Seattle Trademark Lawyer

Sen. Patrick Leahy (D-Vermont) has introduced a bill that’s aimed at trademark bullies.

Or at least studying trademark bullies.

The bill, the “Trademark Technical and Conforming Amendment Act of 2010” (S-2968), arises out of Hansen Beverage Co.’s claim last year that Vermont-based Rock Art Brewery’s use of VERMONSTER in connection with beer infringed Hansen’s MONSTER trademark in connection with energy drinks. (Story on the parties’ Oct. 2009 settlement here.)

While the bill appears mostly to contain technical amendments, Section 4 directs the Secretary of Commerce to study and report to the Senate judiciary committees about “the extent to which small businesses may be harmed by litigation tactics by corporations attempting to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to the trademark owner.”

In Sen. Leahy’s words, “This legislation … requires a study of how the current system can better protect small businesses from abuses of the trademark system by larger corporations. Congress provides strong enforcement tools to intellectual property owners, as we should, to deter infringing activity and to remove counterfeit products from the market. I have become concerned, however, that large corporations are at times abusing the substantial rights Congress has granted them in their intellectual property to the detriment of small businesses. In fact, we saw a high-profile case like this in Vermont last year involving a spurious claim against Rock Art Brewery in Morrisville. When a corporation exaggerates the scope of its rights far beyond a reasonable interpretation in an attempt to bully a small business out of the market, that is wrong. This legislation therefore directs the Secretary of Commerce, in coordination with the Intellectual Property Enforcement Coordinator, to consider options for protecting small businesses from such harassing litigation, while ensuring that legitimate trademark infringement actions are handled efficiently and expeditiously by the courts.”

The World Trademark Review Daily wrote (free trial subscription required) about this issue on Feb. 16.

I got a couple quotes in the story, including: “Trademark bullies definitely exist. We’re seeing more and more trademark [lawsuit] filings but fewer and fewer trademark trials, which arguably suggests that trademark owners are using demand letters and trademark [lawsuit] filings to exercise their might and to extract something that they may not legally be entitled to by the court process.”

I also encouraged trademark owners to be judicious about who they make demands of. “All brand owners should think like small brand owners with limited resources. Brand owners should fight only legitimate battles that have realistic goals.”

Query whether anything will come of Sen. Leahy’s bill. It’s probably just a show of support for his constituent.

But maybe it will spark discussion about whether the Lanham Act should provide for the award of attorney’s fees to the party that prevails in a trademark infringement action. That’s what the study should focus on. 

Did you catch Blawg Review #251?

It’s timely hosted by our friends at the Canadian Trademark Blog, who announce: “Our city, Vancouver, is one that knows a lot about hosting – whether it be blog carnivals, tourists, or currently, the Winter Olympics. And, given all the excitement on the streets around us right now, we thought it appropriate that we take ‘Vancouver: Olympic Host City’ as a theme.”

An excellent theme at that. This stop on the blawg carnival is packed with links about the Olympics, Vancouver, and of course, trademarks.

I know first-hand that one of the challenges in covering so much ground from so many sources is weaving it all together.

My favorite transition: “But maybe public nudity and the demon weed are too much for you — perhaps you’re a more private individual.  If privacy is a concern you may want to take time to consider the federal Privacy Commissioner’s report on the privacy implications of new technologies, reported at the Canadian Privacy Law Blog.”

Kudos for the public nudity and demon weed. But no explanation of curling?

Plaintiff Larin Corporation’s Section 43(a) claim against Alltrade Inc. started out as one for trade dress but morphed into one for false advertising.

Both parties sell hydraulic-lift stools styled like motorcycle seats. Larin Corp. claimed the photographs and coloring on the packaging in which Alltrade sells its stools are confusingly similar to the photographs and coloring on the packaging in which Larin Corp. sells its stools.

Following Larin Corp.’s shift in theories during discovery, Alltrade moved for summary judgment on its Section 43(a) claim on the basis of judicial estoppel — that Larin Corp. had elected false advertising as its theory and could not pursue its trade dress theory. The Central District of California granted the motion and dismissed the claim.

On appeal, the Ninth Circuit reversed and sent it back to the Central District. It found that while the district court was understandably unhappy with Larin Corp., judicial estoppel did not apply.

“We do not opine as to whether the district court correctly concluded that Larin’s attorney attempted to mislead Alltrade’s counsel during discovery — and the district court’s frustration with said counsel’s lack of clarity is certainly understandable — but assuming there is error to be remedied here, judicial estoppel is the wrong tool for the job,” the court found.

Instead, the court found that Larin Corp. did not adopt clearly inconsistent positions; the district court did not rely on Larin Corp.’s original theory; and Larin’s new theory did not prejudice Alltrade. In other words, none of the elements of judicial estoppel existed.

“Larin’s scattered references to false advertising during discovery do not support the contention that Larin adopted disparate positions that were clearly inconsistent with one another. Throughout the record, the essential nature of the dispute is readily apparent. The record is replete with claims about and discovery related to the similarities between the Larin and Alltrade boxes. Claims of false advertising and trade dress infringement are not mutually exclusive, and plaintiffs can and do advance both theories in a complaint. Alltrade acknowledged during the pretrial conference that the elements of false advertising and trade dress infringement overlap to some degree. Larin’s self-definition of ‘trade dress’ during discovery muddied the waters, but in the end did not change the essential nature of its claims.

“We have also ‘restricted the application of judicial estoppel to cases where the court relied on, or ‘accepted,’ the party’s previous inconsistent position.’ Nothing in the record demonstrates that Larin succeeded in persuading the district or magistrate judges to accept the position that Larin had abandoned its trade dress infringement claim.

“Finally, there is insufficient evidence to support the claim that Alltrade was prejudiced by Larin’s behavior. Despite the district court’s determination that Larin’s counsel was playing ‘bait-and-switch’ with its theories of liability, Alltrade was able to obtain evidence relevant to both false advertising and trade dress infringement defenses. Indeed, while Alltrade asserted on appeal that it had not conducted sufficient discovery on trade dress infringement elements like secondary meaning, its final pretrial disclosure tells a different story. There, Alltrade asserted, among other things, that its expert was ready to testify regarding secondary meaning in the Larin and Alltrade packaging.”

The case cite is Larin Corp. v. Mueller, 2010 WL 444344, Nos. 08-55625, 08-55790, 08-56191 (9th Cir. Feb. 5, 2010).

STL took a brief holiday from blogging and work to head to this place, one of the greatest spots around. Not sad to be back — for one thing, Seattle’s a balmy 25 degrees warmer.

(Photo by STL)

So how does New York’s new right of publicity bill (S-6790) compare with the 2008 amendment to Washington’s right of publicity statute (RCW 63.60)?

They’re cut from the same — expansive — cloth, but there are some notable differences.

Here’s a cheat sheet to the key terms: 

Definition of “Deceased Personality”

• New York Bill: “[A]ny natural person who: (1) died a domiciliary of the state of New York on or after, or within seventy years prior to, the effective date of this section; and (2) whose persona was of commercial value at the time of his or her death, whether or not the individual used his or her persona for advertising purposes or for the purposes of trade during his or her lifetime.”
• Washington Statute: “[A]ny individual, regardless of the personalty’s place of domicile, residence, or citizenship at the time of death or otherwise, whose name, voice, signature, photograph, or likeness had commercial value at the time of his death, whether or not during the lifetime of that individual he or she used his or her name, voice, signature, photograph, or likeness on or in products, merchandise or goods, or for purposes of advertising or selling, or soliciting the purchase or sale of, products, merchandise, goods, or services.”

Descendibility of Personality Right

• New York Bill: “A deceased personality’s persona is personal property, freely transferable or descendible, in whole or in part, by contract or by means of any trust or testamentary instrument, whether such contract, trust or testamentary instrument is entered into or executed before or after the effective date of this section, by the deceased personality or by any subsequent owner of the deceased personality’s persona as recognized by this section.”
• Washington Statute: “This right shall be freely transferable, assignable, and licensable, in whole or in part, by any otherwise permissible form of intervivos or testamentary transfer, including without limitation a will or other testamentary instrument, trust, contract, community property agreement, or cotenancy with survivorship provisions or payable-on-death provisions, whether the will or other testamentary instrument, trust, contract, community property agreement, or cotenancy document is entered into or executed before, on, or after June 11, 1998, by the deceased individual or personality or by any subsequent owner of the deceased individual’s or personality’s rights as recognized by this chapter….”

Ownership of Rights by Heirs

• New York Bill: “If no transfer of some or all of the rights recognized under this section has occurred in accordance with subdivision eleven or twelve of this section, then such rights shall be deemed to have passed in accordance with section 4-1.1 of the estates, powers and trusts law; provided, however, that if there are no surviving natural persons to whom said rights pass by intestate succession, then said rights shall terminate.” 
• Washington Statute: “Except where such rights were transferred or assigned before such deceased personality’s death by means of any contract or trust instrument, the right shall be owned by the person entitled to such rights under the deceased individual’s or personality’s last will and testament or, if none, then by the beneficiaries or heirs under the laws of intestate succession applicable to interests in intangible personal property….”

Retroactive Application

• New York Bill: “The rights recognized under this section are expressly made retroactive and shall be deemed to have existed at the time of death of any deceased personality who died within seventy years prior to the effective date of this section….”
• Washington Statute: “The rights recognized under this chapter shall be deemed to have existed before June 11, 1998, and at the time of death of any deceased individual or personality or subsequent successor of their rights for the purpose of determining the person or persons entitled to these property rights as provided in this section. … This act applies to all causes of action commenced on or after June 11, 1998, regardless of when the cause of action arose. To this extent, this act applies retroactively, but in all other respects it applies prospectively.”