Seattle Trademark Lawyer

On August 14, Western District Judge Robert Lasnik on his own initiative ordered the defendant in a trademark and cybersquatting case to show cause why it should not be sanctioned for failing to comply with two court orders.

The orders? The court’s scheduling order and its order regarding initial disclosures, joint status report, and early settlement.

Both contained identical language:

“The following alterations to the Electronic Filing Procedures apply in all cases pending before Judge Lasnik: 

- Section III, Paragraph F - when the aggregate submittal to the court (i.e., the motion, any declarations and exhibits, the proposed order and the certificate of service) exceeds 50 pages in length, a paper copy of the documents (with tabs or other organizing aids as necessary) shall be delivered to the Clerk’s Office for chambers by 10:30 am the morning after filing. The chambers copy must be clearly marked with the words ‘Courtesy Copy of Electronic Filing for Chambers.’”

Defendant Kook’s Custom Headers, Inc., filed a motion to dismiss plaintiff Global DNS, LLC’s claims. Its motion, taken as a whole, exceeded 50 pages. But it did not provide the requisite courtesy copy for chambers.

The court was not pleased.

The case cite is Global DNS, LLC v. Kook’s Custom Headers, Inc., No. 08-268 (Lasnik, J.).

Ex-Sugarland founder Kristen Hall has sued her former band mates Jennifer Nettles and Kristian Bush.

Her complaint, filed July 29 in the Northern District of Georgia, alleges claims for breach of an unwritten partnership agreement in which each member agreed to share equally in the country group’s profits and losses.

As evidence of Ms. Hall’s ownership, her complaint alleges that she contributed the band’s “trade name, trademark and service mark” by allowing Ms. Nettles and Mr. Bush to obtain “co-ownership in the trademark and service mark, ‘Sugarland,’” as reflected in the parties’ federal registration for that mark.

Now out of the band, Ms. Hall wants the profits the band has made following her departure.

Word to the wise: musicians out there, if you don’t want to be treated as equal members — meaning equally responsible for the band’s profits and losses — you need a written contract saying so.

And see how registering a trademark in everyone’s names works in litigation? A good thing if you’re the ex-member looking for a cut of your former band’s success. But a lousy thing if you’re the one in the band having to write the check.

As usual, the moral of the story is think about these things on the front end — before you make it big — so you won’t have an unwelcome surprise after you do.

Thanks to Tamera Bennett for bringing this to my attention. Her post in Current Trends in Copyright, Trademark & Entertainment Law here; additional coverage via Law.com here.

Tonight’s “Marketplace” show on NPR (one of my favorites) featured a summertime trademark dispute I couldn’t pass up: Mister Softee cracking down on ice cream truck copycats. (Audio and transcript here.)

Turns out there are lots of ice cream trucks out there with the same blue-and-white colors, stylized graphics, and jingle that bring Mister Softee to mind.

Well, Mister Softee is hitting back. Its lawyer has filed trademark infringement lawsuits against “hundreds of ice cream truck owners” and reportedly has never lost a case.

The suits are needed, one of its distributors says, because franchisees pay $100,000 for a genuine MISTER SOFTEE truck on top of thousands of dollars in royalties. They get hurt when a knockoff truck starts working the neighborhood. 

“DISTRIBUTOR: I’m not able to maximize my potential as a Mister Softee when there are copycats around who don’t have the overhead that I have, but are still fooling the kids that they are Mister Softee.

“REPORTER: You don’t think the kids distinguish?

“DISTRIBUTOR: They don’t, because kids are impulsive buyers. All they see is a blue and white truck, and they start running, ‘Mommy, I want an ice cream.’”

Now, kids would probably run to their Moms for a dollar even if the truck was orange and black, but I get his point.

Ripoff artists out there: What’s lower than a counterfeit ice cream truck? On a hot summer day, your product sells itself. Do you really need to pass yourselves off as Mister Softee?

The maker of HENDRIX ELECTRIC vodka infringes three JIMI HENDRIX trademarks owned by the licensing company that controls the late musician’s marks.

That’s what Western District Judge Thomas Zilly found in his August 7 order on the parties’ cross-motions for summary judgment in Experience Hendrix, LLC v. Electric Hendrix, LLC. STL’s post on the parties’ oral argument here.

The decision is the latest in a long battle between two factions of the Hendrix family over Jimi Hendrix’s publicity and trademark rights. The principal plaintiff is owned by Janie Hendrix, the adopted daughter of Jimi Hendrix’s father. The defendant spirits company is owned in part by Leon Hendrix, Jimi’s brother. The case involves a number of other related parties and defendant investor Craig Dieffenbach.

As a threshold matter, the court rejected defendants’ contention that the court’s 2005 decision in Experience Hendrix, LLC v. James Marshall Hendrix Foundation, which the Ninth Circuit affirmed last year, foreclosed plaintiffs from claiming trademark rights in the subject marks. That decision held the musician’s right of publicity did not pass to his estate when he died because he was domiciled in New York at the time of his death and that state did not recognize posthumous rights of publicity.

The Western District instead found that plaintiffs had established trademark rights in Mr. Hendrix’s famous name independent of his publicity rights.

Having made that determination — and after rejecting defendants’ attacks on the validity of plaintiffs’ incontestable registrations based on fraud on the Patent and Trademark Office, abandonment through naked licensing, and unclean hands — the court applied the Sleekcraft factors and concluded that defendants’ HENDRIX ELECTRIC, HENDRIX ELECTRIC VODKA, JIMI HENDRIX ELECTRIC, and JIMI HENDRIX ELECTRIC VODKA trademarks infringe plaintiffs’ AUTHENTIC HENDRIX, EXPERIENCE HENDRIX, and JIMI HENDRIX marks.

The court held: 

“Defendants’ opposition to summary judgment of infringement rests on the assumption that Plaintiffs’ lack of ownership of any publicity rights in Jimi Hendrix limited the scope of protection they secured through their trademarks. As a matter of law, no such limitation exists and Plaintiffs have created valid trademarks that do not violate the prohibitions against misrepresentation or use of the trademarks. Plaintiffs have legally acquired the right to use Jimi Hendrix’s fame to sell their products, and they are entitled to all the rights of a trademark holder. Defendants’ primary opposition having failed as a matter of law, the Court has found no genuine issues of material fact remain that precludes summary judgment of infringement. Defendants have produced no evidence that any of the Sleekcraft factors would indicate anything other than a likelihood of confusion between Plaintiffs’ and Defendants’ marks. The most probative Sleekcraft factor applicable to this particular case is the intent of the Defendants. Defendants intended to trade off the good will associated with Jimi Hendrix and intended to have a mark similar to Plaintiffs.”  

The court directed plaintiffs to file a proposed permanent injunction consistent with these findings.

The July 29 Hobbit Travel decision, which the Las Vegas Trademark Attorney discusses comprehensively here, is of particular interest to STL for its treatment of laches in the context of dilution. (STL digs dilution cases.)

In Saul Zaentz Co. v. Wozniak Travel, Inc., the defendant travel agency argued on the parties’ cross-motions for summary judgment that the plaintiff owner of J.R.R. Tolkien’s literary rights waited too long to sustain its trademark claims. At least 18 years too long.

With regard to dilution, the plaintiff responded that when Congress passed the Trademark Dilution Revision Act in 2006 — and lessened the standard of proof from “actual dilution” to “likelihood of dilution” — it provided plaintiff with a fresh cause of action that previously was not available.

The Northern District of California was not impressed.

“This argument is specious. First, Tolkien’s dilution claim, as pled in the complaint, is for actual, not likelihood of dilution. Second, regardless of whether the legal standard required a showing of actual or likelihood of dilution, a federal cause of action for dilution has existed since 1995 when Congress passed the Federal Trademark Dilution Act. Under California law, a state cause of action for dilution has existed since 1967. Third, before the Supreme Court’s decision in Moseley requiring a showing of actual dilution, the Ninth Circuit applied a ‘likelihood of dilution’ standard to claims brought under the FTDA.

“In sum, the court concludes that plaintiff’s delay of at least eighteen years is unreasonable. Because the length of delay far exceeds the statute of limitations period, a presumption of laches applies. This presumption is not overcome by any excuses plaintiff offers for its delay.”

The case cite is Saul Zaentz Co. v. Wozniak Travel, Inc., 2008 WL 2949423, No. 06-5421 (N.D. Calif.) (Patel, J.).