GaneshaFish.com » infringement

Paris Hilton continues her IP education… from the defendant’s chair

jfischer1975 — Wed, 06 Jan 2010 00:51:28 +0000

After getting the go-ahead from the Ninth Circuit earlier this year on her “That’s Hot!” trademark infringement case against Hallmark, hotel heiress Paris Hilton has apparently signed up (although unwillingly) for another intellectual property lesson. This time, she’s going to be studying design patents. Her professor, a footwear designer called Gwyneth Shoes, claims that its design patent has been infringed by Ms. Hilton’s kicks. (Source.)

If you look closely, you can see the heart.

Design patent protection is similar to copyright protection, in that the alleged infringer is in trouble if they’ve produced something that is substantially similar to the protected design. However, while the government simply gives out copyright registrations, upon request, design patents are only awarded after an examination is done and it has been determined that the proposed design is novel (i.e., no one else has previously designed a product like this).

Gwyneth’s design

The prize for successfully prosecuting a design patent application? Complete national monopoly for 14 years. Since copyright protection lasts for a minimum of 70 years, some people would argue that a design patent is hardly worth the effort and cost. The problem with that logic is that copyrights come with a whole boatload of limitations, leaving room for potential defendants to get away free. As a key example, fair use and independent creation are no defense to a charge of design patent infringement. Just ask Paris Hilton, who undoubtedly has just learned about this little wrinkle from her attorney.

This article was originally posted on The Tactical IP Blog

The North Face claims that consumers don't know their heads from their asses

jfischer1975 — Sat, 03 Oct 2009 19:49:25 +0000

Clothing producer, The North Face (TNF), recently got a lesson in how bad trademark enforcement decisions can make a company look silly. It seems a St. Louis teen thought that it would be amusing to create a clothing line parody, calling it “The South Butt,” — south being the logical opposite of north and butt being… well… you get the idea. TNF was not amused, however, and they set their attorneys to attack mode, sending a cease and desist letter to the college freshman (source).

TNF’s letter asserted that use of the “South Butt” logo (pictured below) constitutes an infringement of their own federally registered trademark (pictured above). On its face, TNF’s claim is not so unreasonable. As any trademark owner (who has a decent attorney) can tell you, trademark rights can be lost if you don’t enforce them. TNF must, in order to maintain its ability to sue legitimate infringers, actively look for unauthorized uses of its logo. However, owning federal trademark rights does not mean you can stop every use of your mark that you don’t like. Federal trademark law was created to prevent consumers from becoming confused about the source of goods, not give complete exclusionary rights in logos, words, and phrases. It certainly wasn’t meant to give companies the power to stifle criticism — a point that corporate attorneys seem to frequently fail to explain to their clients.

In order to be actionable as an infringement, the South Butt logo must be likely to cause confusion in the minds of the consuming public. In other words, if “a moron in a hurry” would not be able to tell the difference between these two logos, then TNF could conceivably stop South Butt from using their logo. I think South Butt’s attorney states the issue with TNF’s claim pretty well:

I did try to explain with a great deal of candor to counsel for the North Face that the general public is aware of the difference between a face and a butt. (source)

The irony is that, as many other companies have learned in the past, over enforcing your trademark rights can have the exact opposite effect from the one that you intended. In this case, only a few people were even aware of the “South Butt” brand before TNF took any action. Presumably, TNF wanted to suppress this innocent gibe at their popular brand, but instead, they only managed to boost web traffic at shop.thesouthbutt.com.

This story was originally published on The Tactical IP Blog.

Suit Filed in Utah Over Male Chastity Belts

jfischer1975 — Sat, 24 Jan 2009 00:11:17 +0000

A.L. Enterprises, Inc. (“ALE”), a Nevada corporation, sued a Canadian manufacturer of male chastity belts in Utah this week. ALE alleges that Latitudes International (“Latitudes”) has shipped products into the United States that bear ALE’s federally registered trademarks.

While this story would seem to be of a kind that would appear first on this blog, we were scooped by Mr. Gile over at Las Vegas Trademark Attorney. Respect.

“[I]t’s simulated wood design gives it a ‘warm, earthy feel.’”

As the owner of federal registrations for the trademarks “CB-3000″ and “CB-6000″, to be used in association with devices conducive to male chastity, ALE has the right to prevent others from selling similar products in the U.S. under the same marks. Latitudes is accused of doing just that.

According to the complaint, Latitudes is selling counterfeit versions of ALE’s products at two websites, http://www.chastitydeviceformen.com/ and http://www.latitudes-international.com/. Indeed, the website does appear to be offering the same three types of “devices” that ALE sells and using the same trademarks to identify its goods.

Perhaps the most interesting detail in this story, at least to this observer, is that the USPTO has two separate classes of goods for:

“Devices conducive to male chastity, namely, chastity belts for men” and
“Adult sexual aids conducive to male chastity, namely, chastity restraints for men”

This story was originally published on The Legal Satyricon.