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U.S. Intellectual Property and New Media Law Update DOESN'T THIS BEAT ALL - MIXMASTER AT WAR Sunbeam Products, Inc. v. The West Bend Company (Fifth Circuit - Decided- September 15, 1997) "COKE TO GO" CUP CONQUERS - DESIGN PATENT UPHELD Berry Sterling Corp. v. Prescor Plastics, Inc. (Fed. Cir. -Decided- September 3, 1997) USE OF ROCKIES.COM FOR SALE OF BASEBALL RELATED ITEMS ENJOINED Lewis, et. al. v. Rocky Mountains Internet, et al. (DC Col. - Decided- September 26, 1997) THERE SHOULD BE ONLY ONE FLAVOR OF JAVA™ Sun Microsystems, Inc. v. Microsoft Corporation, Civil Action No. C97-20884 PVT (ND Cal. Filed October 7, 1997) DOESN'T THIS BEAT ALL - MIXMASTER AT WAR Sunbeam Products, Inc. v. The West Bend Company (Fifth Circuit - Decided- September 15, 1997) Sunbeam sued West Bend to stop West Bend from manufacturing and marketing a stand mixer which replicates the product configuration of Sunbeam's American Classic MIXMASTER under Section 43(a) of the Lanham Act and the Federal Trademark Dilution Act of 1995 (43(c) of the Lanham Act), as well as a variety of common law unfair competition claims. The distinctive elements alleged were: (1) distinctive torpedo-shaped housing configuration with a rear-mounted speed control dial that conforms to the shape of the housing; (2) a distinctive handle attached to the front of the housing that arches over the housing and terminates in the space above the housing; (3) a distinctive beater-eject button located on the left side of the housing beneath the handle; (4) a distinctive "tear-drop shaped" face plate on the front of the housing; (5) a distinctive horizontal stripe or groove along the side of the housing; and (6) a distinctive combination of black and white features. The District Court granted a preliminary injunction. The Defendant appealed the injunction to the Fifth Circuit. The Fifth Circuit raised and then avoided answering the question as to whether a trade dress in a product configuration can be inherently distinctive by finding that the District Court was not in error in determining, as a matter of fact, that secondary meaning clearly existed. The District Court made its determination based solely on the long history of use of the design by Plaintiff. There was an absence of empirical survey evidence. The Circuit Court noted that this reliance on history alone would not support a finding after trial of the existence of the requisite consumer association with product configuration. It was, however, sufficient to warrant a preliminary injunction. Essentially, the Fifth Circuit is saying, "Go out and get a survey for the trial." The Circuit Court also found that the District Court did not clearly err in finding that Plaintiff's design was not functional, strongly rebutting the Defendant's argument that since the design incorporated functional features it was not protectable. While the Circuit Court noted that the respective mixers were clearly labeled, it indicated that this was just one factor that may, in some cases, dispel consumer confusion under appropriate circumstances. The Circuit Court found that it is not an absolute affirmative defense to every trademark infringement claim. The decision is available on-line at: http://www.ca5.uscourts.gov A photograph of the American Classic Sunbeam Mixmaster can be viewed at: http://www.ipcounselors.com/mixmaster.htm "COKE TO GO" CUP CONQUERS - DESIGN PATENT UPHELD Berry Sterling Corp. v. Prescor Plastics, Inc. (Fed. Cir. -Decided- September 3, 1997) This lawsuit is for patent infringement of a cup design originally used in the "Coke to Go" program. The patented container design was developed in response to an industry-wide solicitation by Coca Cola Company requesting the development of a car cup. The cup had to have a 32 ounce capacity, had to have a spill-proof lid, had to fit in the majority of car cup holders, but be short enough to fit under the valve of a soda dispenser and, finally, to have a low production cost. After a number of tries, Plaintiff produced such a cup which was acceptable to Coca Cola and obtained a design patent. Defendants copied the design and Plaintiff sued. Defendants moved for summary judgment. The District Court invalidated the patent finding that the design shown in the design patent was functional. The Court of Appeals for the Federal Circuit ("CAFC") disagreed, vacated and remanded. The CAFC noted that the District Court could not use the limitations of the commercial embodiment of the underlying article of manufacture to impose limitations on the scope of the design patent. The CAFC also noted that the Court below erred by failing to return to the overall appearance after purportedly analyzing each of the elements of the design for functionality and by noting the existence of alternative designs, but failing to consider the alternative designs in deciding whether the design patent was invalid for functionality. The decision can be viewed at: http://www.ll.georgetown.edu/Fed-Ct/Circuit/fed/opinions/96-1380.html Fig. 7 of the design patent can be viewed at: http://www.ipcounselors.com/coke.htm USE OF ROCKIES.COM FOR SALE OF BASEBALL RELATED ITEMS ENJOINED Lewis, et. al. v. Rocky Mountains Internet, et al. (DC Col. - Decided- September 26, 1997) The Defendant/Counterclaimant, Colorado Rockies Baseball Club, Ltd., is the owner of the trademark ROCKIES and COLORADO ROCKIES for baseball services and related consumer goods and have so used the marks since July 1991. On or about April 1995, Plaintiffs/Counterclaimant Defendants began offering an electronic publication entitled "The Daily Colorado Rockies Web" covering the Rockies Baseball Team at the URL: WWW.ROCKIES.COM In December 1995, Plaintiff obtained a Colorado state trademark registration for "The Daily Rockies Web." Plaintiffs' "Daily Rockies Web" included a number of associative statements indicating a relationship with the Rockies including the statement that it was the "Official Source for the Rockies Fan"; an exact reproduction of the official Colorado Rockies media notes; reproductions of the Rockies trademarks and logos; a link to a site offering official Rockies merchandise; a representation that individual players on the Rockies team had established their own web page hosted by Plaintiff; representations that the public could send e-mail to Rockies players via the web site; its own logo for the Daily Rockies Web which was confusing similar to the Rockies logo; verbatim reproduction without any notice of the copyright publication of the "A to Z Guide to Coor's Field" (1995); and copyright notice placed on the Rockies copyrighted material. The Plaintiffs, for a short period of time dropped the use of the Rockies' trademarks on the web page in response to a request from Defendant/Counterclaimant. It introduced a new title "Colorado Rockies Daily News." In Defendants' request for a preliminary injunction, the District Court found a high likelihood of success both with regard to trademark infringement and with regard to the dilution claim. Interestingly enough, the injunction was quite limited. It barred the use of "Daily Rockies Web" or "Colorado Rockies Daily News" or other names, titles or indications which include Defendants' registered mark ROCKIES or COLORADO ROCKIES or any mark confusingly similar thereto as a trademark or source identifier to identify Plaintiff on any web site, web page or other publication owned or controlled by Plaintiff which is in any way related to baseball unless a different source is identified in conjunction with the use of the Rockies' marks. On the other hand, with regard to the logo, the restriction against use was absolute. The injunction also covered metatags and various other aspects of false advertising, a requirement for no baseball related music in an accompanying audio track and a disclaimer of lack of relationship with the Colorado Rockies Baseball Club. Finally, it barred use of the domain name ROCKIES.COM for any web site dedicated in whole or in part to professional baseball. The sum and total of this injunction is to takes into account that the word "rockies" is in common use in the Rocky Mountain states and to, accordingly, limit use only with regard to professional baseball. This decision can be viewed at: http://www.ipcounselors.com/rockies.htm Plaintiff's website can be viewed at: http://www.rockies.com/ THERE SHOULD BE ONLY ONE FLAVOR OF JAVA™ Sun Microsystems, Inc. v. Microsoft Corporation, Civil Action No. C97-20884 PVT (ND Cal. Filed October 7, 1997) As you have probably heard by now, Sun Microsystems, Inc. has sued Microsoft Corporation claiming that Microsoft has breached two written agreements licensing Microsoft to use the JAVA™ compatible trademark and technology. The complaint claims defendant is guilty of trademark infringement, false advertising, breach of contract, unfair competition, interference with perspective economic advantage, and inducing breach of contract. Among other things, in the agreements (which were filed under seal with the Court) Microsoft agreed to include the JAVA™ technology in Internet Explorer 4 (IE4), among other programs, in a manner that fully conforms with and adheres to Sun's set of published specifications and public application programming interfaces ( JAVA™ APIs), and agreed not to distribute any product incorporating the Sun JAVA™ technology that did not pass the test suite provided by Sun to ensure the product Microsoft distributes are in fact compatible with Sun's set of JAVA™ specifications and JAVA™ APIs for the JAVA™ technology. As anyone who uses IE4 knows, Microsoft has produced its own JAVA™, a more-or-less JAVA™ which breaks the cross-platform capability of the JAVA™ programming environment. In furtherance of this activity, the Complaint alleges that Microsoft modified the APIs of the JAVA™ class libraries in IE4 and other products to make the programs WIN 3.2 specific. Sun contends this was done secretly. The complaint in the case is a massive 41 pages. The complaint can be viewed at: http://www.ipcounselors.com/java.htm Sun Microsystem's Press Release announcing the suit can be viewed at: http://www.sun.com/announcement |
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