For the half-year to 30 June 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Alberto Bellan, Darren Meale and Nadia Zegze.

Two of our regular Kats are currently on blogging sabbaticals. They are David Brophy and Catherine Lee.

Sunday, 13 September 2009

Letter from AmeriKat I: trade reputation and marks, copyright

There goes the neighbourhood!

This week, after weeks of fraught and panicked searching, the AmeriKat has -- she hopes --secured a new flat in London (right -- she wishes ...). The location of the AmeriKat’s new catflap is an upgrade on her previous prowling ground, with beautiful Georgian houses and sweet little cafés neighbouring her new residence. If the AmeriKat cared about such things, she is sure her new postcode may legitimize her in the eyes of some individuals, so much so that in IP terms she may find herself ‘free-riding’ off the repute of the neighbourhood’s reputation. Does her presence, therefore, tarnish her new neighbourhood’s reputation?


This question was raised last week when Tiffany sued its landlord Westfield Century City shopping centre, alleging that its plan to house an H&M store nearby would tarnish its luxury image and reputation. According to Tiffany, the contract with Westfield forbids retailers “whose merchandise and/or price points are not considered to be luxury, upscale or better by conventional retail industry standards" to use or lease certain spaces fronting or adjacent to the Tiffany store. According to the claim, Tiffany characterized H&M as, “at best a ‘popular-price’ mass merchandise clothing retailer.” The lawsuit went on to state that
"The location of the H&M store will cause irreparable injury to Tiffany's business reputation as a luxury retailer, a reputation that Tiffany has enjoyed and worked hard to maintain for more than a century and a half".
Admittedly, not an intellectual property claim, the issue of brand tarnishment and reputation is as alive as it would be in a trade mark dispute. If a retailer was selling an authentic Tiffany bracelet with its trade mark Tiffany heart next to a poor quality counterfeit bracelet, it could be argued that the placing of counterfeit goods next to legitimate product tarnishes the repute of the Tiffany trade mark. Is it likewise arguable that the placing of a ‘fast-fashion’ retailer next to a high-end retailer does the same? The AmeriKat cannot see the argument in the later example in relation to this case, given the dissimilarity of the goods, but the Tiffany/H&M story highlights the importance of shop location for luxury retailers in establishing a legal reputation which is later invoked in trade mark disputes.

Luxo sheds light on Disney-Pixar’s infringement

Luxo, a Norwegian company that manufactures swivel table lamps which acted as the inspiration for Pixar founder John Lasseter’s company logo, filed a trade mark infringement suit in the Southern District of New York last week. The claim alleges that replicas of the Luxo light fixture are being sold by Disney under the mark Luxo, specifically “Limited Edition Luxo Jr Lamp Collectible Pack”, bearing “Luxo Jr” on its base without their permission or remuneration. Luxo additionally alleged that the quality of the lamps were inferior and were therefore damaging to the reputation of the mark.

Luxo made it clear that it was not complaining about the previous graphic representations of the lamp in the beloved Disney-Pixar films, but the new use under their trade mark name.

If IPKat readers are interested, they can purchase a Limited Edition Luxo Jr. Collectable Lamp for a mere $120.99. Similar full-size Luxo lamps are retailing on Amazon for around $170.

Nothing “Deceptive” about “Delicious”

The AmeriKat was not a picky eater in her kittenhood – in fact she strangely loved spinach, blue cheese, and Brussels sprouts. However, not all parents have it so easy and struggle with feeding their offspring vegetables. Such struggles were the impetus for Jessica Seinfeld’s (wife of comedian Jerry Seinfeld) 2007 cookbook, Deceptively Delicious: Simple Secrets to Get Your Kids Eating Good Food, published by HarperCollins, whose recipes employed the use of pureed vegetables to mask the nutritional content. However, in January 2008 Missy Chase Lapine sued both Seinfelds in a claim for copyright and trade mark infringement, unfair competition and defamation in Federal District Court in New York. Lapine had previously authored a book entitled The Sneaky Chef: Simple Strategies for Hiding Healthy Foods in Kids’ Favorite Meals, that utilized recipes also with pureed vegetables. Lapine’s book was published five months prior to Seinfeld’s. For the defamatory remarks made by Jerry Seinfeld in regards to Lapine on the Letterman Show please see this article in the New York Times (Judge Swain dismissed the defamation claim, saying it should be tried in state court).

Coincidentally, Lapine had apparently submitted her proposal for The Sneaky Chef with recipes to HarperCollins twice previously before HaperCollins won an auction to publish Seinfeld’s book. Nevertheless, Judge Swain dismissed the copyright infringement claim, stating that the only similarity between the two books was that it encouraged healthy eating by hiding vegetables within recipes and that “no reasonable fact finder could conclude” that the two books “have the same aesthetic appeal”. The AmeriKat remembers reading the
claim
in 2008 and shouting out “you cannot copyright ideas!” when her eyes hit the argument that the use of Seinfeld’s “thirty minutes or less” infringed Lapine’s “less than thirty minutes.” Lapine’s lawyers apparently did not hear the AmeriKat’s cries.

According to the New York Times, Seinfeld’s lawyer Orin Snyder stated “Countless authors have used the idea of sneaking healthy food into children’s meals, and no one has a monopoly over that idea — the court made that clear. What made Jessica’s book a No. 1 best seller is her innovative and creative expression of that idea.” Lapine’s lawyers are deciding whether to appeal the judgment.

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