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U.S. Intellectual Property and New Media Law Update STAR WARS Starter Corp. v. Converse, Inc. (Second Cir. - March 12, 1999) FOOD FIGHT Luigino’s, Inc. v. Stouffer Corp. (Eighth Cir. - March 15, 1999) SOFTWARE VERSIONS FIGHT Montgomery v. Noga et al. (Eleventh Cir. - March 5, 1999) RUNNING OUT OF JUICE Ritchie v. Simpson (Fed. Cir. - March 15, 1999) STAR WARS Starter Corp. v. Converse, Inc. (Second Cir. - March 12, 1999) Since 1917, Converse has been using a five-pointed star on athletic footwear. In 1988 Starter filed an application to register an "S and star" mark. Converse opposed the application and an agreement resulted which allowed Starter to register the "S and star" mark for apparel, excluding footwear. Starter indicated that they were not using a "star" logo on shoes or sneakers and had no plans for doing so. Along came 1995, and a major change in the sports apparel industry, called "head-to-toe" marketing. Universities and athletic teams began to purchase all of their athletic apparel from head gear to shoes from a single provider. Suddenly, Starter, who had been using the "star" design on apparel, wanted to also have matching shoes. Starter brought a declaratory judgment action and lost after a jury trial. The jury found that Starter's use of the "S and star" composite mark on athletic footwear would cause a likelihood of consumer confusion, and that there was a binding contract between Starter and Converse and, in any case, that Starter was estopped because Starter's oral representations were that it would not use the "star" marks on athletic shoes. The Second Circuit confirmed the District Court's finding that evidence as to the negotiations before and after the settlement agreement were admissible on the question of estoppel, even though the settlement negotiations would normally be barred under Fed.R.Evid. 408. Since the evidence was offered for purpose other than proving the validity of the claim that the agreement was meant to settle, it was still admissible on the issue of estoppel. The District Court judge sua sponte issued an injunction which barred the use of the "S and star" mark alone or in combination with other words and letters. First, the Court noted that the judge had the inherent right to issue an injunction to protect the results of a finding in a declaratory judgment action but went on to find that the jury only made findings with regard to the "S and star" mark standing alone and, thus, the injunction had to be tailored to that limitation. The decision can be reviewed at: http://caselaw.findlaw.com/cgi-bin/getcase.pl?court=2nd&navby=case&no=979030 FOOD FIGHT Luigino’s, Inc. v. Stouffer Corp. (Eighth Cir. - March 15, 1999) Stouffer markets low fat frozen food products under the mark LEAN CUISINE. Luigino's markets a low fat frozen food product under the mark MICHELINA'S LEAN 'N TASTY. The opinion of Luigino's counsel was that it could register MICHELINA'S LEAN 'N TASTY but not LEAN 'N TASTY. At the time of introduction of MICHELINA'S LEAN 'N TASTY in 1996, Stouffer objected. Luigino brought this action against Stouffer for a declaratory judgment that its mark did not infringe or dilute the LEAN CUISINE trademark. The District Court granted summary judgment for Luigino's, finding no likelihood of confusion between the LEAN CUISINE mark and MICHELINA'S LEAN 'N TASTY. Applying the Eighth Circuit test, the Court noted that the LEAN CUISINE mark is a strong mark and the two products are in direct competition. On the question of the similarity of the marks, predatory intent and implications of type of product and condition of purchase on the likelihood of confusion, the Court found that Stouffer had failed to present sufficient evidence to raise the genuine issue of material fact. The Court analyzed the appearance of the marks, finding that they look and sound different, and a difference in meaning between "cuisine" and "tasty." It also noticed the visual distinction between the two packages. Given the lack of evidence of actual consumer confusion, it found that Stouffer had failed to raise a genuine issue of material fact regarding whether the marks are confusingly similar. After all was said and done, Stouffer merely showed that the two products compete and that LEAN CUISINE remains the market leader of low fat frozen entrees. With regard to the dilution count, LEAN CUISINE was conceded as a famous mark, and the LEAN 'N TASTY mark was adopted after Stouffer's mark became famous. The remaining question was whether there was blurring, i.e., did consumers see a connection between LEAN CUISINE and LEAN 'N TASTY. In other words, the mark must at least be similar enough that a significant segment of the target group of customers sees the two marks as essentially the same. Stouffer failed to offer evidence that MICHELINA'S LEAN 'N TASTY" mark caused consumers to associate the LEAN CUISINE mark with something other than Stouffer's frozen entrees. The District Court judgment was affirmed. The decision can be reviewed at: http://ls.wustl.edu/cgi-bin/8th/release.pl By entering "March 15, 1999" and downloading the case in PDF format. SOFTWARE VERSIONS FIGHT Montgomery v. Noga et al. (Eleventh Cir. - March 5, 1999) This is an appeal of a jury case finding copyright and trademark infringement. Involved is a picture viewing software, VPIC, developed by Plaintiff which was used by Defendant in their pornographic CD-ROMs without a license, suppressing the copyright notice. The Defendants maintained that the copyright count should have been thrown out as a matter of law since versions prior to Version 1.4 were published without notice. Plaintiff did register its Version 2.9a in August of 1990. It then continued development through Version 4.3 which was used by the Defendants without license. Defendants had a multi-pronged attack on the registration, Versions through 1.4 were in the public domain and that Version 2.9a was not sufficiently original to support a valid copyright as a derivative work. The Eleventh Circuit pointed out minimal requirements for a separate copyright in a derivative work, i.e., met the minimal degree of creativity necessary. Defendants also argued that the Version 4.3 must be considered a distinct version and, accordingly, was not covered by the registration for Version 2.9a. The Court pointed out that there was a 70% overlap between the programs and, thus, those portions that were copyrighted in Version 2.9 that remained in Version 4.3, would be protected under that original copyright. The Lanham Act claim arose from misidentification of the ownership of the copied software. The CD-ROM help menu indicated that the VPIC was not merely copyrighted by the Defendants but actually stated that they owned the software menus and, accordingly, the 43(a) claim was appropriate. The decision can be reviewed at: http://www.law.emory.edu/11circuit/mar99/95-3000.man.html RUNNING OUT OF JUICE Ritchie v. Simpson (Fed. Cir. - March 15, 1999) William B. Ritchie is a family man, a religious man and a moral man, or so he alleges. When O. J. Simpson's applications for the marks O J SIMPSON, O.J. and THE JUICE were published for opposition, Mr. Ritchie opposed, citing two statutory grounds. First, that the marks were immoral and scandalous matter and should be denied registration under Section 2(a) of the Lanham Act, and the second, that one of the marks is primarily merely a surname and, thus, unregistrable under Section 2(e)(4) of the Lanham Act. The Trademark Trial and Appeal Board dismissed the opposition, holding that Ritchie did not have the standing to oppose the registrations. Mr. Ritchie then appealed to the U.S. Court of Appeals for the Federal Circuit who, in this opinion found standing and sent the matter back to the TTAB for discovery and trial. Whether a mark comprises immoral and scandalous matter is normally to be ascertained in the context of contemporary attitudes and the relevant view point is not necessarily of the majority of the general public, but of a substantial composite. Accordingly, the PTO may not readily assume without more, that they know the views of a substantial composite of the public. The best method to ascertain this information, is to allow interested members of the composite of the general public who consider the mark to be scandalous to bring opposition proceedings, thereby avoiding the risk of the PTO pre- judging public attitudes. The TTAB is not an Article III court that requires a case in controversy. All that is required is that the opposer have a real interest in the proceeding and must have a reasonable basis for his belief of damages to him by registration of the opposed mark. The fact that a particular interest is shared by many, rather than few, does not make the interest less deserving of legal protection through the judicial system. The only requirement is that the parties seeking review must, themselves be among the injured. Thus, there is no requirement that the opposer have an interest beyond that of the general public. Mr. Ritchie's Notice of Opposition indicated that he was damaged by the registration of the mark because the marks disparages values, especially those values relating to his family. Mr. Ritchie describes himself as a family man, who believes that the sanctity of marriage requires a husband and wife who love and nurture one another and is a member of the group that could be potentially damaged by marks that are allegedly synonymous with wife beater and murderer. Mr. Ritchie also alleged that the marks were scandalous because they would attempt to justify physical violence against women. Equally, Mr. Ritchie must establish the reasonableness of his belief of damage. In other words, that his belief is other than subjective. In the Notice of Opposition, Mr. Ritchie alleges that he has obtained petitions signed by people from all over the United States who agree with him that the marks at issue are scandalous, denigrate their values, encourage spousal abuse and minimize the problem of domestic violence. Judge Newman of the Federal Circuit, wrote a strong dissent, considering Mr. Ritchie a mere intermeddler and Mr. Ritchie's interest no more than that of the general public. Decision can be viewed at: http://www.ll.georgetown.edu/Fed-Ct/Circuit/fed/opinions/97-1371.html |
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