Business and Entertainment Law

Rockers vs. Bikers: Likelihood of Confusion

2011-05-11T14:04:00.000-07:00

Blackwall Group, LLC v. Sick Boy, LLC, 2011 U.S. Dist. LEXIS 19808 (M.D. Fla. Feb. 11, 2011)

Plaintiff Blackwall Group, LLC (“Blackwall”) operates “Sickboy’s Bad Habit Lounge”, a Daytona Beach, Florida restaurant and bar filed a Motion for Preliminary Injunction against Defendant Sick Boy, LLC (“SBLLC”) a purveyor of apparel and accessories including the mark “Sick Boy”. SBLLC then filed a motion in opposition. Blackwall had filed the suit seeking a declaratory judgment that its trade name, domain name, and logo artwork do not infringe on SBLLC's trademark. SBLLC disagrees and has counterclaimed, contending that Blackwall's activities have caused confusion and infringe on its trademark. By way of its motion in opposition, SBLLC seeks to enjoin any further (alleged) infringement.

Blackwall does not dispute the validity of SBLLC’s federally registered trademark. Therefore, the sole issue was whether there is likelihood of confusion according to the seven factors in the 11th Circuit. For the first factor, the strength of the mark, SBLLC argues that “Sick Boy” is arbitrary or fanciful as applied to clothing and accessories. Blackwall did not dispute this and rather contended that the mark has been weakened by third party use. Although Blackwall presented evidence of “Sick Boy” appearing on other companies’ apparel and accessories, the court determined that the record did not prove the third party use to be excessive or widespread enough to significantly weaken the mark.

For the second factor, the similarity of marks, the court found they were only somewhat similar. Blackwall used the entire phrase “Sick Boy’s Bad Habit Lounge” all the time, whereas SBLLC merely used the two words “Sick Boy”. Also, Blackwall’s mark includes a picture of a flaming vinyl record which is suggestive of its rock music theme. In contrast, the court reasoned, SBLLC motorcycle products include a motorcycle cross and skull. These elements did not overlap between the Plaintiff’s and Defendant’s marks. The court distinguished between marks for rock theme and motorcycle lifestyle.

The court found very little similarity between goods and services because the bar did not sell merchandized t-shirts or caps.

For the fourth factor, the court found that the sales outlets and customers of both parties were distinct. Blackwall marketed mainly through its brick and mortar restaurant in Daytona Beach and does not offer items for sale on its website. Even thgouh SBLLC offered items for sale at “Bikeoberfest” in Daytona Beach, this was not held to be significant. “Although both are associated in some fashion with live rock music, at least arguably that music is part of the product that Blackwall is selling, while SBLLC uses that music to promote the sale of its actual product -- i.e., clothing and accessories. To look at the customer bases a different way, a single individual could obviously be included in both parties' target audiences. In that sense, there is some overlap. But it would not appear that someone would be less likely to buy one of the Defendants' t-shirts because he or she had a burger and a beer at the Plaintiff's establishment, or vice versa. From that perspective, there is little overlap between the parties' customer bases.”

For the Similarity of advertising methods, the court noted that both companies attracted companies by rock music: Blackwall hosted bands and SBLLC sponsored bands. However, the court found that the “ubiquity” of this advertising method weighed against a significant similarity of advertising methods.

The court also found no intentional misappropriation of on the part of Blackwall.

Finally, there was not enough evidence of actual confusion, even though SBLLC provided affidavits from a few of its customers. The court further explained, “There is no evidence that anyone had dinner or drinks at Sick Boy's Bad Habit Lounge because they believed that it was owned by or affiliated with Sick Boy Motorcycles or SBLLC. Indeed, the very fact that individuals were asking the question could suggest the opposite conclusion -- i.e., that they had not been misled into believing the businesses were affiliated.”

The motion on the part of SBLLC was denied due to lack of a showing of likelihood of confusion and thus not proving substantial likelihood of success on the merits.

Investigator's Evidence Proof for Temporary Restraining Order for Infringing Website and Counterfeit Goods

2011-05-11T14:02:00.000-07:00

Bottega Veneta Int'l, S.A.R.L. v. Xuefeng Pan, 2011 U.S. Dist. LEXIS 2264 (S.D. Fla. Jan. 5, 2011)

Plaintiff Bottega Veneta International, S.A.R.L.'s (“Bottega”) filed an Ex Parte Application for Entry of a Temporary Restraining Order and Preliminary Injunction against Xuefeng Pan (“Xuefeng”), d/b/a the website bottegavenetas.com. Bottega manufactures and designs luxury leather goods, handbags and apparel; and owns the appropriate registered trademarks. Xuefeng offered counterfeit Bottega goods on the allegedly infringing website. The website was discovered by investigators for Bottega. No counsel for Xuefeng appeared at the hearing. The court found the evidence was strong enough to prove likelihood of success on the merits and entered the preliminary injunction.

Pandora's Box, False Designation of Origin & Standing of Non-Exclusive Licensees

2011-05-11T13:57:00.000-07:00

Pandora Jewelers 1995, Inc. v. Pandora Jewelry, LLC, 2010 U.S. Dist. LEXIS 138384 (S.D. Fla. Dec. 21, 2010)

The Plaintiff, Pandora Jewelers, Inc., has been in the business of selling and marketing jewelry from its retail store in Deerfield Beach, Florida since 1976. The Plaintiff has used the service mark PANDORA to market, sell, consign, appraise, clean, and repair jewelry. The Defendant, Pandora Jewelry, LLC, manufactures and sells jewelry under the name PANDORA to dealers in the South Florida region. The Defendant also licenses the operation of retail jewelry stores under the mark PANDORA, and has recently opened its own retail jewelry stores. Defendants Carrie Ventures and HB Retail are individual retail jewelry stores that operate under the mark PANDORA pursuant to a license agreement with Defendant Pandora LLC. Pandora LLC owns several Federal Trademark Registrations for the PANDORA trademark, and has several federal trademark applications pending.

One of the critical issues on the Affirmative Defenses of Defendants Carrie Ventures and HB Retail was whether these Defendants, as nonexclusive licensees, are in a position to assert the rights (and defenses) of the licensor, Pandora LLC.

According to the standard in the 11th Circuit, a claim for false designation of origin under Section 43(a) of the Lanham Act may be brought "by any person who believes that he or she is or is likely to be damaged" by the false designation of origin. 15 U.S.C. § 1125(a)(1); Phoenix of Broward, Inc. v. McDonald's Corp., 489 F.3d 1156, 1163 (11th Cir. 2007). Since the question of standing is broad under Section 43(a), the Defendants, as nonexclusive licensees, would have standing to bring a false designation of origin claim, asserting the rights of Pandora LLC, the licensor. This Court reasoned, “It naturally follows, that these Defendants must also be able to assert the defenses of Pandora LLC in defending a false designation of origin claim. The Defendants, as licensees, are standing in the shoes of Pandora LLC, as licensor. Just as these Defendants, as licensees, would be permitted to use a Section 43(a) claim as a sword, these Defendants may use the equitable defenses, applicable to Pandora LLC, as a shield in defending the Plaintiff's Section 43(a) claim.”

This Court also determined that the Defendants Affirmative Defenses adequately allege all of the essential elements of the defenses, and do not merely contain conclusory statements. Thus, the Plaintiff's motion to strike affirmative defenses two through nine was denied.

Famous Brands: Infringement, Priority, and Discovery Violations

2010-10-17T18:38:00.000-07:00

Lucky Brand Dungarees Inc., et al. v. Ally Apparel Resources LLC, USDC SDNY. Case No. 1:2005cv067 (May 5, 2010). not cited on Westlaw.

Lucky Brand sued Marcel Fashion Group Inc., owners of the “GET LUCKY” apparel line and its licensee Ally Apparel for trademark infringement in 2005. However, the trademark “GET LUCKY” was registered and used by Marcel Fashions long before Lucky Brand came into existence. Also, Lucky Brand, represented by Greenberg Traurig, was sanctioned for discovery violations.

Marcel Fashions counterclaimed and won a partial summary judgment on some trademark issues and breach of a settlement agreement from 2003. Marcel Fashions also won a $580,000 jury verdict for federal trademark infringement at trial against New York-based Liz Claiborne Inc. Marcel Fashions was represented by McCool Smith.

Two Slashers and an Advertising Company: In Likelihood of Confusion, Actual Confusion of Plaintiff’s Customers and Type of Mark are the Most Important Factors

2010-10-17T18:36:00.001-07:00

Caliber Automotive Liquidators, Inc. v. Premier Chrysler, Jeep, Dodge, LLC, 605 F.3d 931, 94 U.S.P.Q.2d 1866, 22 Fla. L. Weekly Fed. C 763 (11th Cir.(Ga.), May 07, 2010) (NO. 08-16179)

Caliber Automotive Liquidators, Inc. service mark owner of “Slash-It! Sales Event” provides advertising and promotions to car dealerships. Premier Automotive Group is a car dealership that makes its own promotional infomercial called the “Slasher Show”. Caliber sued Premier for trademark infringement based on it use of “Slasher” words in its promotion of car super sales. Caliber appealed a judgment for Premier in the North District of Georgia. The Appeals Court held that genuine issues of material fact existed as to strength of owner's “slasher” service marks, the actual confusion amongst the relevant consumer class, and likelihood of confusion. The Appeals court found that the actual confusion of actual customers of Caliber weighed very heavily in favor of finding an overall likelihood of confusion. Although the district court found that the Slash-It! Sales Event mark was descriptive, the district court erred in not recognizing that the marks also achieved federal incontestable status, and thus were entitled to strong protection. Moreover, Premier does not point to evidence to counter the evidence of confusion. The Appeals court stated, “the test [is] not whether the goods could be distinguished ... but whether the goods are so related in the minds of consumers that they get the sense that a single producer is likely to put out both goods Caliber has presented sufficient evidence of the strength of its marks and of actual confusion amongst the. The Appeals court reversed and remanded on the Federal issues.

Infringement: No Secondary Meaning Outside of Los Angeles, Unregistered Mark, Geographic Breadth Between Two Marks, Different Theme and Style of Restaurants, & No Bad Faith Intent.

2010-10-17T18:35:00.000-07:00

Dan Tana v. Dantanna’s., 2010 U.S. App. Lexis 14514 (11th Cir.), (C.A. 11, Jul. 15, 2010) Case No. 09-15123

Los Angeles restaurant Dan Tana sued Atlanta restaurant Dantanna’s for trademark infringement. The district court ruled in favor of Dantanna’s and the Appeal court affirmed. The Appeals court found there was material fact at issue on likelihood of confusion. Although the two businesses were similar, as they were both upscale restaurants, Dan Tana in did not register for a federal trademark and could not prove secondary meaning outside of Los Angeles. The court also considered that the two restaurants were on opposite sides of the country and were different themed restaurants. Dan Tana was a cozy Italian restaurant, whereas Dantanna’s was sports themed, with a surf and turf menu. In also, there was no bad faith intent to infringe or profit off of the confusion because Dantanna’s was named for the owner’s two children Dan and Anna.

International Marks: Priority and Sufficient Use in the United States for Protection in the United States

2010-10-17T18:33:00.000-07:00

Hamdard Trust v. Ajit Newspaper Advertising, Marketing and Communications, Inc., 2010 WL 3749085 (2nd Cir.(N.Y.), (Sep 28, 2010) (NO. 09-4965-CV)

The Appeals court, applying de novo review, affirmed the District court’s order granting defendant’s motion for summary judgment. Plaintiff Sadhu Singh Hamdard Trust failed to prove that it “possessed a priority right to the use” of the mark in question because “meager trickle of business” in the United States was insufficient to “constitute[ ] the kind of bona fide use intended to afford a basis for trademark protection.” More specifically, Plaintiff failed to establish “deliberate” use of the mark in the United States; rather, its “sporadic” and “casual” use was insufficient to defeat the grant of summary judgment in favor of defendants as a matter of law. Id. As the district court observed, a trademark is “recognized as having a separate existence in each sovereign territory in which it is registered or legally recognized as a mark.” Therefore, as the court found here, “foreign use is ineffectual to create trademark rights in the United States.”

Fendi, Famous Brand Counterfeit, Willfulness, Acquiescence, Laches & Unclean Hands

2010-05-16T16:35:00.000-07:00

Fendi Adele S.R.L. v. Ashley Reed Trading, Inc., 2010 U.S. Dist. LEXIS 13934 (S.D.N.Y. Feb. 16, 2010)

The Plaintiff, the famous Italian fashion design company Fendi sued Defendant, Ashley Reed trading company for selling counterfeit leather handbags. Plaintiff successfully alleged that Defendant sold counterfeit handbags, of a lower quality than the real Fendi brand, willfully and with bad faith. Nordstrom Rack and Off Fifth were among the stores that unwittingly bought the counterfeit Fendi handbags from Ashley Reed. The bags were spotted as counterfeit by the lower quality of leather and the missing hologram Fendi security logos. Defendant failed to meet its burden of proof for acquiescence, laches and unclean hands, in light of repeated cease and desist demands from Plaintiff. Plaintiffs' motion for summary judgment was granted as to their request to strike Defendants' affirmative defenses and as to their claims of trademark counterfeiting and false designation of origin under the Lanham Act, common law unfair competition under New York law, and trademark dilution under 15 U.S.C. § 1125(c) and Section 360-l of the New York General Business Law. The Defendants were permanently enjoined under section 43(a) of the Lanham Act from purchasing, offering for sale, or selling any item bearing the word "Fendi" and/or any of Fendi's registered trademarks without the express written permission of Plaintiffs; and it was further ordered that the matter be referred to a Magistrate Judge for a determination as to the appropriateness of an accounting of Defendants' profits and, if warranted, an assessment of Plaintiffs' damages.

University of Miami Plagiarism Case, Revisiting the Dastar case precedent: The Lanham Act Does Not Create a Cause of Action for Plagiarism.

2010-05-16T16:34:00.000-07:00

Andela v. Univ. of Miami, 2010 U.S. Dist. LEXIS 20432, 45-47 (S.D. Fla. Mar. 8, 2010)

Plaintiff Valentine B. Andela sued his former employer University of Miami and also University of North Carolina at Chapel Hill based on actions arising out of alleged plagiarism of post-doctoral research manuscripts. Andela brought these actions pro se. Andela is a physician-scientist from Cameroon, Africa, whose area of study is translational cancer research and international technology transfer to Africa. Andela was employed by UM from June of 2005 to September 25, 2006, as a post-doctoral associate in the Viral Oncology program at UM's Sylvester Comprehensive Care Center (the "Sylvester Center"). Throughout his employment as a post-doctoral associate, Andela worked in the laboratory of Dr. William J. Harrington, Jr. Plaintiff Angela alleges that Harrington "passed off" the Revised Manuscript by submitting a "mutilated version of Dr. Andela's work to the journal Blood, listing Dr. Andela as the primary author without Dr. Andela's required approval, consent, and signature . . . ." Andela then alleged that UM and UNC "reverse passed off" the Revised Manuscript to Cancer Research by plagiarizing and submitting his work without his name attributed to the article and without regard to his request that they refrain from doing so. The According to the controlling decision in the Dastar case, Section 43 of the Lanham Act, does not apply to communicative products such as the Revised Manuscript. Accordingly, Andela's allegations failed to state a claim and were dismissed with prejudice.

Counterfeit Cartoon Costumes, and required notice for seizure and destruction under Article 15, section 1116(d)(1)(A)

2010-05-16T16:31:00.000-07:00

Lyons P'ship, L.P. v. D&L Amusement & Entm't, 2010 U.S. Dist. LEXIS 28571 (E.D.N.Y. Mar. 2, 2010)

The company that owned intellectual property rights to the comic characters Barney, Baby Bop, Bob the Builder and Clifford the Big Red Dog brought an action for federal trademark, false designation of origin, copyright, and related state claims against Defendants for producing and selling infringing costumes portraying these characters. The Plainitff was not awarded remedies under Article 15, sections 1116(d)(1)(A) and 1118 for seizure and destruction of the infringing goods because the requisite ten day notice under section 1116(d)(1)(A) was not sent to Defendants. However, the Plaintiff was awarded statutory damages, attorneys fees and costs from each of the Defendants. Also, a permanent injunction was granted in favor of Plaintiff to prevent each Defendant from using the infringing trademarks and copyrights in commerce.

New Florida Film Incentives Bill Passes in the FL Senate

2010-03-27T11:00:00.000-07:00

SB 1752 passed through the FL Senate on March 25!

CS/HB 697 passed unanimously through the House Finance & Tax Council the afternoon of March 25!!
Many thanks to our House & Senate Sponsors, co-Sponsors and all the Legislators who have voted to support these pieces of legislation - we greatly appreciate their continued support!

From FAME Government Affairs Specialist (Dave Caserta) regarding SB 1752...

"I am happy to announce SB 1752, the Jobs Bill, which includes our tax credit was read for the second time on the Senate floor, discussed and was then rolled over to third reading for a final vote of the full senate. The full senate passed the Jobs bill 38 to 2 and has now sent the bill over to the House."

From FAME Government Affairs Specialist (Dave Caserta) regarding CS/HB 697...

"Our bill HB 697 was heard today in Finance and tax. Presentations were made by Rep Precourt, Rep Ambler and Rep Caroll praising the industry and its impact on Florida residents and businesses. The bill reduces the cap for on the amount that a production can get in the general cue to 8mill. Also reduces the incentive to 55mil first year, 50 mill second and 27mill each for third, fourth and fifth year.

The members voted unanimously to support our great bill. We now go to the floor of the house.

What a GREAT team we have...keep up the amazing work guys!! We are making a difference!!"

For more information, see:
http://www.easl.info/modules.php?op=modload&name=News&file=article&sid=44

Thanks to the EASL Membership, EASL EC, and special thanks to EASL Legislative Committee members Stephen Carlisle (EASL Chair-Elect), Nina-Dawne Williams (EASL Chair), Charlotte Towne, Nick Nanton, Tom Player, and Chrissie Scelsi.

Thanks again for your continued support!

All the best,

Emily Graham

Legislative Chair
Entertainment, Arts and Sports Law Section of the Florida Bar

Depictions of University Football Uniforms: Trade Dress, Licensing and the First Amendment

2010-01-30T15:56:00.000-08:00

Univ. of Ala. Bd. of Trs. v. New Life Art Inc., 2009 U.S. Dist. LEXIS 120238 (N.D. Ala. Nov. 2, 2009)

The issue was whether defendants infringed on plaintiff's trade dress by creating and selling paintings and prints which included pictures of University of Alabama football uniforms on players?

The defendant Daniel Moore is a highly qualified and well known sports artist who has painted a number of artistic presentations of notable University of Alabama football plays. The other defendant, New Life Art Inc., is the company that employs Daniel Moore as an artist. The dispute refers to a gap in time where there was no licensing agreement in effect between the parties. The defendants took the position that Moore's paintings (referred to as "images") and prints, as distinguished from "Indicia," did not have to be licensed. The plaintiff took the position that the uniforms worn by its football players in its colors were trade dress on which it had a protectable trademark and that the defendants cannot portray and sell football scenes which include those uniforms without a license to do so.

Among the court’s conclusions were: (1) The colors of the uniforms in Moore's paintings may be a weak trade dress mark, since they have created local secondary meaning but the colors are common for university uniforms. (2) The paintings may create a likelihood of confusion with regard to plaintiff's said mark. The court also found that, notwithstanding the foregoing conclusions, (1) there is no genuine issue of material fact with regard to defendants' defenses premised on Artistic Expression, First Amendment and Fair Use, and that defendants are entitled to prevail with regard to the paintings and prints of fine art quality as discussed. This conclusion includes a determination that even if there is a likelihood of confusion, the balancing of such likelihood and the public interest entitles defendants to prevail. (2) That the defendants have not and will not infringe on any trademark or trade dress mark of the plaintiff by creating, manufacturing, producing, selling, distributing or otherwise dealing in paintings and/or prints which are of the same or larger size and equal or greater quality than the limited edition paintings and prints that the defendants have heretofore created and produced.

Bienvenu à Montréal

2010-01-07T16:56:00.000-08:00

Montreal is the second largest French speaking city in the world, only after Paris. So, it is not surprising that Montreal is also widely considered, “La Capital Gastronomique de l'America del Nòrd”, a worthy rival to New York City for best restaurants in North America. This is all about the food, mon cherie!

Best French Canadian BBQ: St-Hubert, aka St. Hubert’s, where the barbeque chicken is cooked to perfection. The chicken melts in your mouth and the flavor is out of this world. For accompaniments, there are fries and the signature barbeque sauce. “Le sauce BBQ” is not a sweet southern barbeque sauce. It is boldly flavored yet delicately spiced gravy. Also, try the brochette. This is chicken barbeque on a skewer with pineapple, cherry, green bell pepper, and onion, candied over fire with their light sweet sauce. For dessert, you cannot miss the sugar pie, aka tart aux sucre. It is like a pecan pie without the pecans, and creamier with a more delicate pie crust. Mmm mm mm!

World Legend for “La Viande Fumée”: Schwartz’s Charcuterie Hebraique de Montreal, aka Schwartz’s Montreal Hebrew Delicatessen, aka Chez Schwartz, is truly unique. There are over 80 years of this Montreal tradition, which is open ‘til the wee hours of the morning. The brisket is marinated for ten days in secret mix of delicious herbs and seasonings. No preservatives are used. The meat is smoked daily on the premises. You will not find this kind of smoked beef anywhere else in the world. It is not corned beef and not pastrami. It is sliced thick and meaty. Have a sandwich on rye or just a pound on your plate, and don’t forget the side order of their fresh fries. Another great Montreal special: the karnatzel. It is homemade sausage/salami about a foot and a half long and just less than an inch in diameter, with a uniquely spiced and all-natural smoked flavor.

Best French Patisserie: La Patisserie Duc de Lorraine is located by Mount Royal at the intersection of Côte-des-Neiges and Rue St. Mary, and is quite frankly the best French patisserie in the world. I have based this statement on the opinions of my own and a multitude of world travelers, even comparing the delights here to those of the best patisseries in Paris, France. If you have time, sit down in the tea room and admire the beautiful neighborhood. My sister ordered the croque-monsieur, which is French bread with ham and cheese melted on top. The baguette is simply superb, and the ham and cheese were of the best quality. I ordered my all time favorite, le croissant aux jambon et fromage (ham and cheese). The croissants here have a great flavor and delicate texture. Also, you must try the desserts! The gigantic chocolate rum balls have the perfect chocolate and sugar taste with a surprise of orange zest. All the classics are done best here: the napoleons, chocolate cakes and strawberry tarts. The Patate Grand-Marnier really takes the cake. It is an almond flavored miniature cake soaked in Grand-Marnier and topped with cocoa covered marzipan icing. C'est yummy!

Winner of The Bagel Wars: Fairmont Bagel Bakery and St-Viateur Bakery & Café. I am biased. To any Montrealer, the only crave-worthy bagel is a Montreal bagel and the New York bagels are just second best. Montreal bagels are a totally different animal to the chewy water New York bagels. The Montreal bagels contain malt, egg, no salt. They are boiled in honey water and then baked in a wood brick oven. The flames from the oven give the bagels a lighter and darker colored and somewhat crunchy outside. The inside of the bagel is a little bit cake like. The light sweetness of a Montreal bagel contrasts perfectly with a light saltiness of good piece of Nova Scotia salmon and fromage à la crème. Go to Fairmont Bagels, where they have been firing up baking bagels since 1949. They also have really cute and crunchy mini bagels. Also you must try the equally legendary St-Viateur Bagel, where you can get a freshly baked bagel 24 hours a day.

World’s Best Indian Restaurant: Le Maison Cari Golden, aka the Curry House, aka Ben’s. If you are lucky, the owner Ben will be there. He is also a genius stock trader and enjoys an easy and intelligent conversation about the financial markets. The curries, kormas, and spices here unfold like a delicate perfumed garden. Try the samosas for an appetizer. They are spicy vegetable pockets in flaky pastry that come with a crème mint dipping sauce. My all time favorite, the chicken korma was just superb. The creamy spiced yoghurt sauce had sweet fruit and elegant heat. The chicken tikka, my sister’s all time favorite, was as flavorful as it was red. This chicken gets its color from cooking in a red clay pot. For dessert, get the gulab jamon. These are cake balls soaked in sweet rosewater. Words cannot describe how wonderful these flavors are!

The Poutine Phenomenon: Poutine is french fries covered in fresh cheddar cheese curd (le fromage beaucronne), topped with a special pepper sauce (le sauce poutine). In New York, there are 24 hour delis. In Montreal, there are 24 poutine “restos”.

The best is Resto la Banquis 24th. This is a funky little place with the classic poutine, and 24 other variations such as the “T-Rex” and the “Kamikase”. The cheese curds here squeak like they are supposed to. If they don’t squeak, the cheese isn’t fresh. Another great place for 24 hour poutine is Le Club-Sandwich, in the Gay village. This is three stories of 50s flair. At Patati Patata (the name is a play on the Quebecois word for French fries, patat frits), you can get poutine with tasty red wine gravy. If you are in the mood for Le Haute Poutine, try the fois gras poutine at Pied de Cochon.

As the restaurateur Fernand LaChance, who legend has it created the first poutine said, "ça va faire une maudite poutine!" That’s going to make a damn mess!

P.S. What are your favorite restaurants in Montreal?

Trademark Infringement: Attorney’s Fees

2009-11-13T10:49:00.000-08:00

Welding Servs. v. Forman, 2008 U.S. App. LEXIS 24402 (11th Cir. Ga. Dec. 2, 2008)

NOTICE: SEE FEDERAL RULES OF APPELLATE PROCEDURE RULE 32.1 WHICH GOVERN CITATION TO UNPUBLISHED OPINIONS.

The District Court entered a summary judgment in favor of the defendant/appellee and ordered the plaintiff/appellant to pay attorneys fees. The court of appeals examined whether the district court abused its discretion when awarding attorneys fees to the defendant/appellee. In awarding attorneys fees to the defendant/appellee, the district court cited the following factors (1) the trademark holder waited until three of its former employees acquired the alleged infringer, even though the alleged infringer had used the mark two years prior to the lawsuit commencing; (2) The alleged infringer tried to resolve the dispute without litigation, and responded to the holder’s cease and desist letter by volunteering to change the mark; and (3) Despite offers of settlement, including a pre-discovery offer of judgment, the trademark holder pursued the litigation. The court of appeals found that the district court did not abuse its discretion in awarding attorneys fees to the defendant/appellee. Also, the plaintiff/appellant waived its challenge of the attorneys fees award because the plaintiff/appellee did not challenge the amount at the district court level.

On another issue, the court of appeals did find that the district court erred in one respect. The court of appeals ruled contrary to the district court’s finding that the defendant/appellee had volunteered to change the allegedly offending mark in offer of settlement.

The district court’s judgment was reversed in part, affirmed in part, and remanded.

Trademark Counterfeiting Act: Parallel Brands, The Helms-Burton Act, Cuban Cigars

2009-11-09T13:28:00.000-08:00

United States v. Penton, 2008 U.S. App. LEXIS 25373 (11th Cir. Fla. Dec. 17, 2008)

NOTICE: SEE FEDERAL RULES OF APPELLATE PROCEDURE RULE 32.1 WHICH GOVERN CITATION TO UNPUBLISHED OPINIONS.

The Defendant appealed from a judgment that found him in violation of 18 U.S.C.S. § 2320(a), the Trademark Counterfeiting Act. The defendant was caught when an undercover officer went to his shop and purchased cigar boxes that looked similar to trademarked “Cuban” cigar boxes. The defendant contended that the trademarks of the “Cuban” cigars were not valid United States trademarks because of the Helms-Burton Act, at 22 U.S.C.S. § 6032(h). However, the companies at issue, although originally from Cuba, had set up independently in the United States after the owner families fled from Cuba. The companies had established trademarks in the U.S. by common law. In the meantime, back in Cuba, there were still the other separate brands with the same marks, now run by the Cuban government. Consequently, parallel brands had developed, with the Cuban government selling Cuban style cigars made in Cuba to the rest of the world, and the Cuban exile company selling Cuban style cigars made in the United States distributing them in the U.S. The trademarks for the company owned by the Cuban government are not U.S. trademarks and not entitled to U.S. trademark protection. However, the companies at issue here were the companies based in the United States which own common law U.S. trademarks. Therefore, the trademarks in question are U.S. trademarks, the Helms-Burton Act does not apply here, and these U.S. trademarks are protected. Also, testimony of consumers and experts was not necessary to prove confusion.

Anticybersquatting Consumer Protection Act (ACPA) and Lanham Act: Not Duplicative Damages

2009-11-02T09:56:00.000-08:00

St. Luke's Cataract & Laser Inst., P.A. v. Sanderson, 573 F.3d 1186, 1193 (11th Cir. Fla. 2009).

At trial, Plaintiff St. Luke's sued Dr. Sanderson and his LLC, alleging that Dr. Sanderson made unauthorized use of the domain names laserspecialist.com and lasereyelid.com, and the website the LaserSpecialist.com to promote his practice after he had resigned from practicing with St. Luke’s.

The jury found for Dr. Sanderson on a copyright infringement claim, but for St. Luke’s on claims of service mark infringement and ACPA. The United States District Court for the Middle District of Florida declared the ACPA damages should be reduced as duplicative of the service mark damages. Both parties appealed.

The appellate court disagreed with the reduction in ACPA damages. The appeals court found that that ACPA at 15 U.S.C.S. § 1125(d)(3) provided for damages even if duplicative of other damages because the text explicitly states that damages for cyberpiracy are “in addition to” any other available civil remedies.

The appellate court further explained that the damages for ACPA cannot be duplicative for damages for service mark infringement under the Lanham Act because ACPA requires the additional showing of bad faith intent to profit from a domain name.

Anticybersquatting Consumer Protection Act (ACPA): Bad Faith Intent to Profit

2009-10-29T08:22:00.000-07:00

Southern Grouts & Mortars, Inc. v. 3M Corporation, 575 F.3d 1235, 1238 (11th Cir. Fla. 2009)

The Plaintiff-Appellant Southern Grouts owned the trademark for Diamond Brite and wanted to own the rights to the domain name diamondbrite.com. However, the Defendant-Appellee 3M had re-registered its ownership of the domain name diamondbrite.com, even though it did not own the word mark and did not sell a product under that name. The Defendant-Appellee 3M refused to relinquish its registration of the domain name.

Analysis of the two unique circumstances and nine non-exclusive permissive factors for finding bad faith intent to profit weighed in favor of granting 3M’s motion for summary judgment to dismiss the ACPA claim.

The first unique circumstance was that, “through its registration of the diamondbrite.com domain name, 3M had the ability to monitor the viability and value of Internet traffic, the number of “hits,” to diamondbrite.com, and the geographic location of all or most of the “hits,” which could be used to determine strategic commercial information. This assertion was based solely on the report of Mr. Moody, an expert witness for Southern Grout. In the report, Mr. Moody stated that 3M enjoyed a commercial advantage from keeping the registration for diamonbrite.com. The Appellate court found that the District court did not abuse its discretion because the report was “imprecise and unspecific” or “the factual basis is not adequately explained”. The Appellate Court found that even if the report were admissible, Southern Grouts did not identify which part supported the idea that 3M had the ability to use its control over the domain name to monitor hits, and no evidence that 3M intended to do that. Also, there was no explanation in the report how the information would be useful to 3M when there were at least six other registered users of the DIAMOND BRITE mark.

The second unique circumstance Southern Grout argued to show bad faith intent to profit by 3M was that 3M retained control of the domain name not to display content but to prevent others from registering it. The Appellate court stated that bad faith may be proved here by 3M re-registering the domain name a month after receiving the cease and desist letter from Southern Grouts. However, ACPA required intent to profit from that bad faith. The appellate court cited a US Senate report defining cybersquatters, but the Senate report stated nothing about competitors who hold onto a domain name to prevent a competitor from using it. The Appellate court found that the legislative intent of ACPA was to prevent the practice of holding a domain name ransom with intent to profit from selling it for a price. Here, 3M was refusing to sell the domain name at all, and thus was not holding the domain name for ransom. Also, there was no evidence that 3M had the intent to divert customers to its site so that they would purchase their products instead. Therefore, there was no bad faith intent to profit shown from the second unique circumstance.

The appellate court found that of the nine discretionary factors for finding bad faith, § 1125(d)(1)(A): five factors favored the 3M, two factors favored Southern Grout, and the two other factors were inapplicable. Therefore, the nine factors weighted in favor of 3M.

Also, the court of appeals held that Southern Grout’s Lanham Act claim failed because it did not demonstrate that 3M used the domain name in commerce.

Trademark Infringement: Injunctions, False Designation of Origin and Strength of Mark, False Advertising

2009-10-28T17:50:00.000-07:00

Green Bullion Financial Services, LLC, v. Money4Gold Holdings, Inc., 2009 WL 1758728 (S.D. Fla. June 22, 2009).

False Designation of Origin:

Plaintiff claimed that Defendant is engaging in trademark infringement by creating a false designation of origin of its services. Normally the likelihood of confusion factors are considered as a whole, but here the strength of the plaintiff’s mark factor was determinative. The trademark at issue in this case is the word mark "Cash4Gold" and a stylized logo bearing the same words. The Parties agree that the mark is not inherently distinctive but is a descriptive word mark. Since the mark is descriptive, to be worthy of protection Plaintiff had to show that "Cash4Gold" has acquired "secondary meaning" applying factors from the Conagra case. There was a maximum of eighteen months of use before the infringement in September of 2008.

There are four advertisements in question: a commercial read by Howard Stern on his radio show, frequent nationwide television commercials on “major” cable stations, mark "Cash4Gold" affixed prominently to the car of driver Brandon Knupp, although it is dated August 12, 2008, and corporate advertisements with the Washington Wizards. The court found there was not enough evidence in the record to establish the size of consumer base that was reached with this advertising, recognition of the advertisements, or amount of sales attributable to them. Therefore the court held secondary meaning was not proved.

The second element of determining the strength of the "Cash4Gold" mark is its strength in the marketplace, which was also not proved with the evidence, using the same consideration for secondary meaning.

The court denied the motion for injunction based on false designation of origin for lack of evidence.

False Advertising:

Several advertisements are at issue and all were false. First, sub-affiliates advertising for Defendant placed sponsored links on Google asking the viewer "See our Super Bowl Ad?". These are literally false because they indicate to the viewer that the company placing those links advertised during the Super Bowl. Second, the advertisements containing the name under which Plaintiff does business, Cash4Gold, are also false. They imply that Plaintiff, who does business as Cash4Gold, is the operator of those websites and that the consumer doing business through those websites is doing business with Plaintiff.

However, the second element, of customer deception, was not proved by the evidence in the record. Although literal falsity of several of Defendant's advertisements was apparent and there is no need to prove the advertisements actually deceived any customer, Plaintiff offered no evidence to establish that the literally false advertisements were material to any customer's purchasing decision. Since Plaintiff did not provide evidence establishing that the falsie advertisements influenced the decisions of customers, the court found that Plaintiff was unlikely to succeed on the merits at that time.

The motion for an injunction was not granted.

Trademark Infringement: Injunctions, Nude Pictures on Infringing Website, Protection for a Stage Name

2009-10-25T16:38:00.001-07:00

Paola Miranda v. Eduardo Angel Perez Guerrero. 2009 WL 1381250 (S.D. Fla. May 14, 2009).

An injunction was granted in favor of Plaintiff because she proved likelihood of success on the merits of her Lanham Act Section 43(a) claim, she would suffer irreparable harm, the balance of hardships was in her favor, and the injunction would not disserve the public’s interest. Plaintiff was an entertainer and singer who employed Defendant to promote her. Defendant to nude photographs of Plaintiff under an agreement that they would get placed in Playboy Magazine. The photos were never featured in Playboy and Plaintiff discontinued the services of Defendant. Defendant kept the photos and posted them on a website with Plaintiff’s name as the domain name and under the appearance it was her official website.

First, Plaintiff proved likelihood of success on the merits n her Section 43(a) of the Lanham Act claim. It was undisputed in the record that Plaintiff used "Paula Morena" as her stage name since the beginning of her singing career. Lanham Act provides protection for Plaintiff's stage name because the Act protects "any word, name, symbol, or device,or any combination thereof used by a person ... to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source isunknown."15 U.S.C. s 1127 Plaintiff's use of the name "Paula Morena" not only identified her as a particular individual but, more importantly, identified her unique entertainment services. Since Defendant’s wife registered the domain name, there was a close enough relationship to hold Defendant liable as well. In addition, the domain name of www.paolamorena.com, combined with designation of the site as the "official site," clearly misrepresent to the consumer and the public the site's "affiliation, connection, or association" with the entertainer Paola Miranda. The entire site is dedicated to the Plaintiff, featuring her pictures and news articles. Based on the unchallenged evidence given by Plaintiff, the court found that visitors to Defendant's website were likely to believe that Paola Miranda has sponsored or otherwise approved the contents of the site.

Second, Plaintiff proved irreparable harm, not only by likelihood of success on the merits, but also because the photographs Defendant posted on his website are inconsistent with and repugnant to the image that Plaintiff is seeking to project. The public is likely to develop a certain unwanted perception of the Plaintiff as an entertainer if she continues to be associated with the pictures posted on Defendant's website. Naturally, the public's perception about an individual, especially a celebrity, is difficult, if not impossible, to undo.

Third, The balance of the hardships is in Plaintiff’s favor because her reputation is at stake. Also, Defendant holds no rights to the photographs and will suffer no harm if the injunction is granted.

Finally, an injunction would not disserve the public interest. Preventing dissemination of false information and advertising is not against the public interest, but on the contrary serves the public interest.

Starting A Fashion Business: Legal Issues

2009-10-24T12:33:00.001-07:00

I. Intellectual Property

Copyrights

Trademarks

Trade Dress

Dilution

Design Patents

Utility Patents

Trade Secrets

II. Business Entity Forms

Sole Proprietorship

General Partnership

Limited Liability Partnership

Limited Partnership

Limited Liability Limited Partnership

Limited Liability Company

Corporation

III. Other Registrations, Filings and Occupational Licenses

Fictitious Name

Certificate of Use

City License

Restricted Business License

Home Office Permit

Occupational Licenses

Retail Store

Cutting/Sewing/Pressing Service

Embroidering/Monograming Service

Consultant

Designer or Interior Designer

Artist/Illustrator

IV. Contracts

Employment

Work for Hire

Consulting or Independent Contractor

Confidentiality and Non-Competition

Commercial Workspace

Real Estate Purchase Agreements

Commercial Leases

Materials

Manufacturing and Distribution

Website Development, Hosting and Maintenance Agreements

Licensing

Advertising and Publicity

Merger or Acquisition of Fashion Businesses

Fashion Report: New Orleans

2009-10-23T15:47:00.000-07:00

When talking about New Orleans fashion, it isn’t just about the clothes. New Orleans is a way of life, a spirit. There is a certain joie de vivre about the people and everything about the city. I arrived the Sunday of the French Quarter Jazz Festival. It seems like every other week there is some kind of festival in New Orleans. Even when I went in the week or weekend not during a festival, the people and atmosphere are vibrant and have that back-beat cool. There are always street performers and artists on every block, painting, playing chess, a guitar, sax, or miming.

People in New Orleans express their love of eccentricity and tradition with their clothing. If there is one uniform in New Orleans, it is the hat. The hat of New Orleans is the fedora. Jazz musicians wear fedoras as they play in dark smoky bars, revelers wear them as they walk through the parades, and residents wear them while sitting on their front porch reading a newspaper. And if you are looking for a truly original hat, go to Fleur de Paris on Royal Street. This is a couture French millinery, which specializes in marvelous hats worn by local society women and celebrities the likes of Elizabeth Taylor and Madonna.

The next generation of New Orleans continues the funky vibe by mixing and matching vintage. A treasure trove of unique pieces by young designers is the Decatur St. Exchange. The pieces here are all made by local designers and have a deconstructed multicolor look. Definitely go check this place out.

Whatever you wear in New Orleans, it has to be worn with a party attitude. After all, Mardis Gras beads are available here year round. Laissez le bon temps roulez!