Geekview IP Weeks(ish) in Review

Were photographer Jim Marshall still alive, would he kick John Varvatos’ a**?

Jim Marshall was a famous music photographer who shot images of Jimi Hendrix, Jim Morrison, the Beatles, Ray Charles, BB King, The Rolling Stones, Carlos Santana, Miles Davis and Pete Townsend, among others.  Marshall passed away in March of last year and his estate now owns his intellectual property rights, including his copyrights.  John Varvatos is a fashion designer who sells apparel, footwear, leather goods, accessories, oh, and rock photographs.  Varvatos also teamed up with the band Green Day to create a music video that promotes the JOHN VARVATOS 2012 Spring/Summer collection.  Marshall’s estate filed a lawsuit against Varvatos on December 29, 2011 claiming that Varvatos copied and displayed reproductions of Marshall’s photographs without his permission, and displayed them in Bloomingdale’s department stores.  According to the complaint, Varvatos first displayed infringing photos in one of his own stores, for which Marshall scolded him but agreed to forgive.  Now that the infringing activity has expanded to Bloomingdale’s, Marshall’s family has had enough.  And if what they claim is true, Varvatos disrespect for Jim Marshall’s rights is likely to haunt him.  And in other haunting IP news, an unauthorized Steve Jobs action figure sure is causing a ruckus . . .

Corporations are not people.  People are people and their rights of publicity survive them.

What’s wrong with this picture?  It looks like Apple’s co-founder and longtime CEO, Steve Jobs.  But wait!  It’s not Steve Jobs.  It’s a Steve Jobs doll.  A doll made by a Chinese company called in icons.  The company is selling a doll kit that retails for US $99.99 exclusive of shipping (does that mean you will own, but not possess it?).  The kit includes:

-One realistic head sculpt & Two pairs of glasses

-One highly articulated body & Three pairs of hands

-One black turtleneck & One pair of blue jeans

-One black leather belt & One chair (wood + metal)

-One pair of black socks & sneaker

-Two apples (One with a bite.)

-One piece of “ONE MORE THING” hard backdrop

The packaging uses Steve Jobs ‘name and image along with his years of birth and death, (making it abundantly clear who this doll is intended to resemble).  While Apple may not have registered STEVE JOBS as a trademark (no one has, if you can believe that!), Jobs’ estate maintains control over his right of publicity — the right to determine how one’s name, image or likeness is used commercially.  Publicity rights are determined on a state-by-state basis and not all states have right of publicity statutes.  California, where Jobs was domiciled, has both a right of publicity statute and a Celebrities Rights Act.  The former applies for 50 years after the person’s death and the later applies for 70 years after the celebrity’s death.  An article on ABC News Radio stated that in icons doesn’t believe Apple has a copyright on Jobs.  He’s right of course, but that’s not the issue, the issue is Jobs right of publicity, which the in icons doll clearly is violates.  Doll & all, I think this one is likely to play out in California court.  Meanwhile, in court in North Carolina, Remax sued Alan Shelor Real Estate for being too patriotic . . .

Use red, white & blue & you’ll get sued!

How dare you use red, white & blue to market your properties, Alan Shelor!  Don’t you know RE/MAX has the market cornered on that?  Really, they do.  RE/MAX owns an incontestable U.S. trademark registration No. 1,702,048 for this mark:

for franchising services in the field of real estate and real estate brokerage services.  Both the trademark registration and the lawsuit RE/MAX filed against Shelor state that this logo mark has been in use by RE/MAX since at least as early as January 1, 1974.  RE/MAX also claims to own a family of similar logo marks that include incontestable Registration No’s. 1,691,854 and 1,720,592.  The suit also says RE/MAX sent Shelor six letters between January 12, 2009 and November 11, 2011, but Shelor refused to change his signage.  Now Shelor’s gonna have to shell out some cash — both to his lawyers and probably to RE/MAX, not to mention the cost of re-branding.  Shelor shoulda saved himself a suit by complying with RE/MAX’s requests that he cease infringing before it got this far.  Meanwhile, up the coast in New York, Judge Rakoff reigns in a Clorox ad that went too far . . .

Cat fight!

Cats can be particular.  But their sense of smell is not so discerning as to sense superior litter.  Or so says Judge Rakoff of the Southern District of New York, which ordered  the Clorox company, which makes Fresh Step litter to pull its commercials that state “cats like [litter] boxes . . .  with Fresh Step litter inside . . . because Fresh Step’s scoop-able litter with carbon is better at eliminating odors than Arm & Hammer” because such claims are “insufficiently reliable” (which is the same thing as unreliable, I think).  Church & Dwight, which makes Arm & Hammer products, including cat litter, filed a false advertising lawsuit against Clorox in March 2011.  Clorox filed its Answer in May, 2011 and the court ordered Clorox to show cause why it should not be preliminarily enjoined from continuing to air this ad.  Arm & Hammer filed a memo in support of its request, to which Clorox filed a Response, to which Arm & Hammer Replied (and people wonder why litigation’s so expensive!).  Ultimately, the court sided with Arm & Hammer, ordering Clorox to refrain from airing the ad again on January 3, 2012.  This isn’t the only poopy IP news of late . . .

Court dumps Diaper Jeans dispute.

Back in February 1981, Richard Pollick obtained a copyright registration for a work of unpublished visual art described in Pollick’s lawsuit against Kimberly-Clark (KC) as “Artwork that depicts a diaper in blue or white, each with red colored stitching.”  In October, 1981 Pollick sent his Artwork to KC for consideration.  At some unspecified point in time, KC’s Huggies brand diapers came out with Jeans — diapers that look like jeans (just what the world needs!).  KC filed a motion to dismiss Pollick’s claim on the basis that its diapers did not infringe Pollick’s 2 dimensional copyright.  Pollick filed a Response to the KC’s motion to dismiss, to which KC Replied (this is worth repeating — motion practice is what makes litigation so expensive).  The court agreed with KC and tossed Pollick’s complaint out like a dirty diaper, entering Judgment on behalf of KC.  Pollick asked the court to reconsider, and the court denied that too, awarding KC attorney’s fees and costs in the process.  The court then denied KC’s counsel’s motion for attorney’s fees, not because the plaintiff is not entitled to them, but because its counsel failed to file the local rules; procedure will bite you in the butt every time!

A word to the wise about litigation — being realistic about your chances of success, your budget and the risk of an attorney’s fees award are key to a successful litigation strategy.  Every action your opponent takes in litigation requires a reaction from you, which is why it gets so costly so quickly.  Well managed expectations are key no matter what the outcome.