelphia law firm for, well, for any reason… much less someone out of their crack “Princeton,” New Jersey office (actually kind of only near Princeton)… whose firm bio, while beaucoup impressive, doesn’t exactly scream “litigation” and who has appeared in only three prior cases in the Southern District and five in the District of New Jersey — ever  … to file a lawsuit in federal court in New York against — *gulp* — not just anyone, but Apple.  Again:

Cartier’s lawyer . . .  said the lawsuit would be withdrawn because the company was satisfied that Apple had removed the apps from the store.

An odd choice of words, don’t you think?  Of course it’s not a direct quote.  But “satisfied…” and “removed” (when?) … and “from the store” — were the apps” ever really “in the [Apple] store”?  Aren’t these third-party “apps”?

Why do I have a feeling we’re not getting the whole story here? Read More…

Best of 2006: Side by side comparison doesn’t decide likelihood of confusion

Originally posted 2015-01-19 14:43:43. Republished by Blog Post Promoter

Originally posted on July 11, 2006.

Dooney pattern - Thumb

Dooney’s pattern

This is an important decision: The Second Circuit Court of Appeals has partially reversed the earlier ruling of the U.S. District Court for the Southern District of New York (full decision here) in Louis Vuitton Malletier v. Dooney & Bourke, Inc.

Here’s the “money quote” as a once-great blogger taught me to say (citations and internal quotes omitted; link added) :

We turn next to the question of likelihood of confusion. . . . The similarity of the marks is a key factor in determining likelihood of confusion. To apply this factor, courts must analyze the mark’s overall impression on a consumer, considering the context in which the marks are displayed and the totality of factors that could cause confusion among prospective purchasers.’ The district court here noted that there were “obvious



similarities” between the Louis Vuitton and Dooney & Bourke handbags. However, it determined that despite the similarities, the two marks were not confusingly similar. It appears the trial court made the same mistake that we criticized in [the] Burlington Coat Factory [decision]: inappropriately focusing on the similarity of the marks in a side-by-side comparison instead of when viewed sequentially in the context of the marketplace.

The district court reasoned:

Read More…

An opinion to Di for

Originally posted 2013-06-27 11:41:55. Republished by Blog Post Promoter

I do a lot of bellyaching around here about how there are never any consequences for filing frivolous trademark and copyright lawsuits. What’s the worst thing that can happen to a well-heeled plaintiff that wants to use the expense of defending, even meritoriously, against a “federal case” as a way to effectuate a “business message” (namely, you’re out of business, because we say so)? Usually, nothing. Not just usually. Really pretty much a lot usually.

"Do you have Princess Di in the can?"

Not this time.  This is a little dense if you’re not used to reading judicial opinions, but the payoff is worthwhile.  Emphasis is mine:

The Franklin Mint Company and its principals, Stewart and Lynda Resnick, (collectively, Franklin Mint) appeal from a judgment dismissing their malicious prosecution action against the law firm Manatt Phelps & Phillips LLP and attorney Mark S. Lee (collectively, Manatt). Manatt represented the executors of the estate of Diana, Princess of Wales and the trustees of The Diana, Princess of Wales Memorial Fund (collectively, the Fund) in a lawsuit filed against Franklin Mint alleging claims related to Franklin Mint’s use of Princess Diana‟s name and image in connection with merchandise Franklin Mint advertised and sold. . . .

We conclude that, based on the record before us, no reasonable attorney could find tenable the false advertising claim as it was alleged and litigated in the underlying action. Therefore, we hold there was no probable cause to prosecute that claim. We also hold there was no probable cause to prosecute the trademark dilution claim because no reasonable attorney could conclude that the claim could satisfy two fundamental, long-standing principles of trademark law. First, to be protectable as a trademark, a word, phrase, name, or symbol must be used in commerce to identify goods or services and their source. Although Manatt contends that Princess Diana used her name in connection with her appearances at charitable events, that use does not demonstrate trademark use. Second, a trademark that is descriptive — such as a personal name — must acquire secondary meaning to be protectable in a trademark dilution action. In other words, the primary meaning of the mark (i.e., the descriptive meaning) must in the minds of the public be subordinate to its meaning as the source of goods or services. Because “Diana, Princess of Wales” has such an extraordinarily strong primary meaning as descriptive of Princess Diana as a person, the contention that it had acquired secondary meaning at the time of the underlying lawsuit was, as the district court in the underlying lawsuit observed, “absurd.” (Cairns v. Franklin Mint Co. (C.D. Cal. 2000) 107 F.Supp.2d 1212, 1222 (Cairns III).) Therefore, we conclude that the trademark dilution claim was untenable.

Now this is really interesting on several levels.  One is the obvious one I’ve already alluded to–a court calling attorneys out and saying, “Stop the baloney.  You knew what you were doing here was fallacious, but you just kept doing it.  If malice and damages are proved, that’s actionable.”  It’s astonishing to read that.  Don’t even ask what has happened, in my own experience in the vaunted federal courts facing just such claims, that leaves me so dumbstruck reading this.

But then there’s the substantive legal stuff.  Diana, Princess of Wales, not a “trademark”?  Just because she’s mostly really a person (no longer a living one, granted, but you get the idea)?  But what about all those other celebrity trademark names? Read More…

S&L v. Australian Gold: You, the Jury

Originally posted 2009-01-08 21:34:29. Republished by Blog Post Promoter

Its all about the coin.

It’s all about the coin.

Here’s S&L Vitamin’s Trial Brief for the trial scheduled for next week in the above-entitled cause.  (Or you can read it at the bottom of the post).  We pick a jury on Monday, and after a day “off” for stuff I don’t even want to mention, opening statements are Wednesday morning.

Oh, all right.  Here’s Australian Gold’s trial brief.  I’m sure our distinguished adversaries are at least as proud of this work product as we are of ours.

I will not comment on the prospect of this trial, of course, at least not at this juncture.

But others have, more or less. And now, you can too!

The litigation of art

Originally posted 2010-11-09 10:15:18. Republished by Blog Post Promoter

Raymond J. Dowd of the Copyright Litigation BlogRaymond J. Dowd, author of the Copyright Litigation Blog (and much else!), sent along this note by email concerning  a case that would probably interest to mamy LIKELIHOOD OF CONFUSION® readers.  Because he is a man of discretion and high ethical standards, he is not blogging about it — but I can!  With his permission (okay, how high can his standards be if he takes my calls?) I’m reproducing the whole thing here verbatim, but have added a couple of links.

The Second Circuit has scheduled oral argument on December 8 at 10 a.m. at the U.S. Courthouse 9th Floor Ceremonial Courtroom at 500 Pearl Street in a case called Grosz v. Museum of Modern Art. My firm, together with co-counsel Rowland & Petroff, represents the heirs of George Grosz who are appealing a decision of the U.S. District Court for the Southern District of New York. My Dunnington partners Thomas V. Marino and Luke McGrath are counsel on the brief. David Rowland and Patricia Hertling of Rowland & Petroff are also on the brief. It is a major case and I will be arguing for the appellants before a three-judge panel. As in Bakalar v. Vavra the Grosz Heirs are supported by a serious and scholarly amicus brief supporting reversal written by Professors Edward McGlynn Gaffney of Valparaiso University School of Law and Jennifer Anglim Kreder of the Salmon P. Chase School of Law, Northern Kentucky University who are the nation’s leading legal experts in this area. The learned Amici are, in turn, a veritable “Who’s Who” in Holocaust scholarship, education, law and history and include the American Jewish Congress and the Commission for Art Recovery.

MoMA is represented by Charles S. Sims of Proskauer Rose LLP. Proskauer and Mr. Sims represented the Republic of Austria in Altmann v. Austria. Mr. Sims recently argued before the U.S. Supreme Court and obtained a reversal of a Second Circuit decision in Reed Elsevier v. Muchnick.

The facts as set forth below were confirmed by an expert report prepared by Dr. Jonathan Petropoulos, the world’s leading expert in Nazi art looting cases, which expert report was proferred in support of our requests to obtain discovery into MoMA’s documents relating to Alfred Flechtheim.   Read More…

Other people’s money

Originally posted 2011-01-10 16:45:16. Republished by Blog Post Promoter

Statue and column, First Department CourthouseWSJ.com’s Law Blog reports about the seven-figure effect in the Central District of California for a one-minute-late filing:

A judgment in favor of [Morrison & Foster’s] client was entered on Sept. 26, giving Toshiba’s attorneys 14 days – until Oct. 10 – to file their attorneys-fees motion. Here are the relevant paragraphs straight from Judge Cormac Carney’s opinion. For anyone trying to meet a filing deadline, they might make your choke on your Cheerios:

[Toshiba’s] purported reason for its delay is that its courier was caught in traffic at 3:30 in the afternoon in Santa Ana, California. Mr. Mersel, attorney for [Toshiba], asserts that he waited until 3:14 p.m. on the last day of the filing period to deliver the motion to Morrison & Foerster’s regular courier service. Mr. Mersel asserts that although he was aware that the filing deadline was 4:00 p.m., he had “never had a problem with getting papers filed by 4:00 p.m. when delivering them to the attorney service” forty-five minutes in advance. The courier, Mr. Moskus, swiftly responded to Mr. Mersel’s request, leaving on his motorcycle for the courthouse at approximately 3:30 p.m. Unfortunately, Mr. Moskus encountered “unusually heavy traffic” and had to “wait at the railroad crossing on Grand Avenue for a long train to pass.” Consequently, Mr. Moskus arrived at the Courthouse after the office had closed [at exactly 4 PM] and Mr. Mersel was unable to file the motion until the following day, on October 11, 2007.

These circumstances, however regrettable, do not meet the standard for “excusable neglect.” Although the delay was not lengthy and it does not appear that [defendant] was prejudiced by it, the reason for the delay was entirely within [Toshiba’s] control and [Toshiba] has not offered a good faith reason for the delay.

Concluded the judge: “[T]he entirely foreseeable obstacle of traffic in Southern California in the late afternoon . . . cannot justify an enlargement of time.”

This is preposterous. Read More…

Book ’em, Dan-o!

Historic courthouse, Essex County (Newark) NJThere really is still such a thing as personal jurisdiction — and its absence — even in the Internet age, reports Evan Brown:

Last year Facebook made us wonder if it had gone off its meds when it filed a trademark infringement lawsuit against Illinois-based Teachbook.com. More than one commentator thought Facebook was being overzealous in its efforts to claim exclusivity in the term “book” for social networking services.

However one countenances the action, the court has shut the cover on the first chapter. The U.S. District Court for the Northern District of California (where Facebook is located) held that it lacked personal jurisdiction over the Illinois defendant. So it dismissed the case.

There is a Constitution out there, still!

Also:  kudos to Evan for demonstrating the proper use of the word “however” as the first word in a sentence.  (Same thing like I said about the Constitution!)


Emerson InSinkErator trash compactors will mangle your hand if you stick it in one of them.

Originally posted 2006-10-19 13:44:39. Republished by Blog Post Promoter

Sounds like a reasonable assertion, right? The same thing will happen if you stick your hand into an Acme trash compactor. It’s just bad practice. Who could be offended by that?


Emerson Electric could (links added):

Emerson Electric is suing NBC over a scene in their new series “Heroes” that featured the company’s garbage disposal, according to an CNN Money article. The first episode showed one of the characters (whose superpowers include indestructibility) stuffing her hand down the disposal and getting it mangled, although within a few seconds her hand was fully healed.

However, Emerson, makers of the “InSinkErator,” believes the scene gratuitously showed their product as being dangerous. Their suit alleges that the program “implies an incorrect and dangerous design for a food waste disposer,” and “casts the disposer in an unsavory light, irreparably tarnishing the product.” They are reportedly asking the court to order NBC to “remove Emerson trademarks from future broadcasts of the show and also seek damages suffered from NBC’s acts of “unfair competition, trademark infringement, and trademark dilution.”

A spokesman for Emerson pointed out data showing that not only are you 10 times more likely to suffer harm from your dishwasher, but any injuries suffered in the event of a disposal accident would not be nearly as severe as those shown in the TV episode.

You can’t say “unbelievable” any more, because nothing is. But on the face of it, this sounds mighty flimsy — “trademark use,” anyone? — and an abuse of the Lanham Act that may be sanctionable. Decide for yourself and let me know what you think: Here’s the amended complaint.

The suit was filed in St. Louis, where Emerson is based.

UPDATE:  Stupid claim settled.  Of course.