|
|
|
|
|
|
||||
|
|
|
|
|
|
» Home Page » Members » Practice Areas » Clients   » Publications Articles VIP Newsletter Guide to Registering Read Excerpts  » Events & Speaking » Contact Us » 1-800-343-IDEA |
|
U.S. Intellectual Property and New Media Law Update BLURRED GOLDFISH Nabisco, Inc. v. PF Brands, Inc. (S.D.N.Y. - February 9, 1999) USE OF CARMAX IS MINIMAL Circuit City Stores, Inc., et al., v. CarMax, Inc., et al. (Sixth Cir. - January 22, 1999) THERE’S NO BUSINESS LIKE NEWS BUSINESS Nihon Keizai Shimbun, Inc. v. Comline Business Data, Inc., et al. (Second Cir. - January 22, 1999) TRADEMARK INFRINGEMENT AS ADVERTISING INJURY ShoLodge, Inc. v. Sumner Suites Hotel, et al. (Sixth Cir. - February 8, 1999) BLURRED GOLDFISH Nabisco, Inc. v. PF Brands, Inc. (S.D.N.Y. - February 9, 1999) We have all munched Pepperidge Farm's goldfish-shaped snack. The shape of the goldfish as well as the name "Goldfish" are protected by incontestible trademark registrations. Nabisco is an active competitor in the cheese cracker market. It intended to introduce a new munch called "CatDog" after a Nickelodeon program. While the program has a large list of characters, only cheese cracker images of one of the characters, "CatDog," and a bone and a fish, are models for the new cheese crackers. Before the product reached the market, Pepperidge Farms sent a warning letter and Nabisco filed an action for declaratory judgment. Pepperidge Farms then counterclaimed and moved for Preliminary Injunction. The injunction was based on both federal and New York State dilution statutes. The Court gives a detailed analysis of the federal statute which may be of interest to our readers and found dilution, enjoining the introduction of the "CatDog" product, leaving Nabisco holding bags of goldfish in their warehouse. The most interesting aspect of the case was the finding of willful infringement buttressed in part by Nabisco claim of Attorney/Client Privilege. In particular, Nabisco did ask its attorney for an opinion prior to the warning letter concerning whether there was a conflict with Pepperidge Farms, and received an oral evaluation. During discovery, Nabisco refused to disclose the contents of the communication as privileged. The Court took note that normally, oral opinions are only given when no one wants the results to be in writing, stating "although Nabisco is entitled to rely on this privilege, its apparent that the counsel advised Nabisco that the use of the goldfish shape might be believed to infringe Pepperidge Farms' mark." The inference was good enough for the Court, noting that the declaratory judgement action was started five months after Nabisco's decision to use the goldfish shape that Nabisco, four weeks before the product launch and just three months after receiving counsel opinion. It only filed after Pepperidge Farms' cease and desist letter. Ergo, intentional infringement. The decision can be reviewed at: http://www.nylj.com/decisions/99/02/020999ba.htm USE OF CARMAX IS MINIMAL Circuit City Stores, Inc., et al., v. CarMax, Inc., et al. (Sixth Cir. - January 22, 1999) This is one of those cases which is utterly fact dependent and useful in seeing how the Sixth Circuit perceived the facts. Defendants initially used the mark before Plaintiff and the question became was this earlier use considered continuous, actual use of the mark CARMAX sufficient to warrant a common law right of ownership. The Sixth Circuit found that the burden of proof lay on the Defendants to establish their prior right. The evidence produced was, at best, skimpy and inconsistent. Given these facts the Sixth Circuit upheld the injunction granted against defendants by the District Court. The decision can be reviewed at: http://caselaw.findlaw.com/cgi-bin/getcase.pl?court=6th&navby=case&no=990026p THERE’S NO BUSINESS LIKE NEWS BUSINESS Nihon Keizai Shimbun, Inc. v. Comline Business Data, Inc., et al. (Second Cir. - January 22, 1999) Plaintiff is a Japanese corporation that publishes financial, business and industry news which it sells through a number of publications including some in Japanese and some other languages in translation, including English throughout the world. Defendant, Comline Business gathers news articles from a variety of sources and sells abstracts "or, less charitably, rough translations" of those articles to its customers. The Japanese company sued for copyright infringement. There was an award of $220,000 in damages and $200,000 in attorneys' fees for the Plaintiff and Defendant appealed. The defense was that only the underlying facts and not the expression was copied and that to the extent copied, it was fair use. The Second Circuit went through a detailed analysis of the twenty-two instances of infringement found by the Court below and found that twenty of them had the same structure and organization, followed the same chronology and subsequence grouping of facts and resulted in the same conclusions or resolutions, i.e., infringement. Two did not. One because it was written in an original style and the other because the amount copied was far less than the remainder. The District Court award was thus upheld with instructions to the District Court to adjust the amount for the two non-infringements. No one seems to have raised the doctrine of misappropriation for the two not infringed, although the facts are similar to the venerable and vulnerable case of International News Service v. Associated Press, 248 U.S. 215 (1918). The abstracts did reference the Plaintiff. The District Court found that this was trademark infringement, the Second Circuit found otherwise. It was merely a fair use to indicate the source or origin. The decision can be reviewed at: http://caselaw.findlaw.com/cgi-bin/getcase.pl?court=2nd&navby=case&no=987842 TRADEMARK INFRINGEMENT AS ADVERTISING INJURY ShoLodge, Inc. v. Sumner Suites Hotel, et al. (Sixth Cir. - February 8, 1999) In Miller v. Travelers Indem. Co. (Sixth Cir. - December 21, 1998) [January 11, 1999 Newsletter], the Sixth Circuit found that inadvertent or contributory patent infringement was not advertising injury under defendant's liability insurance policy even where the advertisement was the inducement to infringement. In what amounts to a companion opinion, the same Court has found that trademark infringement does not fall under a similar clause. The underlying case was a suit over whether the service mark SUMNER SUITES infringed the service mark SUMMERFIELD SUITES. Here, as in the earlier case, the Defendant attempted to invoke its insurance policy covering advertising injury and, upon denial of coverage, instituted an action to enforce the insurance contract. The advertising injury was defined in the contract as (a) oral or written publication or material that slanders or libels a person or organization or disparages a person's or organization's goods, products or services; (b) oral or written publication of material that violates a person's right of privacy; (c) Misappropriation of advertising ideas or style of doing business; or (d) infringement of copyright, title or slogan. The alleged infringer argued that the misappropriation of advertising ideas or style of doing business and infringement of copyright, title or slogan were ambiguous terms and must, therefore, be interpreted in favor of the insured. The ambiguity is, of course, whether it included claims for service mark infringement. The Court looked to the contract as a whole and found that misappropriation of advertising ideas or styles of doing business does not refer to a category grouping of actionable conduct which includes trademark or trade dress infringement. The Court broadly found that the same rationale applies whether it is trademark, trade dress or service mark infringement. The Court also distinguished "Infringement of Copyright Title and Slogan" from service mark infringement since a service mark is not a copyright, it is not a slogan, and not a "title". "Title" refers to a non-copyrightable title of a book or a film or other literary or artistic work and does not refer to service mark usage such as the name of a hotel or other establishment. The decision can be reviewed at: http://caselaw.findlaw.com/cgi-bin/getcase.pl?court=6th&navby=case&no=990043p |
|
|
|
|
|
|
||||
|
|
Call for a free consultation:
|
|