Geekview IP Weeks(ish) in Review: Cheeky Coverage of Recent IP News

Zynga out to topple Pyramidville.

Zyngaville rules the world!  Of gaming.  Or so claims Zynga, clearly believing it to be true.  Game maker Kobojo however, calls bullsh*t.  I wrote about Zynga’s -VILLE trademark registration applications (found here and here) when Zynga swooped in to stop Night Owl from using Dungeonville in November, 2011, causing Night Owl to sue Zynga for declaratory judgment of non-infringement of Zynga’s various -VILLE marks.  Way back then, Zynga had 17 LIVE trademark records for -VILLE marks.  Now, a mere 6 months later, Zynga owns 34 LIVE -VILLE PTO records: 9 registered marks and 25 pending applications!  Of these, there are 2 that really concern me: PRIVACYVILLE and CRIMEVILLE.  With these and other -VILLE games on the horizon, Zyngaville doubled in just half a year . . . imagine what’ll happen by New Years!  Zynga’s swiftly flying along and Night Owl even moved to permanently dismiss its case against Zynga in March, 2012, which the court of course allowed.  Oddly, Night Owl hasn’t abandoned its pending application to register DUNGEONVILLE, in which a Statement of Use (evidence of use of the mark) is due on June 20, 2012.  Meanwhile, both of Zynga’s applications to register -VILLE for online gaming and related services have encountered roadblocks.  One has been suspended pending Zynga’s provision of the foreign (CTM) trademark registration on which it was based and the other was suspended for 90 days by the filing of an Extension of Time to Oppose by a company called Vertical Life, LLC, which makes a social engagement experience (SEE) game called Remakeville.  While Zynga was busy expanding its empire and navigating the oft slow waters of the USPTO, Kobojo was expanding Pyramidville to include a new mobile app.  According to its press release, Pyramidville already has 6 million Facebook users, though the U.S.  Pyramidville Facebook app has a mere 351,000 Likes.  Zynga isn’t messing around this time, on May 4, 2012 it filed suit against Kobojo alleging trademark infringement, dilution, false designation of origin, unfair competition & passing off.  I’ll bet that Kobojo’s pyramids soon will crumble (or at least be transferred to Zynga’s kings) but Adidas will rule the world . . .

Adidas seeks to stomp out world infringement.

One, Two, Three Stripes & you’re sued!  Adidas is oh so serious about its iconic three stripes.  It even uses them as its favicon on its website.  Adidas has federal trademark registrations of its three stripes logo on: jackets, tops, flip flops, shoes, more shoes, caps,  beanies & visors.  It also has federal registrations for its tri-striped triangular A logo and its trefoil logo, both for retail clothing stores.  So, Adidas was none too pleased when it found the dudes at World Industries putting a diagonal W on their shoes in a similar fashion (ha!) to the widely recognized and heavily protected Adidas logo.  On May 15, 2012 Adidas sued World Industries for trademark infringement, unfair competition, dilution & deceptive trade practices.  Adidas may inflict a world of hurt on World Industries, but at least no one’s going to jail . . .

Players Sports Nuts crushed by felony infringement finding.

Keith Carter must have been nuts to sell counterfeit MLB, NFL, NBA & NHL merchandise at his Virginia Players Sports Nuts stores.  He was charged with — and apparently convicted of — felony trademark infringement in Chesapeake Country, Virginia last week for selling counterfeit professional sports merchandise.  According to an article on PilotOnline.com, an investigator hired by the professional sports leagues recognized the fakes given their low quality and price.  Although Carter feigned ignorance, attributing the low quality to mass production, the judge didn’t buy it.  Carter, she found, knowingly bought more than 1,200 NFL, NBA, NHL and Major League Baseball jerseys seized by police as a result of their search of Carter’s stores on May 10, 2011.  Carter’s due for sentencing on August 31, 2012.  Keith Carter isn’t the only one flirting with danger, PepsiCo is too . . .

Dangerade!

Let’s get one things straight . . . Gatorade is not flu medicine.  According to The Public Health Advocacy Institute (PHAI) at my Alma matter, Northeastern University School of Law, Gatorade’s “Win from Within” commercial (shown above): encourages teens to engage in dangerous behavior.  No, not because drinking Gatorade while playing basketball is risky — some could spill on the court causing a slick and sticky mess — but because the commercial overemphasizes Gatorade’s role in healing, implying that as long as you drink Gatorade, you should not stay home with the flu.  The game shown in the ad is known as “The Flu Game,” because Michael Jordan, not only played, but also won, that game while he had the flu.  According to a May 8, 2012 PHAI blog post, PHAI submitted a complaint to the FTC asking the FTC to step in and require PepsiCo (owner of the Gatorade brand) to pull the ad and engage in corrective advertising since the ad unfairly targets teen athletes, providing them with erroneous health and nutrition information and encouraging them to drink Gatorade and play on even when they have the flu.  It’s debatable whether Michael Jordan was a ball hog, but he’s sure been hogging the IP headlines . . .

Nike picks infringing trademark.

Urban Motive and its co-founder Lou Weisbach say Michael Jordan and Nike had motives to infringe their LOTTERY PICK trademark.  Weisbach owns three federal trademark registrations for LOTTERY PICK for energy drinks, apparel, and more apparel.  The beverage mark was registered just last year, one of the apparel registrations issued in 2008 and the other issued in 2006.  The 2006 registration was renewed in April of this year, though Weisbach did not file a Section 15 Affidavit of Incontestability and I’m not sure why.  Whether he failed to recognize the importance the filing, or failed to use the LOTTERY PICK mark on apparel exclusively and consistently since obtaining registration in 2006 (making him ineligible to file an Affidavit of Incontestability) it seems pretty risky to file suit against Nike based on not-yet-incontestable trademark registrations.  Urban Motive and Weisbach filed a suit against Nike for trademark infringement, false designation of origin, unfair competition as a result of Nike’s unauthorized sale of a “[Michael] Jordan LS Lottery Pick Jacket” for men, which it distributed worldwide through its stores, website and various other merchandising websites.  Interestingly, the lawsuit asserts that the LOTTERY PICK apparel registration is incontestable, although it’s not.  While the marks and goods are identical, I wonder how many consumers really will be confused by Nike’s use of LOTTERY PICK (especially since it seems to use it only in connection with the Nike &/or Air Jordan brands.)  I also wonder if reverse confusion (the misperception that the prior user is the infringer) isn’t more likely than confusion in this case.  Regardless, Urban Motive isn’t the only t-shirt maker claiming its rights are being trampled  . . .

Jesus & the Jets.

Tebow has a God complex!  Granted, he’s an accomplished college football quarterback who joined the NFL in 2010 and (some say greatly) contributed to the success of the Denver Broncos last year, but that doesn’t make him God.  Or even Godlike.  Someone needs tell that to his lawyers, who asserted (presumably with a straight face) that Cubby Tees “has been using the name of Mr. Tebow on their website www.cubbytees.com to promote, advertise and sell numerous t-shirts.”  The offending page can be seen here.  Tebow was traded to the New York Jets after last football season.  Thereafter, Cubby Tees started making the MY JESUS t-shirts in the Jets logo shown above.  Most of Cubby Tees’ Ts are spoofs on existing brands, akin to those often seen in the live music scene, about which I wrote here and here.  According to the world renown website TMZ, Tebow’s attorneys got the shirts removed from eBay along with sending Cubby Tees a C&D letter, which Cubby Tees shared with TMZ (here).  Oy vey!  If you think Tebow’s right of publicity claim is sketchy, wait till you learn about the FTC settlement with Skechers . . .

Skechers gets its a** kicked by the FTC.

“Shape up Without Stepping Foot in the Gym” sounds too good to be true, cause it is.  The FTC filed a federal lawsuit against Skechers along with a stipulated final judgment and order permanently enjoining (barring) Skechers from claiming that its Shape Up shoes:

• increase strengthening;
• contribute to weight loss; and
• provide any other health or fitness-related benefits, including claims regarding caloric expenditure, calorie burn, blood circulation, aerobic conditioning, muscle tone, and muscle activation.

Skechers also agreed to pay $40,000,000.00(!) as part of its settlement with the FTC, according to a press release on the FTC’s website. Of that $40 million, $83,000 is coming to the State of Nevada, according to an article on the Las Vegas Sun website.  Customers who bought the shoes since 2008 may be eligible for refunds by filling out the form found here.  The FTC settled with Sketchers and George Clinton let Fergie and Co off the hook . . .

Black Eyed Peas no longer knee deep in infringement.

George Clinton got the Black Eyed Peas to shut up.  In December, 2010 George Clinton filed a copyright infringement lawsuit against the Black Eyed Peas (BEP) for their unauthorized use of samples of Clinton’s sound recording “(Not Just) Knee Deep” in the BEP song “Shut Up” and in several remixes of the song.  Since Clinton sued each of the band members individually, they all filed separate Answers to the lawsuit, each of which looked pretty much the same (all the individual defendants were represented by the same attorney.)  A year and two months (and 113 docket entries) later, the parties filed a stipulated Notice of Settlement, which the mediator assigned to the case confirmed in her Mediator Report.  Sadly, the Notice of Settlement gives no indication of the terms of the settlement, though I suspect royalties will be paid to Clinton by BEP for use of his sound recording.  As it should be.

I’m not a fan of over-lawyering.  I do however wonder how Kobojo, World Industries, Keith Carter, Nike, Skechers and the Black Eyed Peas decided to do what they did.  Don’t they have IP attorneys?   The notion of “asking forgiveness” often fails in IP law, but that doesn’t stop people.  If you’re wondering whether it will work for you, ask yourself if it’s worth the risk.