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

Guy Hobbs sues Elton John for stealing his girl!

Australian songwriter Guy Hobbs hauled British balladeer Sir Elton John into court for stealing Natasha away from him.  It’s one thing to steal someone’s girl.  Stealing someone’s song about a girl?  That’s just mean.  According to the lawsuit filed by Hobbs against Sir Elton, Elton is guilty of copyright infringement on Hobbs’ song, Natasha.  Elton’s song is titled Nikita, but it’s not the title that’s the problem, it’s the musical composition and sound recording, according to Hobbs.  But Hobbs has a much, much bigger problem.  He seems to be S-O-L on the SOL (statute of limitations — the deadline by which a lawsuit must be filed.)  The SOL for copyright infringement is 3 years after the claim accrued.  Hobbs’ own lawsuit states that the infringement has been occurring since 1985!  That’s 27 years ago, and even if we credit Hobbs 3 years for utter ignorance, he still waited eight times longer than the statute allows before filing suit.  I have to believe that Hobbs did this to get attention, not to win.  In fact, I wouldn’t be surprised if the court dismissed the case and awarded Elton attorneys’ fees.  Since this one is just starting to play out, we’ll have to wait and see.  Meanwhile, the news cycle takes us from performing artists to performance enhancements . . .

Under Armour says Body Armor stinks!

In the fierce field of athleticism, Under Armour (UA) fights hard to stay on top.  It certainly is not about to let Body Armor (BA) undercut it. According to the trademark infringement and dilution claims in the lawsuit UA filed against BA, BA copied “numerous elements of UA’s distinctive and famous branding, creating a likelihood of confusion as to the source of BA’s beverages and diluting UA’s famous marks.”  UA has 35 LIVE USPTO records for UNDER ARMOUR, of which 28 are registered marks and 7 are pending applications.  While UA doesn’t own any registrations for its marks for beverages, it has two pending applications for water, sports drinks and juices and for vitamin fortified and protein beverages & meal replacement drinks.  BODY ARMOR, on the other (perhaps upper) hand, is federally registered for energy drinks based on use of the mark since 2010.  That’s a highly relevant fact UA omitted while charging BA with infringing “knowingly, willfully, maliciously, wantonly, fraudulently, in reckless regard of the truth, and in bad faith.”  This case has the potential to be quite a contest!  As UA and BA duke it out, Bumble Bee Tuna treads water . . .

Bumble Bee stung by false advertising!

Defending a false advertising class action lawsuit is a lot like swimming upstream; both require tireless effort for an uncertain outcome.  Tricia Ogden and her team of 16 (!!!!!!!!!!!!!!!!) listed attorneys (plus all the worker bees who aren’t listed) filed a class action false advertising lawsuit against Bumble Bee Foods in California (of course!) for “misbranding” its food product.  The complaint says the products market fake healthiness due to their Omega-3 content, when they’re actually full of unhealthy ingredients (mercury anyone?).  Bumble Bee’s being sued for mercury poisoning in a separate lawsuit.  The complaint makes the unusual argument that due to the Omega-3 claims on Bumble Bee’s products, the products should be treated as mislabeled drugs.  (Watch the headlines for rave kids snorting tuna!) Bumble Bee is sure to land a settlement eventually, while Burberry landed in hot water with the Bogart family . . .

Burberry Bogarts’ Bogart.

Clothier Burberry got itself in a bind by failing to button up IP permissions before using Bogart’s image in its social media campaign.  Bogart’s estate called bullsh*t, repeatedly asking Burberry to cease infringing on its trademark and right of publicity rights.  Bogart’s estate has its own Facebook fan page, which has 201,782 Likes, a pittance compared to Burberry’s 12,802,378 Likes!  According to the declaratory judgment action Burberry filed against Bogart’s estate, the campaign is a “historical timeline depicting the evolution of Burberry’s culture, products and people.”  The timeline begins with an image of the first Burberry store in 1856, and includes among its many images an image of Humphrey Bogart wearing a Burberry trench coat in the final scene of the 1942 motion picture, Casablanca.  Burberry asks the court to rule that its use of Bogart’s name, image, likeness, voice, celebrity identity and trademarks in this way does not violate Bogart’s trademark rights.  To Burberry’s credit, it did license the Casablanca image from Corbis, though the Corbis license expressly states:

Your ability to access Content does not entitle You to use that Content . . . the rights Corbis grants to You do not include a license to, and Corbis makes no representations or warranties that it owns or licenses any rights related to or in any persons, places, property (real, personal or of any other kind) or subject matter depicted in any Content.  All Content may be subject to copyrights, trademarks, rights of publicity, moral rights, property rights or other rights belonging to another party.  You are solely responsible for determining whether Your use of any Content requires the consent of any other party or the license of any additional rights, and You should not rely solely on the information provided by Corbis.  You are solely responsible for obtaining any and all releases and clearances as may be required . . .

It’s hard to buy Burberry’s argument that a corporate social media campaign is anything other than marketing, even if nothing was sold directly in connection with it.  I bet the campaign was even conceived and executed by Burberry’s marketing folks!  Casablanca and the law are black & white — using a third party’s name, image or likeness for commercial purposes is infringement.  I think Burberry shoulda stuck to trench coats instead of taking on this lawsuit.  From a dead celeb to the Evil Dead . . .

No Renaissance for the Dead.

Sam Rami’s words may haunt him forever.  Surely they’re costing him a fortune.  Rami is one of 3 co-founders of Renaissance Pictures, formed in 1979 to make The Evil Dead.  The original movie premiered in 1981, after which Rami wrote and directed two sequels: Evil Dead II, which was released in 1987 and Army of Darkness, which was released in 1992.  Renaissance applied for federal trademark registration of the EVIL DEAD mark for motion pictures in June, 2010.  The application was Published for Opposition on October 25, 2011 and after extending the time to Oppose, Award Pictures filed an Opposition against the EVIL DEAD application on March 1, 2012.  Award twice previously filed trademark registration applications (here and here) both of which were abandoned in process.  Award’s Opposition filing asserts that Rami abandoned the EVIL DEAD mark by publicly stating, “We’re never going to do [another] sequel” in the book The Evil Dead Companion.  It then conflates trademark and copyright law, arguing that because the 1987 and 1992 Evil Dead movies were works for hire of De Laurentis Entertainment, Renaissance cannot claim any trademark rights stemming from those works.  Award’s Opposition spends quite a bit of time arguing that Renaissance released only a single work under the EVIL DEAD mark, and thus is not entitled to registration, as the title of a single work is not protectable under trademark law.  I bet the Renaissance & De Laurentis’s contract states otherwise, but if not, there is nothing to prevent De Laurentis from providing a nunc pro tunc (retroactive, kinda) trademark assignment of the EVIL DEAD mark to Renaissance.  Rather than battle it out at the TTAB — which only determines registerability and cannot prevent infringement — on May 1, 2012 Renaissance fought back by filing a lawsuit against Award claiming false designation of origin, unfair competition, and trademark infringement.  I’m betting Renaissance will win the right to have an Evil Dead renaissance; Award seems too big for its britches and does not seem to have taken into account the residual goodwill from the Evil Dead movie franchise.  And in other britchin’ IP disputes . . .

Is Levi’s unreasonably vain?

Levi’s told Vanity to take a hike.  Vanity says Levi’s stepped over the line.  Who’s right?  I think Levi’s has this one in the pocket!  Everyone knows what Levi’s look like.  The Levi’s pocket stitching looks like the birds most 6 year olds and I draw.  Levi’s obtained its first federal trademark registration for its unique pocket stitching design (here) in November, 1943!  It has two other LIVE trademark registrations for its stitching, one it received in 1980 (here) and another (here) in 2003.  On January 30, 2012, Levi’s sent Vanity a C&D letter asking Vanity to cease and desist from using the confusingly similar pocket stitching designs.  Vanity responded by filing a declaratory judgment action against Levi’s, asking the court to rule that it’s pocket design neither infringes upon nor dilutes Levi’s’ marks.  Levi’s claims seem to have legs, and while not all of Vanity’s jeans designs are infringing, I suspect it will have to shelve those depicted above.

Body Armor, Burberry, Award Pictures, Vanity all asked for trouble.  I wonder how many of them checked with counsel, and what their counsel said.  While risk tolerance always is a client decision, the risk seems to outweigh the potential benefit in each one of these cases, and the expense of litigation is about to make it even worse!



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