From October 2016 to March 2017 the team is joined by Guest Kats Rosie Burbidge and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Tian Lu and Hayleigh Bosher.

Wednesday, 10 December 2014

Wednesday Whimsies From Across the Pond

While Jeremy is returning from the INTA conference in Munich, here is a few bits of information gleaned here and there.

A Trademark Infringement Suit is Not Easy to Wipe Off

I learned about this story reading this tweet from New York trademark attorney Roberto Ledesma.

The father of two teenage entrepreneurs filed a petition on, asking the President of the company suing his daughters for trademark infringement to “end [its] vicious and frivolous law suit.”

These are the facts, as written by the petitioner on His daughters Sophia and Marissa invented a product to clean cell phones. They first paired a mundane microfiber cloth with double-faced tape, and, after some adjustments, created a new product, a sticker which can also be used to clean cell phones and other similar surfaces.
This Cat Will  Not Be Sued For Messing Up The House 

The product was named Hypewipes, and the father of the girls applied for the trademark. The Hypewipes trade mark is registered since August 12, 2014 in class 16 for “Decalcomanias, decals and stickers not impregnated with cleansing compounds also to be used for cleaning electronic devices.”

According to the petition, the Current Technologies company, which manufactures cleaning supplies, sent the teenagers a cease-and-desist letter, asking them to stop selling the Hypewipes product as its mark infringes on Current Technologies Hype-Wipe mark for bleach towelettes.

Current Technologies then filed a trademark infringement lawsuit last June in the Southern District of New York. A copy of the complaint is provided by New York trademark attorney Mark H. Jaffe here. Current Technologies claims trade mark infringement, false designation of origin and unfair competition. It is seeking injunctive relief and $1,000,000 in damages. 

The complaint states that consumer would be confused as to the source of the product, but this is a debatable statement, as both products appear to be different, even though their function is to clean. One product is a novelty item, marketed as a stocking stuffer for teenagers, while the other is used by hospital workers to sanitize. One hopes that the person is charge of buying hospital cleaning supplies is able to discern the two products. One could also argue that consumers are not likely to believe that the Current Technology company went into the novelty business, especially as the brand is probably known mainly by the aforementioned hospital cleaning-supplies buyers.

I believe defendants would be able to argue in court that there is no likelihood of confusion, but litigating is costly. The Copyright Office is considering a small claims court for copyright infringement suits. The USPTO already has a probono program to help individuals filing for a patent. Expanding this program to trademark infringement defense could be helpful to entrepreneurs as well.  
Anyway, the website now automatically redirects to a new site named, and so it seems that the teenage girls have chosen to desist instead of taking the costly route of defending their trade mark in court.

Interesting Webinar Tomorrow on Corporate IP Portfolio

Kat Friend James Nurton, the editor of the Managing Intellectual Property magazine, kindly informed us of this interesting [free] webinar which will take place tomorrow, December 11, at 6PM London time, 1 PM New York time. It will take the form of a discussion. The speakers will be Dana Rao, VP of litigation at Adobe, Douglas Luftman, VP and Chief IP Counsel for NetApp, and Bill Soward, COO of Lecorpio.
He Enjoyed the Webinar! 

Speakers will share their insights into their IP strategies, how they are developed, how the different parts of their companies work together, and how these strategies have changed over time. They will also talk about the balance between quality and quantity in an IP portfolio.

More details about the webinar are available here. You can register for this free webinar here.

U.S Copyright Office Upcoming Copyright Matter Program

The U.S Copyright Office has announced its Copyright Matter program. It will take place on February 26 in Washington D.C. and will mix copyright discussion and artistic performances.

From the Press Release:

The U.S. Copyright Office is pleased to announce a Copyright Matters program taking place on Wednesday, February 25 and featuring leaders of the American Society of Composers, Authors, and Publishers on the occasion of ASCAP’s 100th birthday.
The program will include musical performances as well as a discussion of the history and future of composers, authors, and publishers. It will feature ASCAP’s president and chairman, Paul Williams (Love Boat theme; Rainbow Connection; We’ve Only Just Begun), and Jimmy Webb, ASCAP’s vice chairman (By the Time I Get to Phoenix; MacArthur Park; Wichita Lineman; Up, Up and Away).“

I had no idea that the same composer created the Love Boat theme and We’ve Only Just Begun. That gave me this [brilliant] idea: how about a copyright law cruise, mixing copyright lectures by day and entertainment at night? Julie would be proud.

Lego Man
Talking about art, I rather like this art project from Dutch artist Ego Leonard (probably not a real name…)

Ego Leonard has created several eight-foot tall fiberglass “Lego-Men.” They do not fit into a doll house, a mini train, or a pocket, but they can circumnavigate (circum swim?) the world, as Ego Leonard send them off to sea and records their landings on his Facebook page.
One of them recently washed ashore in Japan, where it was welcomed by a surfer and his dog. On the front of this Lego Man are written the words: “No Real Than You Are.” I guess that leave us to decide if Lego Man is “more” or “less” real as we are, according to our mood or our current inclination to philosophize.  Ego Leonard also designs prints and paints artworks with Lego characters as their subjects.
Let's Talk About Lego Cat, Shall We? 

This is how Ego Leonard presented himself on his Facebook page:

My name is Ego Leonard and according to you I come from the virtual world. A world that for me represents happiness, solidarity, all green and blossoming, with no rules or limitations.”

A virtual world may have no rules or limitations but our real world does have some, including copyright laws. Lego Man made its way to Florida in 2011. From a U.S. law point of view, the work of Ego Leonard would likely be considered fair use, but what about other countries? If Lego Man would make its way to a country with no fair use exceptions to copyright infringement, could Lego then sue the artist in this country for copyright infringement? Lego shows no interest in suing Ego Leonard, so the question is purely rhetorical.

Duluth Files Motion to Dismiss in Right of Publicity Case

I wrote a while ago about the case where Don Henley claimed that the Duluth company violated his right of publicity when creating an ad urging consumers to “Don a Henley.”

Defendant filed a motion to dismiss on December 4 and claims that the ad is not a violation of Plaintiff’s right of publicity, “but rather is an expression of free speech which uses portions of Mr. Henley’s name in a transformative nature invoking the protection of the First Amendment of the United States Constitution” and that “the advertisement is obviously a joke.”

The motion cites the 2001 California Supreme Court Comedy III Productions, Inc. v. GarySaderup, Inc. case, where the Court discussed the tension between the First Amendment and the California right of publicity statute.

The motion quotes Comedy III as such: “Because celebrities take on public meaning, the appropriation of their likenesses may have important uses in uninhibited debate on public issues, particularly debates about culture and values. And because celebrities take on personal meanings to many individuals in the society, the creative appropriation of celebrity images can be an important avenue of individual expression.”

Defendant also argues that the use of Plaintiff’s name was transformative, and, as such, protected by the First Amendment.

It is, however, difficult to understand how the Duluth ad can be compared to a “debate on public issues.” The Comedy III case was about an artist creating tee-shirts using the resemblance of The Three Stooges, and the California Supreme Court noted then that the case was not about advertising.
It is true that, as mentioned in the motion to dismiss, the First Amendment protects commercial speech, but that does not mean that commercial speech is necessarily a debate on public issues. In Comedy III, the Court noted that “[t]he right of publicity is often invoked in the context of commercial speech when the appropriation of a celebrity likeness creates a false and misleading impression that the celebrity is endorsing a product” and that “the First Amendment does not protect false and misleading commercial speech.”

Will Defendant’s argument that “Duluth is not merchandising Mr. Henley’s name -quite the contrary- it is making a joke and Duluth’s right to make a joke at Mr. Henley’s expense (whether that joke is funny or not) must be protected under the First Amendment” convince the Court?

Around the Blogs

Boston IP attorney David Kluft wrote an engaging blog post this week which will be particularly helpful to IP law firms still scrambling to organize their Holiday office party.

David proposes to serve “one of the many beverages that were the subject of a trademark or similar dispute in 2014” and goes on by providing the (long) list of beers and wines which had to hire the service of an IP attorney this year. An interesting and fun read.

A votre Santé!

Picture of Cat Wiping Its Paws Courtesy of Flickr User Little Koshka under a CC BY-NC 2.0 License. 

Picture of Cat and a Computer Courtesy of Flickr User Vicki's Pics Under a CC BY-NC-SA 2.0 License. 

Picture of Cat and a Lego Figurine  Courtesy of Flickr User wiredforlego Under a CC BY-NC 2.0 License. 


Michael Factor said...

The problem is not just likelihood of confusion, but also dilution and branding. I don't think they'll collect a million dollars, but one has to stop third parties choosing confusingly similar names. The teenagers could have done due diligence...

Marie-Andree Weiss said...

Hello Michael,

Thank you for your comment.

In the US, only famous marks can claim dilution, including dilution by blurring, and the Plaintiff would have to prove that the Hype-Wipe mark is famous. It is doubtful it could prove it, and Plaintiff seems to be aware of it, as it did not claim dilution in its complaint.

As for due diligence, Defendants'mark was registered by the USPTO, and so one can argue that they indeed performed due diligence.

The mark was published for opposition before publication, but Plaintiff did not come forward then. Instead, it sent a cease-and-desist letter to Defendants after their mark was registered, and then filed a suit.

There is room for debate to find out who is right, the USPTO/Defendant or the Plaintiff? Unfortunately, debating became a too-costly option for Defendants after the suit was filed. That was my point.

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