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.
Sunday, October 17, 2010
International Marks: Priority and Sufficient Use in the United States for Protection in the United States
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.”
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.”
Sunday, May 16, 2010
Fendi, Famous Brand Counterfeit, Willfulness, Acquiescence, Laches & Unclean Hands
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.
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.
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.
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)
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.
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.
Saturday, March 27, 2010
New Florida Film Incentives Bill Passes in the FL Senate
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
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
Saturday, January 30, 2010
Depictions of University Football Uniforms: Trade Dress, Licensing and the First Amendment
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.
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.
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