Geekview IP Week in Review

Posted by | August 14, 2011 | Disputes, Geekview IP recap, General | 2 Comments

Comcast missed the goal when the Court declined to restrain DirecTV

Soon on Sunday, they’ll all be watching football.  For now though the game is being played out in federal court.  As I wrote about in last week’s Geekview, Comcast recently filed a false advertising lawsuit against DirecTV.  The federal lawsuit alleges that DirecTV’s “No Extra Charge NFL Sunday Ticket” promotion is false and misleading.  As part of its Complaint, Comcast asked the court to order DirecTV to bench its NFL Sunday Ticket ads.  On Tuesday, August 9, 2011 the Court heard oral arguments in the case and declined to call foul on DirecTV, whose ads are allowed to continue running while the parties engage in expedited discovery, as per the court’s August 9 Minute Order.  Meanwhile, there are football heroes and there are Band Heroes (there are?) . . .

Maroon 5’s Adam Levine tells Activision he’ll decide who’s the hero . . .

Adam Levine filed a lawsuit alleging fraudulent inducement, breach of contract, right of publicity violations and unfair business acts or practices.  Apparently, Levine licensed his image and likeness to Actvision for use in connection with his performance of the song, “She Will Be Loved” on its Band Hero game.  According to a recent article from Hollywood, Esq., the Band Hero game also includes features Levine did not approve, such as the ability of players to make his avatar sing, dance and perform other songs by other artists, sometimes in the voice of someone else.  I can see it now — Levine’s avatar singing like Kermit the Frog while dancing the Macarena . . .


At least with all that singing and dancing his Avatar will stay out of trouble, unlike a Sacramento man who’s about to head to federal prison for copyright infringement . . .

Yup, that’s right.  Our federal tax dollars are hard at work keeping dangerous copyright infringers off the streets of Sacramento.  Oh yeah, and bootlegging CDs can land you in federal prison.  Yan Akhumov, a 46 Sacramento man found all this out the hard way when he got caught (not once, but twice) selling infringing CDs and DVDs at his Sacramento area Music Land stores.  Having told Akhumov to stop infringing in 2007, the FBI then searched his business in July of 2009 and found more than 80,000 pirated DVDs and CDs worth between $70,000-$120,000.  Since all the infringing goods were seized in the raid, Akhumov won’t even have a good video collection when he comes home (be he didn’t think about that, now did he?).  And on that note, we all need to get away from home sometimes . . .

We go up, we go down, we go to court . . . 

First Descents is an outdoor adventure camp that provides free week-long experiences to young adult cancer survivors.  Founded by professional kayaker, Brad Ludden in 2001, it has operated under the FIRST DESCENTS mark since that time.  The FIRST DESCENTS mark was federally registered for “a motivational kayak camp for people with cancer” in March, 2003.  Eddie Bauer owns registrations for FIRST ASCENT for apparel, FIRST DESCENT for apparel, and FIRST ASCENT (& design) (shown above) for apparel and empty plastic water bottles.  Although the First Descent camp offered apparel bearing the FIRST DESCENT mark since its inception it waited until 2008 to apply to register FIRST DESCENT for apparel, by which time Eddie Bauer already was in line at the USPTO, and First Descents trademark registration application for apparel got denied based on EDDIE BAUER’s registrations, despite the fact that First Descents was first to use the FIRST DESCENT mark on apparel.  Being unable to resolve the issue amicably, or through some form of athletic prowess, First Descent sued Eddie Bauer for trademark infringement and unfair competition, using private funds from its board of directors.  Meanwhile, First Descent’s not the only one frowning . . .

Frownies’ spokes model sued for facelift . . .

Let’s see, Kris Jenner accepts $305,000.00 to be a spokes model for Frownies anti-wrinkle cream for a period of one year and then two months later she goes and gets a facelift.  Doesn’t show much confidence in the product does it?  Well, maybe she was just in a rush.  Regardless, B&P, which owns the FrownieS brand, sued Jenner for damages in excess of $2,000,000.  This just may end up being world’s most expensive facelift.  Speaking of expensive, legal education is notoriously expensive and now some new lawyers are fighting back . . .

You trained me how to sue, and now I’m suing you!

 

 

 

 

 

 

Recent graduates of three different law schools, Thomas Jefferson School of Law, Thomas Cooley School of Law and New York School of Law, have filed lawsuits (2 of which are class actions) against their Alma matters claiming that the schools fraudulently inflated post-graduation employment and salary statistics to lure students to attend their institutions.  The complaints allege that the schools published information making their placements look far better than they actually are.  I gotta say, suing the law school from which you just graduated probably is not the best way to land your first law job.

Law jobs will never be as lucrative as reality TV.

JWOWW is the stage name of Jenni Farley, whose life is featured on the reality TV Series Jersey Shore.  JWOWW recently launched her own suntan lotion line in connection with the company Australian Gold, the design of which allegedly infringed upon the copyrights owned by Oklahoma company Phigogam, which claims the JWOWW product design infringes 4 registered copyrights owned by Phigogam, LLC Partner, Wesley Cox (VA0001772116VA0001775426, VA0001775424 & VA0001775425).  I have a sneaking suspicion JWOWW’s gonna get bronzed on this one.  And finally, in other colorful news:

Judge kicks Louboutin trademark claims to the curb . . .

The Southern District of New York punted Louboutin’s motion for preliminary injunction, finding that Louboutin did not prove likelihood of success on the merits of  its claim, as required for a preliminary injunction.  The Court stated:

In sum, the Court cannot conceive that the Lanham [Trademark] Act could serve as the source of broad spectrum of absurdities that would follow recognition of a trademark for the use of a single color for fashion items.  Because the court doubts that Louboutin possesses a protectable mark [despite federal registration thereof], the Court finds that Louboutin cannot establish a likelihood that it will succeed on its claims for trademark infringement and unfair competition under the Lanham Act.  The court also stated that it felt there was enough evidence in the record to grant YSL’s counterclaims to cancel Louboutin’s red soled trademark registration on a motion for summary judgment.  Since no such motion currently is pending before the court, the court ordered the parties to show cause why it should not be.  I’m sure Louboutin’s attorneys are kicking themselves, while YSL must be jumping for joy.

Until next week . . .

 

About Lara

Lara Pearson is a trademark attorney with Exemplar, where she also serves as the firm's Sustainability Steward. Lara's legal practice focuses on trademark and copyright law, including: intellectual property audits; trademark search & clearance; trademark and copyright registration & maintenance; intellectual property transfers; transactional work; and dispute resolution, including litigation when necessary. Lara primarily represents other social enterprises -- those leveraging their businesses and brands as catalysts for positive social and environmental change. Such businesses engage in CSR (Corporate Social Responsibility) to have a positive "triple bottom line" of people, planet and profit. As Exemplar's Sustainability Steward, Lara works with others in her law firm to measure and reduce the firm's carbon emissions and encourage engagement in social responsibility initiatives, including pro bono legal work and volunteering. Lara is a proud member of the Social Venture Network. Brand Geek is a member of 1% for the Planet and a Certified B Corporation, whose Incline Village office is certified under the regional Keep the Sierra Green program. Exemplar Companies is the most innovative professional services firm in the New Economy. Our unique, diversified expertise spans the disciplines of corporate law, business advisory, and capital/investment banking to better meet the needs of our high-potential customers. We have assembled a comprehensive suite of service to meet the complex issues facing companies in today’s challenging business environment. Our unique, holistic approach ensures the growth and success – and greatly increases the competitive advantage - of our customers. The Exemplar team is comprised of knowledgeable, highly skilled experts in a wide range of industries and disciplines. They work closely with our customers to provide trusted advice, incomparable support, expert guidance and the ultimate competitive advantage as they accelerate their businesses and position themselves to transform industries.

2 Comments

  • Kinda surprised Louboutin lost that argument!

    • Lara says:

      It is rare that a court says “despite secondary meaning and a TM registration we don’t think you have any rights,” but I think a lot of weight was given to two facts: (a) Louboutin was not the first to offer red soled shoes (just the first to seek TM protection for them) and (b) Louboutin’s alleged rights are to a specific Pantone color red, which the court essentially found too similar to other shades of red to enforce.

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