Pattishall IP Blog

March 28, 2012

Court Deals Blow to Hasbro in Dispute Involving Transformers Trademark

Filed under: Litigation, Trademark (General) — Tags: , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 10:34 am

by Jeffrey A. Wakolbinger, Trademark Attorney

The storyline developed to market the “Transformers” line of toy robots that transform into vehicles and other objects is probably familiar to any child of the ’80s and certainly to anyone who contributed to the box-office success of the 2007 Transformers movie and its sequels.  It’s a battle between Optimus Prime’s virtuous Autobots and Megatron’s evil Decepticons, an epic robot battle between good and evil.

A somewhat less epic battle is being waged in the Central District of California, where Hasbro, the owner of the Transformers brand, has sued Asus Computer International, a manufacturer of high-end electronics, for trademark infringement and dilution.  See Hasbro, Inc. v. Asus Computer Int’l, Inc., No. 11-cv-10437 (C.D. Cal. Mar. 23, 2012).[1]

Hasbro owns a registration for TRANSFORMERS in class 28 for “toy action figures, toy vehicles, and toy robots convertible into other visual forms.”  Taking advantage of renewed interest in the Transformers brand (owing to the success of the recent film franchise), Hasbro launched the Emmy-nominated “Transformers Prime” animated television series in November 2010 and applied to register its TRANSFORMERS PRIME mark in classes 28 and 41.

On January 4, 2011, Asus announced the launch of its Eee Pad Transformer tablet computer, which uses Google’s Android operating system and is capable of “transforming” from a tablet computer into a laptop when connected to a mobile docking station.  The name did not go unnoticed by Hasbro, which sent Asus a cease-and-desist letter two weeks after the announcement.  Asus’s counsel responded, asserting that Hasbro’s mark did not apply to netbook computers and that Asus’s use of the term was merely descriptive.  No further communications between the parties were exchanged, and Asus began selling the Eee Pad Transformer tablet in April 2011.  On October 19, 2011, Asus announced the second generation of its tablet: the Eee Pad Transformer Prime.  According to Asus, the word “prime” was added to signify the premium nature of the product and “to emphasize the tablet was first in time, rank, authority, and significance.”  It’s also the last name of the Autobots’ protagonist.  Hasbro filed suit on December 16, 2011, and moved for a preliminary injunction shortly thereafter.

The district court denied Hasbro’s motion on March 23, 2012.  The court found that Hasbro failed to establish a likelihood of success on the merits of its claims, explaining, among other things, that Hasbro’s computer-related products, including Transformers-themed USB storage devices, speakers, laptop skins, and a toy “educational laptop,” were “gimmicky,” while Asus’s “sleek” products were anything but.  The court held that this and other equitable considerations weighed against granting the “extraordinary and drastic remedy of preliminary relief.”

The court accepted Asus’s uncontroverted evidence that it would suffer considerable hardship from the recall of goods already in circulation—particularly in light of the very short window of opportunity for computer manufacturers to capitalize on the latest technology—and rejected Hasbro’s claims of hardship in light of the fact that Hasbro waited eleven months after sending a cease-and-desist letter and eight months after Asus launched its original Eee Pad Transformer tablet before filing suit.  Although it may have been the announcement of Asus’s Eee Pad Transformer Prime tablet that ultimately pushed Hasbro into filing, Hasbro still waited two months before filing its complaint on the eve of Asus’s second-generation tablet’s launch.

One could argue that the court’s focus should have been on the time between the announcement of Asus’s second-generation Eee Pad Transformer Prime tablet and Hasbro’s filing, but this is hardly the first case in which a court has resisted a party’s claimed need of immediate injunctive relief in light of a perceived delay in bringing the matter before the court.  Although the denial of a motion for preliminary injunction is not a total defeat, it is often more than meets the eye.  A party making such a motion risks prematurely committing to legal theories and factual positions, losing goodwill with the court, and losing bargaining power with the defendant.  Hasbro’s ultimate likelihood of success remains to be seen, but the outcome of this dispute may easily be influenced by this early decision.  Trademark owners and their counsel must carefully evaluate the strength of their claims and consider appropriate equitable concerns before seeking the “extraordinary and drastic remedy of preliminary relief.”

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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.

February 23, 2012

What’s In A (Domain) Name? What A Cybersquatter Calls A Web Site By Any Other Name Would Not Sell For A Million Dollars Or Provide A Platform For A Three-Year Old’s Artwork

Filed under: Cybersquatting — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 3:41 pm

by Phillip Barengolts, Trademark Attorney

In “one [of] a series of domestic disputes between” Paul Bogoni and Vicdania Gomez, Gomez registered the domain names and without his authorization.[1]  She offered to sell the domain names for $1 million each and posted content on one of them related to certain of her and her daughter’s artwork.  Bogoni sued under the personal name protection provisions of the Anti-cybersquatting Protection Act, 15 U.S.C. § 8131, seeking a preliminary injunction.  He prevailed when Gomez’s defense of use in connection with a copyrighted work failed to show her good faith registration.  Bogoni v. Gomez, No. 11 civ 08093 (S.D.N.Y. Jan. 6, 2012).[2]

Gomez initially populated with statements that her three-year old daughter wrote and operated the website, which would donate proceeds to charity from the sale of art objects called “Angel” and “Airplane.”  A message on the site stated, “Hi, I’m Vittoria and this my [sic] first website that my mommy helped me launch in order to begin my journey in making the world a better place.”  The web site advised visitors that the two art objects were constructed at an arts institution named “Make Meaning in the Upper West Side of Manhattan.”  The “Airplane” object was titled “Bogoni.”  Finally, the web site displayed the following statement: “I will am [sic] also selling this domain name http://www.PAULBOGONI.ORG and http://www.PAULBOGONI.COM for $1Million (ONE MILLION DOLLARS) each.”  A photograph of “Airplane” appeared on the web site a month after the filing of Bogoni’s complaint and Gomez never explained the relationship between the name Bogoni and the “Airplane.”

Under these facts, Bogoni satisfied his burden to show that Gomez: (1) registered a domain name that consists of his name; (2) did so without the Bogoni’s consent; and (3) had the specific intent to profit from Bogoni’s name by selling the domain name for financial gain.[3]  The court’s analysis turned on the availability of a defense to cybersquatting liability for

“good faith registration of a [personal] domain name . . . if such name is used in, affiliated with, or related to a work of authorship protected under Title 17 . . . and if the person registering the domain name is the copyright owner or licensee of the work [and] the person intends to sell the domain name in conjunction with the lawful exploitation of the work.”

15 U.S.C. § 8131(1)(B).

The Court found that Gomez exhibited an absence of good faith based upon the facts in evidence, and her offer to sell the domain names was not “in conjunction” with the sale of the two art objects.  Thus, she did not qualify for this copyrighted work defense.  The Court’s injunction did not require Gomez to transfer the domain names, however, but only required her to stop using them, which she did by removing all content.  Currently, simply states “underconstruction.”

This decision illustrates a key distinction between a claim over the use of a personal name as a domain name under the ACPA versus the Uniform Domain Name Dispute Resolution Policy: the UDRP does not protect personal names that are not trademarks as well, even the names of famous people who do not use their names in connection with a designation for their business.  See (response to question 1.6).  Business executives who find themselves subject to attack or pseudo-extortion through domain names incorporating their personal names may be able to take advantage of this targeted ACPA claim, as well as claims under state laws protecting rights of privacy.

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Phillip Barengolts 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.  Mr. Barengolts’ practice focuses on litigation, transactions, and counseling in domestic and international trademark, trade dress, Internet, and copyright law.  He teaches trademark and copyright litigation at John Marshall Law School, and co-authored Trademark and Copyright Litigation, published by Oxford University Press.


[1] Although the Court is vague on specifics, this statement is telling: “[T]he parties made clear to the Court during oral argument that the parties’ relationship is, at the very least, contentious.”

[3] The Court discussed at some length whether Bogoni satisfied the third prong of this test because of some prior decisions finding that personal name cybersquatting to recover a debt would avoid liability.  See Carl v., 409 F. App’x 628, 630 (4th Cir. 2010) (per curium) (unpublished).

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October 12, 2011

District Court Denies Preliminary Injunction because Plaintiff Failed to Introduce Evidence of Irreparable Harm – Declares Presumption of Irreparable Harm in Trademark Cases Dead

Filed under: Copyright, Gray Market, Litigation — Tags: , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 10:16 am

Categories:  Gray Market, Litigation, Copyright
Tags: Preliminary Injunction, Gray Market, Software, Copyright, Phillip Barengolts

By Phillip Barengolts, Trademark Attorney

AFL Telecommunications LLC (“AFL”) sells FUJIKARA fusion splicers[1] in the U.S. under an exclusive license from Fujikura Ltd., a Japanese manufacturer of fiber optic equipment.  AFL also is a wholly-owned subsidiary of Fujikara., Inc. and friends (“SurplusEQ”) import FUJIKURA fusion splicers intended for sale outside the U.S. and sell them over the Internet to U.S. consumers.  In other words, SurplusEQ sells gray market FUJIKARA fusion splicers.

AFL sued SurplusEQ and moved for a preliminary injunction over these sales, claiming unfair competition, false advertising, and copyright infringement.[2]  SurplusEQ moved to dismiss.  The Court denied AFL’s motion for preliminary injunction because AFL failed to provide evidence of irreparable harm under the standard announced in eBay v. MercExchange L.L.C., 547 U.S. 388 (2006)[3] and Winter v. Natural Resources Defense Council, Inc., 555 U.S. 7 (2008). It also denied SurplusEQ’s motion to dismiss, except for a common law unfair competition claim that AFL did not properly articulate.  AFL Telecomm. LLC v., Inc., 11-01086 (D. Ariz. Sep. 14, 2011).[4]

The facts here are relatively straightforward: 1) the parties dispute whether the U.S. market splicers are materially different from the foreign market splicers sold by SurplusEQ, which allegedly alters them in some way; and 2) the copyrighted software that operates the splicers is made abroad originally, so it falls within the type of claim allowable under Omega S.A. v. Costco Wholesale Corp., 541 F.3d 982, 985 (9th Cir. 2008), aff’d per curiam, 131 S. Ct. 565 (2010). (more…)

June 10, 2011

First Circuit: Supreme Court Decision Calls into Question Presumption of Irreparable Harm in Trademark Infringement Preliminary Injunction Cases

Filed under: Litigation, Trademark (General) — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 4:37 pm

Categories: Trademark (General), Litigation
Tags: Litigation, Preliminary Injunction, 1st Circuit, Janet A. Marvel

by Janet Marvel, Trademark Attorney

In eBay v. MercExchange L.L.C., 547 U.S. 388 (2006), the Supreme Court reaffirmed that courts must apply “traditional rules of equity” in deciding whether to grant permanent injunctions in patent cases.  It found that the Federal Circuit’s “general rule” in patent cases “that a permanent injunction will issue once infringement and validity have been adjudged” except in “exceptional circumstances” was improper.  Essentially, then, the Court found that courts cannot presume irreparable harm in the patent injunction context.

In many jurisdictions, irreparable harm has been presumed in trademark infringement preliminary injunction proceedings.  After eBay v. MercExchange, courts have considered, and sometimes avoided, the question of whether that presumption remains valid.  See Osmose, Inc. v. Viance LLC, 612 F.3d 1298 (11th Cir. 2010) (“Because the district court did not rely on a presumption of irreparable injury, we need not decide whether such a presumption still applies in the wake of eBay); N. Am. Med. Corp. v. Axiom Worldwide, Inc., 522 F.3d 1211 (11th Cir. 2008) (vacating and remanding preliminary injunction for consideration of whether a presumption of irreparable harm should be applied after the eBay decision); Lorillard Tobacco Co. v. Engida, 213 Fed. Appx. 654 (10th Cir. 2007), cert. denied, 127 S.Ct. 3016 (2007) (“We need not consider how eBay may apply in this context . . . because in any event Lorillard has not shown that any harm Lorillard would suffer in the absence of an injunction outweighed the potential harm to I and G”).  Compare Lorillard Tobacco Co. v. Amouri’s Grand Foods, Inc., 453 F.3d 377 (6th Cir. 2006) (court presumed irreparable harm on a showing of likelihood of success on the merits); Harris Research, Inc. v. Lydon, 505 F. Supp. 2d 1161 (D. Utah 2007) (“The Supreme Court has recently disapproved the use of categorical rules in connection with injunctive relief in intellectual property actions, and Plaintiff must show irreparable injury to support a preliminary injunction.”) (internal quotations and citations omitted).  (more…)

May 6, 2010

Second Circuit Rules against J.D. Salinger, Invalidates Presumption of Irreparable Harm when Considering Preliminary Injunctions in Copyright Cases

Filed under: Copyright — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 7:30 pm

by Phillip Barengolts, Esq.

J.D. Salinger wrote The Catcher in the Rye, became a sensation, and then disappeared—except for the occasional copyright suit.  In Salinger v. Colting, No. 09-2878-cv, slip op. (2d Cir. Apr. 30, 2010), the Second Circuit vacated and remanded for further consideration the district court’s decision to grant Salinger a preliminary injunction against the publication in the United States of Frederick Colting’s 60 Years Later: Coming Through the Rye.[1]

The Second Circuit’s decision did not turn on any error in the lower court’s logic—Judge Calabresi, writing for a unanimous panel, upheld the lower court’s findings that Salinger likely would prevail on the merits of his copyright claim because (1) the works at issue were substantially similar and (2) Colting was not likely to prevail on a fair use defense—but instead on a change to the Second Circuit’s standard for granting injunctions, both preliminary and permanent, in response to the Supreme Court’s decision in eBay, Inc. v. MercExchange, LLC, 547 U.S. 388 (2006).


August 6, 2009

Chicago Design Patent Attorney Explains How An Obviousness Challenge Can Trump a Motion for Preliminary Injunction in a Design Patent Case

Filed under: Design Patent — Tags: , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 3:40 pm

by Teresa Tambolas, Patent and Trademark Attorney

On June 3, 2009, the Federal Circuit affirmed the U.S. District Court for the Southern District of Iowa’s denial of a preliminary injunction in a design patent infringement case, Titan Tire Corp. v. Case New Holland Inc., 90 USPQ2d 1918 (Fed. Cir. 2009).

The patent at issue claims a tractor tire design (depicted below).  Titan Tire Corp. (“Titan”) sued Case New Holland Inc. (“CNH”) for design patent infringement, alleging that CNH sold backhoes equipped with infringing tires.  Three months later, Titan moved for a preliminary injunction.  In denying the motion, the trial court found that Titan was likely to succeed in showing infringement and in withstanding a challenge to the design patent based on functionality grounds, but that the design patent likely would not survive a challenge to its validity on obviousness grounds. (more…)

July 9, 2009

Sanjiv Sarwate, Chicago Trademark Attorney, Details Recent Eighth Circuit Decision Denying Preliminary Injunction in Trade Secret Litigation

Filed under: Trade Secret — Tags: , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 2:00 pm

By Sanjiv Sarwate, Trademark Attorney

On May 29, 2009, the Eight Circuit upheld the trial court’s refusal to enter a preliminary injunction in CDI Energy Services, Inc. v. West River Pumps, Inc., 567 F.3d 398.  CDI sells services and equipment for use in the oil field industry.  West River Pumps was established by three former CDI employees, who had been recruited by CDI to operate a CDI field office in Dickinson, North Dakota.  While still employed by CDI, the three employees founded West River and began to solicit CDI’s clients in the area.  Subsequently, the employees resigned from CDI, and CDI filed suit, alleging that West River’s founders misappropriated CDI’s confidential customer data and breached their duty of loyalty to CDI by soliciting business for West River while still employed by CDI. (more…)

July 7, 2009

Second Circuit enjoins sale of colognes without UPC codes in chain drugstores

Filed under: Counterfeiting, Gray Market — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 1:00 pm

By Daniel Hwang, Trademark Attorney

Davidoff markets COOL WATER, a prestige brand of cologne that Davidoff only permits luxury retailers to sell.  When Davidoff declined to permit CVS to sell the product, CVS obtained COOL WATER from unauthorized channels with the UPC codes removed that it then sold through its stores.  Davidoff brought suit for trademark infringement, arguing that CVS’s sales of COOL WATER products without UPCs (“decoded products”) hinders Davidoff from guarding against counterfeits and from protecting the reputation of its brand.  CVS denied that the products were counterfeit, instead arguing that removing the UPCs and selling gray market goods was not illegal.  The district court preliminarily enjoined CVS from selling any Davidoff trademarked products with the UPCs removed and the Second Circuit affirmed.

The Second Circuit affirmed based on the importance of UPCs to both Davidoff’s counterfeit protection program and its quality controls.  CVS raised as a defense that the decoded products are gray market goods and thus genuine goods.  The Second Circuit stated “[t]he fact that the goods in question may be gray-market goods does not furnish CVS with a valid defense.” Rather, the injunction was justified on the basis of interference with Davidoff’s trademark rights. (more…)

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