Showing posts with label litigation. Show all posts
Showing posts with label litigation. Show all posts

Tuesday, September 3, 2013

Microbreweries Increasingly Battle Over Beer Names as Trademarks


After a long lull following the Prohibition era during which mega-breweries dominated the American beer market for decades, local microbreweries have steadily grown in popularity recently, with thousands of newly operating breweries joining the ranks each year.

However, such microbreweries still only satisfy a modest portion of the American appetite for beer.  Consequently, thousands of struggling microbrewers are trying to capture this highly competitive segment of the aggregate marketplace.

The increasing pressure on this marketplace has made brand differentiation a key concern.  Some commentators have called this conundrum "standing out in a sea of beer."

Consequently, publicized legal conflicts over brands in the microbrewery marketplace have recently arisen.
 
For example, in April 2013, a Grand Rapids, Michigan-based brewery called Brewery Vivant sent a legal cease and desist letter to Tired Hands Brewing Company of Ardmore, Pennsylvania, demanding that the small brewery cease using the name "FARMHANDS" for one of its Belgian ales.

"FARMHAND" is an as-yet unregistered trademark claimed by Brewery Vivant for a French farmhouse-style ale that is very popular in Michigan.  Brewery Vivant owners claims to have experienced an instance of actual confusion at a trade show, leading to the need for legal threats.

The FARMHAND brand has been used by a British Columbia-based microbrewer called Driftwood Brewery, leading to the possibility of international trademark issues down the line.

But the conflict over FARMHAND is not an isolated incident.

In June 2013, West Sixth Brewing of Kentucky and Magic Hat Brewing of Vermont settled a trademark-related dispute that quickly got ugly when it was described as "frivolous," and which escalated to a full-blown federal lawsuit until it was settled by the parties after mediation.

Similarly, Sierra Nevada Brewing Company had a trademark dispute over the "NARWHAL" trademark when it launched "Narwhal Imperial Stout," a move that the Narwhal Brewery apparently opposed.

And when Mother Earth Brewing Co., a craft beer maker in Vista, California, discovered another company in North Carolina with virtually the same name, Mother Earth Brewing Co., LLC, it was forced into filing trademark litigation in the Trademark Office.

Those with long ties to the microbrewery industry lament the need for ongoing legal conflicts over trademarks, citing comparisons to the less collegial tech industry.

According to one attorney who specializes in the alcohol and brewery industries, the craft beer industry "has become swollen," leading to a need for market participants to be more proactive with a coherent and aggressive branding and trademark strategy.

Friday, August 16, 2013

Ironically, "Blurred Lines" of Copyright Law Lead to Litigation

Summer 2013's hottest pop single "Blurred Lines" has become quite a phenomenon.  Its primary vocalist and author, Robin Thicke is the son of Alan Thicke, of the popular family television sitcom Growing Pains.

The song features controversial lyrics about the lack of clear boundaries that have been called "rapey" by feminists, as well as an R-rated music video. The video for the song was released on March 20, 2013, and was made in two versions; the first video features models Emily Ratajkowski, Jessi M'Bengue, and Elle Evans being topless, the second features them covered.



The covered version on YouTube (embedded above) has reached nearly 138 million views. However, the topless, R-rated version of the video was removed from YouTube on March 30, 2013, for violating the site's terms of service regarding nudity.  On Vevo.com, the R-rated version has reached nearly 11 million views.

The song itself has been a worldwide hit, topping the charts in Australia, Canada, New Zealand, Ireland, Germany, the Netherlands, Poland and the United Kingdom, as well as the top ten in Belgium, Denmark, Lithuania, France, Iceland, Italy, Portugal and Switzerland. As of July 17, 2013, it is the second best-selling single of 2013 in the UK.

The song features a catchy beat and chorus, clearly reminiscient of Marvin Gaye's 1977 classic "Got to Give it Up":



Thicke apparently admires Marvin Gaye's style and music, and went so far as to admit that it inspired him in this instance, but denied overtly sampling Gaye's musical compositions when writing Blurred Lines.

When asked by Yahoo! Music's Billy Johnson Jr. about the notable similarities between "Blurred Lines" and Gaye's song, Thicke said "[t]here is no sample." But he admitted, "[d]efinitely inspired by that, yeah.  All of his music ... he's one of my idols."

Sampling is the act of taking a portion, or sample, of one sound recording and reusing it as an instrument or a sound recording in a different song or piece.

Hearing the similarity and likely believing that Gaye's music was sampled without permission, Gaye's family apparently demanded a royalty from Thicke and his co-authors, which they refused to pay.

After reaching an impasse, Thicke and his co-authors pulled the trigger first, suing Gaye's family in federal district court in California this week, seeking a declaratory judgment that the song does not infringe upon Gaye's copyrights.

“There are no similarities between plaintiffs’ composition and those the claimants allege they own, other than commonplace musical elements,” the suit contends. “Plaintiffs created a hit and did it without copying anyone else’s composition.”

Invocation of declaratory judgment jurisdiction is typical when it becomes clear that suit is inevitable, and when an actual case or controversy exists between the parties, based upon the totality of the circumstances.  Assuming Gaye's family asserted a clear claim of copyright infringement and demanded a royalty, and assuming that no ongoing discussions were occurring, Thicke may have been entitled to file a preemptive suit first.

Procedural wrangling aside, in any event, the underlying legal test remains the same. Did Thicke and his co-authors cross the line from inspiration to infringement?

Ironically, that line is rather blurry in this instance.

Sampling an identifiable and substantial portion of Gaye's song would likely lead to a finding of copyright infringement. Thicke has (so far) expressly denied that any form of sampling whatsoever occurred, claiming that the similarities were from simply borrowing "commonplace musical elements."  That distinction is a matter of degree, and will depend upon a close comparison of the two songs.


Friday, May 31, 2013

Tory Burch Gets Tough On Fakes


Today, Tory Burch got tough on fakes. The designer's company filed four new lawsuits against companies allegedly dealing in counterfeit Tory Burch products.  

WWD reports that four cases all deal with manufacturers and wholesalers of jewelry featuring hardware identical to the brand’s trademarked “TT” logo. 

Their legal team described the four cases as separate but “interconnected”, and chief legal officer Robert Isen emphasized that the designer has “long been vigilant in defending [its] intellectual property, and will continue to take counterfeiting and copyright infringement seriously.”

In all four cases, Burch is seeking “unspecified damages and injunctive relief.”  In other cases previously filed by Tory Burch, the defendants were cybersquatters, primarily based in China, and (as in most cases like it) only a portion of the damages were recovered by seizing PayPal accounts and other assets.

This time, the defendants include a California boutique, two New York-based companies, and a Chinese company with a New York showroom and frequent tradeshow presence, the latter of whom showed the spurious goods to a private investigator.

Wednesday, April 24, 2013

Daunting Math Facing Brand Owners

The new reality on the Internet is a game of very large numbers -- a reality that brand owners and content creators trying to protect their intellectual property rights online may find depressing.  

Here are a few statistics to ponder:

Between 1995 and 2013, the number of Internet domain names registered went from 15,000 to 250,000,000.

There are nearly 150,000 new domain names created each and every DAY.  Even taking deletions and expirations into account, there is still a net gain of tens of thousands of new domain names created every single day, 365 days a year.  In addition, there are estimated to be 634,000,000 websites, with 51,000,000 added each year.

It is currently estimated that 2.4 BILLION people use the Internet worldwide, with 1.1 billion of them in Asia alone.

The statistics also demonstrate that counterfeiting on the Internet is similarly skyrocketing.  For example, domain name registrants frequently register names that cybersquat upon the established rights on trademark owners.

In the 1990's, Congress passed the Anti-Cybersquatting Consumer Protection Act (ACPA), to give rights owners a vehicle for protecting themselves by filing suit in federal court.  Brand owners can also initiate Uniform Domain Name Policy (UDRP) proceedings.  But litigation under the ACPA/UDRP can be expensive and time-consuming.

A very successful and aggressive brand owner may be able to set aside several hundred thousand dollars per year to budget for proactive brand protection on the Internet.

But is that even enough?

Given the massive scale and scope of counterfeiting on the Internet, this math presents a very daunting reality.

Assuming 20 newly-created domain names registered each day infringe upon a brand owner's rights, in one year alone, a trademark owner would need to spend hundreds of thousand of dollars getting all of them locked and transferred under Court Order.

Of course, a new infringer lurks around every corner, so there is nothing to stop new domain names from being created tomorrow, and the day after that, and so on.

A brand owner may hire a team of attorneys and investigators dedicated to combating this escalating problem.  But counterfeiters can find armies of extremely cheap labor to draw upon for programming, coding, marketing and distribution of counterfeit goods.

Therefore, in a long drawn out war of attrition, the math facing brand owners is daunting.

The solution?

First, brand owners need to act MUCH more aggressively and diligently.  The problem is not going away.  By ignoring the problem, it will only get worse.

Second, brand owners need to lobby the government for much more stringent penalties and enforcement mechanisms.  Individual ACPA and UDRP proceedings against infringing domain names made sense in the 1990's, but today they are anachronistic given the scope and scale of the problem.

Some brand owners have been creative and have filed large-scale litigations that have shut down thousands of domain names through sweeping Court Orders in a single case.  However, these cases have inherent limitations, and need to be filed repeatedly.

Third, ICANN needs to begin to adopt policies that are pro-brand owner, rather than pro-infringer.  The core economic dilemma is that ICANN (and its affiliated registries and registrars) stand to gain tens of millions of dollars in fees each year from newly-created domain names, and therefore have little incentive to protect the intellectual property rights of the few.  Their economic incentives, in fact, are quite in the opposite direction.

Thursday, August 16, 2012

Insane Clown Posse: Branding Geniuses or Violent Gang Subculture?



ICP Fans, image from InsaneClownPosse.com website
From both a musical and branding perspective, the Insane Clown Posse (often dubbed "ICP") are a bizarre phenomenon.

The ICP is a rap duo composed of Joseph Bruce and Joseph Utsler, who perform under the respective personas of the "wicked clowns" Violent J and Shaggy 2 Dope.

The duo performs a style of hardcore hip hop known as horrorcore known for its elaborate live performances.  The duo has earned two platinum and five gold albums.

ICP may be counter-cultural, but they are very brand-conscious, and have developed an incredibly dedicated following of fans surrounding their musical genre.  They are no strangers to successful merchandising, either.

Logo on Tote Bag ($10 on ICP website)
For example, the band adopted the "FAYGO" brand soft drink, by referencing the relatively unknown Detroit-based soda brand in several songs.  The group's fans are widely credited with supporting the company.

ICP's hardcore fans, dubbed "Juggalos," are such a dedicated and cohesive subculture that the FBI recently categorized them as organized criminals.

The FBI's 2011 National Gang Threat Assessment report identified Juggalos as a "hybrid gang" akin to violent groups like the Crips and Bloods.

But ICP is now fighting back for its beleaguered fans, by filing a civil lawsuit against the FBI for unlawful discrimination.

The lawsuit seeks to stop the FBI from "violat[ing] the rights of Juggalos on the mistaken belief that they are 'gang members,'" according to a statement posted on a new website, JuggalosFightBack.com.

Being labeled a "gang member" can result in much harsher penalties for certain crimes, according to the Justice Department’s National Gang Center.

To fight back, the Insane Clown Posse’s new website is offering a free legal review to any ICP fan who may have been profiled or harassed.  Fans can fill out a form online, for potential inclusion in the lawsuit.

“We’re not attacking the FBI, but they got this wrong,” Bruce said in a statement. “The Juggalos are not a gang, and that needs to be fixed."

The lawsuit is “probably the biggest announcement of our career,” the duo said via Twitter.  “Yes we’re nervious [sic].”

It seems that even wicked clowns are scared of litigation.

Wednesday, August 15, 2012

ICANN Must Face Antitrust Scrutiny for Approving .XXX Top Level Domain

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Craig Sues James (But Not Angie) for a "List"


Craigslist, the popular free website, has filed a trademark infringement lawsuit against the Swedish owners of Jameslist.

Craigslist offers users job postings, apartments, and all manner of items for sale (and sometimes even for free).

In contrast, Jameslist offers only absurdly high-end luxury real estate and items for sale, such as ninety million dollar mansions, private jets, yachts, sports cars and other accouterments of the wealthy and uber-famous.  It bills itself as "the World's Luxury Marketplace."

The federal lawsuit, filed in U.S. District Court in San Francisco where Craigslist is headquartered, alleges that Jameslist was coined as an admitted play on words to bring Craigslist to mind.  The suit alleges that consumers will be confused.

Some commentators have pondered why, given Craigslist's apparent concern about confusion arising from the use of a first name and "list," it has never sued Angie Hicks, the founder of Angie's List, which offers reviews of roofers, plumbers, housekeepers and contractors.

The lawsuit notes that there had been a previous administrative proceeding when James had sought U.S. trademark recognition, but that proceeding ended with the entry of judgment against Jameslist.

Can you guess which items appear on Craigslist or Jameslist, respectively, by just looking at the pictures below?  Answers appear at the bottom.
#1
#2
#3
#4
#5
#6

Answers:

#1:  $72,000,000 Yacht for sale on Jameslist.
#2:  $130/month shared room for rent on the Bronx on Craigslist.
#3:  FREE keyboard on Craigslist.
#4:  $90,000,000 Woolworth Mansion for sale on Jameslist.
#5:  Aston Martin for sale for $250,000 on Jameslist.
#6:  Goodyear tires (slightly used) for sale for $150 on Craigslist.