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U.S. Intellectual Property and New Media Law Update TRADE DRESS DOES NOT EQUAL CONCEPT Elements/Jill Schwartz, Inc. v. Gloriosa Company, (S.D.N.Y. July 15, 2002) THE LANHAM ACT IS KING Verizon Communication, Inc. et al v. Inverizon International, Inc., (8th Circuit, July 12, 2002) BAYWATCH NOT EXPOSED Solano, Jr. v. Playgirl, Inc., (9th Circuit 2002) BE IT EVER SO HUMMEL Cambridge Literary Properties, Ltd. v. W. Goebel Porzellanfabrik G.m.b.H. & Co., (1st Circuit July 9, 2002) TRADE DRESS DOES NOT EQUAL CONCEPT Elements/Jill Schwartz, Inc. v. Gloriosa Company, (S.D.N.Y. July 15, 2002) It is always a pleasure to report one of our wins (luckily we have had no losses to report). In this case, Plaintiff Elements/Jill Schwartz, Inc. asserted a trade dress right in a series of collages forming picture frames and book covers. The frames and the book covers were in a number of diverse designs. The alleged trade dress consisted of two or more papers, paint or fabric surface patterns divided by ribbons or three or more different findings in a line. This definition was found to encompass a broad range of designs having little in common other than the broad concept. Some of the plaintiff's goods had the alleged elements, some did not. The Court looked to a number of decisions of the Second Circuit indicating that trade dress in a line of products must be fully described and must be consistent. The Court found plaintiff failed to articulate a trade dress with sufficient particularity and granted summary judgment to our client. The decision can be viewed at: http://www.ipcounselors.com/orderandopinion.pdf THE LANHAM ACT IS KING Verizon Communication, Inc. et al v. Inverizon International, Inc., (8th Circuit, July 12, 2002) When Verizon introduced the VERIZON trademark, Inverizon International wrote a letter objecting to the mark as confusingly similar to its INVERIZON mark, for what it claimed were overlapping goods and services. Verizon asked for more information. After waiting three weeks, it sued in Federal Court for declaratory judgment under the Lanham Act. Defendant then sued in state court in Missouri specifically indicating that the suit was not brought under Lanham Act in the state court, but rather purely under state law. It moved in the Federal court to stay the federal action. The district court granted the motion based on judicial economy and because the cause was essentially a state claim, which could be best litigated in a state court. Here the Eighth Circuit found that the trial court abused its discretion since there was a separate federal question to be tried by the Federal Court, i.e., Lanham Act trademark infringement and Federal dilution. The Eighth Circuit noted that the state claims were not coextensive, since the complaint in the state court specifically disavowed any action under the Lanham Act, while the federal action was based on the Lanham Act. It went on to note that the dominant legislation in the trademark area and the dominant court for reviewing that legislation was the federal courts, even though there was concurrent state jurisdiction. Given this, it found that the trial court had abused its discretion and that action should proceed in the Federal Court with regard to the Lanham Act claims. The decision can be viewed at: http://caselaw.lp.findlaw.com/data2/circs/8th/013503p.pdf BAYWATCH NOT EXPOSED Solano, Jr. v. Playgirl, Inc., (9th Circuit 2002) Those of you who live protected lives, Playgirl is a magazine ostensibly focused on female readership. It typically contains nude photographs of men in various poses emphasizing their genitalia, including an occasional simulated sex acts, just to add a little variety. Jose Solano Jr. better known as Manny Gutierrez, a lifeguard in Baywatch was featured on the cover shirtless and wearing his cute little red life guard trunks. The heading read "TV Guys, Primetime's Sexy Young Stars Exposed." In fact, Mr. Solano was not exposed at all. Mr. Solano's sole appearance inside the magazine was on page 21 in a quarter page head and shoulder photograph showing him fully dressed in a T-shirt and sweater along side a brief quarter page profile of the actor. In the present litigation he sued Playgirl alleging it deliberately created the false impression that he did the "Full Monty" thereby making it appear that he was willing to degrade himself and endorse such a magazine. The District Court granted Playgirl summary judgment finding Solano had failed to establish that Playgirl created a false impression about what readers would actually see of Solano inside the magazine. Here the Ninth Circuit disagrees with the District Judge and reverses for trial. The Ninth Circuit lovingly described the cover and even added a copy to the opinion. The suit was brought under the California Civil Code and common law. The claim was founded in humiliation and embarrassment along with a decline of job offers, invitations to charity events and social contacts with others in the entertainment industry. The Ninth Circuit agreed with Solano that there was a triable issue of fact regarding the falsity of the message conveyed by the Playgirl cover. Since Solano is a public figure, he must establish by clear and convincing evidence the existence of malice. The decision can be viewed at: http://caselaw.lp.findlaw.com/data2/circs/9th/0155443p.pdf BE IT EVER SO HUMMEL Cambridge Literary Properties, Ltd. v. W. Goebel Porzellanfabrik G.m.b.H. & Co., (1st Circuit July 9, 2002) The case was brought in Massachusetts and dismissed for lack of personal jurisdiction. Here, the First Circuit overturned the District Court and finds jurisdiction against the two major defendants. While indirectly based on the copyright law, this is not a case under a federal statute, but rather on an ill defined right under state law. The Hummel figures made by the defendants are based on a book written by a German nun, Sister Berta Maria Innocentia Hummel, which were incorporated in a copyrighted book, first published in 1934 with accompanying text by a German poet. The plaintiff maintains that the Hummel figures are derivative works from the drawings in the book, which was a work of joint authorship between the nun and the author of the accompanying text. Without going into details, the plaintiff acquired the renewal rights through mesne transfer of one of what they maintain are the co-authors and by this suit demand an accounting or under some other theory, their portion of all of the Hummel figures sold in the United States. This is not an inconsiderable sum. The contacts with Massachusetts arose since the Hummel figures were imported into Massachusetts for distribution to the rest of the country until 1994 and were thereafter imported to New Jersey. Thus, a substantial portion of the purchases of the Hummel figures in the United States were made in Massachusetts. The District Court felt the nexus the of action were in Germany where the various transfers of ownership and the involved history of both the Hummel book and the Hummel figures resided. It found that the contact with Massachusetts was insufficient to give rise to jurisdiction, though under Massachusetts law, personal and subject matter jurisdiction extended to the full limits permitted by the U.S. Constitution. The First Circuit found that since a large portion of the sales of Hummel figures in the United States were, for an extended period of time, conducted from and to Massachusetts, this was sufficient transactional relationship to the actual cause of action for those of the Defendants directly involved in the purchase and sale of Hummel figures into and from Massachusetts. It did sustain the dismissal against indirect limited partners in the corporations who did the importation and sale, but who had no other contacts with Massachusetts. In doing so, the court emphasized that the present action was not under the Copyright Act, was purely a creature of state law and assumed that somehow there was a cause of action under state law. The decision can be viewed at: http://laws.findlaw.com/1st/011043.html |
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