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U.S. Intellectual Property and New Media Law Update THE FISH WILL OUT Nabisco, Inc. et al. v. PF Brands Inc. et al. (Second Cir. - August 31, 1999) DOMAIN NAME COMMON SENSE Avery Dennison Corp. v. Sumpton (Ninth Cir. - August 23, 1999) BARNEY ABUSE Lyons Partnership v. Giannoulas (Fifth Cir. - July 7, 1999) SUITES IN SUIT Ashley Furniture Industries Inc. v. Sangiacomo N. A. Ltd. (Fourth Cir. - August 10, 1999) THE FISH WILL OUT Nabisco, Inc. et al. v. PF Brands Inc. et al. (Second Cir. - August 31, 1999) This case protects an American icon, the GOLDFISH cracker. Pepperidge Farm has produced its small goldfish-shaped cheddar cheese cracker since 1962. It has obtained numerous trademark registrations for the goldfish design. It has been heavily advertised and received substantial media coverage. $2,000,000 worth of this homage to ichthyology is sold each year. In other words, this is one famous fish. Nickelodeon Television Network gave Nabisco a right to produce cheese crackers in shapes based on its "CatDog" cartoon. "CatDog" is a two-headed creature, half cat and half dog. The fish is a favorite food and a symbol of the cat half. The dog loves the bones which are its emblem. "CatDog" crackers were divided 50% in the shape of the two-headed "CatDog", 25% in the shape of the bone and 25% in the shape of a fish. Unfortunately for Nabisco, the fish-shape cracker closely resembled the Pepperidge Farm's GOLDFISH. (The word is, it also tastes the same, however, no "tastemark" was claimed.) Pepperidge Farm discovered the existence of Nabisco's fish before the product was marketed and wrote a cease and desist letter. Nabisco sued for Declaratory Judgment of Non-Infringement. Pepperidge Farm counterclaimed for trademark infringement and trademark dilution. The District Court granted the Preliminary Injunction based on federal and state dilution claims but not on trademark infringement or state unfair competition claims because the goldfish was only one part of the three-shape mixture which most prominently featured the "CatDog." (See Vol. III, Issue V for the original injunction.) Here, the Second Circuit, too, found dilution as a proper basis for Preliminary Injunction. It went on to indicate that a simple test for Federal dilution was yet to be developed. Accordingly, every relevant fact should be looked at in each case, not only to reach the decision in that case, but in the long term to develop a body of law which will establish the criteria for dilution. The Court pointed out that a famous mark may not, in fact, be distinctive in the sense of the normal trademark quartet of arbitrary, suggestive, descriptive and generic classes and that under the federal statute, a form mark must also be distinctive to be protected against dilution. What this means has already been a subject of much comment and can only be at variance with other circuits, such as the Ninth. The Court specifically noted that the anti-dilution statute was appropriate to be used with competing products. Of particular interest to practitioners in the Second Circuit was the Court's statement that a newcomer was not required to do a trademark search, correcting the impression left by the two Hilfiger decisions that absence of a full search equated to bad faith (see Vol. I, Issue 8 and Vol. II, Issue 24). The decision can be reviewed at: http://caselaw.findlaw.com/cgi-bin/getcase.pl?court=2nd&navby=case&no=99714 DOMAIN NAME COMMON SENSE Avery Dennison Corp. v. Sumpton (Ninth Cir. - August 23, 1999) Defendant Free View is an Internet e-mail provider doing business as MAILBANK. Mailbank offers vanity e-mail addresses to users for an initial fee of $19.95 and $4.95 a year thereafter and has registered thousands of domain name combinations for this purpose. In most cases the domain name consists of common family names in combination with either .net or .org. Thus, it would register a common name, such as Johnson, as the domain name johnson.net. Then, for a fee, it would provide, for example, a Mr. John Johnson the ability to send and receive e-mail at The Ninth Circuit acknowledged that it had held that both the Federal Trademark Dilution Act and S.14330 were violated when a defendant registered domain name combinations using famous trademarks and sought to sell the registrations to the trademark owners. The Ninth Circuit differentiated this case on three grounds. First, here there is an attack against Plaintiff's claim of fame, there was no factual assertion that Defendants sought to profit by arbitrage of the famous trademarks and the registrations and the domain names were in the .net, rather than in the .com, category and, thus, less of an indication of commercial intent. With regard to fame, it noted that Avery and Dennison were common names and that while the Plaintiff had proved that the marks had acquired sufficient distinctiveness for the purpose of determining that it had trademark rights, it failed to show the greater distinctiveness required as the threshold element of fame as a matter of law sufficiently to form a basis for summary judgment. Thus, in a sense, the Court found that Avery.net and Dennison.net were simply not commercial uses as required by the Dilution Act. The decision can be reviewed at: http://caselaw.findlaw.com/cgi-bin/getcase.pl?court=9th&navby=case&no=985581 BARNEY ABUSE Lyons Partnership v. Giannoulas (Fifth Cir. - July 7, 1999) Plaintiff is the owner of the rights to "Barney," a six foot purple tyrannosaurus rex alleged to educate young children on television. Among the pre-school set, his rendition of "I Love You, You Love Me" is right up there with "When The Saints Come Marching In" as sung by "Satchmo." Giannoulas was the creator of a slightly less famous character, "The Famous Chicken" known among San Diego Padres' fans as the less than lovable mascot at baseball games. It was conceived of and played by Defendant. The famous Chicken's principal means of income could, "perhaps loosely," be referred to as "performance art." The Chicken satirizes celebrities, ball players, umpires. Hardly anything is sacred and Barney certainly is not. The Court noted perhaps "inevitably", that the Chicken's beady glare came to rest on that lovable and carefree icon of childhood, Barney. Defendant incorporates a Barney lookalike ("Duffy the Dragon") into the act, the Chicken would slip, slap, tackle, trample and generally assault the Barney lookalike during the act. The consequences were traumatic to America's children, or at least those who meet the Chicken. The Plaintiff regaled the Court with tales of children observing the performance and believing that the real Barney was being assaulted. The Chicken ranted and children were brought to tears. The famous Chicken, on the other hand, considers Barney to be a symbol of what is wrong with our society. An homage, if you will, to all the inane banal platitudes that are thrust unthinkingly upon our trusting children. The Court seemed to take particular glee in noting the allegation that Barney "appeared to live in denial." When Barney had his fill of abuse, his owners sued, alleging trademark infringement, false association, unfair competition and trademark dilution, copyright infringement and other claims. The Court below found the suit was baseless and awarded attorneys' fees to the Famous Chicken. Barney, or at least his people, appealed. The primary attack on appeal was whether the Chicken's abuse of the Barney like figure was parody and whether parody would be an excuse for infringement. The Fifth Circuit responded by wishing to know who the Plaintiff thought it was kidding. If this wasn't parody, nothing was. The Court, in affirming the decision of the District Court, found the analysis of confusion should take into account that the use is a parody in evaluating each of the elements of the test for the likelihood of confusion. The decision can be reviewed at: http://www.ca5.uscourts.gov/opinions/pub/98/98-11003-CV0.HT SUITES IN SUIT Ashley Furniture Industries Inc. v. Sangiacomo N. A. Ltd. (Fourth Cir. - August 10, 1999) Plaintiff and Defendant manufacture home furniture. Plaintiff alleges that the Defendant copied the design of one of Plaintiff's bedroom suites in violation of the federal trade dress law and an oral contract between the parties. The Court noted that normally a customer cannot determine the manufacturer from simply looking at the furniture. Here, Plaintiff had a neo-classical bedroom suite sold under the name "Sommerset." The suite consisted of a headboard, two night stands, an armoire and a dresser with a mirror. It combined a modern high gloss polyester look and feel with classical elements including a finish that suggests marble or travertine fluted columns, arches and entablatures (whatever that is). According, to Ashley's expert witness, "based on my experience, the common high gloss polyester finish in all the pieces of the Sommerset suite, in either the Carmelstone or light Goatskin finish, combined with the off white moldings and classic columns and flutings, provide a unique and unusual appearance for the Ashley Sommerset bedroom suite." The Court bought this pile of over-decorated prose. In any case, Defendants produced a rather similar suite. Also in high gloss, marble like finishes, fluted columns, arches and entablatures (I still don't know what this means). The case was dismissed at the District Court on summary judgment based on the Court's finding that the furniture's design or trade dress was not inherently distinctive. The Fourth Circuit found that product shape itself can be inherently distinctive in contrast to the decisions in the Second and Third Circuit. Thus, alleged trade dress, like an alleged trademark, can be protectable absent a showing of secondary meaning if inherently distinctive. The Court defined the question of inherent distinctiveness as whether the design is "capable of identifying a product, i.e. whether consciously or not consumers would be impressed enough by a product design that if they were to see something sufficiently like it, it would be reasonable for them to assume either that it is exactly the same product (and therefore implicitly the product of the same producer) or that it was a different product made by the same producer." Here they found the Sommerset design had such identifying functionality. The fact that some elements of the design are common in the industry did not mitigate from the inherent distinctiveness of the trade dress as a whole. The decision can be reviewed at: http://caselaw.findlaw.com/cgi-bin/getcase.pl?court=4th&navby=case&no=982228 |
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