Geekview IP Weeks(ish) in Review

Posted by | April 10, 2012 | Geekview IP recap | No Comments

Siri can’t understand your command; how will she respond to class action lawsuits?

Siri sucks so much that people got their lawyers involved!  Two separate class action lawsuits were filed against Apple last month alleging false advertising of Siri — Apple’s voice-controlled iPhone software.  Both suits were filed in California, the first on March 6 and the second on March 27.  The suits allege damages for breach of warranty and unjust enrichment among other causes of action.  I can see why.  Just last week I listened to a guy in a restaurant in Bridgeport, CA asking Siri for directions to Lake Tahoe.  Repeatedly.  For 5 minutes.  His phone alternated between answering a totally different question and stating “I do not understand that command, the language you have selected is English.”  Initially humorous, the phone’s failure to perform the simple task of providing directions quickly grew annoying…  Siri can’t help you find Lake Tahoe, but hopefully she found herself good defense counsel.

Image from Apple.com

Meanwhile, Jack Russell probably wishes he had a bigger net . . . 

Dog vs Shark.

Image from GreatWhiteRocks.com

Some musicians wrestle demons.  This one wrestles sharks!  According to the trademark infringement, dilution & unfair competition lawsuit he filed against his former band mates and their talent agency on March 22, 2012, Jack Russell is the founder and lead singer of the musical group Great White, a 1980’s rock band that continues to perform today.  In fact, there are 2 GREAT WHITE rock bands performing today, which is what Russell seeks to stop.  As the sole remaining member of the original band, Russell claims that he is the only band member to exercise control over the quality of the groups’ service, giving him common law rights in the “Great White” trademark for a musical group and audio & video recordings.  His former band mates have been playing under the GREAT WHITE name while Russell recovered from surgery and they recently announced an upcoming GREAT WHITE album on which Russell will not be performing.  On these facts it sounds like Russell’s gonna win.  While there’s obviously another side to this story, the moral is that IP ownership is best addressed up front and in writing, especially when multiple parties are involved.  From sharks to pirates on the high seas of IP . . .

Copyright owners take on pirates.

The major content owners in the U.S. have teamed up with the leading Internet Service Providers (ISPs) to form a coalition aimed called the Center for Copyright Information (CCI).  CCI is aimed at deterring copyright infringement.  According to the CCI homepage, content theft costs 373,000 jobs and $16 billion in lost wages.  Are these figures what Rob Reid refers to as Copyright Math?

Funny math aside (yes, it’s a double entendre), the CCI can direct ISPs to issue Copyright Alerts that progress in severity per instance of infringement.  After 4 alerts, the ISP may institute “Mitigation Measures,” including among other measures: temporary reductions of Internet speeds or redirection to a landing page until the subscriber contacts the ISP to discuss the matter or reviews and responds to some educational information about copyright.  Upon receiving notification that a Mitigation Measure is pending, the alleged infringer may request an independent review before the American Arbitration Association (AAA), presumably at his or her own expense.  Scary “self-policing” fear aside, CCI’s policy sounds reasonable to me.  CCI’s new Executive Director, Jill Lesser, recently expressed her enthusiasm over her organization’s effort to “reduce and deter online copyright infringement in a way that is centered on education and deterrence, not punishment.”  Amen, Jill!  CCI’s creative content owners aren’t the only ones praying for behavioral reforms . . .

Animal Protection and Rescue League seeks to protect meat eaters.

Remember the game of Duck, Duck, Goose?  Well, this is kinda like that — only it’s Duck, Duck, Lawsuit!  And the ducks are exploding.  Apparently, exploding ducks are enough to cause the Animal Protection and Rescue League (APRL) to align itself with meat eaters.  Not only did it align itself with carnivores; APRL filed a lawsuit on their behalf in order to protect the ducks they’re eating.  According to a April 4, 2012 press release on Market Watch, APRL filed a class action false advertising lawsuit against chef Sean Cheney and the restaurant Hot’s Kitchen in Hermosa Beach, California for issuing a national press release marketing foie gras (duck liver — ew, yuck!) as a humane way to support animal rights.  I’m not quite sure how eating animals could possibly support animal rights, but let’s presume for a minute that it could . . . not with foie gras, it couldn’t.  Foie gras is created by “gavage” which is a French term for corn force-feeding torture (disturbing graphic video here), which sometimes results in organ rupture and death.  California law bans the force-feeding of birds, effective July 1, 2012 and APRL wants to make sure that unsuspecting consumers aren’t tricked into eating it before then.  And in other — more humane — restaurant IP news . . .

No table for two!

Image from Yelp

Tavola means table in Portuguese.  Or, as Francis Ford Coppola’s trademark attorney described it, “the English translation of ‘TAVOLA’ (in Portuguese) is a piece of furniture having a smooth flat top that is usually supported by one or more vertical legs, a piece of furniture with tableware for a meal laid out on it, and a company of people assembled at a table for a meal or game.”  According to the lawsuit filed by The Trustees of the Coppola Family Trust against Torg Holding Corporation for trademark infringement and unfair competition, Horg’s use of TAVOLA ITALIAN KITCHEN infringes on the Coppola Trust’s federally registered service mark, A TAVOLA for restaurant services.  Although Coppola has a federal registration, restaurants outside of California do not seem to concern it.  There are at least 12 other restaurants nationwide using identical or virtually identical marks: TAVOLA’S in Springfield, PA; TAVOLA in Charlottesville, PA; LA TAVOLA in Baltimore, MD; LA TAVOLA RISTORANTE in Waterbury, CT; LA TAVOLA ITALIANA, in Pittsburgh, PA; A TAVOLA in Chicago, IL; LA TRAVOLA TRATTORIA in Atlanta, GA; A TRAVOLA in Atlanta, GA; TAVOLA in Magnolia, TX; A TAVOLA TRATTORIA in New Paltz, NY; A TAVOLA in Winchester, MA; and A TAVOLA in Cincinnati, OH.  In fact, it seems like the only TAVOLA for which I could not find a website is Coppola’s!  Many of the other TAVOLA restaurants claim to have been in business longer than Coppola’s (which claims a first use date of April 7, 2008), so it will be interesting to see whether the registration is attacked in the course of this lawsuit.  That registration sure seems suspect to me and quite vulnerable not yet being incontestable.  All the while, the same scenario plays out in Texas . . .

File under “makes me wanna drink!”

Image from MySA.com

Image from Yelp

Swig, Inc. (Swig) took a swing at JTL Management (JTL) for having the audacity to open the Swig Lounge in Houston, Texas a mere 199 miles away from Swig’s San Antonio, Texas establishments.  Swig has 2 locations in San Antonio and 4 trademark registrations for SWIG, 3 of which are for cocktail lounges and 1 of which is for soft drinks.  On March 30, 2012, Swig filed a lawsuit against JTL for trademark infringement, unfair competition & dilution of the SWIG mark.  Just as in the Coppola case above, there are other (albeit fewer) Swigs out there: SWIG in Milwaukee, WI;  SWIG in San Francisco; SWIG in Perrysburg, OH; SWIG in St. George, UT; SWIG in New York, NY; and THE SWIG in Fullerton, CA.  According to an article on MySA.com, Swig settled a similar suit against another Texas restaurant in January, in which the case was dismissed quickly after settlement was reached.  We’ll have to see if this one goes down as easily.  Meanwhile, Swig wasn’t the only alcohol related IP headline last week . . .

The folks at Jack Daniels should lay off the sauce.

This alligator bites back!  According to the declaratory judgment action filed against Jack Daniels by Mark Anthony Int’l & American Vintage Beverage, Inc., (Mark Anthony), Jack Daniels filed a Notice of Opposition against Mark Anthony’s CAYMAN JACK application and threatened it with litigation.  The complaint states that, “Jack Daniels has a history of following up on its threats,” creating the reasonable apprehension of suit required for filing a declaratory judgment action.  Because JACK DANIEL’S mark already coexists with other “Jack” named alcoholic beverages — like PANAMA JACK and CALICO JACK for rums; CACTUS JACK for tequila; PAPA JAC for alcoholic cocktails; YUKON JACK for liqueur; SCRUMPY JACK for cider; DEADEYE JACK, THIRSTY JACK, BLACK JACK STOUT, JACK RABBIT PALE ALE and JACK’S PUMPKIN SPICE ALE for malt beverages; HONEY JACK for mead and hydromel; and BLACKJACK PASTURE, JUMPIN JACK and BLACKJACK WINES for wines — Mark Anthony argues one more Jack won’t break the camel’s back.  CAYMAN JACK is no more likely to infringe on JACK DANIELS than are any of the other coexistent JACK alcohol marks, so the complaint says.  My bet is on the alligator!

I see a pattern here.  Do you?

Brand owners must enforce their rights in order to maintain them.  This principle leads some overzealous attorneys straight into “bullying.”  Better if it leads to a carefully considered public education and enforcement strategy.

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.

Leave a Reply

Your email address will not be published.