Trademarks and Brands

Fashion Brands Can’t Get a Royal Boost

In a rare precedential opinion, the Trademark Trial and Appeal Board (the “Board”) affirmed a refusal to register the trademark ROYAL KATE for use on cosmetics, handbags, bedding and apparel.  The Board found that this mark falsely suggests a connection with Kate Middleton, the Duchess of Cambridge and, more famously, wife of Prince William, and that it identified the Duchess without her consent.  The decision counsels fashion brands that the trademark office will not condone trading off of the fame of others, even when the mark sought is not such a person’s actual name. Continue reading

Embracing the International Television Market: Legal and Business Issues To Consider When Adapting and Exporting Television Formats

PART TWO

This is part two of this blog series. Part one can be found here.

Approvals/Controls

This is one of the threshold questions for producers seeking to adapt formats  – how much control, if any, will the originator of the format have over the adaptation? On one hand, the format originator has a creative and financial attachment to the original show; it is in its best interest that the format is treated sensitively, packaged appropriately and produced at a budget and quality level that will enable it to succeed – because if the adaptation fails, the “brand value” of the format could be tainted for the long-term. On the other hand, the adapting producer and its local production partners are probably best positioned to understand the tastes and culture of the target market and navigate any regulatory issues. Continue reading

Fan, Foe or Free-Rider: CDAS Defeats Cybersquatter that Sought to Capitalize on Celebrity Client’s Famous Name

Case Highlights Benefits of Trademark Protection and Potential Risks in Posing as a Fan Online

A growing and unsettling trend in the legal field of domain name disputes is the prevalence of domain registration for bad faith purposes, such as to bait the public into thinking that there is an association between a website operator and a famous brand or person.  Recently, Cowan DeBaets Abraham & Sheppard LLP (“CDAS”) brought a complaint under the Uniform Domain Name Dispute Resolution Policy (“UDRP” or “The Policy”) which demonstrated the potential pitfalls of this trend. In Sofia Vergara v. Domain Administrator, Fundacion Private Whois / Domain Admin, Whois Privacy Corp. / Guy Bouchard, WIPO Case No. D2014-2008, Sofia Vergara (“Ms. Vergara”), represented by CDAS, prevailed before the World Intellectual Property Organization (“WIPO”) Arbitration and Mediation Center, due to the demonstrated bad faith conduct of Fundacion Private Whois / Domain Admin, Whois Privacy Corp. / Guy Bouchard (collectively, Respondent) in their registration of the domain name www.sofiavergara.org (the “Domain Name”).

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Update: Michael Jordan’s Motion for Summary Judgment on Right of Publicity Claim Denied

This Blog is an Update to a Previous Post. To read the original post, please click here.

Jordan v. Jewel Food Stores, Inc., No. 10-c-340 (N.D. Ill. Mar. 12, 2015)

Following the Seventh Circuit decision that permitted Jordan to proceed and allege violations under Illinois publicity law against the supermarket chain Jewel-Osco, Jordan moved for summary judgment as to defendant’s liability under his Illinois Right of Publicity Act (IRPA) claim.  The U.S. District Court of Illinois denied Jordan’s motion for summary judgment for failing to establish that the commemorative add served the commercial purpose. Continue reading

Unanimous Supreme Court Decision Keeps “Tacking” in the Hands of Juries

On January 21, 2015, in its first substantive trademark ruling in more than a decade, the United States Supreme Court unanimously held that the question of “tacking” – a doctrine by which a brand owner may modify its mark overtime without disrupting its priority of rights – is a factual one, more appropriately suited for juries to decide, rather than judges.  In reaching its decision in Hana Financial, Inc. v. Hana Bank et al., No. 13-1211, the Supreme Court affirmed the Ninth Circuit’s refusal to overturn a jury verdict, squarely rejecting the petitioner’s arguments that “tacking” was a question of law that can only be resolved by a judge, and settling a split amongst several circuit courts across the nation. Continue reading

Shifting Injunction Standards in Copyright, Trademark Cases

Note: This blog is cross-posted from Law360.com with permission from Portfolio Media, Inc.

For decades, obtaining an injunction in a copyright or trademark case was simple: Show success on the merits (or likely success on the merits, at the preliminary injunction stage), and injunctive relief was usually automatically yours. Then, in 2006, the U.S. Supreme Court issued a ruling in a patent case called eBay Inc. v. MercExchange LLC, which upended the standard for obtaining injunctive relief in patent cases. Around 2010, appellate courts began to apply eBay to copyright cases; the past few months have seen the first instances of appellate courts’ application of eBay to cases under the Lanham Act.

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CDAS Partner Nancy Wolff’s Webinar Available Online

Recently, CDAS Partner Nancy Wolff hosted a webinar for the Digital Media Licensing Association which answered common questions about when you need releases when using visual images. The webinar is now available online for free, and is a useful resource for anyone publishing or displaying still or motion images and wondering whether permissions are needed from the subjects or property owners depicted in the content. The webinar footage can be found here.

No Presumption of Irreparable Harm for Lanham Act Injunctions, Says Third Circuit

In a recent decision, the Third Circuit announced that it would no longer presume irreparable harm for plaintiffs requesting preliminary injunctive relief for claims arising under the Lanham Act (see Ferring Pharmaceuticals, Inc. v. Watson Pharmaceuticals, Inc., No. 13-2290 (Aug. 26, 2014)).  Instead, claimants seeking to enjoin acts of trademark infringement or false advertising must bear their burden of establishing each of the four traditional injunction factors, namely: (1) a likelihood of success on the merits; (2) a likelihood of irreparable harm; (3) that the balance of the hardships favors the plaintiff; and (4) that the public interest would be served by the injunction’s issuance. Continue reading

Sticks, Carrots and Copyrights

Affiliate Marketing Providers Held Not Vicariously Liable for Third-Party Partner’s Infringements

Last month, in Sandy Routt, d/b/a sandybeachgifts.com, d/b/a Sandys Beach v. Amazon.com, Inc., the Ninth Circuit Court of Appeals dismissed claims seeing to hold Amazon.com vicariously liable for the copyright and trademark infringing activities of its affiliate marketing partners.

Amazon.com maintains a program in which third party websites agree to display a widget that contains advertisements for Amazon products. Amazon controls the content of the widget and enters into an agreement with each third-party site that displays it. In this case, affiliate websites allegedly used Routt’s copyright-protected photographs and displayed those photographs on their websites next to Amazon’s widget.  Rather than bring the individual direct infringers to court, Routt asserted that Amazon’s agreement with their affiliates, combined with the fact that Amazon derived financial gain from the relationship, gives rise to vicarious liability for those third parties’ infringement. The Ninth Circuit disagreed. Continue reading

Getting a Handle on the New Generic Top-Level Domains: Strategies for Brand Protection in the Era of New gTLDs

After years of intense discussion and debate, the new generic top-level domain names (known as gTLDs) are here.  And they have been popular:  when .club went live on May 7, 2014, over 32,000 domain names ending in .club sold in the first 24 hours, and nearly 30,000 more were sold over the next three weeks.

Whether these new names will have any staying power remains to be seen, but what is clear is that the new gTLDs can create new challenges for brand owners, and new solutions for cybersquatting problems are being put to the test.  This post will provide an overview and update on the new gTLDs and discuss ways in which brand owners can approach and manage rights enforcement as new domains continue to roll out. Continue reading