Cartier, Inc., et al v. United Vision Sales, et al. (S.D.N.Y.)
Apr 04, 2002
OUTCOME: A satisfactory settlement was reached.
We represented Cartier, Chanel, Guess, Donna Karan, Polo / Ralph Lauren and Calvin Klein or their licensees. Defendants sold knockoff versions of plaintiffs' designer sunglasses at kiosks or carts in ...malls and transit terminals.
We alleged that the defendants infringed and the designers' Trademarks by encouraging and even supplying kiosk/cart advertising displays that boldly and prominently utilize the Plaintiffs’ respective trademarks for the purposes of attracting consumers by the use of such trademarks. A thin "compare to" approach was used on the packaging, but the consumer was fundamentally being attracted by the prominent use of the designers' trade names on the boxes of the merchandise. Arguably the theory of recovery here was initial interest confusion.
From a law journal article by attorney Jonathan Hudis:
The Jews for Jesus court found that Brodsky's use of the JEWS FOR JESUS mark as a domain name was a commercial use because his web site: (i) in...tended to intercept, through deceit and trickery, the audience sought by JFJ; (ii) conveyed the impression that JFJ was the site's sponsor; (iii) commercially disparaged JFJ; (iv) prevented JFJ from exploiting its own mark; (v) hyperlinked to the Outreach Judaism site, which provided its own viewpoints and offered products and services for sale; and (vi) prevented at least some Internet users from reaching its own web site. In a mere passing footnote, the court stated that the parties"dispute d[id] not implicate rights granted by the First Amendment of the United States Constitution."
http://www.oblon.com/Pub/Hudis-Cyber-Griping-Article.pdf
From the U.S. Court of Appeals for the Fourth Circuit:
Although the appellate courts that have adopted the initial interest confusion theory have only applied it to profit-seeking uses of another's mark, the district courts have not so limited the application of the theory. Without expressly referring to this theory, two frequently-discussed district court cases have held that using another's domain name to post content antithetical to the markholder constitutes infringement. See Planned Parenthood Fed'n of Am., Inc. v. Bucci, 1997 U.S. Dist. LEXIS 3338, No. 97 Civ. 0629, 1997 WL 133313 (S.D.N.Y. March 24, 1997), aff'd, 152 F.3d 920 (2d Cir. 1998) (table) (finding use of domain name "www.plannedparenthood.com" to provide links to passages of anti-abortion book constituted infringement); Jews for Jesus v. Brodsky, 993 F. Supp. 282 (D.N.J. 1998), aff'd, 159 F.3d 1351 (3d Cir. 1998) (table) (finding use of "www.jewsforjesus.org" to criticize religious group constituted infringement). We think both cases were wrongly decided to the extent that in determining whether the domain names were confusing, the courts did not consider whether the websites' content would dispel any confusion. In expanding the initial interest confusion theory of liability, these cases cut it off from its moorings to the detriment of the First Amendment.
Lamparello v. Falwell, 420 F.3d 309, 318 (4th Cir. Va. 2005) http://pacer.ca4.uscourts.gov/opinion.pdf/042011.P.pdf
From the the U.S. District Court for the Eastern District of Michigan:
[T]he implication in ... Jews for Jesus that the "commercial use" requirement is satisfied any time unauthorized use of a protected mark hinders the mark owner's ability to establish a presence on the Internet or otherwise disparages the mark owner is flawed.
Ford Motor Co. v. 2600 Enters., 177 F. Supp. 2d 661, 664 ( E.D. Mich. 2001)
Litigation
Valley Nat'l Bank v. Lavecchia (D.N.J.)
Aug 13, 1999
OUTCOME: Summary judgment and permanent injunction awarded
From TitleEsq:
On July 13, 1999, Valley National Bank, a wholly- owned subsidiary of Valley National Bancorp, reported that it had acquired the assets of Commonwealth Land Title insurance Company's ...Totowa, New Jersey office and will immediately begin selling title insurance through Valley's Branch office located in Riverdale, NJ. The new title agency is a separate subsidiary of VNB known as Wayne Title, Inc. and will conduct business under the trade name of Commonwealth All Service Title Agency.
You might have thought that Banks were prohibited from selling title insurance. They were under NJSA 17: 46B-30.1, which prohibits lenders from owning or controlling title insurance companies. Valley National Bank applied for a title producer's license for Wayne Title, Inc. based on an interpretation of 12 U.S.C. Sec. 92, permitting national banks to sell insurance in towns having a population of 5,000 or less. In Barnet Bank vs. Nelson, 517 U.S. 25 ( 1996), the United States Supreme Court used this section to permit national banks to sell title insurance even though it was prohibited by Florida State law.
After the initial denial of their license, VNB instituted an action to compel the issuance of same by the NJ Department of Insurance. In Valley National Bank v. LaVecchia, the New Jersey Courts agreed and issued an order prohibiting the Commissioner of Banking and Insurance from denying the license application because Wayne Title is a subsidiary of VNB.
http://www.titleesq.com/plaidjuly99.htm
Defective and dangerous products
Lewis v. Am. Cyanamid Co. (Supreme Ct., NJ)
Jul 20, 1998
OUTCOME: Dismissal of failure to warn products claim aff'd
From the decision by the New Jersey Supreme Court:
Plaintiff consumer, who sustained severe burns from the use of an insecticide in contravention of its instructions, sued defendant companies, the p...roduct's maker and seller. Plaintiff asserted a failure to warn of dangers and defects in design and manufacturing. The failure-to-warn claim was dismissed and the jury rejected the manufacturing defect claim, while returning a verdict for plaintiff on the design defect claim. However, judgment for defendants notwithstanding the verdict was entered. The appellate division upheld the dismissal of the failure-to-warn claim, but reversed the judgment n.o.v. and remanded the case for retrial solely on the issues of damages and comparative negligence. On review, the court affirmed in part, holding that the failure-to-warn claim was preempted by the Federal Insecticide, Fungicide and Rodentia Act, 7 U.S.C.S. § 136 et seq., and federal labeling regulations. The court concluded by reversing in part, finding that remand was necessary because of improper jury instructions on assumption of risk and noting that retrial of defendant's liability also was required where it was intertwined with plaintiff's comparative fault.
Patent infringement
Tropp v. Conair Corporation, et al. (E.D.N.Y.)
N/A
OUTCOME: Dismissed based on outcome in another case; appeal pending
This is an action for patent infringement by David Tropp, inventor of an innovative system for making airline luggage inspection secure while accommodating the needs of the traveler, in which dual acce...ss locks that can be opened by the luggage owner and the TSA are provided to consumers, as described and claimed in U.S. Patent Nos. 7,021,537 (“the ’537 patent”) and 7,036,728 (“the ’728 patent”).
Early in the case the defendant distributors of infringing products moved for a stay pending resolution of a related case against another defendant alleged to be a manufacturer or otherwise the purported licensor of the infringing items, Travel Sentry, Inc. v. Tropp, 1:06-cv-06415 (the “Travel Sentry Action”) in the Eastern District of New York.
Tropp submitted this memorandum of law in opposition to the motion by the defendants to stay the action pending the resolution of the Travel Sentry Action in the same court. The procedural facts as set out in the defendants' brief were adopted here for purposes of the motion.
The case law favored denial of the stay request. Tropp's patents, of course, are presumptively valid pursuant to 35 U.S.C. 282. Defendants cited rafts of cases, but they were almost all based on materially inapposite facts, especially as to the key issues of party identity in the respective cases. They also misstated the relevant considerations when analyzing the stages and filing dates of the earlier- and later-filed case. Furthermore, the equities and balancing of harms favored a denial of the stay.
In essence, per the opinion, the court agreed with Tropp, and denied the stay motion.
Intellectual property
Mul-T-Lock USA, Inc. v. Alexanders Hardware Corp. et al. (S.D.N.Y.)
N/A
OUTCOME: Most defendants settled without defending.
Lawsuit by manufacturer of high security locks against rogue licensee locksmiths alleged to have wrongfully produced keys on counterfeit key blanks, in violation of their license agreements and in tort.... The claims are for breach of contract, various types of trademark-based claims, patent infringement and other business torts.
Trademark infringement
Intel Corporation v. Americas News Intel Publishing LLC (C.D. Cal.)
N/A
OUTCOME: Plaintiff dismissed own case when faced with our defense
"Chip giant Intel has a bit of a reputation for being a trademark bully at times, threatening or suing many companies just for having 'intel' in their name somewhere -- including a travel agency and a ...jeans company.... Intel's lawyers seem to go out of their way to find potential infringement where there obviously is none at all.
"Paul Alan Levy alerts us to the latest such case, where Intel has sued the operators of the Mexico Watch newsletter, because its domain is LatinIntel.com. Of course, the reason for that is that it is using the commonly accepted abbreviation of "intel" as short for "intelligence." It's common shorthand, especially within government circles, to refer to gathered intelligence as simply "intel." The owners of the site explained this to Intel, and in return were given a boilerplate explanation about trademark law, insisting that since Intel's trademark is so valuable, it still has to stop others from using it -- even if they're in a totally different business, which is an interesting interpretation of trademark law, and one not supported by the courts in most cases.
"More importantly, no one is going to look at LatinIntel.com and confuse it for the world's largest computer chip maker. No one is going to look at that site and wonder how come they can't order a Centrino processor. There's simply no confusion at all... [A]fter more than two years of this back and forth, Intel sued Mexico Watch, even though it's not even close to competitive and any "moron in a hurry" (as the popular trademark test notes) would clearly know the difference between a site about Mexican politics and a company selling microprocessors."
www.techdirt.com/articles/20091117/1151596970.shtml
Trademark infringement
Monster Worldwide, Inc. v. HR Guru.Biz Corporation (S.D.N.Y.)
N/A
OUTCOME: Satisfactory settlement achieved
HRGuru.BIZ is a personnel recruitment firm which did business under the name HR GURU beginning in 2002, earning common law rights in that trademark. It could not obtain the HRGuru.com domain, however, ...which was being warehoused. So it opened up a website at HRGuru.biz and adopted that domain name as its corporate name and an additional business name, and applied for trademark registrations for the word HRGURU.BIZ. It was granted one in 2004 and one in 2005.
Another company did obtain the HRGuru.com domain, however, and developed its own website in the human resources area at that domain in 2006 using the name HR GURU. That company was subsequently acquired by the defendants in this case (actually by Affinity Labs, which is owned by Monster.com) which in turn "went national" with a major online project using the HR GURU name and applied for trademark registrations as well.
Affinity's trademark registration applications for HR GURU were rejected by the PTO as being confusing similar to those held by HRGuru.Biz. Meanwhile, the latter learned of Affinity's project, and demanded that it cease and desist infringing the HR GURU trademarks and compensate HRGuru.BIZ for the same. Although there some negotiation occurred, the parties could not come to an agreement.
Early in 2009, just as negotiations seemed to be at an end, Affinity announced that it was, without any waiver of rights or admission of liability, going to "walk away" from any use of the HR GURU mark and rebrand the website, and expected HRGuru.Biz to do the same. HRGuru.Biz declined to waive its rights, however. Affinity then brought a declaratory judgment action against HRGuru.Biz--the owner of the original trademarks--seeking a judgment of non-infringement based on abandonment as well as cancellation of the two HRGURU.BIZ registered marks.
Intellectual property
Devere Group GMBH v. Opinion Corp. et al.
N/A
OUTCOME: Complaint dismissed per FRCP 12(b)(6)
DeVere is an international financial consulting company that alleged rights in various deVere names. Opinion runs PissedConsumer.com, which provides a forum for, you guessed it. It advertises itself as... a “premier consumer advocacy group,” and as a review website which allows consumers to “make better choices” and provides an “empowering” and “unbiased” view of companies and products. Complaints about deVere are on deveregroup.pissedconsumer.com, which describes the company then has a section labeled “Devere Group Complaints and Reviews.” Review headings include “Devere stole my pension” and “Devere Lies Conmen–Fraudsters.” Google returns the deVere subdomain among the top results for searches for “deVere” or “deVere Group,” allegedly because of Opinion’s SEO techniques. DeVere sued for trademark infringement for the use in text and in the subdomain. Though deVere plausibly alleged that it had a valid mark, it couldn’t plausibly allege likely confusion, even initial interest confusion. Several factors weighed against deVere’s claim. First, the parties didn’t compete nor were they likely to bridge the gap. Second, deVere failed to allege actual confusion. Third, deVere failed to allege bad faith intent to confuse. More to the point, courts have “consistently” held gripe sites unlikely to confuse because they convey critical messages. “[T]here is no likelihood that a consumer visiting PissedConsumer.com would mistakenly believe that deVere sponsored or approved the contents of that website. The term ‘pissed’ in the website name is clearly negative, as is the commentary on the website about deVere's services--terms like ‘stole,’ ‘WARNING,’ ‘fraudsters,’ and ‘scams’ figure prominently.” Confusion was simply not credible. Initial interest confusion provided no help either. Given the ease of retracing one’s steps online, initial interest confusion requires intentional deception. In any event, defendant didn’t divert consumers from deVere’s website because deVere didn’t have a competing website. PissedConsumer is a forum for customer criticism, not a provider of financial services. IIC also requires close competitive proximity. Thus there could be no plausible inference of intentional deception
