Worlds collide -- The Doors and insurance
When is an opinion about insurance coverage interesting? Answer: When it involves The Doors.
A Story About Coincidence
Many times, I find cases more interesting for the stories they tell than the thorny legal issues they may (or may not) present. American Express Co. v. Goetz out of the Second Circuit is one of those cases and it tells a story of remarkable coincidence.
In the summer of 2004, the defendant, Stephen Goetz developed the idea of allowing credit card customers to personalize their cards by choosing a photo to be printed on the card. As part of his pitch for this idea, Goetz used the slogan "My Life, My Card" because he thought the phrase "would perfectly embody what card consumers sought." On July 30, 2004, Goetz mailed a proposal to American Express that included the slogan. He also created an Internet-based demonstration of his concept which prominently displayed the slogan. And on September 7, 2004, he registered the domain name www.mylife-mycard.com and filed a trademark registration application for the slogan with the PTO the next day.
As it happens, also in the summer of 2004, American Express hired an advertising agency to develop a new global campaign for its products. On July 22, 2004, the agency proposed a campaign to American Express featuring the MY LIFE. MY CARD. slogan. After American Express expressed interest in the campaign, the agency's outside counsel conducted a preliminary trademark search for the availability of the slogan as a service mark on July 29, followed by a full trademark search on July 31, which was two days before the scheduled delivery date of Goetz's proposal to American Express. American Express decided to proceed with the MY LIFE. MY CARD. campaign and therefore registered the domain name www.mylifemycard.com on September 1, 2004, and filed an ITU application with the PTO on September 15.
As I said, remarkable coincidence.
As for the legal issue--this is after all a legal blog--American Express won on summary judgment and Goetz's counterclaims were dismissed because both the District Court and the Second Circuit concluded that he did not use the slogan as a trademark.
Award of statutory damages for trademark counterfeiting precludes attorneys' fee award
In a pure statutory interpretation opinion, the Ninth Circuit concluded that a plaintiff's election of statutory damages in lieu of actual damages for trademark counterfeiting under 15 U.S.C. 1117(c) precludes that party from also recovering an award of attorneys' fees under 15 U.S.C. 1117(b). Not a positive result for the plaintiff, K and N Engineering, Inc., which had been awarded $100,000 in attorneys' fees by the trial court. The Ninth Circuit's opinion in K and N Engineering, Inc. v. Bulat, No. 06-55393, can be found here.
The Power of Pictures Sways the Seventh Circuit
Apparently, for the Seventh Circuit, a picture is indeed worth a thousand words--at least in the absence of any evidence contradicting that picture.
Top Tobacco--the plaintiff in this trademark case--started off with a difficult position, claiming that it had exclusive rights to the common word "top" in the cigarette tobacco market. Top Tobacco, which uses the mark TOP above a drawing of a spinning top, sought to stop North Atlantic from using the phrase "Fresh-Top Canister" on its cigarette tobacco cans.
The district court granted summary judgment for North Atlantic and the Seventh Circuit affirmed concluding that "[o]ne glance" at the pictures of the canisters "side by side" was "enough to decide the appeal." Based on these pictures, the Seventh Circuit concluded that it was "next to impossible" to believe that even the most careless consumer would confuse the products. And although the Court acknowledged that "next to impossible" was not "absolutely impossible," the pictures were all the Court had because Top Tobacco did not conduct a survey or produce any affidavits from consumers or merchants demonstrating confusion.
To see the pictures that decided the appeal and read the Seventh Circuit's opinion in Top Tobacco, L.P. v. North Atlantic Operating Co., No. 07-1244, see here.
"Chewy Vuiton" Parody Wins the Day
The Fourth Circuit readily disposed of the trademark infringement, dilution/tarnishment, trade dress and copyright claims of high-fashion icon Louis Vuitton against Haute Diggity Dog, a Nevada company that manufactures and sells a line of pet chew toys and beds whose names parody elegant high-end brands including "Chewy Vuiton," a dog chew toy.
In the end, the fact that the "Chewy Vuiton" dog chew toy was obviously a parody of the LOUIS VUITTON handbag--with both obvious similarities and dissimilarities--led to the District Court's and the Fourth Circuit's rejection of Louis Vuitton's claims on summary judgment: "The dog toy irreverently presents haute couture as an object for casual canine destruction. The satire is unmistakable. The dog toy is a comment on the rich and famous, on the LOUIS VUITTON name and related marks, and on conspicuous consumption in general."
And in something of an ironic twist, the strength and distinctiveness of the LOUIS VUITTON mark worked against Louis Vuitton in the context of its dilution by blurring claim, making it more likely that a parody (at least an obvious one) will not impair the distinctiveness of the famous mark.
The Fourth Circuit's opinion in Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, can be found here.
No Preliminary Injunction for GM and the Hummer
Can one talk about the Hummer without mentioning Arnold Schwarzenegger? Apparently not. In General Motors Corp. v. Urban Gorilla, LLC, No. 06-4128, the Tenth Circuit affirmed the denial of a preliminary injunction to GM in its trade dress and dilution claims against a company that sells steel "body kits." These body kits, which GM claims are a knock-off of the Hummer, allow customers to install a new body on top of an existing truck chassis for about $10,000.
However, back in 1998 (Urban Gorilla's predecessor had been selling the steel body kits since 1997), GM's predecessor in interest sent a cease and desist letter to Urban Gorilla's predecessor claiming that the body kits infringed its Hummer trademarks. In response, Urban Gorilla's predecessor made changes to the body kit design and GM's predecessor did not pursue the matter further. But in February 2006, GM filed a complaint against Urban Gorilla claiming, among other things, trade dress infringement and dilution and sought preliminary injunctive relief. But the District Court denied GM's request for a preliminary injunction, concluding that GM had not marshaled sufficient evidence to justify the relief.
The Tenth Circuit agreed, affirming the District Court's decision and also suggesting that GM may need the Hummer to navigate the possibly rough terrain ahead of it in pursuing its claims. Interestingly, both the District Court and the Tenth Circuit appeared to have doubts about the strength of GM's trade dress claim. Indeed, the Tenth Circuit noted that the District Court appeared to be "skeptical as to whether the allegedly unique features of the Hummer were not actually shared by all military-style vehicles." In addition, although not addressed on appeal, Urban Gorilla raised several seemingly meritorious defenses including laches, acquiescence and estoppel.
And for the record, the mention of Arnold Schwarzenegger came in the Tenth Circuit's recitation of the Hummer's history, noting that the civilian version of the Humvee (the Hummer) came about "[a]t the urging of then-actor and now Governor Arnold Schwarzenegger."
Utah Trademark Protection Act on Hold?
The news on the Trademark Protection Act passed by the Utah Legislature earlier this year is that it likely will not be enforced when it goes into effect today. This news came after Utah lawmakers met, one might argue rather belatedly, with high-tech execs who aired their concerns about the law. Eric Goldman at the Technology & Marketing Law Blog weighs in on the news here. Hat tip to Techdirt.
The Power of Google
John Welch at The TTABlog discusses another victory by Google, Inc. at the TTAB, this time against the mark BLOGLE. As he points out, the numbers that Google offered up in support of the "fame" factor are "staggering." I don't know which is more amazing, the 300 million visitors per day or the explosive growth in revenue over just four years.
Eric Goldman's March 2007 Quick Links
I highly recommend checking out Eric Goldman's March 2007 Quick Links, Google Edition and March 2007 Quick Links Part 2 at the Technology & Marketing Law Blog. As usual, well worth the read.
Second and Ninth Circuits Part Ways on the Famous Marks Doctrine
With the Second Circuit's recent decision in ITC Ltd. v. Punchgini, Inc., No. 05-0933-cv, the Ninth Circuit (some might argue unsurprisingly) stands alone among the federal appeals courts in recognizing the so-called "famous marks doctrine" under federal trademark law. The famous mark doctrine provides an exception to the territoriality principle that a trademark has a separate legal existence under each country's laws and that ownership of a mark (even a famous one) in one country does not automatically confer the exclusive right to use that mark in another country. But the famous marks doctrine recognizes an exception to this principle "for those foreign marks that, even if not used in the United States by their owners, have achieved a certain measure of fame within this country."
ITC held a federal registration for the mark "BUKHARA" for restaurant services that it used in connection with two restaurants in New York and Chicago. But ITC closed the New York BUKHARA restaurant in 1991, followed by the cancellation of the franchise BUKHARA restaurant in Chicago in 1997. Since that time, ITC admittedly has not owned, operated or licensed any restaurant in the United States using the BUKHARA mark.
Meanwhile, in 1999, the defendants decide to open an Indian restaurant in New York City and apparently thought "Bukhara Grill" seemed like a fine name. Notably, each of the individual defendants had previously worked at ITC's New York Bukhara restaurant or the Bukhara restaurant in New Delhi. ITC, however, wasn't particularly pleased about the defendants' name choice or the decor of their restaurant and sued them for, among other things, federal trademark infringement, unfair competition and false advertisement as well as parallel claims under New York common law.
As to the claims asserted under federal law, the Second Circuit had no good news for ITC. It first affirmed the District Court's conclusion that ITC had abandoned its registered BUKHARA mark for restaurant services as well as its corresponding order that the registration be canceled. Then, in a detailed discussion, the Second Circuit declined to join with the Ninth Circuit in recognizing the famous mark doctrine noting that although a "persuasive policy argument" could be advanced for recognizing the doctrine, that alone "is not a sufficient ground for its judicial recognition, particularly in an area regulated by statute." And finally, the Second Circuit affirmed the District Court's conclusion that ITC lacked standing to assert a false advertising claim under the Lanham Act.
Happily for ITC though this isn't baseball and despite three strikes, all may not be lost for ITC. The Second Circuit concluded that it could not determine the propriety of the District Court's dismissal of ITC's parallel state unfair competition claim because that determination depended on whether New York recognized the famous mark doctrine as a matter of state law. Therefore, the Second Circuit chose to certify the following question to the New York Court of Appeals: "Does New York common law permit the owner of a famous mark or trade dress to assert property rights therein by virtue of the owner's prior use of the mark or dress in a foreign country?" If New York does recognize the famous mark doctrine, the Second Circuit also asked the New York Court of Appeals to indicate the scope of that doctrine.
Rebecca Tushnet also has a good synopsis of the case at the ever thorough 43(B)log.
Utah Trademark Protection Act
Much has already been said (mostly bad but some good) about the Trademark Protection Act recently adopted by the Utah Legislature, which, according to the Act's general description, "establishes a new type of mark, called an electronic registration mark, that may not be used to trigger advertising for a competitor and creates a database for use in administering marks."
Whatever the merits of the legislation, the debate over the pros and cons of the Act has demonstrated the power and reach of blogs (if that still needed to be demonstrated) with even the Act's sponsor, Utah Senator Dan Eastman, taking to the blogosphere to defend the Act from its critics (or "the fringes" as he rather uncharitably characterizes them). See here for an interesting critique of the Senator's defense from Eric Goldman of the Technology & Marketing Law Blog.
Check back for more on the Utah Trademark Protection Act as events unfold but for now, see here for the letter from the Electronic Frontier Foundation, Professor Eric Goldman and others to the Utah Attorney General asking him to stay implementation of the Act pending further investigation (hat tip to Martin Schwimmer at The Trademark Blog).
