Spring 2009
Internet & Intellectual
Property Law Update
©
Jacqueline Criswell, Editor
www.tsmp.com
Incomplete
Complete
Gatorade
Attacks
Powerade Ads
as False
Page 4
Google s Sale of
Keywords is Use in
Commerce
Page 5
It’s All About Results™
Starwood Sues
Hilton for Theft
of Zen Brand
Page 10
California Illinois New Jersey New York
$6.5 Million Judgment Awarded in World of
Warcraft Software Bot Battle
Last year Blizzard Entertainment, Inc., a creator of the online role-playing game World of Warcraft, obtained summary
judgment for contributory and vicarious copyright infringement against the creator of a software program called “WowGlider”.
WowGlider plays the game for its owner while he or she is away from the computer, thus enabling the owner to advance more
quickly within the game. This month the
Court awarded Blizzard $6.5 million in
damages for violations of the Digital
Millenium Copyright Act (DMCA). The
DMCA provides statutory damages of
$200-$2,500 for each violation. While
Blizzard initially contended it was entitled
to $24 million since at least 120,000
Glider licenses were sold, it also argued
that the floor for any damages should be $6.5 million. MDY, the creator of the software program, argued that damages
should be significantly less since it was not aware that it was violating the DMCA. The Court rejected its claim of innocence,
finding that the software was designed to avoid detection and each time Blizzard learned the identities of Glider users, MDY
modified the Glider to again avoid detection.
MDY Industries v. Blizzard Entertainment, Inc., 2009 WL 920250 (D. Ariz.).
Legendary Soul Man Sam Moore Sues MGM Over
Soul Men Movie
In the 1960’s, Moore and his singing partner
Dave performed the hit Soul Man and through
their performance style and mannerisms became
identified as “Soul Men”. In early 2008, Moore
learned that a new film entitled Soul Men was
being developed about a black duo from the
1960’s who broke up and were reunited to
perform a tribute at the Apollo Theater. He
advised the producers of his concerns and also
offered to participate to ensure the authenticity
of the film but was rebuffed. The lawsuit claims
defendants violated his rights of publicity
and privacy and misappropriated and diluted
plaintiffs’ famous trademarks. The suit claims
that the script, storyline and songs draw directly
on the Sam & Dave duo. It seeks a permanent
injunction, defendants’ profits and a recall of the
movie, soundtrack and related DVDs.
Moore v. The Weinstein Co., MGM Studios, Inc., et al. (M.D. TN 2009).
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Family Guy Parody of When You Wish Upon
A Star is Fair Use
Plaintiff owns the copyright in the popular song When You Wish Upon a Star,
featured in the Disney film Pinocchio. The animated TV show Family Guy aired
an episode entitled When You Wish Upon a Weinstein, which featured the song I
Need a Jew, a take-off on When You Wish Upon a Star. Plaintiff sued for copyright
infringement, alleging that I Need a Jew consists of a thinly-veiled copy of its song
with new anti-Semitic lyrics.
The Family Guy regularly contains irreverent plot lines. This episode centered
around the father Peter and his inability to manage his family’s finances. After
hearing his friends talk about how men with Jewish sounding names had helped
them to achieve financial success, Peter decides that he “needs a Jew” to help
with his finances. The overall theme of the episode is that Peter’s beliefs based
upon racial stereotypes, even potentially “positive” ones, are ridiculous.
Parody needs to mimic an original to make its point and so has some claim to use the creation of its victim’s imagination.
The Court found that by juxtaposing the “saccharin sweet” song When You Wish Upon a Star with I Need a Jew, defendants
do more than just comment on racism and bigotry but also call to mind a warm and fuzzy view of the world that is ultimately
nonsense. The song can be reasonably perceived to be commenting that any categorical view of a race of people is childish
and simplistic, just like wishing upon a star. That defendants’ song constitutes fair use and permissible parody is further
supported by evidence that defendants also intended to make an inside joke about the widespread belief that Walt Disney
was anti-Semitic.
Bourne Co. v. Twentieth Century Fox Film Corp., et al., 2009 WL 700400 (S.D.N.Y.).
Sixth Circuit Holds Corporate Receipt Does Not
Prove Access to Copyrighted Work
Plaintiffs claimed that the song Family Affair released by Mary J. Blige infringed on their
copyrighted song Party Ain’t Crunk. Plaintiffs had submitted a demo and CD containing
the song to Andy McKaie, Sr. Vice President of Artists and Repertoire for Universal Music
Enterprises, by hand delivery in a sealed package. McKaie’s secretary later told plaintiffs
that the department had decided to pass on the CD and she returned the materials with
a note that it is not accepting any unsolicited material. The CD was not returned in the
original envelope, which showed that the package had been opened. McKaie testified
that he had never seen the material submitted by plaintiffs, did not listen to the demo, did
not pass it on and had no contact with any of the artists who created Family Affair.
The district court granted summary judgment in favor of defendants, holding that no
reasonable juror could find the lyrics of the two songs substantially similar, that Blige and her collaborators had proven
that they independently created Family Affair and that Blige’s songwriters did not have access to plaintiffs’ song. The Sixth
Circuit affirmed on appeal. In doing so, the Court addressed the corporate receipt doctrine, under which possession of a
work by one employee of a corporation implies possession by another corporate employee who allegedly infringed the work.
It explained that other circuits have rejected “bare corporate receipt” as sufficient proof of access, instead requiring plaintiff
to introduce some evidence that it was reasonably possible that the paths of the infringer and the infringed work crossed. In
this case, plaintiffs had no evidence to show a reasonable possibility that their work made it from McKaie to the creators of
Family Affair.
In an unpublished decision, the Sixth Circuit had affirmed a district court’s refusal to infer access from bare corporate
receipt. In Glanzmann v. King, 887 F.2d 265 (6th Cir. 1989), the district court found that application of the corporate receipt
doctrine would have resulted in the implausible quantum leap that author Stephen King had access to a script submitted to
a secretary at Columbia Pictures, even though the evidence suggested no reasonable possibility that the script had made its
way to King.
Jones v. Blige, et al, 2009 WL 578753(6th Cir.).
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Gatorade Seeks to Enjoin Comparative Ad
Campaign for Powerade
Stokely-Van Camp, a division of PepsiCo, is the maker of Gatorade Thirst Quencher, the number one selling sports drink
in the world. It filed suit this month in New York Federal Court against Coca-Cola, seeking to enjoin its comparative ad
campaign featuring Powerade ION4 claiming it contains numerous false and deceptive claims. The ads appear on magazine
covers, billboards, the Internet and on point of purchase displays. The ads claim:
•
That Powerade ION4 is “THE COMPLETE SPORTS DRINK”, while claiming that Gatorade is “MISSING TWO
ELECTROLYTES” and “INCOMPLETE”;
• That Powerade ION4 represents an “UPGRADE” in sports drinks that will help consumers perform better on
the playing field; and
• That the additional electrolytes in Powerade ION4 are “Critical” and replace electrolytes in the same
ratio typically lost in sweat.
Pepsi contends that all such claims are false. Pepsi also
alleges that Coke has coupled these false claims with a
“mutilated and distorted depiction of Gatorade’s world
famous trademark, logo and trade dress.” The ads show
the Gatorade bottle and logo chopped in half and labeled
“INCOMPLETE” side by side with a beauty shot of a full
bottle of Powerade ION4 below the headline “COMPLETE”.
These visuals allegedly reinforce Coke’s false claim that
Gatorade is incomplete and inferior and also dilute,
tarnish and disparage the famous Gatorade brand. The
complaint contains claims for false advertising, trademark
dilution and unfair competition and seeks Coke’s profits
derived from Powerade ION4 sales as a result of this ad
campaign.
Incomplete
Complete
Stokely-Van Camp, Inc. v. The Coca-Cola Co., et al. (S.D.N.Y.
March, 2009).
Court Finds Law Restoring Copyrights of Foreign
Authors Violates First Amendment
A provision embedded in the Berne Convention, an international treaty protecting copyright
owners’ rights, which the United States joined in 1988, requires member nations to provide
copyright protection to works by foreign authors as long as the term of copyright protection in
the country of origin has not expired. As a result, this provision restored copyrights of foreign
authors who had lost those rights to the public domain. Plaintiffs represent a broad range
of artists and businesses that rely upon use of works in the public domain in their trade. In
granting summary judgment in favor of plaintiffs, the Court noted that while Congress has
a legitimate interest in complying with the Berne Convention, the bedrock principle of U.S.
copyright law is that works in the public domain remain in the public domain. Removing works
from the public domain violates plaintiffs’ vested First Amendment interests.
©
This decision is a major victory for the film distributors, music conductors and sellers of
classical music who challenged the law. This is the first time a Court has held that any part of the Copyright Act violates the
First Amendment.
Golan, et al v. Eric Holder, Attorney General of the U.S. et al, 2009 WL 928327 (D. Colo. April, 2009).
Page 4
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Second Circuit Finds Keyword Advertising
Constitutes Use in Commerce
Rescuecom offers on-site computer services and sales and conducts a
substantial amount of its business and advertising through the Internet. It
sued Google for trademark infringement, dilution and false designation of
origin as a result of it selling keyword-triggered advertisements to Rescuecom’s competitors. Google responds to a search
request in two ways. First, a person searching for the website of a particular company can enter its name or trademark and
Google provides a list of links to websites ordered in what it deems to be of descending relevance based on its proprietary
algorithms. The second way is by showing context based advertising. When a user enters a search term, Google will place
advertisements on the user’s screen, along with a link to its website if the advertiser has purchased the search term or
keyword. AdWords is Google’s program through which advertisers purchase keywords. Advertisers pay Google based on the
number of times Internet users click on the ad and link to its website. Google also offers a Keyword Suggestion Tool that
recommends keywords to advertisers to help them identify those keywords that will result in placement of their ads before
users who are likely to be responsive. Once an advertiser buys the keyword, Google links the keyword to the ad and displays
it on the search results page either in the right margin or in a horizontal band immediately above the column of relevancebased search results.
Google recommended the Rescuecom trademark to its competitors as a search term and many have purchased it as a
keyword through Google’s AdWords program so that whenever a user enters the term Rescuecom, seeking to be connected
to its website, the competitors’ ads and links appear on the searcher’s screen. Rescuecom alleges that users are misled
into believing that they are part of the relevance-based search result and are likely to cause confusion as to the origin or
sponsorship of the service. It also alleges that when the sponsored links appear in a horizontal bar at the top of the search
results, the searcher may believe that these are the most relevant results, as opposed to paid ads.
The district court granted Google’s motion to dismiss on the ground that Google’s internal use of “Rescuecom” to trigger
sponsored links does not constitute “trademark use” under the Lanham Act because the competitor ads triggered by
Google’s programs do not exhibit plaintiff’s trademark. The Second Circuit reversed the dismissal, finding that Google’s
use of Rescuecom’s registered trademark to sell keywords constitutes “use in commerce” and properly alleges a claim
under the Lanham Act. Significantly, the Court rejected the district court’s reliance on its
earlier opinion in 1-800 Contacts, Inc. v. WhenU.com, Inc., 414 F.3d 400 (2d Cir. 2005). In
that case, the Court had ruled that the use of trademark terms in a software program that
generated pop-up ads did not constitute “use in commerce” because the search term used
to trigger the pop-up ad was plaintiff’s website address, not its trademark. In contrast,
what Google is recommending and selling to its advertisers is Rescuecom’s trademark.
The Court took no position on whether Rescuecom can prove that Google’s use of its mark
in its AdWords program causes a likelihood of confusion but it will have the opportunity to
do so as the case proceeds against Google.
In an unusual twist, the Court included a lengthy Appendix discussing the split among the circuits as to what conduct
constitutes “use in commerce” under the Lanham Act and analyzed the statute’s legislative intent. It concluded by inviting
Congress to study and clear up the ambiguity.
Rescuecom Corp. v. Google Inc., 2009 WL 875447 (2d Cir. April, 2009).
Discount Cigarette Websites Enjoined
From Using Philip Morris Trademarks
Defendants Discount-cigarettes.com and Nationwideshoppingcart.com are enjoined from
using the Marlboro, Parliament and Virginia Slims trademarks in meta-tags and from using
these marks, logos and images of the Marlboro Man on its websites.
Philip Morris USA Inc. v. Veles Ltd., et al, (S.D. N.Y. April, 2009).
www.tsmp.com
Page 5
AP Countersues Fairey Over Obama Poster
Our Winter 2009 Update featured a poster created by street artist Shepard Fairey entitled
“Obama Hope”, which Fairey admits he based on an Associated Press photograph. Fairey
filed a preemptive suit seeking a declaration that his work is protected under the fair use
doctrine. In March, the AP countersued, claiming that Fairey’s “computerized paint by the
numbers” and “copy and paste style” constitutes blatant copyright infringement. Fairey
contends that he transformed the photo into a “stunning, abstract and idealized visual
image that creates a powerful new meaning and conveys a radically different message”.
The AP contends that the poster retains the heart and essence of its photo. It argues that the
fair use doctrine cannot be contorted to permit Fairey to wholly replicate a photographer’s
prescient photograph and export it for his own commercial benefit.
How the court will address the fair use doctrine in this context is of special interest since
digital technology has made it easier to locate and modify images.
Fairey, et al v. The Associated Press, (S.D.N.Y. 2009).
While not the subject of a lawsuit yet, the website http://obamiconme.pastemagazine.com lets you upload your own
image and turn it into a Shepard Fairey-type picture.
Copyright Office Publishes Terms/Rates for Sound
Recordings Used by Webcast
The Copyright Office recently published three agreements that set forth the terms and rates
for performance and copying of sound recordings by public broadcasters or small commercial
webcasters. Eligible webcasters can choose to comply with the terms of these agreements
as an alternative to those determined by the Copyright Royalty Judges.
Small Broadcasters
• Royalties include a $500 annual fee for each individual channel and a per
performance rate of $.0008 beginning in 2006 and increasing to $.0025 by 2015;
Small Webcasters
• The royalty rate is the greater of 10% of the webcaster’s first $250,000 in gross
revenues and 12% of any gross revenues exceeding $250,000 on any transmission
not exceeding 5,000,000 aggregate tuning hours per month or 7% of the
webcaster’s expenses during the year.
These rates are in effect from 2006-2015.
Notification of Agreements under the Webcaster Settlement Act of 2008, 74 F.R. 9293 (March, 2009).
Page 6
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Hot News Doctrine Applied to the Internet
Hot news is time sensitive news that is gathered at a cost, which a competitor reproduces, free-riding on the original
news-gathering organization’s efforts. Plaintiff The Associated Press (AP) is one of the world’s oldest news organizations.
Defendant All Headline News Corp. (AHN) is an online venture that disseminates news reports to customer websites,
including breaking news. AHN does no original reporting. Its employees find news stories on the Internet and rewrite or
copy the stories after removing identification of the AP as author. It distributes these articles to paying clients’ websites.
The AP sued AHN for violations of the Lanham Act, Copyright Act and Digital Millennium Copyright Act (DMCA), alleging that
it engaged in “free riding” on the AP’s news articles.
The Court rejected AHN’s argument that the claim for misappropriation of “hot
news” is preempted by the Copyright Act. It ruled that hot news misappropriation
is a branch of the unfair competition doctrine not preempted by the Act. This
is believed to be the first time the “hot news” doctrine has been applied to
Internet content. The AP also claimed that AHN violated the DMCA by removing
or altering copyright management information from its news reports. The Court
also rejected AHN’s argument that application of the DMCA is limited to digital
information or automated copyright protection.
The Associated Press v. All Headline News Corp., 2009 WL 382690 (S.D.N.Y.).
Scranton Edition s Alleged Misappropriation of
Obituaries is Not Hot News
The Scranton Times, a daily newspaper, sued Wilkes-Barre Publishing, which puts out the Scranton Edition, a competing
newspaper, for copying its obituaries. The suit contains numerous state law claims, including misappropriation, but no
claim for copyright infringement. Defendant sought to remove the case
to federal court, arguing that the claims were preempted by the Copyright
Act. The Court held that the misappropriation claim did not qualify as
“hot news” and thus was preempted. Although the obituaries were time
sensitive and the alleged copying constitutes free riding, defendant’s
actions did not threaten the existence of the Scranton Times.
Scranton Times, LP v. Wilkes-Barre Publishing Co., (M.D. Pa. 2009).
Owner of Gotham Batmen Mark Made Fraudulent
Representation in its Applications
Gotham City Networking, Inc. filed two applications for trademark registration, one for
the word mark Gotham Batmen and one for a design mark. Both applications were
for recreational services relating to sports teams. During the prosecution process,
Gotham City amended its applications to include “entertainment services in the
nature of softball, baseball, basketball and hockey games.” DC Comics opposed
the applications, arguing that Gotham City was not using the marks for the services
identified. Gotham City admitted that it had used the marks only for softball games.
It claimed that the amendment was an inadvertent mistake. The Trademark Office
invalidated the applications based on fraud, finding that specific intent is not required.
Fraud occurs when an applicant knowingly makes false material representations of
fact.
DC Comics v. Gotham City Networking, Inc., (T.T.A.B).
www.tsmp.com
Page 7
Fourth Circuit Affirms Plagiarism Detection
is Fair Use
Defendant operates an online technology program designed to evaluate the originality of written works to prevent plagiarism.
(Turnitin Plagiarism Detection Service). When a school subscribes to Turnitin, the student is required to submit his or her
assignment online and click on “I Agree” to the terms of the Clickwrap Agreement. Turnitin gives participating schools the
option of archiving the student works. Turnitin performs a digital comparison of the student’s work with content available on
the Internet, including student papers previously submitted and commercial databases of journal articles and periodicals.
For each assignment submitted, Turnitin creates an Originality Report suggesting a percentage of the work, if any, that
appears not to be original. The student plaintiffs’ suit alleged defendant infringed their copyrights by archiving their works
in the Turnitin database without their permission. The Fourth Circuit affirmed judgment in favor of defendant based on the
fair use doctrine. Fair use is a privilege given to others to use the copyrighted material in a reasonable manner without the
owner’s consent.
On appeal, plaintiffs argued that defendant’s use of their works cannot
be transformative because the archiving process does not add anything
to the works. The Court explained that defendant’s use of their works
can be transformative in function or purpose without altering the original
work. Turnitin uses the papers for an entirely different purpose, namely,
to prevent plagiarism. Plaintiffs also argued that the archiving affected
the potential market for their works. Plaintiffs’ most plausible theory was
that the archiving impaired the sale of papers to high school students
in the market for unpublished term papers. The Court recognized that
archiving could impair the marketability of such works to student buyers
intending to submit work they did not author without being identified
as plagiarists. However, plaintiffs testified that they would not sell the
works at issue to other students for this purpose because this would
make them a party to cheating and would encourage plagiarism. The
Court held that no market substitute was created by defendant, whose archived student works do not supplant the plaintiffs’
works in the “paper mill” market so much as merely suppress demand for them by keeping record of the fact that such works
had been previously submitted.
Vanderhye v. iParadigms, LLC, 2009 WL 1015145 (4th Cir.).
Mattel s $100 Million Verdict in Bratz Case
is Upheld
Last summer, Mattel obtained a $100 million verdict against MGA Entertainment, the maker
of Bratz dolls, for misappropriation of trade secrets, copyright infringement and related claims.
MGA had argued that the jury’s multiple awards were duplicative and the verdict should be
limited to $20 million. This week, the Court upheld the verdict, stating that the evidence could
have easily sustained a verdict many times this amount. While the Court had allowed MGA to
continue to sell Bratz dolls through this year, it must now cease all production and licensing
activity. A temporary federal receiver will take control of the Bratz brand and MGA’s assets.
MGA has said it will appeal.
Bryant v. Mattel, Inc., (C.D. Cal. April, 2009).
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Ninth Circuit Upholds Infringement Even Though
Plaintiff Waited Six Years to Sue
Both parties are Internet Service Providers offering Internet access,
e-mail and web-hosting. Plaintiff Internet Specialties West has used
the domain name ISWest.com since 1996. Defendant used the domain
name ISPWest.com since 1998. Plaintiff became aware of defendant
in late 1998 but at that time defendant offered only dial-up Internet
access and only in Southern California. Plaintiff was not concerned
about competition at that time because defendant did not offer DSL
and because many Internet technology start-ups were expected to go
out of business. Defendant expanded nationwide in 2002 and began
offering DSL in mid-2004. Plaintiff filed a trademark infringement suit
in 2005, alleging that use of the name ISPWest infringed its mark. A
jury found defendant liable for infringement and the court issued an
injunction against use of the name after determining that defendant did not have a laches defense.
On appeal, defendant argued that an improper jury instruction on infringement was given and that the court erred in finding
that plaintiff’s claim was not barred by laches. While the jury instruction for trademark infringement listed the eight factors
courts use to determine likelihood of confusion, it also stated:
In an Internet case such as this one, the law considers three of these factors to be of greatest
importance: (i) similarity of plaintiff’s and defendant’s mark; (ii) relatedness of services; and (iii)
simultaneous use of the Internet as a marketing channel.
The Court held that the jury instruction was proper because the Ninth Circuit places greater importance on these “Internet
Troika” factors in Internet cases.
The defense of laches means that a plaintiff cannot sleep on its rights. Defendant must show that plaintiff’s delay in
bringing suit was unreasonable and that it was prejudiced by the delay. The Court held that the limitations period for laches
starts when plaintiff knew or should have known about the likelihood of confusion between its mark and defendant’s mark.
It held that the district court erred in finding that the period for measuring laches began in 2004 rather than in 1998, when
plaintiff gained actual knowledge of defendant’s existence. While defendant did not offer DSL in 1998, this was a natural
growth of its existing business. Plaintiff was not entitled to wait until defendant’s business grew large enough to constitute a
real threat and then sue. Although the district court erred in finding that plaintiff acted diligently, defendant must still show
prejudice resulting from plaintiff’s unreasonable delay in filing suit. Defendant could not demonstrate prejudice because it
did not spend the time developing brand recognition of its mark. Its advertising took the form of “pay-per-click” ads, through
which potential customers are funneled to its website based on their interest in a particular type of service. Such ads create
little to no brand awareness and most did not even include the ISPWest name. The dissent argued that the majority’s view
of prejudice represents a defiance of Ninth Circuit precedent.
Internet Specialties West Inc., v. Milon-DiGiorgio Enterprises, Inc., et al., 559 F3d 985 (9th Cir. 2009).
Jury Returns Judgment of $13 Million Against
Transamerica Life for Patent Infringement
An Iowa jury determined that Transamerica Life Insurance infringed
a business method patent held by Lincoln National Life involving a
computerized method for administering a variable annuity benefit plan and
awarded Lincoln National $13 million in damages.
Lincoln National Life Insurance Co. v. Transamerica Life Insurance Co., et
al., (N.D. Iowa 2009).
www.tsmp.com
Page 9
Starwood Sues Hilton for Theft of Trade Secrets on
Massive Scale
On April 16, 2009 Starwood Hotels sued Hilton
Hotels and two former Starwood executives in New
York Federal Court declaring, “This is the clearest
imaginable case of corporate espionage, theft of
trade secrets, unfair competition and computer
fraud.” Starwood spent years studying customer
preferences, including fabrics, room lighting, food
choices and social trends, to develop a “luxury
brand profile”. Starwood alleges that its former
President and Sr. Vice President of its luxury
brand group, Klein and Lalvani, smuggled out
more than 100,000 files containing Starwood’s
most competitively sensitive information when
they left to work for Hilton and that Hilton used the stolen trade secrets
to launch a competitive hotel chain based on the costly research done
by Starwood. The complaint contends that the men stole strategic
development plans, training materials and marketing studies
for Starwood’s luxury brand line, including the St. Regis and
W Hotels. Included in the alleged theft was a concept known
as the “zen den” that Starwood plans to use at W Hotels. The luxury chain that Hilton
is preparing to roll out is called the Denizen Hotels.
Starwood learned of the alleged theft during a dispute over Hilton’s recruitment of eight other Starwood employees. In
preparation for the arbitration, Hilton’s in-house counsel discovered a large volume of documents in possession of Klein and
other employees. Hilton’s counsel mailed eight boxes of computer hard drives, zip drives and paper records to Starwood
with a letter stating that the material appeared to be neither sensitive nor confidential but that Hilton was returning it in
an abundance of caution. These materials included Starwood’s blueprints for building a “Brand in a Box”. The complaint
includes claims for misappropriation of trade secrets, theft, breach of contract, breach of fiduciary duty and violation of the
Computer Fraud and Abuse Act.
While Hilton had announced that it was moving forward with the launch of its Denizen Hotels, it has put this plan on hold
now that it received a federal grand jury subpoena relating to the alleged theft.
Starwood Hotels & Resorts Worldwide, Inc., v. Hilton Hotels Corp., Klein and Lalvani, (S.D. N.Y. April, 2009).
Dell Moves to Cancel Netbook
Trademark as Generic
PC maker Psion Teklogix obtained a federal trademark registration for the term
“Netbook” in 2000 and has issued cease and desist letters to other PC makers,
bloggers and retailers, demanding that they cease using the term. Dell filed a
Petition for Cancellation with the U.S. Patent & Trademark Office, arguing that the
term “Netbook” has become generic for small and inexpensive laptop computers
and is no longer entitled to trademark protection.
Intel also filed a lawsuit seeking a declaration of non-infringement and cancellation
of the Netbook trademark registration. Psion counterclaimed for trademark
infringement and unfair competition.
Netbook
Page 10
Intel Corp. v. Psion Teklogix Inc., (N.D. Cal. 2009).
www.tsmp.com
NEW SUITS
Pony Claims Nike Ads Infringe Its Chevron Mark
Pony owns federal trademark registrations in a V-like chevron used on its athletic
shoes for 35 years. Nike recently launched an ad campaign using the slogan, “V is for
Victory”. Pony filed suit against Nike, alleging that the key feature in the ad campaign
is the use of a chevron mark virtually identical to its registered trademarks, which is
likely to cause confusion among consumers and dilute its mark.
Pony, Inc. v. Nike, Inc., (S.D. Cal. April, 2009).
Beloved Australian Cookie Imitated
by Krispy Kreme
In Australia, Arnott’s Iced Vo Vo cookie featuring pink icing, coconut sprinkles and
raspberry jam has been hugely popular and its Prime Minister even mentioned the
cookies in his victory speech. Krispy Kreme’s Australian stores started selling Iced
Dough-Vos, part of a line of Australian-themed donuts filled with raspberry jam and
topped with pink icing and coconut.
Arnott has owned trademarks in Iced Vo Vo since 1906 and recently sent a cease
and desist letter to Krispy Kreme. Krispy Kreme concedes that its donut was
designed to pay homage to a classic Australian product but will continue to sell
them.
Anthropologie Accused of Copying Floral
Prints for Use in Rug
Plaintiff’s Art
Anthropologie’s
Colossal Bloom Rug
Plaintiff owns copyrights in art books containing images
of flowers. Her work was on display at the New York Artist
Book Fair, attended by representatives of Urban Outfitters,
Anthropologie’s parent company. Plaintiff alleges that Urban
Outfitters surreptitiously took pictures of her work at the fair
with digital cameras and cell phones and subsequently used
them to create Anthropologie’s Colossal Bloom Rug.
Happersett, et al. v. Anthropologie, Inc., (E.D. N.Y. April,
2009).
www.tsmp.com
Page 11
Coppertone Sport Disputes Claims of Neutrogena
Ultimate Sport Suntan Lotion
Coppertone first introduced its Sport line of suntan lotions in 1992.
This is the first summer season that Neutrogena has advertised its
Ultimate Sport suntan lotion. Neutrogena advertises its Ultimate Sport
sun protection products as containing a patented technology called
“Helioplex”. Coppertone claims that Neutrogena falsely advertises
that products with Helioplex are the only sun protection products that
prevent certain harmful ultra-violet A rays (UVA) from penetrating the
skin. It contends that the following statements made by Neutrogena
are literally false:
• Without Helioplex, a sun protection
product provides no UVA and/or SPF
protection.
• It’s in-store displays entitled “Superior
Sun Protection” state that without
Helioplex, UVA rays are able to penetrate into the skin.
• That Ultimate Sport is the best line of sport protection available with sunscreen fortifiers.
Coppertone claims that its Sport products offer UVA and SPF protection
that exceeds or is comparable to Ultimate Sport.
Coppertone’s suit for false advertising seeks to enjoin all marketing containing these
claims, including recalling the products and advertising, and seeks Neutrogena’s profits
and damages for diverted sales and loss of goodwill.
Schering-Plough Healthcare Products, Inc. v. Neutrogena Corp., (D. DE. April, 2009).
Tressler, Soderstrom, Maloney & Priess, LLP
If you have any questions concerning this bulletin or Tressler’s
Intellectual Property Practice Group, please contact:
Jacqueline A. Criswell
Page 12
312/627-4003
jcriswell@tsmp.com
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Suite 1510
Newark, NJ 07102
973/848-2900
Fax 973/623-0405
305 West Briarcliff Road
Bolingbrook, IL 60440
630/759-0800
Fax 630/759-8504
One Penn Plaza
Suite 4701
New York, NY 10119
646/833-0900
Fax 212/971-6263
3070 Bristol Street
Suite 450
Costa Mesa, CA 92626
714/429-2900
Fax 714/429-2901
2100 Manchester Road
Suite 950
Wheaton, IL 60187
630/668-2800
Fax 630/668-3003
1901 Avenue of the Stars
Suite 450
Los Angeles, CA 90067
310/203-4800
Fax 310/203-4850