Geekview IP Weeks(ish) in Review

Posted by | May 02, 2012 | Geekview IP recap | No Comments

One Direction going down.  Only, which one?

One Direction is headed on a collision course with One Direction.  The chaps on the left are from the UK and the dudes on the right are from California.  They’re in separate bands, both named One Direction.  And that is a big No-No under U.S. Trademark law.  According to the lawsuit the Californians filed against the Brits — alleging trademark infringement, false designation of origin and unfair competition — the California band was the first to use the ONE DIRECTION trademark in the U.S., beginning in the Fall of 2009.  The British band didn’t perform under the ONE DIRECTION mark until October 2010, and even that was only in Europe.  The Brits hopped the pond this February when they released an album and performed a live tour in the States.  I can’t imagine a scenario that will enable them to continue to perform in the U.S. as One Direction, and I’ll be curious to see if the case gets far enough for damages to be addressed, as it seems that this is a case of intentional infringement.  It’s one thing to tick off punk rockers; angry attorneys are another thing all together . . .

Image from onedirectionmusic.com / Image from onedirectionusa.com

Ticked off trial lawyers take Trademark Registration Office to court.

Images from my mailbox

Anyone who owns a federal trademark registration undoubtedly has a mailbox full of very-official-looking solicitations from organizations offering recordation services for a fee.  WIPO (World Intellectual Property Organization) — the United Nations agency dedicated to fostering world-wide understanding of intellectual property (IP) — has an entire webpage dedicated to warning the public about intellectual property scams.  During the first four months of 2012, WIPO cautioned against 9 separate scams aimed at IP owners.  There’s also a Wikipedia page on Scams in Intellectual Property, which links to several different lists of IP scammers.  The USPTO also recently started sending bright orange warning letters with certificates of trademark registration.  Not satisfied, the Utah law firm Bateman IP Group recently filed a lawsuit against the individuals and entity behind the deceptively named (and even more deceptively marketed) United States Trademark Registration Office for unfair competition, deceptive trade practices, tortious interference (with contractual relations) and civil conspiracy.  The suit seeks injunctive relief as well as defendant’s profits and the costs of bringing suit. Go get ‘em, Bateman!  And while you go after the trademark scammers, Whitney Houston’s estate is going after a pot club . . .

Whitney’s legacy goes to pot.

Images from 420nurses.com

Dreams of Whitney Houston pot go up in smoke.  I wrote about LINSANITY trademarks here and here and here, but somehow I missed the LINSANITY pot story.  Luckily, I caught an article about Whitney Houston pot on Huffington Post on April 19, which just happens to be the day before 4/20 — unofficial National Cannabis Day.  According to the article, a medical marijuana club named 45 Cap Elite Herbal Center included Whitney Houston Og and Charlie Sheen Og as selections on an on-line menu, but removed both listings within minutes of a call from the Huffington Post inquiring whether Whitney’s estate had consented to such use of her name.  While I could not locate a website for 45 Cap Elite Herbal Center, the dispensary is listed in numerous directories, including THCFinder.com, FindTheBest, WeedMaps, and 420Nurses.  Absent consent from Whitney’s estate, any commercial use of her name, image and/or likeness violates her right of publicity, which California law protects for 70 years after the person’s death.  Whitney’s not the only dead celebrity potentially facing IP problems during the month of April . . .

If the dead can dance, they can sue.

(Caution this video contains loads of F* bombs and N* words.)

Unannounced and undead, Tupac Shakur (2Pac) made a surprise appearance during Snoop Dogg’s performance at the 2012 Coachella Music Festival last month.  2Pac performed right alongside Snoop, as seen above.  Alas, it was not cryogenics that brought 2Pac’s soulful cries back to life, rather it was holography.  Performing artist Dr. Dre is credited as the mastermind behind 2Pac’s holographic performance and he issued a video press release personally thanking the two companies that “made his idea come to life,” AV Concepts and Digital Domain.  Not only did 2Pac’s estate consent to this use of his right of publicity, according to an article on Forbes, the executor of his estate was thrilled by the outcome.  Of the 117 comments on the discussion on 2Pac’s website, the majority of fans also approved.  Many even expressed hopes for a world tour!  The only folks who weren’t raving about the holographic musical magic were IP attorneys who instead went into worry mode, as reported here and here and here.  Attorneys worry.  Yup . . .

Hey!  Ho!  Yuuup?!?  Confusing celebrity calling cards create court case.

Image from Yuuup.com / Image from Twitter

The courts will decide who gets to say YUUUP if Dave Hester has anything to say about it.  Hester is a “player” on the TV show Storage Wars, which follows folks around as they bid on storage auctions.  His catch phrase is a long, multisyllabic YUUUP, as seen/heard here.  Hester even has his own on-line store, where he sells YUUUP! apparel and other schawg.  YUUUP! is a federally registered trademark for apparel (here) and Hester has pending registration applications for YUUUP! for stickers and posters (here) and entertainment services in the nature of appearances by a television personality (here).  Enter R&B artist Trey Songz, who filed Extensions of time to Oppose both of Hester’s pending applications on February 20, 2012.  Hester responded by suing Songz in federal court for declaratory judgment of non-(trademark)infringement, tortious interference (with contractual relations) and interference with prospective economic advantage.  Hester seeks a ruling that his use of YUUUP! does not infringe Trey Songz rights, in addition to an injunction preventing Songz from interfering with Hester’s use of his YUUUP! mark and an award of compensatory damages, attorney’s fees and costs.  Songz recently filed his Answer claiming priority of use in the YUUUP! trademark, which he says he has used on clothing since July, 2009.  Consequently, Songz also filed a counterclaim seeking to enjoin Hester’s use of YUUUP! on clothing and cancel Hester’s apparel registration.  If what Songz says is true, then Hester’s gonna have to abandon his apparel ambitions, at least under the YUUUP! mark.  I doubt Songz can make Hester sing a new tune when it comes to the way in which he bids at auction since that does not appear to be a trademark use to me.  April brought trademark trials from YUUUP! to Umm . . . 

Steak ‘Em-Up won’t be held hostage by Steak-umm.

Image from the freezer aisle / Image from Steakemup.com

Steak ‘em-Up stuck it to Steak-umm by defeating a trademark infringement suit brought against it by the makers of America’s Favorite Sliced Steak (Really?!  That tagline sounds like a false advertising claim waiting to happen!).  Yet the victory is bittersweet, as the court stuck Steak ‘em-Up with its own (surely significant) legal bills, ruling that the case was not exceptional under 15 USC §1117 (a)(3) and thus did not justify an award of attorneys’ fees.  The case began in June, 2009 when Steak-umm filed a lawsuit Steak ‘em-Up for trademark infringement, unfair competition, false designation of origin and  dilution based on Steak ‘em-Up’s use of the STEAK ‘EM-UP mark in connection with a pizza place and corner store in South Philadelphia.  Steak ‘em-Up filed its Answer on November 13, 2009 and after almost 3 years of legal wrangling that culminated in a bench trial, Steak ‘em-Up won the right to continue to using its STEAK ‘EM-UP.  On April 13, 2012, attorney Steak ‘em-Up’s attorney, Robert McKinley, issued a press release stating, “We are pleased with the outcome and proud of our client’s resolve to see this case through to the end.”  No doubt, since litigation is lucrative for law firms.  And in other food IP news  . . .

 Bagel Battle!

Image from davidovichbakery.com / Image from dunkindonuts.com

Davidovich wants Dunkin’ to dump Artisan.  Davidovich Bagels has been baking bagels since 1998.  According to the company’s website, ” . . . the core value of the company remains [sic] to provide the best quality Artisan products, with all natural ingredients at the most reasonable price.”  Although Davidovich also makes pastries, muffins, breads, cookies and cakes, bagels are its mainstay.  Dunkin’ Donuts is a donut shop that sells other breakfast items, including bagels.  Dunkin’ recently announced, “Dunkin’ brings you an authentic new way to start your day, new Artisan Bagels and cream cheese spreads.”  Merriam-Webster defines artisan as “one who produces something (as cheese or wine) in limited quantities often using traditional methods.”  In October 2011, Treehugger published a story predicting that the word Artisan would become the “new Natural.”  “Natural” being a term that often is used in false advertising of non-natural (GMO) food.  According to an article on Forbes.com, the new wave of false advertising actions has begun with Davidovich asking the FTC, NY AG and BBB to take action against Dunkin’ precluding it from using the Artisan descriptor to market its bagels.  Davidovich certainly saved some cash by asking the regulators to step in and do the dirty work, and if all Davidovich wants is to stop Dunkin’s use of Artisan, this just might do the trick.  Of course, if Davidovich wants to be a real bagel hole, it will file a false advertising lawsuit once one or more of the administrative tribunals rule this to be false advertising and cash in on Dunkin’s deceitfulness.  Davidovich takes bagels as seriously as Three Stooges do comedy . . .

Three Stooges find porn parody humorless.

To parody or not to be?  That is the question facing Will Ryder, Producer and Director of numerous “Not” pornographic movie titles including: Not Married with Children XXX 1 & 2; Not Three’s Company XXX; Not the Cosby’s XXX 1 & 2; Not Charlie’s Angels XXX; Not M*A*S*H XXX; Not Bewitched XXX & Not Monday Night Football XXX.  Ryder recently released a trailer (since removed from YouTube) for his upcoming porn flick Not the Three Stooges XXX, which quickly drew the ire of the Three Stooges brand owner.  According to an article on the Hollywood Reporter blog Hollywood, Esq., C3 Entertainment (whose tagline is “We Are All About Brands”) has managed the Three Stooges brand for more than 50 years.  C3 itself claims to have been “founded by ‘the most famous comedy brand ever,’ The Three Stooges.” C3 owns federal trademark registrations for THE THREE STOOGES for paper goods and apparel, exhibiting motion pictures and beer(!).  It also owns a registration for LOS TRES CHIFLADOS (Spanish for the Three Stooges) for gaming machines and has a pending registration application for THE THREE STOOGES for motion picture production, providing a website and fan club.  As Eriq Gardner of Hollywood Reporter explains, C3 potentially could assert claims of copyright infringement, trademark infringement and dilution by tarnishing.  In his most recent blog post, Ryder swears that he loves the Three Stooges and encourages everyone to see the new film.  As for whether Ryder will soon be seeing the inside of a courtroom, I say chances are slim.  The risk of Ryder — whose business model is “porn parodies” — losing everything far outweighs the potential benefit of being able to release this film.  For those who are now eager to see Not the Three Stooges XXX, you’ll just have to rely on your own imaginations.

Dispute resolution risk analysis must evaluate the costs of winning and losing. Steak ‘em-Up likely spent over $100,000.00 to be able to continue using its mark; even with the publicity from the case, did that make economic sense?  Likewise, wouldn’t Ryder be a fool to risk his entire business model over one film?

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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