Showing posts with label trademark infringement. Show all posts
Showing posts with label trademark infringement. Show all posts

Tuesday, September 10, 2013

Delay in Resolving ABSOLUT Trademark Dispute Raises Thorny Issues



The Everett, Washington hair salon's name/logo
Self-help guru Napoleon Hill once wrote that "procrastination is the bad habit of putting off until the day after tomorrow what should have been done the day before yesterday."  A number of parties involved in a trademark dispute in the state of Washington may agree with that statement more than they would care to.

According to recent reports, when Jesse Skittrall purchased the small Absolut Hair and Makeup salon in Everett, Washington in 2009, he was informed by Gayle Pratt, the former owner of the salon, that Vodka giant Absolut had sent a formal cease and desist letter in 2005, but didn't follow up on its demand that the salon change its name.

Consequently, Pratt evidently concluded that the matter was not being pursued by the vodka maker, and the hair salon management changed hands.

However, at the end of July 2013, the vodka maker finally followed up, and reportedly gave Skittrall until January 1, 2014 -- 6 months -- to completely change the salon's name, or else face a federal lawsuit for trademark infringement.

Skittrall has appealed to the community to raise money, and appeared on local radio stations, complaining that the vodka company had "come out of nowhere."

On GoFundMe.com, Skittrall apparently seeks as much as $20,000 to fund the name change, but as of today, has raised only $125.  It is not clear why it would cost $20,000 for the business to change its name, but the salon would obviously need new signage, a new website and new business cards.
The Vodka Maker's Trademark

On the crowd funding site, Skittrall claims that "I bought the business with this name and existing signage and was not aware of any trademark issues."

But the former owner disputes Skittrall's characterization, saying that she fully informed him of the unresolved trademark dispute back in 2009.

But what of the vodka maker's apparent delay in following up?

Precedent from the Ninth Circuit Court of Appeals, which governs Washington, lays out a clear duty for a trademark owner to act diligently once it has sent a cease and desist letter that has become unresolved.

Otherwise, the trademark owner might face the possibility that its delay in protecting its rights may rise to the level of being "estopped by laches."  The doctrine is sometimes just referred to as "laches," which comes from the French for "laziness."

The Latin phrase "Vigilantibus non dormientibus æquitas subvenit (Equity aids the vigilant, not the sleeping ones (that is, those who sleep on their rights))" is often quoted to help explain the doctrine.

In other words, the vodka maker's delay in pursuing the 2005 matter against the hair salon could have led the former and new owners to reasonably infer that the alcohol beverage company had lost interest in protecting its rights in this instance.

To the extent that the salon owners relied upon that delay to their detriment and suffered prejudice, courts may hold that delay against the trademark owner, not the salon.

The Ninth Circuit Court of Appeals had said in Brookfield Communications v. West Coast Entertainment in 1999:

"Although we have applied laches to bar trademark infringement claims, we have done so only where the trademark holder knowingly allowed the infringing mark to be used without objection for a lengthy period of time. See E–Systems, Inc. v. Monitek, Inc., 720 F.2d 604, 607 (9th Cir.1983). In E–Systems, for example, we estopped a claimant who did not file suit until after the allegedly infringing mark had been used for eight years where the claimant had known of the infringing use for at least six years. See id.; see also Carter–Wallace, Inc. v. Procter & Gamble Co.,434 F.2d 794, 803 (9th Cir.1970). We specifically cautioned, however, that “had defendant's encroachment been minimal, or its growth slow and steady, there would be no laches.” E–Systems, 720 F.2d at 607; accord Carter–Wallace, 434 F.2d at 803 n. 4."

In this case, the delay would appear to be from 2005 to 2013:  approximately eight years.  There is no clear evidence of progressive encroachment, as the local hair salon appears to be largely the same as it was in 2005, despite having new management.

Furthermore, Washington's statute of limitations may also apply here, which enforces a three year statute of limitations to trade name disputes.

Consequently, the vodka maker may face a problem if the hair salon simply refuses to change its name, and invokes these doctrines in its defense. 

The lingering problem for the salon, of course, is that estoppel by laches is a defense that can only be asserted in a lengthy court proceeding, after factual discovery has been exchanged.  And invoking such equitable defenses obviously costs time and money, and litigation comes with no guarantees.

In conclusion, had all the parties more clearly resolved their original dispute back in 2005, more costly headaches for all involved might have been avoided.

Friday, September 6, 2013

'Deep Throat' Makers Cannot Halt Release of Unauthorized 'Lovelace' Biopic


Images Courtesy of Radius-TWC

Entertainment Weekly and Variety report that the recent Weinstein/Millennium film “Lovelace” appears to be clear of a possible preliminary injunction that could have kept the film from being released in theaters.

The producers of the film were sued for copyright and trademark infringement in New York federal district court by Arrow Productions, the owner of the copyrights and trademarks on the original adult "Deep Throat" franchise, which starred Linda Lovelace.

The recently-released biopic film stars Amanda Seyfried as Lovelace, a fragile woman who becomes an infamous porn star seemingly happy with her decisions, but who eventually breaks free from her husband and discloses the truth about her treatment in order to prevent other women from getting similarly exploited.

According to the Complaint, the producers used the name "Lovelace" and several minutes of copyrighted material from the 1972 adult film "Deep Throat," without permission. "In fact, the title 'Lovelace' derives its market appeal entirely from decades of cultural cache embodied in the trademarked name Linda Lovelace. … Rather than negotiating licenses for Deep Throat IP, rather than deferring to Arrow’s vision for the Deep Throat brand, Defendants have simply taken what they wanted and crossed their fingers.”

However, despite Arrow's characterization of the producers as having "tak[en] several minutes of copyrighted material" without permission, the truth is not that simple.

Arrow claims that the copyright infringement arises from a "re-creation of a short scene" and a "brief re-enactment of the filming of scenes of 'Deep Throat'," not wholesale theft of copyrighted footage.

Consequently, Arrow alleges, these unauthorized reenactments constitute "derivative works" of the original copyrighted material, which Arrow owns.

Furthermore, Arrow alleges that the value of the "Deep Throat brand" has been "decimated," because it did not approve the film's depictions of exploitation of the film's protagonist.  It is not clear if any consumers have been confused into believing that Arrow endorsed or sponsored the film.

Intellectual property law is not so clearly on the side of Arrow.  Performing a "re-creation" of an event does not necessarily constitute copyright infringement, simply because that event was filmed.

Arrow's Complaint itself alleged that the 1972 release of the film Deep Throat "was a watershed moment for American culture."

Re-enacting an event does not necessarily violate copyright laws.  A reenactment that borrows too heavily from copyrighted material could infringe, however.  For example, if the reenacted footage replicated the use of a copyrighted script line by line, it could infringe the screenwriter's rights. Furthermore, copyright law permits a copyright owner to control "public performance" of his work.

A "free speech/fair use" defense could be successfully asserted by Lovelace's producers, based on the argument that the derivative use made was transformative, in that it commented on the event by adding some additional material or perspective.

Consequently, application of this defense would permit some degree of interpretative reenactment as a form of social commentary on the underlying factual events that took place during the filming of Deep Throat.

For now, at least, the film's producers have been able to release the movie, but since the Complaint (embedded below) has not yet been dismissed or resolved, further litigation appears possible.

Friday, August 30, 2013

Fashionable Parodies: Where Does Free Speech End and Dilution Begin?


Where does First Amendment-protected parody end, and trademark dilution and/or infringement begin?


As was mentioned in the WWD article, and has been commented on in fashion blogs such as Stylecaster and Refinery29, I explained that there are two separate legal theories at play here, functioning against the backdrop of the Constitution's guarantee of freedom of speech.

I also explained that these cases are highly fact specific and often depend on both the particular sensibilities of the brand involved, and the message being conveyed.

Likelihood of Confusion:  The first legal test is fairly straightforward, that is, would the ordinarily prudent consumer, when confronted with the accused item, likely believe that it originated from, was sponsored or endorsed by, someone else?  For example, would a prospective consumer confronted with one of Brian Lichtenberg's "FELINE" t-shirts (depicted left), believe that fashion brand Celine was behind it?

Dilution:  The second legal question is, assuming purely for argument's sake that there was NOT a serious likelihood of consumer confusion, is there still a likelihood that a famous brand will be diluted, either through tarnishment or through "blurring" of its ability to continue to function as a trademark?

In other words, the law holds that a famous brand can be diluted, even in the absence of any consumer confusion, if the famous brand is called to mind and tarnished.

An example of a case where federal courts found that harm to the famous Coca Cola brand was indeed likely from tarnishment include the famous "ENJOY COCAINE" poster.  

In that 1972 case which was decided decades before the Federal Anti-Dilution statute was passed by Congress, a New York court held that "to associate such a noxious substance as cocaine with plaintiff's wholesome beverage as symbolized by its "Coca-Cola" trademark and format would clearly have a tendency to impugn that product and injure plaintiff's business reputation, as plaintiff contends."

This holding has long suggested that a key part of the inquiry should focus on whether there is a salacious quality to the parody that injures the brand.

The First Amendment:  However, there is a third critical issue which is the First Amendment guarantees freedom of speech. Courts have long held that commercial activities do not fall within the "core" of political speech that the Founding Fathers intended. Consequently, commercial conduct can be more regulated than purely political speech.


Because the sale of a t-shirt with a parody logo emblazoned on it could function as a form of "speech," the first question looks to what exactly is being communicated by the intent of the parody, and is that message being effectively communicated?


In the case of Brian Lichtenberg's "FELINE" shirts, the shirt clearly is designed to call Celine's brand to mind, but it isn't really clear what the message is.  Merely "mocking" an established brand is not necessarily sufficiently political an act to warrant free speech protection.  Otherwise, the "ENJOY COCAINE" t-shirt would have been protected, and it wasn't.
Not all courts have found that a protected parody requires a clear political "message."

In a 2007 case, Louis Vuitton lost an attempt to stop a small company from selling "CHEWY VUITON" dog toys.  

The Fourth Circuit Court of Appeals in Virginia affirmed the dismissal of that case, holding that:  "[a] parody must convey two simultaneous -- and contradictory -- messages:  that it is the original, but also that it is not the original and is instead a parody.  This second message must not only differentiate the alleged parody from the original but also must communicate some articulable element of satire, ridicule, joking or amusement."  (emphasis added).

The Chewy Vuiton dog toy was not shown to be causing any form of consumer confusion, but was clearly designed to call Louis Vuitton's famous trademark to mind, and mock it.  There was no clear political message, but the absurdity of the item itself functioned as a mockery of the high end luxury brand.

Further, in part because a chewy dog toy is not a salacious item, there was really no "tarnishment" of the brand.  Ultimately, the parody was obvious to the observer, leaving Louis Vuitton without any form of legal remedy.  Indeed, the Chewy Vuiton dog toys are still available for sale on Amazon, and Louis Vuitton seems to have survived.

More troubling for Lichtenberg, however, might be his t-shirt mocking Cartier with "CANNABIS."  (seen left)

Cartier would seem to have a valid claim of dilution, as per the 1972 ENJOY COCAINE decision.

The key legal questions are fact specific: Will the particular parody cause confusion? If not, will it dilute the brand through tarnishment or blur the trademark's ability to function? And finally, will the public's right to freedom of speech trump the brand owner's perceived offense?

So, in conclusion, clever parodies of famous designers are certainly not new, and courts have long struggled with balancing the public's right in free expression, with the brand owner's right to protect its image.