Seattle Trademark Lawyer

Ninth Circuit affirms injunction against Kira Plastinina
in light of plaintiff’s KIRRA registered trademarks

Clothier Pacific Sunwear of California, Inc., owns the registered KIRRA family of trademarks.

Competing clothier Kira Plastinina Style, Ltd., owns the KIRA PLASTININA trademark.

In 2008, Pacific Sunwear sued Kira Plastinina for trademark infringement.

Last year, the Central District of California found that Pacific Sunwear was likely to succeed on the merits of its claim and granted a preliminary injunction enjoining Kira Plastinina from using KIRA or KIRA PLASTININA as a trademark or trade name. However, the court clarified that “Defendants may use the phrase ‘Kira Plastinina’ (but not the single word ‘Kira’) in written displays, advertisements, or Internet pages to identify the actual designer of Defendants’ goods, as opposed to identification of the company, business, stores, goods, and services offered by Defendants.”

Kira Plastinina appealed, arguing that “Kira Plastinina” is the name of one of its designers and that the scope of the injunction was overly broad.

On Feb. 1, the Ninth Circuit affirmed.

It found “the district court correctly identified the legal standard for likelihood of confusion of a trademark, its findings of fact were not clearly erroneous, and the district court did not clearly err in finding a likelihood of confusion between the two trademarks. We therefore conclude that the district court did not abuse its discretion in holding that Pac Sun was likely to succeed on the merits of its trademark infringement claim.

“With respect to the scope of the district court’s preliminary injunction, the court did not abuse its discretion in restricting certain uses of ‘Kira Plastinina.’ Despite these restrictions, the injunction properly reflects a consideration of the ‘reluctance to preclude an individual’s business use of his name.’ Furthermore, enjoining use of ‘Kira Plastinina’ in media advertisements, including audio and video, was not an injunction against nontrademark use, and the district court did not abuse its discretion in enjoining such advertising. Finally, the preliminary injunction is sufficiently clear to protect Pac Sun’s interests and to provide KP Style with adequate notice of its provisions.”

The case cite is Pacific Sunwear of California, Inc. v. Kira Plastinina Style, Ltd., 2010 WL 358764, No. 09-55699 (9th Cir. Feb. 1, 2010).

The Experience Hendrix, LLC v. Electric Hendrix, LLC “Hendrix Electric” vodka case is over.

Mostly.

Plaintiffs now seek to collect their judgment against defendants, including Craig Dieffenbach.

Plaintiffs recently complained that Mr. Dieffenbach was not forthcoming during supplemental proceedings. Indeed, they moved for an order of contempt, arguing that defendants’ “evasive and incomplete responses” to plaintiffs’ discovery efforts have “frustrated” their ability to determine if defendants have concealed or fraudulently conveyed assets that could be used to satisfy the judgment.

Today, Western District Judge Thomas Zilly denied the motion without prejudice.

The court found: “Plaintiffs make no showing that Mr. Dieffenbach failed to comply with the Court’s Order dated October 28, 2009, which simply required responses within twenty days, or with any other order. Moreover, plaintiffs offer no evidence to support their assertion that Mr. Dieffenbach’s answers were untruthful. Although the tenor of the deposition was acrimonious, Mr. Dieffenbach’s animosity alone does not establish that he was being less than candid when he indicated that he ‘own[s] nothing,’ has ‘no assets,’ and ‘owe[s] money to absolutely everybody.’ In their motion for contempt, plaintiffs do not request monetary sanctions, but rather seek an order from the Court requiring Mr. Dieffenbach inter alia to sign stipulations to release bank records and to locate and produce documents under the control of other people, namely current and/or former attorneys, bookkeepers, accountants, and employees. Plaintiffs fail to explain, however, why they cannot obtain the documents they seek by serving these entities or individuals with appropriate subpoenas or discovery requests.”

The case cite is Experience Hendrix, LLC v. Electric Hendrix, LLC, No. 07-338 (W.D. Wash. Feb. 3, 2010).

A Kent, Wash. family was charged Jan. 27 in King County Superior Court after being arrested on suspicion of selling counterfeit CDs and DVDs, the Seattle PI reported today.

Renton police alleged that married couple Jesus Perez-Vargas and Leticia Vargas-Garcia and their 18-year-old son were selling hundreds of CDs and DVDs that appeared to be pirated.

The PI said the defendants, who sold the goods out of a convenience store, weren’t trying too hard to pass off their product as genuine.

“One, a copy of the Liam Neeson thriller ‘Taken,’ carried an MA 15+ rating not used in the United States,” the article said. “A copy of a film identified only as ‘Rambo’ in court documents was housed in a hard plastic CD case.”

The defendants reportedly told the police they bought the CDs and DVDs from a traveling salesman who sold the goods out of his van. They reportedly paid $2 or $3 per disk and sold them for $4 to $7 each.

The defendants were charged with violating the Washington State prohibition against the “failure to disclose origin,” a Class B felony.

I wasn’t familiar with that statute, so I looked it up. It appears to be RCW 19.25.040(1).

Under that statute, “A person is guilty of failure to disclose the origin of a recording when, for commercial advantage or private financial gain, the person knowingly advertises, or offers for sale, resale, or rent, or sells or resells, or rents, leases, or lends, or possesses for any of these purposes, any recording which does not contain the true name and address of the manufacturer in a prominent place on the cover, jacket, or label of the recording.”

The statute defines “recording” as a “tangible medium on which sounds, images, or both are recorded or otherwise stored, including an original phonograph record, disc, tape, audio or video cassette, wire, film, or other medium now existing or developed later on which sounds, images, or both are or can be recorded or otherwise stored or a copy or reproduction that duplicates in whole or in part the original.”

Not “identical, or nearly identical”:
Plaintiff’s logo (left) and defendants’ logo

Last year, E! Entertainment Television, Inc., sued Entertainment One GP Limited, d/b/a E1 Entertainment, and four related entities in the Central District of California for trademark infringement.

E! Entertainment operates television networks and owns a number of “E!” design marks.

The Entertainment One defendants distribute third-party CDs and DVDs; operate a record label; and own and distribute niche and direct-to-video movies. They conduct business in connection with an “E1” design mark, though only two of the five defendants have ever used the mark in the United States.

E! Entertainment moved for a preliminary injunction.

The court denied the motion, finding:

• E! Entertainment did not show that the parties’ marks are similar;
• The parties do not compete with respect to the same goods or services;
• E! Entertainment did not present any evidence showing that its customers — primarily casual television viewers — exercise a low degree of care, whereas defendants demonstrated their customers exercise a high degree of care;
• There is widespread third-party use of “E” marks in the entertainment field;
• Consumers are not likely to be confused by defendants’ “E1” marks; and
• E! Entertainment did not present any evidence of actual confusion.

E! Entertainment appealed these findings.

On Jan 26, the Ninth Circuit affirmed, concluding the district court did not err in finding there was no likelihood of confusion.

The court added: “We have held that a party seeking relief under 15 U.S.C. § 1125(c) must demonstrate that the marks are ‘identical, or nearly identical,’ so that a ‘significant segment of the target group of customers sees the two marks as essentially the same.’ We conclude that the district court did not err in finding that the parties’ respective marks are not nearly identical under this standard.” 

The case cite is E! Entertainment Television, Inc. v. Entertainment One GP Limited, 2010 WL 331505, No. 09-55937 (9th Cir. Jan. 26, 2010).

No TRO: Plaintiff Protectmarriage.com’s logo (left)
and defendant Courage Campaign’s derivative logo

“[P]laintiff is unlikely to overcome the conclusion that defendant’s use of the mark is protected under the First Amendment….”

That’s the conclusion the Eastern District of California reached Jan. 20 in denying plaintiff Protectmarriage.com - Yes on 8’s motion for a temporary restraining order against defendant Courage Campaign’s use of an allegedly infringing logo.

Protectmarriage.com supports traditional marriage and helped place California’s Proposition 8 on the ballot. Its logo depicts a man and a woman with two kids.

Courage Campaign supports same-sex couples’ right to marry. Its logo is derived from Protectmarriage.com’s logo. It depicts two women with two kids.

Protectmarriage filed suit against Courage Campaign and sought a temporary restraining order prohibiting Courage Campaign from using its logo. Courage Campaign opposed the motion on the ground its logo is protected parody.

The court found found Courage Campaign’s logo is either protected by the First Amendment or is not likely to cause confusion. Either way, the court found Protectmarriage.com is unlikely to succeed on the merits of its infringement claim.

“In this case, the logo itself is artistic,” the court said. “Moreover, the broader website, while perhaps not artistic, is undeniably expressive of a political idea, and both political and artistic expression are protected by the First Amendment. Defendant’s use of the mark has relevance to the expressive message, namely, support for homosexual marriages, and specifically, opposition to recent California efforts to limit the right to such marriages. This support is expressed by the modification of the ‘father’ figure in the original mark to depict a second ‘mother.’ Further, the mark does not explicitly mislead as to the source of the work. Any potential for confusion or misdirection is obviated by the images and text that uniformly accompany defendant’s use of the mark, namely, photos of homosexual couples together with text explicitly endorsing homosexual marriage. Plaintiff is unlikely to succeed in showing that a visitor to the [defendant’s] prop8trialtracker website is likely to be confused as to whether plaintiff is affiliated with the site.”

The case cite is Protectmarriage.com - Yes on 8 v. Courage Campaign, __ F.Supp. __, 2010 WL 325571, No. 10-132 (E.D.Cal. Jan. 20, 2010).