Seattle Trademark Lawyer

Can I sell my photo of the Sydney Opera House? According to the Sydney Opera House, the answer is no. Australian law professor Peter Black recently posted some nice commentary on this issue in his blog, Freedom to Differ. It seems that photographer/blogger Simon Phipps snapped a great shot of Sydney’s landmark and posted it on iStockPhoto. iStockPhoto rejected it on copyright grounds. Then, the Sydney Opera House weighed in, asserting his publication and sale of the photo would violate its trademark rights as well.

The Disputed Photo

Here’s how the Sydney Opera House explained it:

“The SOH brand is a very powerful brand and is well recognised all around the world. This means that the brand is one of the most important assets of the Sydney Opera House Trust. The Sydney Opera House Trust manages the use of Sydney Opera House’s image and brand on behalf of the New South Wales Government. The Trust vigorously protects the commercial exploitation of its intellectual property and does not approve use of the SOH brand in commercial contexts where there is no association between the relevant business and SOH.

“The Trust does this for two reasons - first - to protect the integrity of the brand and second, to protect its commercial value. As a non-profit arts organisation, the Trust is heavily reliant on sponsorships to support its operations and it offers brand association to sponsors of a certain value. In all cases however a sponsor is only permitted to link its product with the SOH brand in a manner that is approved by SOH and which aligns with SOH brand values.”

I’ve got to say, this is a pretty nice explanation as far as cease-and-desist-type letters go. However, it may be wrong on the law. Prof. Black argues the image not only is not protected under Australian copyright law, but it’s probably not protected under Australian trademark either. He writes: “In my opinion, this is a very tenuous assertion and the SOH would struggle to establish that a third party taking a photograph and then selling that photograph would give rise to such an association as I don’t believe that it would be a commonly held assumption that you would need the permission of the SOH to take a photograph of the SOH.”

I’ll happily defer to Prof. Black on Australian law. However, he’d probably be right under United States trademark law. The leading case here is Rock and Roll Hall of Fame and Museum, Inc. v. Gentile Productions, 134 F.3d 749 (6th Cir. 1998), in which the Sixth Circuit doubted that a photograph of Cleveland’s iconic museum could even serve as a a trademark in the first place. It concluded:

“[W]e believe that the district court abused its discretion by treating the ‘Museum’s building design’ as a single entity, and by concomitantly failing to consider whether and to what extent the Museum’s use of its building design served the source-identifying function that is the essence of a trademark. As we have noted, we find no support for the factual finding that the public recognizes the Museum’s building design, in any form, let alone in all forms, as a trademark. In light of the Museum’s irregular use of its building design, then, we believe that it is quite unlikely, on the record before us, that the Museum will prevail on its claims that Gentile’s photograph of the Museum is an infringing trademark use of the Museum’s building design.”

On May 22, the Ninth Circuit vacated the Central District of California’s denial of Abercrombie & Fitch Co.’s motion for preliminary injunction against Moose Creek, Inc. At issue is the allegedly confusing similarity between the parties’ moose logos used in connection with their competing lines of apparel.

This is the parties’ second trip to the Ninth Circuit. In the first case, Moose Creek sued Abercrombie over a different set of moose logos. During the pendency of that suit, Abercrombie developed a new moose logo. Thereafter, Moose Creek developed two new moose logos of its own. The parties’ new moose logos are at issue in the present case (two of which are depicted below). 

Abercrombie’s and Moose Creek’s (inset) logos

In the first suit, Abercrombie persuaded the district court that Moose Creek’s mark must be classified as weak due to the “crowded field” of similar marks. Therefore, the district court estopped Abercrombie from arguing the field was not crowded in the second litigation. The Ninth Circuit disagreed, finding “the district court failed to recognize that the relevant ‘fields’ in the two litigations differ in both scope and size. Previously, when Moose Creek was the senior mark holder, the field included competitors using both marks including moose images and marks including the word ‘moose.’ As Abercrombie is now the senior mark holder, however, the field includes only competitors whose marks incorporate moose images. In light of this reduction in scope of relevant competitors and marks, the corresponding field is less crowded.” The Ninth Circuit found the district court’s contrary holding and estoppel of Abercrombie’s arguments constituted an abuse of discretion.

The Ninth Circuit also found the district court erred in estopping Abercrombie’s arguments regarding the degree of care likely to be exercised by the purchaser. In the previous litigation, Abercrombie argued that Moose Creek’s buyers were sophisticated and exercised a high degree of care. On that basis, the district court estopped Abercrombie from arguing the relevant purchasers exercise a lesser degree of care. Yet, “[d]ifferent purchasers were relevant to each suit. In the prior litigation, the relevant purchasers were Moose Creek’s, who were ‘professional commercial clothing buyers.’ Here, the relevant purchasers are not professional buyers, but Abercrombie’s ordinary customers,” who are likely to exercise less care. Therefore, the Ninth Circuit found it was error to hold the two positions were clearly inconsistent.

The Ninth Circuit then found fault with the district court’s decision to estop Abercrombie from arguing post-purchase confusion. “The district court described the doctrine in terms of purchasers: ‘once people have purchased these competing products, though from different sources, from different channels, and under different circumstances, they are going to put them in the same drawer and hang them on the same shelf and fail to distinguish between them.’ The court’s later correction — that it meant not identical purchasers but ‘the ultimate wearers’ — did not sufficiently expand the court’s focus, as it continued to exclude those who ‘simply see [ ] the item after it has been purchased.’”

“In addition to reliance on this legal error, the district court abused its discretion by estopping Abercrombie’s arguments on this issue since neither Moose Creek nor Abercrombie raised it in the prior litigation.” The Ninth Circuit found: “The court’s determination that Abercrombie’s assertion of post-purchase confusion differed from its former position that the parties have different marketing channels was improper.”

The Ninth Circuit then found error in the district court’s conclusion that the marks were more different than similar. It found: “The similarities between the marks are striking. Both sets of marks face left, are realistic monochromatic silhouettes, and share near-identical proportions. Both are used as the only outward indication of origin or certain apparel. Of particular moment is that Moose Creek’s marks share the distinctive ‘swivelled antlers’ feature of Abercrombie’s marks. Moose Creek’s outline mark also shares an additional unique feature of Abercrombie’s mark — ‘the second diagonal strip in the lower part of the neck near the shoulders,’ a line devised by the creator of Abercrombie’s outline mark because although unrealistic, he thought it looked good.”

“In light of the principle that ‘similarities are weighed more heavily than differences,’” the Ninth Circuit found the comparison of the marks left it “‘with a definite and firm conviction that [the district court’s] conclusion is incorrect.”

The Ninth Circuit remanded rather than reversed because it could not conclude from the record that Abercrombie will necessarily be able to show a probability of success on its infringement action once the district court corrects its errors.

The case cite is Abercrombie & Fitch Co. v. Moose Creek, Inc., No. 06-56774, 2007 WL 1469667 (9th Cir.).

Bothell, Wash.-based Brooks Sports, Inc., filed suit May 4 in the Western District against Payless Shoesource, Inc., Exeter Brands Group, LLC, and Nike, Inc., over the alleged infringement of its running shoe logo.

Brooks’ complaint alleges that defendants recently began manufacturing, promoting, and selling a new line of performance athletic shoes called “Tailwind.” Brooks alleges that shoes in this footwear line bear a design mark that is substantially identical and confusingly similar to Brooks’ design mark.

Confusingly similar? Tailwind (top) and Brooks running shoes
(photo credit: OregonLive.com)

Defendants have not yet answered the complaint.

The case is captioned as Brooks Sports, Inc. v. Payless Shoesource, Inc., No. 07-0695.

On May 2, the Northern District of California dismissed plaintiff Jarritos, Inc.’s infringement and dilution claims against the defendant owners of a San Francisco restaurant called “Los Jarritos.” Plaintiff alleged it manufactures and distributes soft drinks under various JARRITOS trademarks and that defendants’ use of the “Los Jarritos” name and logo in connection with their restaurant infringed and diluted plaintiff’s marks.

Defendants moved for summary judgment. On plaintiff’s infringement claim, the court found that even if the parties’ goods were considered related, “the absence of any evidence demonstrating that any of the remaining eight [Sleekcraft] factors tip in Plaintiff’s favor warrant[s] granting summary judgment. Plaintiff bears the burden of demonstrating that ‘confusion is probable, not simply a possibility.’ Cohn v. Petsmart, Inc., 281 F.3d 837, 842-43 (9th Cir. 2002).”  

On plaintiff’s dilution claim, the court noted the Trademark Dilution Revision Act revised the Federal Trademark Dilution Act “to deny protection to marks that are famous only in ‘niche’ markets. Century 21 Real Estate LLC v. Century Ins. Group, 2007 WL 484555, *14 (D. Ariz. Feb. 9, 2007).” (STL discussion of Century 21 here.)

The court first found that plaintiff failed to show fame: “Defendants argue that Plaintiff’s dilution claim fails because the marks are not identical, Plaintiff’s mark is not famous, and that Defendants are not using the mark in a way that capitalizes on that mark’s status in the soft drink market. Plaintiff admits that it needs to prove fame, but states that it ‘will do so at trial.’ Unfortunately for Plaintiff, to proceed to trial, Plaintiff had an obligation to submit evidence demonstrating the fame of its mark in opposition to the motion for summary judgment. The only evidence Plaintiff does submit is insufficient.”

Plaintiff’s evidence evidence mainly consisted of a one-page map of the United States with text stating: “100% Hispanic Coverage more than 50,000 points of sales, 220 Food Service Distributors, 209 Distributors.” The court found that even if it accepted these purported facts as true, the document was insufficient to prove fame because it did not address the volume of plaintiff’s sales, the breadth of its advertisements, or consumers’ recognition of the mark.

The court also found: “Even if Plaintiff did have some evidence demonstrating its mark is famous, which the Court finds it does not, Plaintiff has not submitted any admissible evidence demonstrating that its mark was famous as of 1988, when Defendants opened their restaurant. On this basis alone, the Court grants Defendants’ motion as to Plaintiff’s federal dilution claim.”

Finally, the court found: “Plaintiff is required to demonstrate that Defendants have been using its mark ‘as a trademark, capitalizing on its trademark status.’ Plaintiff has not submitted any evidence in support of this element. Accordingly, this provides another, independent basis for granting Defendants’ motion.”

The case is captioned as Jarritos, Inc. v. Los Jarritos, No. 05-02380, 2007 WL 1302506 (N.D. Calif).

On May 1, Spokane sports equipment maker Brett Bros. Sports International, Inc., filed suit in the Eastern District of Washington against Jas D. Easton, Inc., and related companies, alleging that Easton’s STEALTH baseball and softball bats infringe Brett’s STEALTH trademark used in connection with its own baseball and softball bats.

The complaint alleges Brett has sold nearly 40,000 STEALTH-branded bats since 1999. Brett claims Easton began marketing and selling its own STEALTH bats and related equipment in November 2004.

In case you’re wondering about a Leo Stoller connection, one allegedly exists. Brett alleges:

“On April 29, 2004, a company by the name of Stealth Industries, Inc. sued George Brett and Brett Bros. for alleged trademark infringement and unfair competition in the U.S. District Court for the Northern District of Illinois for Brett Bros.’ allegedly-infringing use of ‘Stealth’ on its baseball bats. Two additional parties were ultimately added as plaintiffs in that action: Central Manufacturing Company and Leo Stoller. …

“Stoller alleged that he and his various companies owned the rights to the name ‘Stealth’ for use on a wide variety of consumer products, including baseball bats. After the Stoller suit was filed in 2004, Brett Bros. decided to temporarily shelve its plans for marketing and selling its ‘Stealth’ softball bat until Brett Bros. prevailed in the Stoller Suit. Instead, Brett Bros. developed, marketed, and sold its ‘Thunder’ softball bat. …

“During the Stoller Suit, Stoller disclosed that Jas D. Easton, Inc. and Easton Sports, Inc. entered into a ‘Stealth Trademark License Agreement’ with one of Stoller’s businesses, rentamark.com, for use of ‘Stealth’ on various sporting goods including ‘baseball bats and softball bats.’ …

“Pursuant to the Easton-Stoller Agreement, Jas D. Easton, Inc. and Easton Sports, Inc. acknowledged rentamark’s ‘exclusive ownership’ and title to the ‘Stealth’ mark, and Jas D. Easton also assigned its ‘entire right, title, and interest’ in the ‘Stealth’ mark to Central Mfg. Co., one of the companies owned and operated by Stoller. This assignment by Jas D. Easton was effective and binding upon its then-subsidiary, Easton Sports, Inc. and its successor corporation, Easton-Bell Sports, Inc.”

Brett’s complaint further states: “On September 30, 2005, the Honorable David H. Coar of the U.S. District for the Northern District of Illinois entered summary judgment in favor of George Brett and Brett Bros. in the Stoller Suit. In so doing, the Court found that neither Stoller nor any of his wholly-owned companies that were named as plaintiffs actually owned the rights to the name ‘Stealth’ for baseball bats. The Court dismissed the Stoller Suit; cancelled Stoller’s U.S. Trademark Registration No. 2,371,075 for ‘Stealth’ on baseball, softball, and t-ball bats; and ordered Stoller to pay George Brett’s and Brett Bros.’ attorneys’ fees and costs.

“After Judge Coar entered his order dismissing the Stoller Suit, Brett Bros. followed through on its original plans to manufacture and sell the Brett Bros.’ ‘Stealth’ softball bat. Accordingly, Brett Bros. manufactured in October of 2006 its ‘Stealth’ softball bat and is currently selling same.”

Easton has not yet answered Brett’s complaint. The case is captioned as Brett Bros. Sports Int’l, Inc. v. Jas D. Easton, Inc., No 07-138 (E.D. Wash.).