Seattle Trademark Lawyer

Not that blogging is work, but I’ve taken the long weekend off in honor of Labor Day.

Victoria’s beautiful Empress Hotel and Inner Harbour

Now that I’m back from beautiful Victoria, BC, I plan to return to my usual blogging self (such as that is) Tuesday evening. Thanks for visiting and please come back soon!

Seattle-based Washington Lawyers for the Arts offers a trademark-centric program next month entitled, “Counterfeit Chic: Legal Protection in the Fashion & Design Industry.” Its Web site describes the program as follows:

“A growing demand for fashion design knock-offs is fueling the counterfeit market and costing the fashion industry millions of dollars a year. While imitation may be the ultimate form of compliment, it is also financially devastating to a small or independent designer. Yet, legal protection in the fashion and design industry is fraught with difficulties. Washington Lawyers for the Arts presents a panel discussion on the ins and outs of legal protection in the fashion industry and how best to arm yourself against counterfeits.”

The brown-bag seminar will be held from 11:45 a.m. to 2 p.m. on Sept. 27 at K2 Sports, 4201 Sixth Avenue South in Seattle. Cost is $35 ($40 at the door) for attorneys and paralegals and $10 ($15 at the door) for artists and students. Register here.

One look no further than today’s New York Times to see that this is a timely program. An op-ed piece links fashion knockoffs to terrorism and says 11% of all clothing is fake. A separate news story reports on Hollywood’s use of trained dogs to sniff out counterfeit DVDs. The dogs are so effective that pirates have offered a $29,000 bounty on them. (Subscription required.)

In a published decision, the Ninth Circuit today found that the sale of a painter’s original works are protected by the First Amendment.

In White v. City of Sparks, painter Steven White challenged the constitutionality of a Nevada city ordinance that ostensibly required him to obtain a permit before selling his paintings in public parks. The Ninth Circuit sided with the artist, finding: “So long as it is an artist’s self-expression, a painting will be protected under the First Amendment, because it expresses the artist’s perspective.” The court rejected the city’s argument that the sale of the paintings removes them from the ambit of protected expression. In so finding, the Ninth Circuit joined the Second and Sixth Circuits, which have reached similar conclusions.

This has significant trademark ramifications. In ETW Corp. v. Jireh Publishing, Inc., for example, the Sixth Circuit found the First Amendment entitled sports artist Rick Rush to sell paintings of Tiger Woods without Mr. Woods’ authorization. In that case, which the Ninth Circuit cited, the Sixth Circuit found the painter’s speech was entitled to full First Amendment protection and not the more limited protection afforded commercial speech “even though it is carried in a form that is sold for profit.”

The Sixth Circuit further found the Lanham Act should be applied to artistic works only where the public interest in avoiding confusion outweighs the public interest in free expression. Applied to Mr. Rush’s paintings, the court found the First Amendment trumped the Lanham Act. Even if some members of the public would draw the incorrect inference that Mr. Woods had some connection with Rush’s print, the court decided, the risk of misunderstanding “is so outweighed by the interest in artistic expression as to preclude application of the [Lanham] Act.”

The Sixth Circuit likewise resolved the tension between Mr. Woods’ right of publicity and the First Amendment in favor of free speech: “After balancing the societal and personal interests embodied in the First Amendment against Woods’s  property rights, we conclude that the effect of limiting Woods’s right of publicity in this case is negligible and significantly outweighed by society’s interest in freedom of artistic expression.”

The White decision can only increase the likelihood that the Ninth Circuit will apply similar analysis when it gets the chance.

The case cite is White v. City of Sparks, __ F.3d __, No. 05-15585 (9th Cir. 2007).

The September issue of InsideCounsel magazine reports on the Ninth Circuit’s July 3 decision in Perfect 10, Inc. v. Visa Int’l Svc. Ass’n, which found that credit card companies were not contributorily or vicariously liable for trademark or copyright infringement. The plaintiff, a porn site operator, had argued that the defendant banks and credit card companies should be liable for making infringement profitable by processing credit card payments to infringers’ sites. STL’s original post on the case here.

Julius Melnitzer’s article, “Porn Site Loses High Stakes,” quotes yours truly as characterizing the ruling as a “pro-commerce, pro-Internet decision that could have slowed down commerce significantly if it had gone the other way.”

Writing in dissent, Judge Alex Kozinski argued that credit card companies that allow infringers to become profitable should be just as liable as direct infringers.

Addressing this point, the article also quotes fellow blogger and law professor Eric Goldman (who I note garnered a quote in last month’s issue as well) as explaining: “While the majority sees [financial service providers] like power companies — behind the scenes vendors that don’t touch the flow of infringing bits — the minority thinks FSPs are no different than bagmen for an illegal deal who should take responsibility for it.”

The case cite is Perfect 10, Inc. v. Visa Int’l Svc. Ass’n, __ F.3d __, 2007 1892885, No. 05-05170 (9th Cir.).

On August 20, the Central District of California upheld a jury’s finding that a plaintiff had proven its dilution claim by showing a mere likelihood of dilution. It may have been the first jury trial to consider a dilution claim under the lower standard of proof established by the Trademark Dilution Revision Act, which replaced the “actual dilution” standard required by the predecessor statute, the Federal Trademark Dilution Act.

In the case, plaintiff Eldorado Stone, LLC, and defendants Renaissance Stone, Inc., Alfonso Alvarez, and Rob Hager sold competing architectural veneer stone products. Plaintiff sold its products under the trademarks RUSTIC LEDGE and CLIFFSTONE, which it alleged were famous and diluted by defendants’ products sold under the trademarks CLIFFLEDGE and RUSTIC STONE.

In March, the jury found for the plaintiff. Defendants moved for judgment as a matter of law on the ground that plaintiff had not presented any evidence of actual dilution as required under Moseley v. V. Secret Catalogue, Inc., 537 U.S. 418, 433 (2003). Plaintiff responded that it needed only prove a likelihood of dilution under the Trademark Dilution Revision Act, which was signed into law on October 6, 2006.

Citing Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 477 F.3d 765, 766 (2d Cir. 2007), for the proposition that the “actual dilution standard under Moseley is no longer the standard and that likelihood of dilution is the standard,” the court found the jury’s finding of dilution was based on sufficient evidence. 

“Here, Eldorado presented sufficient evidence to show that Renaissance’s conduct lessened the capacity of Eldorado’s marks to identify and distinguish its products,” the court found. ”[Eldorado’s witness, Jamie Scholl] testified that he observed Renaissance’s products and product names and believed they were Eldorado’s products. Mr. Scholl also testified that he believed the names ‘Rustic Ledge Stone’ Rustic Stone’ were Eldorado’s products when they were Renaissance’s products. Such evidence supports the jury’s finding of a likelihood of dilution.”

The plaintiff also prevailed on a number of other claims, including trademark infringement.

While the court got the “likelihood of dilution” standard right, the plaintiff’s evidence still seems pretty thin. And what about the Trademark Dilution Revision Act’s requirement that a mark be “widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark’s owner” to be considered famous? Anyone heard of RUSTIC LEDGE or CLIFFSTONE before? Not exactly household names.

The case cite is Eldorado Stone, LLC v. Renaissance Stone, Inc., No. 04-2562, 2007 WL 2403572 (S.D. Cal.).