Geekview IP Weeks(ish) in Review

Posted by | February 21, 2012 | Disputes, Geekview IP recap, General | No Comments

Are suing students doomed?

If you paid $100,000.00 for law school & couldn’t find a job you’d want to find someone to sue, wouldn’t you?  But is that really a smart career move?  According to an article on CollegiateTimes, more than 70 students are suing 15 different law schools for falsely advertising their success at job placement.  The first case was filed by Alan Alaburda against Thomas Jefferson School of Law , which I wrote about hereThomas Cooley, New York Law School and Golden Gate University School of Law also were sued last year and 11 more cases were filed during January, 2012 according to an article posted by the non-profit organization Law School Transparency.  I imagine these law school grads will forever be branded with a scarlet L for litigious.  I mean, what law firm or company is going to want to hire someone who essentially sued the folks at their last gig?  Maybe it doesn’t matter though.  Maybe these law students will be set for life after their class action settlement checks arrive.  Though somehow, I doubt it. What I don’t doubt is that a motion to dismiss for lack of standing is coming soon . . .

 

Icons can never relax.

If you can’t beat them with a stick, take them to court.  Relax-a-cizor Products, Inc. (dba The Stick/RPI of Atlanta) sells a group of exercise accessories (massage sticks) under the brand The Stick.  Fitness retailers Gold’s Gym contracted with Icon Health & Fitness, Inc. to manufacture Gold’s Gym branded massage sticks.  According to the lawsuit that Icon filed against Relax-a-cizor, Relax-a-cizor threatened suit against Gold’s Gym for the massage sticks manufactured by Icon, causing Icon reasonable apprehension of being sued, so Icon sued Relax-a-cizor for declaratory judgment of non (trademark) infringement.  Gold’s Gym is not a plaintiff in the case and I’m not so sure Icon’s apprehension of being sued for trademark infringement is reasonable since it did not receive a C&D letter from Relax-a-cizor.  At least that’s what I would argue if I represented Relax-a-cizor.  And in other exciting declaratory judgment actions . . .

EA fights for its right to use Bell helicopters.

Electronic Arts (EA) flies in the face of conventional wisdom by filing suit against Textron for declaratory judgment of non (trademark) infringement.  Conventional wisdom — of course — says don’t mess with Textron.  Textron makes products (helicopters) for the military that could obliterate your business in the blink of an eye.  According to EA’s lawsuit against Textron, EA is seeking a declaration from the court that its depiction of Textron’s AH-1Z, UH-1Y and V-22 helicopters in its Battlefield 3 video game do not infringe upon Textron’s trademark or trade dress rights.  I suspect EA will win this battle because I don’t think anyone could interpret EA’s use of images of Textron aircraft as a trademark use.  I also suspect that Anchor Motors is going down . . .

Anchor Motors in hot water for selling fake Harley truck.

According to an article in the tremendously useful Reader’s Watchdog column on DesMoinesRegister.com, a gentleman named Jim Stone gave Anchor Motor Company Inc. $32,000 in cash for a 2008 Harley-Davidson limited edition Ford F-250 to haul his $47,000 Harley-Davidson motorcycle around.  Why he would want to haul his motorcycle around instead of riding it beats me, but it was Stone feeling beaten that led to this case.  Apparently, Stone learned after-the-act that what he bought wasn’t actually a Harley Ford F-250.  Rather, it was a Lariat painted like a Harley truck.  While the article states that Stone filed a complaint with the Consumer Protection Division of the Iowa Attorney General’s Office, I imagine Anchor has or will have an even bigger problem with Harley-Davidson, which probably won’t be too pleased to learn of Anchor’s sale of a counterfeit Harley truck.  If only Stone could click his heels together three times and say “I want a real Harley truck.”

Studios battle in the Land of Oz.

Sometimes the TTAB feels like the mysterious Land of Oz from the book The Wonderful Wizard of Oz, which was written by L. Frank Baum in 1899(!).  The copyright in the original work is in the public domain, but Warner Bros. is vying against Disney for the rights to federally register several OZ related marks.  Warner owns the rights in the 1939 film The Wizard of Oz, while Disney plans to release a new film titled Oz: The Great and Powerful in 2013.  Warner (under its Turner Entertainment Co. division) owns 31 LIVE USPTO trademark registration records for marks with OZ in them, including 16 registered marks and 15 pending applications.  Of those pending applications, 9 are for THE GREAT AND POWERFUL OZ, 8 of which were filed on October 28, 2011.  Warner/Turner’s October applications were suspended based on 7 applications filed by Disney for OZ: THE GREAT AND POWERFUL.  Disney’s applications were filed just one week before Turner’s, and they all were refused last week based on Turner’s prior registrations for its various OZ marks.  According to an article on Hollywood Reporter’s Hollywood, Esq., Warner Bros aggressively files trademark Oppositions before the Trademark Trial and Appeal Board of the USPTO, especially over The Wizard of Oz properties.  I think it’s going to take more than an army of flying monkeys to get this mess sorted out.  Some IP disputes just make me say G whiz . . .

Guess and Gucci fight over G.

I guess Guess is gonna have to defend itself.  To show its love for the parties to this lawsuit on Valentine’s Day, the court granted Guess’s summary judgment on Gucci’s dilution claims relating to its “Square G” and Quattro G” designs, while denying its other summary judgment claims, forcing the case to continue.  Guess won a small battle in a much, much, much larger war.  This war commenced on May 6, 2009 and the summary judgment order marked its 199th docket entry in the case.  Half way to trial and neither side seem to want to budge.  No wonder Guess is kicking and screaming (in the form of motion practice) in hopes of getting Gucci’s case dismissed.  It can’t possibly expect to outspend Gucci and take a look Exhibit E from the Court’s Order:


My guess?  Guess is gonna get its butt kicked.  Presuming, of course, that the Gucci designs are protectable trade dress, which I suspect Gucci can prove them to be through survey evidence.  Good grief!  What was Guess thinking?

Few IP cases nowadays are tried solely in the courtroom.  Even disputes that never make it to court — like those involving “private” correspondence or complaints to state agencies — are tried in the court of public opinion.  Business people and their counsel need to take that into consideration when planning enforcement and defense of their IP.

 

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.

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