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U.S. Intellectual Property and New Media Law Update SPARKLING RESULTS FOR VEUVE CHAMPAGNE Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772 (Fed. Cir., February, 2005) CONSENT JUDGMENT NOT ENFORCEABLE BY SUCCESSOR-IN-INTEREST ABSENT SPECIFIC LANGUAGE Thatcher, et al. v. Kohl's Department Stores, Inc., et al, (Fed Cir. February 2005) GIVE THAT MAN A CIGAR Empressa Cubana Del Tabaco v. Culbro Corp, et al., (Second Cir., February, 2005) A BET AMONGST FRIENDS Gator.com Corp. v. L.L. Bean, Inc., (Ninth Cir., February, 2005) SPARKLING RESULTS FOR VEUVE CHAMPAGNE Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772 (Fed. Cir., February, 2005) Palm Bay Importers, Inc. ("Palm") filed an Intention to Use trademark application for VEUVE ROYALE for alcoholic beverages, namely sparkling wine. The application was published for opposition and Veuve Clicquot Ponsardin ("Veuve Clicquot") opposed the application based on its trademarks for VEUVE CLICQUOT PONSARDIN and VEUVE CLICQUOT for champagne wines, and THE WIDOW for wines. The Trademark Trial and Appeal Board found in Veuve Clicquot's favor, finding a likelihood of confusion between VEUVE ROYALE andVEUVE CLICQUOT PONSARDIN, VEUVE CLICQUOT, and THE WIDOW. Palm Bay appealed. The court reversed the Board's conclusion as to a likelihood of confusion between VEUVE ROYALE and THE WIDOW, deciding that the doctrine of foreign equivalents did not apply since average consumers would not stop and translate "VEUVE" into "WIDOW". However, in a fairly straight forward analysis, the court affirmed the Board's decision that there was a likelihood of confusion between VEUVE ROYALE and VEUVE CLICQUOT PONSARDIN and VEUVE CLICQUOT. What is most notable about the case, is the court's holding that Opposer's trademarks for VEUVE CLICQUOT are famous. In determining the fame of VEUVE CLICQUOT, the court looked at Opposer's substantial sales and advertising expenditures, extensive media exposure, Palm Bay's President's admission that VEUVE CLIQUOT was famous, and several WIPO domain name decisions, finding fame. The court in relying on WIPO domain name decisions, has, oddly, established precedent that these decisions, which examine fame on a world wide basis, may have some relevance in the TTAB, in a "confirmatory context", to assist in establishing fame in the United States. Most importantly though, the court held that in determining fame in a likelihood of confusion analysis, one must look to the class of customers and potential customers, and not the general public to determine the fame of a trademark. Therefore, a mark that is well known in a niche market, can, at least theoretically, be deemed famous, for likelihood of confusion purposes, even though the general public has no real recognition thereof. The decision can be viewed at: http://caselaw.lp.findlaw.com/data2/circs/fed/041042p.pdf CONSENT JUDGMENT NOT ENFORCEABLE BY SUCCESSOR-IN-INTEREST ABSENT SPECIFIC LANGUAGE Thatcher, et al. v. Kohl's Department Stores, Inc., et al, (Fed Cir. February 2005) Until November 2002, Mark Thatcher was the owner of all intellectual property rights in the product known commercially as the TEVA7 sandal. In 1997 Thatcher sued Kohl's for infringement of his patent, copyright and trade dress rights in the TEVA7 sandal. The parties settled their dispute, and a consent judgment was entered permanently enjoining the defendants, including their servants, employees, subsidiaries and successors-in-interest from infringing the "trade dress of the Plaintiff" (my emphasis). Thatcher subsequently sold all his I.P. rights in the TEVA7 sandal to Deckers in November 2002. As part of the deal, Thatcher assigned his right to "all contracts, claims, rights, causes of action and judgments...related to the Business and Intellectual Property Assets." Deckers subsequently sued Kohl's alleging that the "Pacific Trail" sandal sold by Kohl's in 2003 was an exact replica of the TEVA7 sandal. Kohl's moved to dismiss asserting that Deckers, as assignee, lacked standing to enforce the terms of the consent judgment. Plaintiffs in turn filed a motion for a rule to show cause for lack of standing. The trial court (N.D. Illinois) dismissed plaintiff's motion. On appeal, the Court of Appeals affirmed. In reaching its decision the court emphasized the contractual nature of consent judgments, and that the rules of contractual interpretation should therefore be applied in construing their terms. The court reasoned that the absence in the consent judgment of any provision giving Thatcher the power to assign his rights, or allowing any successor-in-interest to enforce such rights, was fatal to Deckers standing. The fact that Kohl's obligations extended, inter alia, to "successors-in-interest" served only to highlight the conspicuous absence of a similar provision with regard to the running of Thatcher's rights. The court was not prepared to read such a provision into a facially unambiguous consent judgment, as ordinary contract principles, as well as Illinois contract law, prevents the use of parol evidence where the contract is facially unambiguous. Thus, the assignment of rights in the Thatcher-Deckers agreement could not alter the plain meaning of the agreed consent judgment. Relying heavily on U.S. v. Armour & Co., 402 U.S. 673 (1971), the court explained the special contractual features of consent judgments as "a carefully crafted settlement agreement between the parties." As such "consent judgments must be construed in a manner that preserves the position for which the parties bargained, because the judgment reflects a compromise between hostile litigants." The decision can be viewed at: http://caselaw.lp.findlaw.com/data2/circs/fed/041397p.pdf GIVE THAT MAN A CIGAR Empressa Cubana Del Tabaco v. Culbro Corp, et al., (Second Cir., February, 2005) The Second Circuit Court of Appeals has reversed a District Court holding that Cuban based Cutabaco has trademark rights in the COHIBA mark in the U.S. under Article 6bis of the Paris Convention which protects famous marks. The dispute arises between Cutabaco, a Cuban company and General Cigar, an American company who both claim rights to the mark COHIBA for cigars. Cutabaco owns rights in the mark COHIBA in Cuba dating back to 1969. Cutabaco has sold COHIBA cigars outside Cuba since 1982. However, since the Cuban Embargo has been in place since 1963, it has never sold COHIBA cigars in the U.S. In 1981, General Cigar obtained a registration for COHIBA based on its use in U.S. commerce since 1978. It sold COHIBA cigars in the U.S. through 1987 and then re-launched the product in 1992 and has sold them in the U.S. ever since. Cutabaco claims it owns the COHIBA mark in the U.S. because General Cigar abandoned the mark in 1987 and by the time it began to use the mark again in the United States in 1992, the Cuban COHIBA mark was sufficiently well-known in the U.S. that it deserved famous mark protection. The District Court agreed with Cutabaco. The Second Circuit did not address the District Court holding of fame. Instead, in a very interesting opinion, it held that since plaintiff was a Cuban entity subject to Embargo Regulations, the regulation barring acquisition of property rights extended to the right to U.S. trademark rights and therefore all claims were dismissed. The decision can be viewed at: http://www.ipcounselors.com/04-2527-cv_opn.pdf A BET AMONGST FRIENDS Gator.com Corp. v. L.L. Bean, Inc., (Ninth Cir., February, 2005) Gator.com ran a web service which aided online shoppers by storing their billing and shipping information in an online "wallet" which provided the information to an ecommerce site being shopped at. L.L. Bean, an ecommerce site gator.com users shopped at, learned that gator.com users directed to the LL Bean site were also being served a competitor's pop-up ads. Sensing impending legal action, gator.com sought declaratory judgment that its practice of serving pop-up advertisements for LL Bean competitors to gator.com users visiting L.L. Bean's website did not constitute copyright infringement, false advertising, trademark dilution, or unfair competition. District Court dismissed for lack of personal jurisdiction, and gator.com timely appealed. Court of appeals reversed and remanded, and then granted a petition for rehearing en banc. After the en banc court heard oral argument on the personal jurisdictional issues, the parties settled the underlying dispute. This ordinarily would have mooted the matter; however, the parties politely informed the Court that "the settlement does not provide for the dismissal of this appeal." Curious, the Court examined the settlement, and found that, in part, it would require Gator to pay Bean $10,000.00 if the district court decision was affirmed. The majority found that (1) the parties settlement rendered case moot, and (2) contingency in settlement agreement was insufficient to avoid finding of mootness. Case dismissed. The decision can be viewed at: http://caselaw.lp.findlaw.com/data2/circs/9th/0215035p.pdf |
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