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U.S. Intellectual Property and New Media Law Update A FOOTBALL TEAM BY ANY OTHER NAME Harjo, et al. v. Pro-Football, Inc. (TTAB April 5, 1999) GARNISHING DOMAIN NAMES Umbro International, Inc., Judgment Creditor, v. 3263851 Canada, Inc., Judgment Debtor and Network Solutions, Inc., Garnishee (Nineteenth Judicial Circuit of Virginia, Fairfax County Judicial Center - Decided: February 3, 1999) NINTH CIRCUIT FLIP-FLOP Coastal Abstract Service, Inc. v. First American Title Insurance Company, et al. (Ninth Cir. - March 23, 1999) BURGER KING'S BATTLE Burger King Corp. v. C. R. Weaver et al. (Eleventh Cir. - March 9, 1999) THE GREATEST SNOW ON EARTH? Ringling Bros.-Barnum & Bailey Combined Shows, Inc. v. Utah Division of Travel Development (Fourth Cir. - March 16, 1999) DOMAIN NAME DILEMMA Brookfield Communications Inc. v. West Coast Entertainment Corp. (Ninth Cir. - April 22, 1999) A FOOTBALL TEAM BY ANY OTHER NAME Harjo, et al. v. Pro-Football, Inc. (TTAB April 5, 1999) This politically explosive exercise in political correctness has been floating around the halls of the TTAB since 1992. In view of the changing sensibilities of society during this period, the delay and the decision are more than understandable. This is a cancellation proceeding brought by a group of American Indians to cancel Pro-Football, Inc.'s registrations: THE WASHINGTON REDSKINS, REDSKINS and various design forms of these two marks, for use in entertainment services, namely presentations of professional football contests. Yes, we are talking about the NFL football team. The Native Americans petitioned for cancellation under Section 2(a) of the Lanham Act in that they understood that REDSKINS was and is a pejorative, derogatory, denigrating, offensive, scandalous, contemptuous, disreputable, disparaging and racist for a Native American person. Section 2(a) prohibits marks which "comprise immoral, deceptive or scandalous matter or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs or national symbols or bring them into contempt or disrepute." The first question answered by the Board was the period of time to gauge violation of this section. The Board had found in previous decisions and reaffirmed here that the time period to be reviewed was the time period when the subject registrations issued, i.e., whether the marks comprise scandalous matter or matter which may be disparaging to Native American persons or which may bring Native American persons into contempt or disrepute must be at the date of the registration and not that of the present day. Thus, Registrant's argument that the term "redskins" was no longer interpreted negatively did not rehabilitate the mark. The Board then goes on to lay out the necessary elements of proof with regard to each of these offenses to Section 2(a) and found that the term REDSKINS violated each. It then canceled each of the REDSKINS registrations. Probably the most remarkable thing about this case was the amount of evidence that was educed by both sides on questions such as the historical use of REDSKIN as a derogatory term in the late 1800s. The complaint listed derogatory references in the Encyclopedia Britannica, the 19th Edition, a 1919 movie, and a book which included a chapter entitled "The Danger of Employing Redskins as Movie Actors." (I personally think it is dangerous to employ anyone regardless of race as a movie actor because it leads to excess consumption of fire water and worse.) This evidence indicated that the term was most likely racist until recently when it has lost its edge. Interestingly enough, the Board prefaced its analysis by emphasizing that it was only deciding whether, under Section 2(a) grounds asserted, the service marks shall remain registered and that it did not decide whether the word REDSKINS may be used as part of the name of respondent's professional football team. However, one wonders what court will enjoin use by others of REDSKINS in view of the PTO determination by the Board that it brings Native Americans into contempt or disrespect. Certainly not a judge who is a fan of the Dallas Cowboys. The TTAB did find that the portrait of the Native American was not in any way disparaging since it simply showed a realistic portrait of a Native American and would not in any manner be perceived as disparaging by a composite of Native Americans. The decision can be reviewed at: http://www.uspto.gov/web/offices/com/sol/foia/ttab/2aissues/1999/1999.htm GARNISHING DOMAIN NAMES Umbro International, Inc., Judgment Creditor, v. 3263851 Canada, Inc., Judgment Debtor and Network Solutions, Inc., Garnishee (Nineteenth Judicial Circuit of Virginia, Fairfax County Judicial Center - Decided: February 3, 1999) In this case, the Nineteenth Judicial Circuit of Virginia had to decide a case of first impression under Virginia law. A Judgment Creditor, Umbro International, a manufacturer of soccer clothing and equipment, sought to garnish the domain name registrations registered by the Judgment Debtor with the Garnishee, NSI. NSI responded by indicating that it did not hold any property of the Debtor which was subject to garnishment. The Judgment Debtor was a Canadian corporation which registered the domain name UMBRO with NSI and used it to distribute pornographic material over the Internet. As a result of this suit the Judgment Debtor received an award of reasonable attorneys' fees of $23,489.98 which it wishes to collect. Under Virginia statute, the question became whether a Judgment Debtor had a possessory interest in the domain name it registered with NSI. NSI argued that domain names would not be covered because the contract rights set forth in the registration agreement are dependent on unperformed conditions. These arguments fail in front of NSI's dispute policy which specifically indicates that it will be subservient to court orders on issues of domain name ownership. NSI's next argument was a beaut. It was that it would be forced to perform services for those of whom it may not desire to do business. The Court noted the 3.5 million domain names and the fact that the process of registration was automated, to find the argument less than compelling. If any of our readers know of any other recent domain name garnishment cases, in states other than Virginia, we would like to hear about them. The decision can be reviewed at: http://cerebalaw.com/umbro.htm NINTH CIRCUIT FLIP-FLOP Coastal Abstract Service, Inc. v. First American Title Insurance Company, et al. (Ninth Cir. - March 23, 1999) Without going into the facts in depth, in a previous decision the Court found that two out of three statements which were the subject matter of the suit, were not defamatory nor in violation of Section 43(a) of the Lanham Act and the third was actionable. The Ninth Circuit at the time remanded the case for determination of the damages. In this decision, the Ninth Circuit maintains its position that two of the three statements do not meet the requirements as a matter of law for Section 43(a) or state defamation laws. Thus, statements that Plaintiff was too small to handle certain business was considered mere bufery and the statement that the Plaintiff was not licensed in California was unclear an open question under California law. The Court then went on to discuss the tortuous interference with contract count. The Court indicated that since two of the three statements on which the jury may have relied on in finding tortuous interference may have served as a basis for the jury's determination that those statements were improper methods of evidence of bad motif simply because they were unlawful. Accordingly, there is a possibility that they were improperly tainted by the error regarding two of the three statements in dispute. Thus, the Court reversed the damage award for tortuous interference as well and remanded for retrial of those damages as well as the others. BURGER KING'S BATTLE Burger King Corp. v. C. R. Weaver et al. (Eleventh Cir. - March 9, 1999) This case arises from the Burger King Corporation's decisions to license the opening of a competing Burger King restaurant near two existing Burger King restaurants. It is a suit centered on the two existing Burger King restaurants which were owned by the Defendant. Upon entry of the new Burger King, Defendant stopped making rent and royalty payments to Burger King. Burger King sued under its franchise agreement for payment and Defendant counterclaimed on a wide variety of grounds. The District Court for the Southern District of Florida granted summary judgment to Burger King for claims of breach of contract and trademark infringement and denied the counterclaims. The Court noted that the franchise agreement did not in any way grant or imply any area, market or territorial rights proprietary to the Defendant. There had been a number of decisions going either way on the implied covenant of good faith dealings with regard to franchise agreements. Some courts have found that breach of implied covenant is a jury issue and others have found that such breach of implied covenant is a question of law. The Eleventh Circuit reviewed Florida cases on the covenant of good faith and fair dealing, and found that Florida has refused to apply the covenant where the party alleged to have breached the implied covenant has in good faith performed all the express contractual provisions or where the implied duty of good faith eventual breach would vary the express terms of the contract. The Eleventh Circuit found, accordingly, for the Plaintiff since the Defendant could not site an express provision of either franchise agreement that had been breached. Such failure to so identify a provision dooms a claim for breach of implied covenant of good faith and fair dealing under Florida law. There is no independent action under Florida law for the breach of implied covenant of good faith. The decision can be viewed at: http://www.law.emory.edu/11circuit/mar99/96-5438.man.html THE GREATEST SNOW ON EARTH? Ringling Bros.-Barnum & Bailey Combined Shows, Inc. v. Utah Division of Travel Development (Fourth Cir. - March 16, 1999) In this case, the Fourth Circuit interprets "the dauntingly exclusive concept" of federal trademark dilution. Ringling Bros. sued the State of Utah's slogan THE GREATEST SNOW ON EARTH based on its famous trademark THE GREATEST SHOW ON EARTH. The District Court found that the Ringling Bros. had failed to prove dilution under the act and gave judgment for the State of Utah. In this opinion, the Fourth Circuit affirms. The history is a long one on both sides, with Utah gaining a registration in THE GREATEST SNOW ON EARTH even though opposed by Ringling Bros. To make its case, the Ringling Bros. burden was to show that the mark was a famous one, that Utah adopted its mark after Ringling Bros. had become famous and that Utah's mark diluted Ringling by blurring it. From the evidence educed, it was clear that Ringling Bros.' mark was famous and it that it had been adopted before Utah's mark, leaving the question only of blurring. Ringling Bros. took the position that blurring occurs when a junior mark is either identical to or sufficiently similar to a famous mark that persons viewing the two instinctively will make a mental association between the two. The Court rejected that mental association alone was sufficient to show blurring. Beyond that the junior mark must cause actual harm to the senior's mark's economic value as a product identifying an advertising agent. Arriving at this conclusion, the Fourth Circuit admitted that it was not within the four walls of the statute and looked to the history of this dilution. The history reviewed was a long one going back to previous attempts to have a dilution statute. It is an interesting read if you are a student of the law as well as a practitioner at law. hey found that there has to be sufficient similarity between the junior and senior mark to invoke a distinctive mental association of the two by a relevant universe of consumers which is the effective cause of an actual lessening of the senior mark's selling power, expressed as "its capacity to identify and distinguish goods and services." Decision can be viewed at: http://www.law.emory.edu/4circuit/mar99/971399.p.html DOMAIN NAME DILEMMA Brookfield Communications Inc. v. West Coast Entertainment Corp. (Ninth Cir. - April 22, 1999) This case is a cyberspace shoot-out between an entertainment industry information provider and a video rental store chain. The Plaintiff gathers and sells information about the entertainment industry and it obtained federal registration of its mark MOVIEBUFF for software. Thereafter, it learned that one of the nation's largest video rental store chains intended to launch a web site as MOVIEBUFF.COM containing, inter alia, a searchable entertainment base similar to Plaintiff's. The Defendant had registered MOVIEBUFF.COM with NSI before Plaintiff had filed for its trademark registration and was part of its service mark THE MOVIE BUFF'S MOVIE STORE which had been registered in 1991. The Plaintiff sued and its preliminary injunction was denied. The denial was appealed and the Ninth Circuit entered an order enjoining the Defendant from using or facilitating the use in any manner, including advertising promotion, the mark MOVIEBUFF or any other term or terms likely to cause confusion therewith, including MOVIEBUFF.COM. Skirmishes continued in the Court of Appeals with the Defendant seeking a reconsideration and then raising of the bond requirement, all denied. This opinion is the full elucidation of the order enjoining the Defendant by the Ninth Circuit. The Court noted that the .com marks were usually used with the company's name and were normally used in metatags which are used by search engines to locate the company. In both cases here, Plaintiff's mark MOVIEBUFF was used by Defendant both as a domain name and as a metatag. The Ninth Circuit found that the earlier use of MOVIE BUFF as part of a larger mark did not give an earlier priority since such would have been limited to the legal equivalent of the mark in question or indistinguishable from it which certainly did not exist with regard to the slogan. The Court noted that the Plaintiff first used its MOVIE BUFF on Internet based products and services in August 1997. In order for Defendant to prevail as a first user, it must establish its first use earlier than that date. While Defendant registered the domain name MOVIEBUFF.COM in February 1996, it did not use the mark until after Plaintiff's use. The mere intent to use the mark creates no right a competitor is bound to respect. |
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