Seattle Trademark Lawyer

On Aug. 13, the California Supreme Court declined to consider an appeal involving ex-members of The Doors and the damages they were found to have caused by touring in 2003 as The Doors of the 21st Century, Law.com reports.

The article states the decision (or lack thereof) cemented the $3.2 million in damages that keyboardist Ray Manzarek and guitarist Robby Krieger must pay drummer John Densmore, the parents of the deceased lead singer Jim Morrison, and the parents of Mr. Morrison’s deceased wife.

Messrs. Manzarek and Krieger could be liable for another $2 million in attorney’s fees. An appellate court is considering their appeal that the award was excessive.

In the suit, Mr. Densmore said he didn’t object to Messrs. Manzarek and Krieger playing The Doors songs, as long as they didn’t call themselves The Doors or use the former band’s logo and imagery.

Messrs. Manzarek and Krieger made use of The Doors’ name, logo, and imagery anyway in 2003 when they went on tour with Ian Astbury, former lead singer of The Cult. The tour netted $3.2 million, none of which went to the plaintiffs.

Their doing so was found to have breached the band’s written contract requiring unanimity on business decisions.

In March, the Ninth Circuit found in Mr. Manzarek’s favor in a bad faith claim stemming from his insurers’ refusal to pay the plaintiffs’ damages award. (STL post here.) 

In April, Microsoft Corp. sued Trellian Pty. Ltd. of Australia and other defendants in King County Superior Court for cybersquatting, trademark infringement, false designation of origin, and other trademark claims related to the defendants’ alleged registration of domain names that are identical or confusingly similar to Microsoft’s trademarks.

As a side note, you don’t see many Lanham Act claims brought in state court, though it’s perfectly appropriate to bring such claims there.

Despite concurrent jurisdiction, the claims didn’t stay in state court long. Defendants removed the case to the Western District.

In July, defendants largely denied plaintiff’s allegations. 

The parties have now buried the hatchet. Today, Microsoft filed a Notice of Settlement asking the court to strike all deadlines in the case and advising it expects to have a formal settlement agreement signed and the case dismissed within 30 days.

The case cite is Microsoft Corp. v. Trellian Pty. Ltd., No. 08-776 (W.D. Wash.).

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.

I hope I’m not jumping the gun here, but it looks like Starbucks Corp. isn’t opposing the Rat City Rollergirls’ application to register its logo as a trademark after all.

In May, STL reported (among others) that Starbucks had filed for an extension of time to oppose the Seattle roller derby league’s application through July 16. That date has come and gone, and the Patent and Trademark Office’s database doesn’t indicate that Starbucks has opposed or sought another extension of time to do so.

Online media seemed pretty critical of Starbucks’ initial extension. Perhaps the company has backed off. Or settled with the ‘girls.

STL can only speculate.