Why Don't Presidential Candidates Seem to Respect Intellectual Property?

Gage Skidmore / Wikimedia Commons

It seems like many candidates for President of the United States just don't seem to understand how to avoid being accused of copyright infringement.  Here are a few cases in point:

Presumptive Republican candidate Mitt Romney recently launched a YouTube campaign advertisement depicting President Obama, and using the song "Happy Together," without authorization from the songwriter.  The ad is pulled by YouTube as an alleged copyright infringement.  


Earlier in the race, Newt Gingrich used Survivor's "Eye of the Tiger" without permission and was sued for copyright infringement.  In 2010, Rand Paul received a cease and desist letter from Canadian rock band Rush's lawyers for similar behavior with respect to their songs.  And Senator John McCain was sued by Jackson Browne for using the song "Running on Empty" in his 2008 campaign.

Daniel Schwen / GNU Free Documentation License 

But artists aren't only targeting Republicans.  In 2008, President Obama's campaign received a cease and desist letter from duo Sam and Dave about the song "Hold On, I'm Coming."


NPR correctly points out that a blanket license from ASCAP/BMI/SESAC for the particular venue that the candidate is using may already license the song for the copyright royalties covering public performance.


However, not to be outsmarted, the artists have alleged a less clearly-defined trademark infringement theory.  They cleverly contend that the unauthorized use of their music falsely suggests endorsement, sponsorship or approval by the musician.


In any event, what the trend signifies is not so much that the Presidential candidates are a bunch of copyright thieves as it demonstrates that the legal lines between commerce, the First Amendment, politics and copyright/brand protection can be quite murky, as we have previously noted.

Off-Broadway Show Accused of Infringing Three's Company Copyrights

Public Domain / Wikimedia Commons

Playwright David Adjmi's off-Broadway play “3C” has been accused of being nothing more than blatant copyright infringement by DLT Entertainment, the company that owns the copyright to the popular 1970's television series.

According to a report in the New York Times, Adjmi received a detailed cease-and-desist letter from DLT Entertainment's lawyers, accusing him of copyright infringement, and listing numerous points of similarity between the play and the sitcom.  A stage adaptation of "Three's Company" is apparently in the works and DLT alleges that Adjmi's play was damaging to it.

According to the New York Times, Donald Taffner Jr., president of DLT Entertainment, said the company was “very protective of the overall brand” because the show continued to earn substantial revenues from syndication on TV Land and on home video.

3C used a scenario similar to that of "Three's Company," but explored darker implications of American culture in that period.  The now-closed production ran June 6-July 14 at the Rattlestick Playwrights Theater.

A representative for the Dramatists Guild was quoted in Playbill.com as saying: "the right of authors to make fair comment on pre-existing work (whether through parody or other forms of fair use) is a First Amendment safety valve in the copyright law, and one we wholeheartedly support, as do the courts. If the author contacts us, we will discuss the issue with him and see how we can help."

Adjmi's plight apparently caught the attention of those within the New York theater community, who cited the actions of DLT Entertainment as bullying (a common thread), stating that they believe that Adjmi's play clearly fell under the umbrella of parody — which is protected by the First Amendment.

Other playwrights have explored similar territory, including Bert V. Royal's Dog Sees God, which centers on the teen years of the Peanuts gang.

Tony Award-nominated playwright Jon Robin Baitz penned an open letter explaining why it was important that members of the New York theater community rally behind Adjmi's work and First Amendment rights, calling 3C "clearly and patently and unremittingly parody."

Playbill notes that Rattlestick's marketing materials never drew any direct links to 3C and "Three's Company," describing the play as being "inspired by 1970's sitcoms, 1950's existentialist comedy, Chekhov, and disco anthems," adding that it was a "terrifying yet amusing look at a culture that likes to amuse itself, even as it teeters on the brink of ruin."

"I am not a lawyer, but David may need one, and I am currently investigating the willingness of a respected First Amendment firm to take this case on pro-bono," Baitz stated in his open letter.

"That an Off-Broadway playwright should be bullied by a Wall Street law firm over a long-gone TV show, is, in and of itself, worthy of parody, but in fact, this should be taken seriously enough to merit raising our voices in support of Adjmi and his play, which Kenyon & Kenyon is insisting be placed in a drawer and never published or performed again.  Whether one appreciates the work or not is immaterial; the principle at stake here is a basic one. Specious and spurious legal bullying of artists should be vigorously opposed, and that opposition must begin first and foremost with all of us in the New York Theatre community."

Among the notable individuals to add their names in support were Stephen Sondheim, Tony Kushner, Andre Bishop, Joe Mantello, Terrence McNally, Kenneth Lonergan, John Guare, Terry Kinney, Stephen Adley Guirgis and John Patrick Shanley.

Sanctions Against "Rogue" Porn-Copyright Attorney Upheld by 5th Circuit

A federal appeals court has affirmed monetary sanctions assessed against an Intellectual Property lawyer who represents a maker of adult films in a series of copyright-infringement-by-downloading cases.

U.S. District Court Judge David C. Godbey in Dallas had ruled in January that attorney Evan Stone of Denton, Texas had abused the discovery process, and termed him a “rogue attorney" with "staggering chutzpah" in a blistering decision.

In a July 12 ruling, the 5th U.S. Circuit Court of Appeals  affirmed the District Court's sanctions levied against Stone.

Stone represents Germany’s Mick Haig Productions E.K. against a large number of unnamed "John Doe" Defendants who stand accused of downloading Haig’s “Der Gute Onkel” film without authorization. 

Stone, no stranger to controversy, was depicted strangling pirates near scantily-clad porn stars in a recent Dallas Observer article.

The District Court had appointed attorneys from Electronic Frontier Foundation and Public Citizen as "ad litem" attorneys to represent the interests of the John Doe defendants and it was these lawyers who had sought the sanctions in District Court. The sanctions included attorneys' fees of more than $22,000, and $500 per day for each day Stone failed to comply with a court order.

Stone filed an appeal to the 5th Circuit, arguing the sanctions were unjustified and that the court-appointed attorneys lacked standing to seek them.

The appeals court flatly rejected Stone's argument.  It specifically held that “no miscarriage of justice will result from the sanctions” that were imposed “as a result of Stone’s flagrant violation” of court rules.

The appeals court said Stone committed the violations by using the subpoena power of the court to find the identity of anonymous Internet users “then shaming or intimidating them to settle for thousands of dollars” each.

The appeal is captioned Mick Haig Productions E.K. v. Does 1-670, 11- 10977, U.S. Court of Appeals for the Fifth Circuit (New Orleans). The District Court case is Mick Haig Products E.K. v. Does 1-670, U.S. District Court, Northern District of Texas (Dallas).

The tactic of using the threat of John Doe subpoena discovery against pornography downloaders has come under recent fire in high-profile class action litigations against a number of adult film companies.

When Your Best Defense is a Really Stupid Offense Against an Internet Titan

What do you do when you thought it was a good idea to invest thousands of dollars in over 750 domain names that have "Google" in them, such as “GoogleGayCruises.com” and “GoogleDonaldTrump.com"? You apparently spend MORE money to hire a couple of lawyers to try and convince a federal judge that "GOOGLE" is just a generic term.  Oh, and you demand that the Court should cancel the world's most valuable trademarks so you can keep those domain names you worked so hard to cybersquat on register and use in good faith.

Fergie....David Lee Roth....Cher.....Ed Kowalczyk?

Henrik Dvergsdai / Wikimedia Commons

When band members strike out on their own and try to pursue a successful solo career, some have the good fortune of already having a cool name with loads of fan recognition. 

Consequently, their solo acts need little or no introduction to their fans. Notable examples include Fergie (Stacey Ferguson of the Black Eyed Peas), David Lee Roth (formerly of Van Halen), Morrissey (formerly of The Smiths), Ozzy Osbourne (formerly of Black Sabbath), and Cher (formerly of Sonny & Cher).

But some people just aren't so lucky, like Ed Kowalczyk (right). In the 1990's, Ed was the lead singer of a major band called "Live."  Live broke out with the 1994 album, "Throwing Copper," which spent a year on the Billboard 200 album chart before hitting the No. 1 position.

Live released seven albums in total, and sold tens of millions of albums and hundreds of thousands of concert tickets. The band's hit songs included "Lightning Crashes," "Lakini's Juice" and "Selling the Drama." Eventually, after a decade of living the drama, in 2009, Ed sought greener pastures.

Perhaps to remind fans of his current status, or perhaps to keep an association with his previous band, Ed ironically chose to call his new solo album “ALIVE." 

Further, Ed has allegedly billed himself as "Ed Kowalczyk of Live." But the band's other original members are reportedly attempting to put a stop to this form of self-promotion in a newly-filed trademark infringement lawsuit. 

Ed's self-promotion is likely to cause consumer confusion, according to the Complaint.  Booking agents, theaters, arenas and the press are allegedly being deceived into thinking Ed still has affililation with the group Live.

Billboard reminds us of the large amount of litigation that followed the sad break-up of the original Platters.  Singer Herb Reed became the last original member of the group to leave the band in the early 1970's and afterwards, the company (Five Platters Inc.) that was formed by the original members, hired a new member to continue on as a new Platters group. That fateful decision led to four decades of litigation which culminated just a few months ago when a judge ruled, "'Only You,' Herb Reed, have exclusive rights to the mark."  Herb Reed then died.

The Hollywood Reporter analogized this particular breakup to an ugly divorce. Billboard correctly points out that the ultimate legal analysis often comes down who has continuously exploited the band name and who is recognized by the public as holding the greatest claim to the mark.

Source:  Ed's Website

Here, the nature of the band's previous business partnership will have an impact. Each of the four members of Live apparently signed an Employment Agreement with the company organized to run the band's services.  And that Agreement could spell bad news for Ed, who is facing statutory damages up to $2M in addition to a permanent injunction.

It's also worth noting that Ed has tried to sell coffee, too, under the brand "EDDIE'S COFFEE." Ed might need a new agent, in addition to a new trademark lawyer.

When "Groupies" Attack: A Somewhat Crowded Field

According to the Urban Dictionary, "groupies" are individuals involved in obsessive adoration of entertainers such as musicians, actors, athletes, and even political figures. Typical "groupie" behavior is often juvenile, including even attacking one another or the very performer they supposedly admire.

A few companies have recently become involved in legal attacks on one another over who gets to own the word "groupie" and words that sound a lot like it in connection with emerging technologies.

In 2004, a Cambridge, Massachusetts company applies for "GROUPE" and "GROUPEE" in Classes 38 and 42 for online chat rooms and software.  It's domain name lives on as a music fan site, but its business doesn't.

Then in 2008, a New Jersey based startup applies for its own trademark registration on "GROUPIE" for computer application software for mobile phones in Class 9.  Groupie is apparently an iOS and web application that lets people create both public and private groups, and allows people to message back and forth and meet each other.  It has about 60,000 users so far.  

In 2011, GroupMe launches after winning TechCrunch Disrupt’s hackathon.  It is an application resident on iOS, Android, Windows Phone 7, BlackBerry and the web, and is more focused on private group messaging.  According to one report, GroupMe has become one of the darlings of the fast-growing group messaging application market, getting $10.6 million from Khosla Ventures and lots of press for its products, which just got an update to version 3.0.

Part of Specimen Submitted to Trademark Office

A tipping point is reached when GroupMe files for a federal trademark registration on its name, in connection with software capable of causing transmission of a message from a message originator to a group of recipients.  The legal dispute originates before the United States Trademark Trial and Appeal Board, when Groupie files an administrative Opposition Proceeding against GroupMe's pending application.  Now, the dispute has escalated into U.S. District Court in Manhattan, with GroupMe firing back, seeking a Declaratory Judgment of non-infringement from a federal judge to resolve the "cloud of uncertainty" hovering over the mark.

Add to the mosh pit Yawma LLC, an Oregon corporation, which in 2010 applies for "GROUPEES" for computer software website for flash sales of digital entertainment media including music and games in Class 9. Groupees.com successfully raises significant amounts of money for charity from many artists and supporters, and may have a viewpoint on all this, as well.

Source:  GoGiiGames

Finally, Shannon Tweed (from Family Jewels) has a mobile application game called "ATTACK OF THE GROUPIES" that can be played on iPads, iPhones or PC's (you just can't make this stuff up).

The lesson here is that distinctiveness is determined both by the relatedness of the mark to the product or service being offered under that mark, as well as by the number of similar marks for similar products.  

When numerous sellers of similar products use similar trademarks, those marks become difficult to distinguish and protect. Trademark professionals call this situation a “crowded field,” and it can present serious marketplace and legal problems, as is clear from the situation here. Absent a quick settlement, the parties may now spend years, and hundreds of thousands of dollars, litigating over who has the final right to legally own the mark.

Source: GreenGroupies Website

No word yet from the company that apparently owns the trademark for "GREEN GROUPIES" in connection with eco-friendly children's clothes on whether it will jump into the fray, just to keep things interesting.

Mistakes Some Brands Make

For all the discussion of the outer limits of brand protection explored by companies who are pushing the envelope, here are five common mistakes that many brands make by not doing nearly enough.

1.  FAILING TO REALISTICALLY BUDGET.  Some companies fail to allocate an appropriate and realistic budget to support all the needs of a robust brand protection program.  This is one of the biggest mistakes that even well established, sophisticated companies make. A typical marketing department will comfortably spend millions of dollars a year placing glossy advertisements in Vogue that will attract a customer’s attention for a millisecond as she flips the pages. But that same company will spend a fraction of that budget to take down dozens of high-profile counterfeit websites that show up in a search engine's top results for the brand, even when those websites will confuse thousands of customers and measurably hurt sales.


2.  RELYING SOLELY ON THE GOVERNMENT.  Another mistake that some brand owners make is assuming that law enforcement personnel and Customs agents are familiar with their brands when they encounter counterfeits of their products during a raid or investigation.  The truth is that well-intentioned police officers and Customs agents can only seize and detain items that they have a reasonable suspicion is fake.  A brand owner cannot assume that the Customs officer looking through a cargo ship at a major port knows how to tell a real pair of sunglasses from a counterfeit.  That is why it is so important to reach out to law enforcement and develop ongoing relationships.  Train them to detect the differences between real and fake products of your brand.

3.  PRIORITIZING INCORRECTLY.  It is important to prioritize targets based on a variety of factors including size, but it can be a mistake to place seemingly “low-level” targets on the back burner for too long. In fact, some of the largest counterfeiting and smuggling rings can be uncovered by pursuing a seemingly small target, such as a storefront or street peddler. Sometimes, these sources will reveal a treasure trove of information about their counterfeit supply chain that can lead to significant seizures of counterfeit goods.

4.  GOING IT ALONE.  Another mistake some brands make is to go it alone, and try to take on the entire counterfeit industry in isolation. But savvy counterfeiters deliberately rip off dozens of brands in order to diversify and spread their risk, and also focus on what sells best in any given season.  Therefore, it doesn’t make much sense for brands to refuse to partner and share information with other brand owners, who are also victims in this struggle.

5.  GIVING UP ENTIRELY.  The absolutely worst mistake a company can make is to give up entirely and abandon their brand to the vicissitudes of the counterfeiters' marketplace.  Brand protection efforts require a long-term strategy, and while it sometimes feels like bailing out the ocean with a spoon, it is critical to stay the course.

Partially Functional Product Designs Can Become a Trademark

Do you recognize this shape?

According to a recent decision issued by the U.S. Trademark Trial and Appeal Board (the "TTAB"), this rectangular shape is a valid trademark belonging to Hershey's for its iconic chocolate bars.

By Evan-Amos (Own work) [Public domain], via Wikimedia Commons

One key issue in such product configuration trademark cases is whether the design features sought to be protected as a trademark are primarily “functional."  If the overall design is functional, trademark protection is barred.  Primarily functional products can be protected by patents, but trademark law ends where functionality begins.

The TTAB held that while the individual rectangular shapes scored within the chocolate bar are functional (because they make it more convenient to easily divide the bar into equal pieces), the candy bar's overall design, when considered in its entirety, was not primarily functional.

Instead, the TTAB determined, based on the evidence presented that reflected a wide variety of shapes and designs used for chocolate bars, that the combination of rectangles with a raised border in Hershey's design is not primarily functional and, therefore, may be protected as a trademark.

The second issue that the TTAB considered was whether Hershey's product design had “acquired distinctiveness” in the marketplace for candy.

Product designs and configurations are not considered “inherently distinctive” as are many other types of trademarks. Therefore, in order to be protected as a trademark and registered on the Principal Register, Hershey's must demonstrate that relevant consumers considered the product design to be a source identifier. 

Evidence of distinctiveness can consist of consumer surveys, evidence as to the length of time a mark has been in continuous and substantially exclusive use, revenue of products bearing the trademark, advertising expenditures to promote goods bearing the mark, unsolicited media coverage, and evidence that the product configuration has been promoted in advertisements as a source indicator. 

Hershey's submitted all of these types of evidence to exceed its burden of proof. In addition, Hershey's also provided evidence that Williams-Sonoma attempted to copy the design of the candy bar to use as the shape of a brownie baking pan:

The TTAB ultimately found that the evidence demonstrated that the candy bar design had acquired distinctiveness and could be registered on the Principal Register as a trademark.

Do you recognize these other trademarked product designs?

Can Religious Symbols Be Trademarked?

At the intersection of intellectual property, culture and the First Amendment lies the interesting question:  Can religious symbols be trademarked under U.S. law?

In short, the answer is yes.


There is no inherent or statutory bar for a symbol that has acquired religious connotations and spiritual meaning to a group of believers to become protected as a federally registered commercial trademark, provided that certain legal conditions are met.


For example, the mark must be "used in commerce" and become associated with a "single source."


These legal requirements demand that some form of commercial goods or services are offered in connection with the mark by a single entity, either a church, not-for-profit organization or corporation.  Therefore, a "generic" religious symbol such as a crucifix would not be protectable because it represents a system of beliefs that is not associated with a single identifiable "source."  That is, the Roman Catholic Church could lay a claim to it, but so could Orthodox, Protestant denominations, and thousands of other Christian organizations.


Additionally, even the name of a church or religion can be trademarked.  For example, "THE EPISCOPAL CHURCH" is a federally registered trademark for religious instruction services (see right).


In one federal lawsuit testing the bounds of these concepts, the Te-Ta-Ma Truth Foundation-Family (the “Foundation”) sued the World Church of the Creator (the “World Church”), alleging that the World Church infringed its registered trademark for “Church of the Creator.”

The World Church was one of three primary divisions of the white supremacist movement. The mission of the Defendant was twofold: (1) to ensure the survival, expansion and advancement of the white race and (2) to eliminate Jews, blacks and “mud- races.”  The Foundation, on the other hand, was a denomination professing universal love and respect, and actively included everyone who wished to join.  In order words, the beliefs ensconced by the World Church were diametrically opposed to the beliefs practiced by the Foundation and therefore fundamentally incompatible.

On appeal, the Seventh Circuit  Court of Appeals held that the World Church infringed the Foundation’s trademark. The court held that the Foundation’s name did not preclude others from distinguishing themselves and implied that the name encapsulated the Foundation’s identity: “[U]sing ‘Church of the Creator’ as a denominational name leaves ample options for other sects to distinguish themselves and achieve separate identities.”

The issue affects all organized religions.  For example, a Lubavitch Jewish religious group that uses a symbol of the Torah and Hebrew letters on a shield has litigated whether or not this symbol can legitimately function as a trademark. The Trademark Trial and Appeal Board held that it could.

In an article titled "Register Trademarks and Keep the Faith:  Trademarks, Religion and Identity," Professor David A. Simon writes about some of the issues confronted when religious organizations wage secular court battles over the unauthorized use of religious trademarks.

Professor Simon notes that such litigation is not a traditional trademark dispute.  Such cases are focused on protecting rights to compete in commerce.  Here, the dispute is driven by a unique cultural struggle to protect religious identity, but the parties are forced to use the secular litigation system to resolve essentially cultural, "identity" disputes.

He suggests a novel approach to resolving such disputes that is modeled on the Uniform Dispute Resolution Procedure ("UDRP") triggered when there are disputes surrounding the legitimacy of Internet domain names.

In any event, even if permitted under intellectual property law, applying secular trademark concepts to legal disputes involving religious identity and cultural control remains an uneasy fit.

Congressional "Outrage" Over Chinese-Made Ralph Lauren Uniforms?

American politicians, including Senate Majority Leader Harry Reid (D-NV), expressed "disgust" and "outrage" that Ralph Lauren's sartorial donation to the 2012 Olympics were made in China, and demanded that the uniforms be "burned."

But where is Congress's disgust and outrage about this alarming trend?

I would also point out that Ralph Lauren is one of America's iconic and most successful designers, who has done more for promoting American fashion and supporting the American Olympic team, than all of Congress combined.

Under Armour Lawsuit Full of Rhetoric, but Legal Test is Straightforward

Billion dollar sportswear and sneaker manufacturer Under Armour recently filed a trademark infringement lawsuit accusing Maryland-based startup beverage company BodyArmor of copying Under Armour's name, logo and marketing.  Here are a few observations about this particular lawsuit.


First, purely from a marketing and promotion standpoint, the filing of this case was probably the greatest gift that the startup beverage maker could have possibly received from anyone.

Indeed, the opportunity to generate and benefit from massive amounts of free press was capitalized upon by BodyArmor's owners -- the same mega-entrepreneurs who founded vitamin water, sold that brand to the Coca-Cola Company in 2007 for $4.1B, and who are considered leading experts at creative brand building in the beverage industry.


In fact, normally filing an Answer to a Complaint is a fairly mundane procedural act, as an Answer typically contains standard denials, recitations and defenses, but little fireworks or rhetorical opportunities.

However, seizing the moment and a unique opportunity for using litigation as part of brand building, BodyArmor issued an unusual, nationwide press release along with the filing of its Answer, threading populist themes of "fighting back against trademark bullying," a refrain often cited by accused infringers today.

In its Answer, the Defendant countered by alleging that "[i]t is nearly impossible that consumers or retailers of either brand would confuse the two.  Under Armour and BODYARMOR operate in disparate industries, produce distinctly unrelated products, and share no branding or logo similarities."

Nonetheless, despite the rhetoric of "bullying" and personalities involved, the merits of the trademark case require a fairly garden variety legal analysis. 


The case will turn on the jury evaluating existing marketplace conditions, and determining whether or not consumer confusion is likely based on perceptions of the beverage's name, logo and marketing materials.

To ultimately prevail on its trademark infringement claims, Under Armour will need to demonstrate to a jury, by a preponderance of the evidence, that ordinarily prudent consumers encountering the BodyArmor product and advertisements in the marketplace will likely be confused into believing that the beverage emanates from, is endorsed, sponsored by, or affiliated with Under Armour.


This analysis involves using a flexible eight-factor test called the Polaroid test first articulated by Judge Friendly in a famous case brought by Polaroid against a company called Polarad Electric.


The eight factors described in the Polaroid case are:  the strength of the trademarks involved, the proximity of the products in the marketplace, the likelihood that the second-comer will "bridge the gap" in the marketplace between himself and the senior user, the sophistication of the consumers, any instances of actual confusion, the quality of the junior user's products, the intent of the junior user, and the similarity of the competing marks.

Further, marshaling evidence will entail the parties introducing competing consumer surveys through expert witnesses, who are skilled professionals with advanced marketing degrees and backgrounds, charging hundreds of dollars per hour.


Each expert witness will presumably challenge aspects of the adversary's expert's methodology and reach the exact opposite conclusion about the likelihood of confusion.

The parties and their witnesses will also spend countless hours scrutinizing the respective trademarks bit by bit, comparing them side-by-side, as well as examining the appearance of the respective products themselves.  


But in the end, when all the rhetorical fireworks are over, and the allegations of "fighting back against bullying" die down, the case will ultimately be decided based upon whether the jury believes that Under Armour has sustained its burden of proving that consumer confusion from the beverage is likely under prevailing marketplace conditions.

Is it Trademark Infringement to Make Your Own Fakes?

The Huffington Post is reporting that there is a run on a particular pantone of red paint in the United Kingdom.

Why red paint?

Faced with the high price of genuine Christian Louboutin designer pumps, some cash-strapped British wannabe fashionistas are painting the soles of their high heel shoes a specific shade of red, in a deliberate imitation of the designer's federally registered trademark.

In response to the Huffington Post article, I was asked the obvious question by many people:  "Is that practice legal in the United States?"

I had to pause to make sure that I was absolutely convinced that the following statement was really true:

"Yes.  This practice is absolutely legal in the United States."

Intentionally applying a counterfeit, imitation trademark to a product for one's own personal use, assuming that there is ZERO chance that the item will ever be sold or offered for sale to anyone -- is perfectly legal under current U.S. trademark laws.  It is perfectly legal to own, wear and proudly display a counterfeit product on one's own person.

The Lanham Act, codified at 15 U.S.C. § 1051 et seq., is the primary federal statute of trademark law in the United States.  The Lanham Act prohibits a number of activities, including trademark infringement, trademark dilution, false advertising and false designation of origin.

If someone were to offer a product for sale that infringes upon, dilutes or causes confusion with a protectable trademark or design, that person would be civilly (and possibly even criminally) liable under the Lanham Act for monetary damages and an injunction (a court order) against their continued conduct.  The goods can also be confiscated and destroyed.

In a case where I represented French designer Hermes of Paris, a 3-judge panel on the influential U.S. Court of Appeals for the Second Circuit in Manhattan unanimously wrote:

"Such a practice [of selling knockoffs] does harm the public, however, by creating post-sale confusion, not just among high-end consumers, but among the general public, which may believe that the knockoff is actually the genuine article.  In fact, high-end consumers may be less confused than the general public in the post-sale context because many of them will be aware of the existence of copies.  In either case, a loss occurs when a sophisticated buyer purchases a knockoff and passes it off to the public as the genuine article, thereby confusing the viewing public and achieving the status of owning the genuine article at a knockoff price."  Hermes Int'l et al. v. Lederer de Paris Fifth Avenue, Inc., et al., 219 F.3d 104, 106 (2d Cir. 2000).

But in each of its relevant prohibitions against knockoffs, the Lanham Act deliberately utilizes a key word -- commerce.

Absent some form of actual, intended or apparent "use in commerce," the imitation shoes that a person makes solely for their own personal use and display cannot be accused in a federal court as being an infringement, dilution or false advertising.

Indeed, that result is true even if the copycat shoes are admittedly designed to cause the third-party, "post-sale" consumer confusion that the Court of Appeals said is harmful.

Cheap knockoff shoes can also "dilute" the fame and power of a well-known brand (especially if the imitation shoes are lousy quality, which would "tarnish" the fame of the red-sole Louboutin trademark).

But the manufacture and use of personal copycat red soled shoes, assuming no use in commerce other than the mere act of a private person wearing them, is simply not illegal under current U.S. federal law.

That perverse outcome means that even if an ill-intentioned person were to manufacture many pairs of such shoes, for no commercial purpose other than to deceive their friends and onlookers into believing that they are fashionable enough to own a hundred pair, there is nothing the trademark owner can legally do to stop that person.

Perhaps the more interesting and unresolved question is...could a designer accuse a famous celebrity who chooses to wear knockoffs on the red carpet, of essentially "endorsing" the fake goods in an unlawful commercial manner?