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Geekview Thanksgiving Edition – Gratitude for the Absurdities of IP (Part II)


I am thankful for diehard New Yorkers (who isn’t?).

Can you tell which one is fake?

The Village Voice (VV) wants to send Time Out New York to the corner for daring to say whose best. The folks at VV have dished up New York news since 1955.  Since September 9, 1999, they’ve also selected and rewarded the best individuals and businesses in New York City in their BEST OF NYC issue and awards program, audacious as that may seem.  VV federally registered its BEST OF NYC mark for annual newspaper supplements and awards programs on the Principal Register in 2008.  For some reason, the folks at Time Out New York decided to ignore this when they ran their own Best of NYC issue earlier this month.  VV then sued Time Out last week for trademark infringement and unfair competition.  Since Time Out owns 28 U.S. federal trademark registrations, of which 13 are for TIME OUT NEW YORK, they’re gonna be hard pressed to say they didn’t know any better.  Even if they could plead it, ignorance isn’t really an option here because Principal Registration provides for constructive notice of the registration.  I think the folks at Time Out are gonna wish they had taken a time out before deciding to run this issue.  And in other entertaining entertainment news . . .

I am thankful for lawyers who file lawsuits when the odds of winning are less than 50/50.

Intellectual property lawsuits against movie studios rarely succeed.  But that’s didn’t stop Raynarldo Whitty from filing suit against Lionsgate for trademark infringement, unfair competition, unjust enrichment, and violations of Illinois law based on the movie 50/50.  No, not Raynarldo Whitty corporate counsel for Turner Broadcasting, though that seems more likely.  Raynarldo Whitty, Plaintiff is the elusive manager of the equally mysterious Eastland Music Group, neither of which has any on-line presence apart from news stories of the lawsuit.  Eastland owns an incontestable federal trademark registration for PHIFTY-50 for “electrical apparatus, namely, series of pre-recorded phonograph records, compact discs, audio and video cassettes, and DVDs featuring music,” which Whitty claims LIONSGATE will infringe by selling CDs and/or DVDs featuring audio and video entertainment content using the title 50-50.  Whitty asked the court for an injunction, destruction of all Lionsgate 50/50 products and all profits from the sale of the allegedly infringing products.  The chances of Whitty winning seem to be more like slim to none than 50/50. Nonetheless, I hope he will keep his wits about him when his lawyers deliver the bad news.  If not, he can always escape to the world of Facebook to play games like Farmville, Yoville, Frontierville and  . . . Dungeonville?!?

I am thankful for small companies with big b*lls.

All is not well in Villesville, where Night Owl hopes to show Zynga who’s who. Zynga owns the curiously popular Facebook game Farmville, along with YoVille, FrontierVille, CityVille, FishVille, PetVille and CastleVille.  In fact, Zynga has 17 LIVE trademark registrations and applications for -VILLE marks of which 2 are for VILLE only (here and here).  Night Owl makes a game called Dungeon Overlord, in which players must pass through a level called Dungeonville.  Night Owl filed a trademark registration application for DUNGEONVILLE, which caused Zynga to bark out a C&D letter, causing Night Owl to sue Zynga in federal court for declaratory judgment of non-infringement.  Night Owl hopes to take the top dog down a peg and to get a ruling that DUNGEONVILLE does not infringe any of Zynga’s rights in various -VILLE marks.  With both game makers willing to go to the mat to protect their IP, it’s hard to see how this one will play out.  Meanwhile, Tootsie Roll’s not interested in playing footsy with Rollashoe . . .

I am thankful for lawyers who think consumers will confuse candy and shoes.

I admit, I am confused.  Not that I think Tootsie Roll manufacturers or endorses Footsyrolls; I cannot see how anyone would.  I am confused about what led Tootsie Roll to file this lawsuit for trademark infringement, unfair competition, and dilution against Rollashoe.  Tootsie Roll asserts 14 of its 27 LIVE TOOTSIE trademark registrations in the suit against Rollashoe, including three for apparel (TOOTSIE ROLL (& design), TENDER TOOTSIES and TOOTSIE ROLL POP).  Even with its trademark registrations, I just don’t see consumers being confused, nor do I see how use of FOOTSYROLLS will weaken the TOOTSIE ROLL mark.  Just goes to show that candy isn’t always sweet.  Not only is Tootsie Roll suing Rollashoe, but Skullcandy is suing Skelanimals. . .

I am thankful for cranial confusion.

Skullcandy uses the logo on the left for its brand of headphones, clothing and mobile electronic and clothing accessories.  It has 4  trademark registrations for this logo for clothing, wallets, bags, various media devices and helmetsSkelanimals appear on apparel, shoes, jewelry, headwear, toys, bags, electronics, and home decor.  Skullcandy sued Skelanimals for trademark infringement, unfair competition, and dilution.  I can hear the judge announcing the case now: “In the Matter of Skullcandy versus Skelanimals (giggle, giggle) . . .”  The suit alleges that, “the skull logos used by Defendants on their products are colorable imitations of Skullcandy’s registered logo.”  Ironic, since both parties’ logos are black and white.  Nonetheless, I am scratching my head as to who will win this one.  While I suspect the dead animals may come out a-head, Skelanimals aren’t the only dead animals involved in IP litigation . . .

I am thankful Lassie is so litigious.

Canine copyright infringement, who woulda thought?  J.G. Wentworth is a financial services provider who purchases fixed annuities and structured settlements for lump-sum payments.  Wentworth wanted folks to know his worth, so he hired Karlin + Pimsler to make a commercial for him.  The duo decided on a commercial showing Lassie helping a family in financial need by running through the hills to get Mr. Wentworth.  According to the complaint filed against Wentworth by Classic Media, they contacted Classic Media to inquire about licensing Lassie, but ended up proceeding without a license, which the complaint states would have cost more than $1,000,000 per television commercial.  That’s one pricey pooch!  The complaint alleges copyright infringement on one or more of the 1,200 registered Lassie works, including 1,000 TV episodes in which Lassie often was shown “coming to the rescue” running through the hills.  Make no bones about it, Wentworth and his design firm is in the doghouse on this one.  If you want to stay out of the doghouse, keep reading Brand Geek.

I am thankful to be a trademark attorney.

Brands symbolize relationships.  Relationships are emotional, which is part of why folks get so emotional about their brands.  Having counsel that “gets it” — whatever “it” is for your brand — and who makes sure your legal strategy meets your brand strategy is invaluable.

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