Geekview IP Week in Review

Posted by | September 25, 2011 | Disputes, Geekview IP recap, General | 4 Comments

Traverse City Shorts traverses Traverse City Film Festival.
 
Though its name is longer, the shorts festival features films that are shorter than feature films (films that are 40 minutes or longer).  Yup.  According to the complaint, Traverse City Film Festival (TCFF) is a non-profit that has conducted a well-known film festival in — you guessed it — Traverse City, Michigan, under the TRAVERSE CITY FILM FESTIVAL® mark and the logo depicted above since 2005.  The Traverse City Film Festival also shows shorts, 59 this year alone.  Defendants are a married couple, Daniel and Laura Martone, who offered their first film festival September 15-18 this year under the marks TRAVERSE CITY SHORT FILM FESTIVAL and the TRAVERSE CITY SHORTS FESTIVAL.  The Martones have yet to file an Answer, so we’ll have to wait and see which party comes up short on this one while we also watch to see if Red Rover comes over . . .

ROVER RESPOND’R’s owner is peeved at United Animal Nations!

Wag’N Enterprises isn’t going to let United Animal Nations (UAN) jerk its chain.  Wag’N has sold WAG’N ROVER RESPOND’R pet emergency services since July 2008 and has rights in its mark stemming back to April 18, 2008, thanks to the handy intent to use registration process.  UAN changed its name to REDROVER RESPONDER on June 11, 2011.  Wag’N initially tried to play nice, but when its letters went unanswered it filed suit.  I’m calling Wag’N the top dog in this one, while in the next one it’s BMI . . .

Lady Godiva’s Showgirls stiff BMI.

BMI (Broadcast Music Inc) owns and licenses public performance rights to lots and lots and lots of music — approximately 6.5 million tunes, according to the complaint BMI filed against Lady Godiva’s and Mark London.  London owns Lady Godiva’s in Grand Rapids, MI.  A search for “Lady Godiva’s Grand Rapids” on Google’s search engine provided numerous results for Lady Godiva’s Showgirls.  But showgirls and adult entertainment aren’t allowed in Grand Rapids, according to Wood TV 8  — yes, really — which covered the story on Tuesday, stating that London claims BMI re-classified Lady Godiva’s as adult entertainment in order to charge it higher licensing fees.  I don’t know, Mr. London: showgirls and entertainment seem to go hand in hand and it does not appear that you have the upper hand in this one.  You have to hand it to – The Women’s Zionist Organization of America for protecting their mark . . .

Hadassah disapproves of Esther Hadassah Cosmetics.

Hadassah The Women’s Zionist Organization of America, Inc. (Hadassah), is a women’s volunteer organization whose members promote the unity of the Jewish people by initiating and supporting health care, education and youth institutions, and land development in Israel.  Hadassah owns three U.S. federal registrations for its HADASSAH word mark as well as one for the logo shown above and several others for other logo marks incorporating the English and Hebrew words for HADASSAH for a wide variety of goods and services.  Yudith Esther Alvarez recently launched a cosmetics line under the mark Esther Hadassah and after ignoring the Zionist’s C&D letters caused them to file suit against her to protect their marks.  Yudith, couldn’t you have been a bit more creative in selecting a mark?  At least you’re not the only defendant lacking in creativity . . .

Tony Chachere busts Big Easy for taking the easy way out on packaging design.

Think these packages came from the same company?  Think again.  The one on the left belongs to plaintiff, Tony Chachere’s Creole Foods of Opelousas, which only sounds made up, it actually really exists.  Not only is it a real company, it’s a successful one as well, from 2003 to 2011, gross sales for TONY CHACHERE’S branded products sold in its distinctive trade dress shown above totaled in excess of $230,000,000.00.  So what’s up with the package on the right?  Well, that one came from Chachere’s former licensee, Big Easy Foods, which informed Chachere on April 11, 2011 that it intended to transition from TONY CHACHERE’s brand to its own brand commencing in July, 2011.  Looking at the packaging it’s not clear what Big Easy came up with apart from stealing its former licensor’s trade dress.  Infringement is never good idea, but infringing on the rights of your former licensor is even more foolish, since they’ll likely have an additional cause of action for breach of contract against you, just as Chachere alleged in the lawsuit it filed against Big Easy last week.  Sure makes Big Easy look like a shrimp.  Nikki Finke’s seeks to flex her muscle by taking on The Hollywood Reporter . . .

Penske Media Corp sues Hollywood Reporter for being slow.

 

In a rather strange complaint for copyright infringement, Penske Media Corp (PMC), which owns Deadline.com (Deadline Hollywood) details 28 instances of what it characterizes as THR‘s (The Hollywood Reporter’s) “Stealing Deadline’s Original News Stories.”  The complaint devotes 15(!) pages to describe 28 occasions between June and September, 2011 on which THR wrote about the same stories as Deadline Hollywood, each of which THR allegedly published shortly after Deadline Hollywood posted its stories on the same subject to its website.  What’s odd is the fact that the complaint lists no copyright registrations for these stories, which is pretty peculiar, since copyright registration is a requirement for standing to sue for infringement.  The complaint does assert a pending copyright registration application that it submitted for the source code of another PMC website, TVLine.com, which it claims THR also infringed.  But why devote 14 pages of a 31 page complaint to non-actionable alleged infringements?  My guess is PMC did so in order to publicly attack THR without the risk of drawing a defamation claim.  Interesting tactic, PMC.  But, I’m not so sure that you did yourselves any favors, as federal court judges tend frown upon on wasting time on superfluous facts.  I doubt this one will get much past the pleading stage, although one never knows.

A wise colleague recently told me that capitalism cannot exist without trademarks.  Before you say “look where capitalism got us,” please note that I’m not talking about the greedy out of control corporate interests that currently masquerade as capitalism in the country, but textbook capitalism where supply and demand rule the day.  About that, I think he’s right.  What do you think about it?

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.

4 Comments

  • Mike Lyons says:

    Something not mentioned in any article so far is that not only did we own/distribute these products before Tony’s came along but we also designed the packaging they were distributed in. The only thing that belongs to Tony’s in this case is their logo and background color. They’re attempting to lay claim to all of the work we did while we were paying them to use their name. It’s just corporate greed, plain and simple.

    • Lara says:

      I understand that Big Easy Foods designed the packaging for both companies. Let’s see if I understand you correctly —

      The packaging in dispute was used by Big Easy on Big Easy branded products first. Big Easy then ceased manufacturing its own products while under license with Cachere’s, at which time Big Easy allowed Chachere’s to packaging in dispute for its products. Once the Chachere’s license was terminated, Big Easy resumed use of its original packaging. Is that about right?

      If so, I think you’re in trouble.

      US TM rights in are use based. If you ceased use of the packaging while Chachere’s engaged in exclusive use of it, with your knowledge, I don’t see how you can claim you maintained rights in it. Plus, I have to presume that doing so would violate your license agreement, though I have not reviewed that (it is in the Exhibits to the complaint I uploaded to Scribd, linked above).

      Sounds like either way, you’re in trouble.

      But then again, I am open to correction . . .

  • While I can see how you would assume this information to be true, assuming still leaves you open to correction. Big Easy Foods has always produced the product for Tony Chachere’s and Tony’s themselves has never had a frozen product. For more info, please see the official statement.

    http://www.bigeasyfoods.com/news

    • Lara says:

      Thanks for reading my post and for providing a link to Big Easy Foods’ official statement, Michael. And, of course, I can be corrected.

      Unfortunately, your company’s official statement does not clear anything up for me. The statement mentions that, “Big Easy Foods has been manufacturing [its own] line of products created from [its] own proprietary recipes years before we entered into the [licensing agreement with] Tony’s Chachere Branding,” and that since it’s inception it’s manufactured a line of products including, “stuffed chickens, single-serve frozen entrées, wild-caught Gulf shrimp, tur-duck-hens, and a host of other entrée products.” No offense, but so what?

      None of that addresses the trademark infringement claims. A visual inspection of each company’s product packaging (contained in the Chachere Complaint Exhibit 10 on pages 110-127 ) reveals that they are identical, save the color (yours is red, theirs is green) and the brand names, which, though different, appear in the same location and color on each party’s packaging. I have a hard time buying that consumers would not be confused into thinking those products come from a single source. Lucky for you, I don’t get to decide.

      I look forward to following this case, starting with your Answer, which is due in a few weeks.

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