Pattishall IP Blog

May 12, 2017

Humanity Hates Trump may ________ Cards Against Humanity’s Trademark and Copyrights

Filed under: Copyright, Licensing, Trade Dress, Trademark (General) — Tags: , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 10:42 am

By Paul A. Borovay

Chicago’s own Cards Against Humanity, the vulgar/raunchy/funny/the-opposite-of-politically-correct card game, filed a lawsuit against SCS Direct for its selling card sets called “Humanity Hates Trump.”[1]  Humanity Hates Trump – along with Humanity Hates Hillary Too!, to be non-partisan about it all – card sets are available on its website.[2]

SCS Direct displays the following disclaimer on its website:

This set is in no way endorsed or affiliated with Donald J. Trump himself or Cards Against Humanity™, a registered trademark of Cards Against Humanity LLC, nor does it represent the views of SCS Direct Inc.

The focus of the case is whether the Humanity Hates Trump cards infringe Cards Against Humanity’s trademark and copyrights.

Cards Against Humanity makes its cards available for free download through a Creative Commons license, namely, the “Attribution-Non Commercial-ShareAlike 2.0 Generic (CC BY-NC-SA 2.0)” license.[3]  While the name is a mouthful, the license is actually rather simple.  Licensees can share, copy, and adapt the Cards Against Humanity game as long as they give credit to Cards Against Humanity, make their adapted product available under the same license, and not use the borrowed material for commercial purposes.[4]

SCS Direct clearly sells its Humanity Hates Trump cards online for commercial gain, and its cards use the same simplistic, black and white appearance of the Cards Against Humanity products.

The case touches on several interesting issues.  Is Cards Against product appearance protected under trade dress law?  Are its cards protected under copyright law?  Do the Humanity Hates Trump cards “remix, transform, and build upon the [Cards Against Humanity] material,” as described in the Creative Commons license?  Or, are the Humanity Hates Trump cards a separate product not covered under the CC BY-NC-SA 2.0 license?  How much latitude do licensees have under the license, or Creative Commons licenses in general, with respect to making, offering (for free), or selling “adapted” products?  Maybe none, maybe some.  We’ll see.

_____________________________

[1] Cards Against Humanity LLC v. SCS Direct Inc. et al., case number 1:17-cv-02781 (E.D.N.Y. May 8, 2017).
[2] See https://humanityhatestrump.com/.
[3] See https://cardsagainsthumanity.com/ and http://s3.amazonaws.com/cah/CAH_MainGame.pdf.
[4] The license is available on the Creative Commons website.  See https://creativecommons.org/licenses/by-nc-sa/2.0/.

These materials have been prepared by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP for general informational purposes only.
They are not legal advice. They are not intended to create, and their receipt by you does not create, an attorney-client relationship.

January 11, 2013

Air Force 1 trade dress dispute held moot – Nike wins at Supreme Court, but at what cost?

Filed under: Litigation, Trade Dress, Uncategorized — Tags: , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 10:41 am

UW low res

by Uli Widmaier

A sues B for infringing its registered mark.  B counterclaims for cancellation of A’s registration.  A executes a comprehensive covenant not to sue B in the future for using any colorable imitation of A’s mark, and moves to dismiss the lawsuit with prejudice.  B, intent on pursuing its counterclaim, opposes the motion.  The district court holds that the case is moot, and grants A’s motion.  The Court of Appeals affirms, as does the Supreme Court.  Case over.

This is the short version of Already, LLC, v. Nike, Inc., decided unanimously by the Supreme Court on January 13, 2013.  See — U.S. –, No. 11-982 (U.S. January 9, 2013).  To put some meat on the factual bones:  Nike was the plaintiff, Already was the defendant, the mark was the trade dress of Nike’s famous Air Force 1 shoe, for which Nike has a federal registration.  Already sold shoes that Nike felt infringed the Air Force 1 trade dress.  Nike sued, Already counterclaimed.  Nike then reconsidered, successfully mooting the case via a unilateral covenant not to sue.  “The covenant promised that Nike would not raise against Already or any affiliated entity any trademark or unfair competition claim based on any of Already’s existing footwear designs, or any future Already designs that constituted a “colorable imitation” of Already’s current products.”  Already, slip op. at 2.

The Supreme Court’s decision clarifies (to a degree) the burden for showing the existence or absence of an actual controversy where a plaintiff seeks to moot a defendant’s counterclaim via a unilateral covenant not to sue.  But its importance lies just as much, if not more, in the barriers the Court erects against future uses of covenants not to sue, and in the insight it provides into the Justices’ thinking about trademarks and about basic competitive fairness.

The opinion was written by Chief Justice Roberts.  Justice Kennedy wrote a concurrence, which Justices Thomas, Alito, and Sotomayor joined.

I.    The Holding:  Burdens and Burden-Shifting

Both the district court and the Second Circuit held that, once Nike had executed the covenant not to sue, the burden was on Already to show that the case had not become moot.  Slip op., Kennedy concurrence at 1.  This was “wrong.”  Id.  “Under our precedents, it was Nike’s burden to show that it could not reasonably be expected to resume its enforcement efforts against Already.”  Slip op. at 5, quoting Friends of the Earth, Inc., v. Laidlaw Environmental Services (TOC), Inc., 528 U.S. 167, 190 (2000) (quotation marks omitted).  In other words, the “voluntary cessation doctrine” articulated in Friends of the Earth applies to Nike, who in this situation was the party who voluntarily ceased the allegedly wrongful conduct (i.e. a lawsuit based on an allegedly invalid registration) .  Id. at 5-6.  This burden imposed on Nike by the doctrine is a “formidable” one.  Id. at 6. (more…)

June 15, 2012

Recent Cases Show That Utilitarian Functionality Is A Serious – And Common – Impediment To Trade Dress Protection

Filed under: Litigation, Trade Dress — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 3:14 pm

By Janet Marvel, Trademark Attorney

A product shape or package must be non-functional to qualify for trade dress protection.  Yet a spate of recent cases reveals many plaintiffs who try to expand or lengthen patent protection by alleging that their product features designate source.  Below is a description of recent trade dress protection attempts along with a short refresher on the reasons for the functionality doctrine and how to deal with it.

A mark is functional if it is “essential to the use or purpose of an article or affects the cost or quality of an article.”  TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 32 (2001).  If a mark fits this test, it is functional, and not protectable.  If it does not, courts may still consider whether there is a competitive necessity to use the product feature.  In other words, courts may consider whether alternative product designs are available, and whether the cost or time involved in using an alternative design makes it impractical.  Id. at 33. See also, In re Becton, Dickinson and Co., 675 F.3d 1368, 1376 (Fed. Cir. 2012).

The functionality bar to trade dress protection exists to prohibit would-be trademark owners from protecting functional features in perpetuity, rather than for the limited time permitted by patent law.  For this reason, the existence of a patent covering a feature claimed to constitute trade dress is the kiss of death for trademark protection.

Four factors have developed to help determine whether an alleged mark is functional.  They vary by circuit, but the Federal Circuit’s list is instructive.  The Federal Circuit and the United States Patent and Trademark Office consider the following in determining functionality:

(1)       the existence of a utility patent that discloses the utilitarian advantages of the design sought to be registered;

(2)       advertising by the applicant that touts the utilitarian advantages of the design;

(3)       facts pertaining to the availability of alternative designs, and

(4)       facts pertaining to whether the design results from a comparatively simple or inexpensive method of manufacture.

In re Morton-Norwich Products, Inc., 671 F.2d 1332, 213 USPQ 9 (CCPA 1982).  See also, Valu Engineering Inc. v. Rexnord Corp., 278 F.3d 1268, 1275, 61 USPQ2d 1422, 1426 (Fed. Cir. 2002).

Most recent trade dress claims have foundered on these factors.  In particular, plaintiffs and trademark applicants have tried to argue around the existence of prior patents – to no avail.  See Seirus Innovative Accessories, Inc. v. Gordini U.S.A., Inc., 2012 WL 368044 (S.D. Cal. Feb. 3, 2012) (court found patent invalid but held that patent nonetheless supported finding of functionality); Great Neck Saw Manufacturers, Inc. v. Star Asia U.S.A., LLC, 727 F. Supp. 2d 1038 (W.D. Wash. 2010), aff’d 432 Fed. Appx. 963 (Fed. Cir. 2011) (utility knife shape found functional based, in part, on prior utility patent); In re Charles N. Van Valkenburgh, 97 USPQ2d 1757 (TTAB 2011) (refusing registration of shape of motorcycle stand: “[W]e look to the features disclosed in the patent which have been incorporated into the present product designs and the teachings of the patent with respect to these features”).

It is irrelevant whether a patent is expired or current.  See Georgia-Pacific Consumer Products LP v. Kimberly-Clark Corp., 647 F.3d 723 (7th Cir. 2011) (factors for evaluating functionality include the “existence of a utility patent, expired or unexpired, that involves or describes the functionality of an item’s design element”).  Third party patents can block trademark protection.  Jay Franco & Sons, Inc. v. Franek, 615 F.3d 855 (7th Cir. 2010) (third party utility patents are “excellent cheat sheets” for determining functionality).  While parties have argued that only patent claims should bar trademark protection, courts have not been so constrained.  See In re Becton, Dickinson and Co., 675 F.3d 1368 (Fed. Cir. 2012) (rejecting applicant’s arguments that only patent claims can evidence functionality).  A patent application, even if rejected or abandoned, is evidence of functionality.  Ogosport LLC. v. Maranda Enterprises LLC, 2012 WL 683111 (E.D. Wis. March 2, 2012) (citing plaintiff’s abandoned patent applications but relying on third party patents to support functionality holding); Seirus Innovative Accessories, Inc., 2012 WL 368044 (same).

Similarly, a party’s own advertising is often construed as an admission of functionality.  See Secalt S.A. v. Wuxi Shenxi Construction Machinery Co., Ltd., 668 F.3d 677 (9th Cir. 2012) (plaintiff’s advertisements regarding alleged trade dress in square shape of scaffold hoist stated that the product was square so it would not roll off tables; alleged trade dress found functional); Talking Rain Beverage Co., Inc. v. South Beach Beverage Co., 349 F.3d 601, 604 (9th Cir. 2003) (plaintiff’s advertising encouraging consumers to “Get a Grip.” on water bottle found to weigh in favor of functionality); Poly-Am., L.P. v. Stego Indus., L.L.C., No. 3:08-CV-2224-G, 2011 WL 3206687, at *7 (N.D. Tex. July 27, 2011) (advertising utilitarian benefits of yellow trade dress for vapor barrier nullifies the presumption of validity bestowed on the alleged mark by registration); Kistner Concrete Products, Inc. v. Contech Arch Technologies, Inc., 97 USPQ2d 1912 (TTAB 2011) (bridge culvert shape advertised as superior for shedding water held functional).

Moreover, while many plaintiffs have tried to argue that there are other ways to make products competitive to theirs, courts have rejected this “alternative designs test.”  See Specialized Seating, Inc. v. Greenwich Industries, L.P., 616 F.3d 722 (7th Cir. 2010) (existence of many alternative designs for folding chair did not mean that the plaintiff’s design was non-functional.  It was not “the only way to do things” but “it represent[ed] one of many solutions to a problem.”)

Many of the recent functionality cases arise from facts that seem to show that plaintiffs have tried to continue protection beyond a patent period.  It is understandable that a party with a successful and unique product would view post-patent copyists as interlopers.  The better way to differentiate against such competitors upon expiration of a patent may be to consider trade dress protection at the time that a patentable product is developed.  If a source-differentiating feature can be added to the product upon its introduction, that feature will have time to develop secondary meaning during the patent period.  When the patent expires, the source identifier will serve to identify its associated product as the original, and likely the market leader.

 *     *     *

Janet Marvel is a partner with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, a leading intellectual property law firm based in Chicago, Illinois.  Pattishall McAuliffe represents both plaintiffs and defendants in trademark, copyright, and unfair competition trials and appeals, and advises its clients on a broad range of domestic and international intellectual property matters, including brand protection, Internet, and e-commerce issues.  Ms. Marvel’s practice focuses on litigation, transactions, and counseling in domestic and international trademark, trade dress, Internet, and copyright law.  She co-authored the Fifth Edition of the Trademarks and Unfair Competition Deskbook, recently published by LexisNexis.

For a printer-friendly version, click here.

May 11, 2012

Cuervo Misses the Mark in Sixth Circuit Appeal Involving Seals on Liquor Bottles

Filed under: Litigation, Trade Dress — Tags: , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 12:14 pm

by Jeffrey A. Wakolbinger, Trademark Attorney

By U.S. regulation, a bottle labeled as “bourbon” must contain contents that were made in the United States according to certain procedures.  And by order of the Sixth Circuit, a bottle topped with a red, dripping-wax seal, must be made by Maker’s Mark.  See Maker’s Mark v. Diageo N. Am., No. 10-5508 (6th Cir. May 9, 2012).

Maker’s Mark Distillery, Inc., makes bourbon whisky and sells it in bottles topped with a distinctive, red, dripping wax.[1]  Maker’s Mark has packaged its product this way since 1958, when the wife of the man credited with the recipe first used the family deep fryer to apply a wax seal to the top of a bottle.  In 1985, Maker’s Mark obtained U.S. Trademark Registration No. 1,370,465 for a “wax-like coating covering the cap of the bottle and trickling down the neck of the bottle in a freeform irregular pattern.”

Jose Cuervo started producing its “Reserva de la Familia” premium tequila in 1995 and initially topped its bottles with a straight-edged wax seal.  By 2001, however, bottles sold in the United States were adorned with a red, dripping-wax seal.  Maker’s Mark brought suit in 2003, seeking to enjoin Cuervo’s use of this registered mark and also seeking an award of damages.  Cuervo counterclaimed for cancellation of the trademark.

After a six-day bench trial in—where else?—Kentucky, a district court found that Maker’s Mark’s wax seal is a valid trademark and that Cuervo had infringed it.  The court enjoined Cuervo permanently “from using red dripping wax on the cap of a bottle in the sale, offering for sale, distribution or advertising of Cuervo tequila products at any locality within the United States.”  The court denied Maker’s Mark’s claim for dilution and request for damages, as well as Cuervo’s counterclaim for cancellation.  The judgment was affirmed by the Sixth Circuit on May 9, 2012.

Judge Martin, writing for the Sixth Circuit, provides an interesting analysis of the doctrine of aesthetic functionality and the familiar likelihood-of-confusion factors as applied to the wax seals of the two distillers, but not before waxing academic on the history of bourbon itself.  Judge Martin discusses how bourbon is made (using corn as the primary grain, a sour-mash method of production, and new, charred oak barrels for aging); where the name originated (Bourbon County, Kentucky); and other interesting bits of bourbon trivia.  (Who knew that President Truman liked to start his day with a walk, a rubdown, a light breakfast, and a shot of bourbon?)

One issue addressed on appeal is the concept of “aesthetic functionality,” recognized in dicta in TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23 (2001).  The Sixth Circuit had previously proposed that “where an aesthetic feature (like color), serves a significant function . . . courts should examine whether the exclusive use of that feature by one supplier would interfere with legitimate competition.”  Maker’s Mark, slip op. at 8 (quoting Antioch Co. v. W. Tramming Corp., 347 F.3d 150, 155 (6th Cir. 2003)).  But it had never expressly adopted the doctrine and did not do so in this case.  Instead, the court applied two alternative tests for functionality and agreed with the district court’s finding that Cuervo’s argument failed under either test.  Under the “comparable alternatives” test, a design is functional if it deprives competitors of a “variety of comparable alternatives [they] may use to compete in the market”; under the “effective competition” test, a design is functional if it is likely to “hinder the ability of another manufacturer to compete effectively in the market for the product.”  Maker’s Mark, slip op. at 9 (quoting Abercrombie & Fitch Stores, Inc. v. Am. Eagle Outfitters, Inc., 280 F.3d 619, 642 (6th Cir. 2002)).  The court found that neither test was met here because it would not be difficult or costly for competitors to design around the mark, and “red wax is not the only pleasing color of wax . . . nor does it put competitors at a significant non-reputation related disadvantage to be prevented from using red dripping wax.”

Having held that the dripping-wax trademark is not subject to cancellation on grounds of functionality, the court applied the Sixth Circuit’s Frisch factors and held that the balance of those factors compels a finding of infringement. The court relied heavily on the district court’s finding that the Maker’s Mark’s trademark is “extremely strong,” and it reached its conclusion despite finding that the “likely degree of purchaser care” factor “clearly” favors Cuervo.

The Sixth Circuit also affirmed the district court’s award of $66,749.21 of Maker’s Mark’s $72,670.44 in requested costs.  Cuervo argued that, because Maker’s Mark did not succeed on its claim for damages or its request for a permanent injunction on its dilution claim, Maker’s Mark was not a “prevailing party” as that term is used in Federal Rule of Civil Procedure 54(d).  The Sixth Circuit rejected that argument, stating, “Maker’s Mark did not need to win every claim to be considered the prevailing party.”

Thus, the case serves as a useful reminder that a party need not claim total victory in order to be a “prevailing party” entitled to costs under Rule 54, as well as an interesting read for anyone interested in the aesthetic-functionality doctrine—or curious about such things as the brand of General Grant’s favorite whiskey.

*          *          *

Jeffrey A. Wakolbinger is an attorney with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, a leading intellectual property law firm based in Chicago, Illinois.  Pattishall McAuliffe represents both plaintiffs and defendants in trademark, copyright, and unfair competition trials and appeals, and advises its clients on a broad range of domestic and international intellectual property matters, including brand protection, Internet, and e-commerce issues.   Jeff’s practice focuses on trademark and copyright litigation, as well as domestic and international trademark, Internet, e-commerce, and copyright law.

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[1] As noted in the Sixth Circuit’s opinion, “whiskey” is the preferred spelling in the United States, while “whisky” is the typical spelling in Scotland and Canada.  Maker’s Mark nonetheless identifies its product as “bourbon whisky”—without the “e.”

February 9, 2012

Defendant Hoist Manufacturer Awarded Attorney’s Fees in Trade Dress Case Secalt v. Wuxi Shenxi Construction Machinery

Filed under: Litigation, Trade Dress — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 12:30 pm

By Janet Marvel, Trademark Attorney

In Secalt S.A. v. Wuxi Shenxi Construction Machinery Co., Ltd., Nos. 10-17007 & 11-15066, 2012 WL 373102 (9th Cir. Feb. 7, 2012), plaintiff, a manufacturer of traction hoists (typically used for commercial building and window washing), alleged that it owned trade dress rights in the following design:

The Ninth Circuit ruled for the defendant, the maker of an apparently identical product.  The court’s opinion rested on its conclusion that, to paraphrase, no one cares what a traction hoist looks like, as long as it works.  Id. at *4.  Since plaintiff’s design was not the subject of a federal trademark registration, plaintiff was required to prove that it was non-functional and that it had secondary meaning.  Plaintiff could not prove non-functionality.  A design is functional if it “is essential to the use or purpose of the article, or affects the cost or quality of the article.”  Inwood Laboratories v. Ives Laboratories, 456 U.S. 844 n.10 (1982).

The Ninth Circuit, after citing the confusing de jure and de facto definitions of functionality (which have been rejected as unhelpful by the TTAB), considered the much more understandable factors set forth in Disc Golf Ass’n v. Champion Discs, Inc., 158 F.3d 1002 (9th Cir. 1988).  Those factors are:  “(1) whether the design yields a utilitarian advantage, (2) whether alternative designs are available, (3) whether advertising touts the utilitarian advantages of the design, and (4) whether the particular design results from a comparatively simple or inexpensive method of manufacture.”  Secalt, 2012 WL 373102, at *4 (citing Disc Golf, 158 F.3d at 1006).

No factor supported the plaintiff.  Plaintiff’s own engineers testified that the hoist’s features were utilitarian.  There were alternative designs, but they were functional too.  Plaintiff’s own advertising stated that its hoists were rectangular (“cubist” in plaintiff’s trade dress parlance) so they would not roll off of tables.  All hoists cost pretty much the same, so the last factor was neutral.  The court found that plaintiff’s evidence was so lacking that defendant was entitled to its attorney’s fees.

The Secalt case provides the opportunity to revisit a best practice in trade dress protection.

Although a utilitarian design can only be protected for a limited time, and a purely ornamental design does not necessarily function as a source indicator, when designing a product, the  developer has the opportunity to consider adding a unique feature and repeating it throughout a product line.  If this is possible, then the product manufacturer has the opportunity to use the feature to develop and support brand recognition, even after its utility patent for the product expires, at which time copyists otherwise legally would be allowed to create competing identical products.

 *     *     *

Janet Marvel is a partner with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, a leading intellectual property law firm based in Chicago, Illinois.  Pattishall McAuliffe represents both plaintiffs and defendants in trademark, copyright, and unfair competition trials and appeals, and advises its clients on a broad range of domestic and international intellectual property matters, including brand protection, Internet, and e-commerce issues.  Ms. Marvel’s practice focuses on litigation, transactions, and counseling in domestic and international trademark, trade dress, Internet, and copyright law.  She co-authored the Fifth Edition of the Trademarks and Unfair Competition Deskbook, recently published by LexisNexis.

For a printer-friendly version, click here.

November 10, 2011

Light Blue Color Mark for Tennis Racket Overgrips Held Valid but Not Infringed by Slightly Different Shade of Light Blue Grip Tape

Filed under: Litigation, Trade Dress — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 11:44 am

Categories: Litigation, Trade Dress
Tags: Color Marks, Post Sale Confusion, Initial Interest Confusion, Ian. J. Block

by Ian J. Block, Trademark Attorney

Unique Sports Products, Inc. (“Unique”) manufactures and markets the TOURNA GRIP, an overgrip product for tennis rackets that wraps around preexisting racket handles to provide additional cushioning and moisture absorption during play.  Unique and its predecessors have sold the TOURNA GRIP product in a light blue color since 1977.  Unique owns a federal registration for this light blue color for “grip tape for sports rackets.”  In 1999, when Unique applied for its color mark registration, the TOURNA GRIP product was the most popular tennis grip tape on the market, with sales of the product making up the majority of the market.  The product remains highly successful today, and is endorsed by such tennis stars as Pete Sampras, Venus Williams, and James Blake.

Ferrari Importing Company d/b/a Gamma Sports (“Gamma”) markets a different type of tennis racket grip, called gauze tape.  This product differs from Unique’s racket grip tape in that it has the woven appearance of medical gauze, is tacky to the touch, does not provide additional cushioning, and does not absorb moisture.  Gamma’s gauze tape product also is light blue in color, albeit a different shade.

Based on images of the parties’ products as they are offered for sale online, the products appear as follows:

Unique’s TOURNA GRIP Gamma’s Gauze Tape
   

Unique filed suit against Gamma, alleging trademark infringement of its registered light blue color mark.  After a two-day bench trial, the district court denied Unique’s infringement claim and rejected Gamma’s affirmative defense that Unique’s color mark was invalid.   Unique Sports Products, Inc. v. Ferrari Importing Company d/b/a Gamma Sports, No. 1:09-CV-660-TWT, 2011 WL 5156798 (N.D. Ga. Oct. 27, 2011).[1] (more…)

September 17, 2010

Protecting Product Configuration through Trademark Law: The Seventh Circuit Explains Functionality under the Lanham Act and the Interplay Between Patent and Trade Dress Protection

Filed under: Trade Dress — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 2:40 pm

by Phillip Barengolts, Trademark Attorney

The configuration of a product may constitute protectable trade dress so long as the configuration is not functional and it signifies the source of the product, i.e., has secondary meaning.  Two recent companion decisions from the Seventh Circuit describe the limits of this protection and how it may be circumscribed by prior patents.  See Specialized Seating, Inc. v. Greenwich Industries, L.P., No. 07-1435, 2010 U.S. App. Lexis 17015 (7th Cir. Aug. 11, 2010);[1] Jay Franco & Sons, Inc. v. Franek, No. 09-2155, 2010 U.S. App. Lexis 17019 (7th Cir. Aug. 11, 2010).[2]

In Specialized Seating, both parties marketed “x-frame” chairs used in the live performance industry for temporary seating.  Greenwich Industries owned an incontestable federal registration for the below design of its “x-frame” chair:

(more…)

August 17, 2009

Is That Bag Prada or Prado?: Protecting Fashion Industry Intellectual Property

Filed under: Copyright, Design Patent, Trade Dress — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 3:00 pm

by Jasmine Davis, Summer Associate

In April 2009, Canadian journalist and blogger Nathalie Atkinson posted a side-by-side comparison of two seemingly identical jackets made by two different designers.  See National Post Online, Copycats: A Tale of Two Jackets (as of Aug. 12, 2009).

From the images alone, it looked like another classic case of copying within the fashion industry.  But this story had a twist: Diane von Furstenberg, iconic fashion designer, head of the Council of Fashion Designers of America and driving force behind legislation to protect fashion industry intellectual property, appeared to have copied the work of a more obscure designer.

Atkinson had been looking through the latest issue of Teen Vogue and noticed a Diane von Furstenberg jacket – a jacket that looked very much like a jacket Atkinson already owned.  However, the jacket she owned was from the lesser-known Mercy’s Spring 2008 collection, not Diane von Furstenberg’s Spring 2009 collection.  Atkinson found this particularly newsworthy because Diane von Furstenberg was so protective of her own designs, having sued both Forever 21 and Target for copying.  Diane von Furstenberg also is one of the main proponents of the Design Piracy Prohibition Act, recently introduced in Congress for the third time, which would provide increased copyright protection for the fashion industry.  Ultimately, after Atkinson exposed the similarity between the two jackets, Diane von Furstenberg called Mercy to privately settle the matter.  Of course, not every designer is so fortunate as to have Diane von Furstenberg’s resources or her sense of moral duty.  So, how should designers protect their intellectual property? (more…)

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