Seattle Trademark Lawyer

On June 11, the Ninth Circuit upheld the Western District’s award of attorney’s fees on the false designation of origin claim in Derek Andrew, Inc. v. Poof Apparel Corp. However, the court cautioned that if the award included fees based on the Copyright Act, then the award was erroneous because Derek Andrew did not timely register its copyrights and, therefore, could not sustain its copyright claim for statutory damages. The court remanded the case for the Western District to clarify the basis for the award.

STL readers may recall that clothier Poof Apparel allowed a default judgment to be taken against it in this case, which involved Poof’s use of a heart design on hangtags it attached to its garments that was confusingly similar to “twisted heart” design hangtags that Derek Andrew had previously used. Trial, therefore, was limited to the fees issue. Magistrate Judge James Donohue awarded Bellevue clothier Derek Andrew a total of $296,090.50 in fees.

On this issue, the Ninth Circuit found:

“The district court entered default and Poof concedes that its default occurred with respect to a complaint that pled wilfulness. Thus, all factual allegations in the complaint are deemed true, including the allegation of Poof’s willful infringement of Andrew’s trademarks. This default sufficiently establishes Andrew’s fees under the Lanham Act. Because Poof does not contest the amount of fees, the district court’s award of fees under the Lanham Act is affirmed.

“Nevertheless, REMAND is proper because it is unclear whether the district court’s award of fees may have included fees related to Andrew’s Copyright Act claim. On remand, the district court must recalculate the fees award taking into account that Poof prevails as a matter of law on Andrew’s Copyright Act claim.”

The case cite is Derek Andrew, Inc. v. Poof Apparel Corp., __ F.3d __, 2008 WL 2357378, No. 07-35048 (9th Cir. 2008) (published).

It’s not a trademark story, but the Seattle Times today has an in-depth feature on Western District Judge Marsha Pechman and how she is likely to run her courtroom in the City of Seattle v. Professional Basketball Club LLC trial — the case that will decide whether the Seattle Supersonics will immediately be moved to Oklahoma City. The article contains good insights about a judge who also decides plenty of trademark cases. Indeed, Judge Pechman was assigned seven new trademark cases in 2007 alone.

Here are a few highlights:

• Judge Pechman, 57, was appointed by President Clinton in 1999, after serving as a King County Superior Court judge for 11 years.
• Before serving as a judge, she worked as a prosecutor, public defender, and partner in a law firm.
• She is a stickler for courtroom efficiency.
• Chief Judge Robert Lasnik is quoted as saying that Judge Pechman sees judges, not lawyers, as the ones responsible for running cases in their courtrooms.
• She often divides trial time between parties, tracking time spent with arguments, witness testimony, and objections down to the minute.
• One attorney who served on the bipartisan panel that selected her for the Western District is quoted as saying: “First impression, people say she’s tough, but my feeling is ‘God love her’ — everybody is going to be held to the same standard.”
• Another attorney who served on the selection panel stated: “She can come off as stern. I don’t think she is stern at all, but she has a sense of decorum and no patience at all for people trying to showboat. She thinks of the courtroom as a very serious place.”
• Judge Lasnik added that no one works harder than Judge Pechman, and no one is “more committed to getting to the right answer.”

Today’s New York Times reports on the imminent expansion of the Champagne appellation in France. (NYT map here; past STL discussion here.) Most of the article discusses the reason for the expansion — to make winemakers more money. Indeed, the article says once included in the Champagne zone, a hectare of land — two and a half acres — would jump in value from 6,000 euros to almost one million euros.

We get it. The Champagne designation is valuable.

What is largely missing from the discussion is why that is true. To me, the expansion suggests one of two things: either (1) the zone is imprecise as it has been drawn since 1927, meaning that some wine produced outside the zone possesses all the qualities of wine sold under the “Champagne” designation, or (2) the zone is precise as drawn, but is being re-drawn to include wine with different qualities anyway so producers with land outside the region can charge a premium for their wine once it is re-packaged and sold as “Champagne.”

In the interests of brand integrity, I would think Champagne trade groups would embrace the first option. However, I don’t see that happening. Instead, most of what I read suggests the expansion is being driven by economics.

For example, the NYT quotes the head of the Union of Champagne Houses as explaining: “The euro is rising and the dollar is falling, and soon we’ll have a real structural problem if the cost of the grape keeps increasing every year.”

This is the Champagne industry’s spokesperson. What I don’t hear him saying is that grapes grown one kilometer outside the zone are just as good as grapes grown inside the zone, so it only makes sense to include wine made from those grapes as “Champagne.” I instead hear him saying something akin to: “We have no choice but to expand because production costs and international economics are killing us.”

What does that say about the Champagne brand? The Champagne brand should immediately tell consumers: “If you buy Champagne, you can be assured your sparkling white wine will have qualities X, Y, and Z, which are worth the extra cost because Champagne is better than sparkling white wines made from grapes grown elsewhere.” By expanding the zone, this message risks being watered down.

The article does state: “The current Champagne growing region encompasses a patchwork of territory sprawling over 87,000 acres, in 319 villages. In March, a team of experts appointed by the French government approved more than 40 more communes, or communities, to add to the Champagne territory, zones that are now the subject of final appeals.”

That’s the message on which Champagne trade groups should focus: “The best scientists have scoured the French countryside. After exhaustive tests, they have discovered that grapes grown in certain neighboring areas share the identical qualities as grapes grown within the Champagne region. Rejoice! By recognizing these fine wines as Champagne, the Champagne you have come to love will soon be more plentiful!”

That’s a far cry from what I’ve been hearing so far.

Fellow Seattle law blogger Shalini Gujavarty of Avvo Corp. and the Avvo Blog will host the second “Seattle Law Blogger Meetup” on Thursday, June 26. Not that law bloggers need additional reason to congregate, but I hear Avvo is kicking in wine, beer, water, and sushi maki. Good deal! The plan is the same as last time (STL posts here and here) — bring plenty of questions, comments, tips, and tricks. I know I’m interested in learning things like:

• What have you done to attract more readers?
• What widgets or other features have made your blog more functional?
• What resources do you consult when trying to improve your blog?
• What are your strategies in developing new content?
• What is your favorite blog (ok, other than your own), and why?

Avvo is located at 217 Pine Street, Suite 300, in downtown Seattle. The gathering will begin at 5:30 and will run until 7:30 p.m.

Hope to see you there!

On June 2, the Southern District of California transferred a trademark infringement case to the Western District of Washington. San Diego-based Cricket Communications, Inc., contends that Bellevue-based Hipcricket, Inc.’s HIPCRICKET name and registered mark infringes and dilutes Cricket’s CRICKET registered mark. Cricket also alleges a cybersquatting claim based on Hipcricket’s registration and use of Hipcricket.com.

Cricket states it is a “leading provider of unlimited wireless services” and has developed an “affordable wireless service offering consumers and local businesses a flat-rate unlimited service” over a digital wireless network. It alleges that Hipcricket is “in the business of using interactive text messaging programs to deliver advertising to the cellular telephones of consumers.”

Cricket claims that Hipcricket “intentionally sought to imply an association with Cricket in its marketing and advertising.”

Hipcricket largely denies Cricket’s allegations.

Cricket’s registration claims a first-use date of March 1999. Hipcricket’s registration claims a first-use date of July 2004.

The new case cite is Cricket Communications, Inc. v. Hipcricket, Inc., No. 08-908 (W.D. Wash.).