Intellectual Property Archive
Naked Cowboy Stripped of Trademark Lawsuit Claim
March 5th, 2012. By AbiK
The Naked Cowboy trademark lawsuit has been given the boot.
Not familiar with the Naked Cowboy? He’s an ‘only in New York’ (nod to NY Post columnist Cindy Adams) institution. Though he hails from Ohio, he hangs out in the heart of Times Square donning only a cowboy hat and a pair of briefs—oh, and cowboy boots, though those typically reside outside of an onlooker’s range of focus. He also carries an acoustic guitar that he does, indeed, play.
He’s been doing his solo act in the heart of the city since 1997, and clearly he’s made not only a name for himself but apparently a living (and a following—he threw his cowboy hat in the ring as a 2012 US Presidential candidate). So much so, he’d trademarked his “Naked Cowboy” moniker—back in 2002. And, it goes without saying, once you’ve got a trademark, you’re going to protect it against trademark infringement.
So, when the Naked Cowboy became aware that the CBS soap opera “The Bold and the Beautiful” character, Oliver, appeared on the show that aired November 1, 2010 in a cowboy hat, cowboy boots and briefs and that he played a song on a (guess what?) guitar, well, the Naked Cowboy noticed some similarities.
There were differences, too—the Oliver character did not have “Naked Cowboy” written all over his guitar or on his cowboy hat.
Additionally, a clip of the scene was posted—by CBS—on CBS’ YouTube channel. The clip had the descriptive title “The Bold and the Beautiful – Naked Cowboy”. And, “naked” and “cowboy” were tags on the clip. CBS also bought adword advertising for the phrase “naked cowboy” on YouTube.
In order for the Naked Cowboy trademark infringement lawsuit to go ahead, the cowboy would’ve had to establish that not only did he had the valid registered trademark (he does) but that the trademarked name was used by the defendant for commerce and in connection with the sale or advertising of goods or services without the plaintiff’s consent.
The defendant’s use of the trademark would also have to be likely to cause confusion regarding the relationship between the plaintiff and the defendant—for example, did it appear as though the Naked Cowboy (the real one) had sponsored or approved the use of a naked cowboy on the soap?
While the Naked Cowboy could clearly establish that he owned his own trademark, the court did not find that CBS had used the trademarked name for commerce; and, in terms of the adwords, the court deemed that while CBS did purchase the adwords, it did not place the words on any products or goods so, in effect, buying the adwords did not constitute commerce either.
The court also found that given the differences in the costumes of the Times Square-based Naked Cowboy and the naked cowboy on “The Bold and the Beautiful”, there is no likelihood of confusion.
All remaining charges of the trademark infringement lawsuit were also dismissed. And with that, the Naked Cowboy is left to tip his hat and head back to his urban frontier at the corner of 46th and Broadway.
For more, read the court opinion here.
Toothpaste Lawsuit over Blob Settles…so Who’s Got the Nurdle?
November 8th, 2011. By AbiK
The dramatic courtroom battle over toothpaste nurdle rights has reached its incredible denouement. Ok, maybe it wasn’t quite a made-for-tv courtroom drama, but yes, a confidential settlement has been reached between Colgate-Palmolive and GlaxoSmithKline in the trademark infringement case that centered on use of the nurdle—that curvy squeezed-out blob of toothpaste—in packaging and advertising.
You can read about—and see nurdle pics—the toothpaste nurdle lawsuit here (GlaxoSmithKline LLC v. Colgate-Palmolive Co, U.S. District Court, Southern District of New York, No. 10-05739).
So with Glaxo wanting to establish exclusive rights to use the nurdle along with the phrase “Triple Protection” (recall the 3 intertwined streams of red, white and blue toothpaste in their Aquafresh line), and Colgate wanting to ensure the use of its newer “Triple Action” swirl of toothpaste, both sides have agreed to settle—though, of course, it’s hush-hush.
Not to worry—just keep your eyes peeled on those Sunday paper coupon inserts and store shelves. Give it a few months—and see who using that nurdle and how.
Does Kim Kardashian have a Case v. Old Navy? You be the Judge
October 17th, 2011. By AbiK
Ok folks. The lookalike lawsuit filed by Kim Kardashian against Old Navy (owned by The Gap, Inc.) has not just faded away like rinse on your fave Old Navy Skinny Mini-Flare jeans—Color: Cottonwood, that is. Nope. Now The Gap is bringing in the big guns by hiring attorney Louis Petrich of Leopold, Petrich & Smith. The firm specializes in entertainment and intellectual property law.
So the big question is not what Kardashian will next be touting after her product line launch at Sears and—hush-hush—that failed Kardashian Kard debit card—but whether Old Navy in their classic tongue-in-cheek (and usually humorous) ads stepped over the line by using an attractive brunette to emulate a rather self-absorbed, high-maintenance, reality tv-type actress. Oh wait—I mean to allegedly channel the very likeness of Kim Kardashian to push their product line.
At least two statements in the complaint do confound me a bit:
1. The Infringing Ads are likely to cause confusion, and have caused actual confusion, in the minds of the consuming public as to an association of Kim Kardashian with Defendants’ products and services.
and
2. Defendants have created a likelihood of confusion in the minds of the consuming public as to the source, sponsorship, endorsement, or association of Kim Kardashian with Defendants, and with their goods, services and performances.
Ok, it’s the bit about “confusion”. I don’t watch Keeping Up with the Kardashians. It’s a painful reminder of Bruce Jenner circa 1976 and leads me to ask the unanswerable question “what happened?” Regardless, I don’t have a razor-sharp recollection of what the heck Kim Kardashian looks like. But, I do know that every tabloid I see when I’m checking out at the grocery store does show her in a much less-complimentary light than what Old Navy could possibly have mustered up with these ads (hello hip measurements anyone?).
Not to be catty—but, ok, I am—I’d be quite happy if someone used model Melissa Molinaro to allegedly represent me. My point though, is that there isn’t anyway, anyhow that I’d have “confused” Melissa with Kim. Are they a similar “look” in general? Yes—but I got that it was a spoof…a mockery. It’s a caricature of our times. And doesn’t the First Amendment provide for such artistic interpretation of very public theater?
While I certainly don’t agree that anyone has a right to use a celebrity without his/her express consent in the capacity of an endorsement or otherwise, Old Navy did not either a) use images of Kim Kardashian herself; or b) have her name splattered across the ads as an official endorsement.
We’ll have to see where this nets out—and feel free to chime in with your comments. The ad is shown in the video above—and by now, I presume you already know what Ms. Kardashian looks like.
Five Dollars says Footlong not Subway Trademark Infringement
February 17th, 2011. By AbiK
[vimeo]http://vimeo.com/10535376[/vimeo]
Any any any…FIVE…five dollar…five dollar footlong…any any any… Ok, if you sat transfixed in front of the tube during the last Olympic games, you could not have possibly missed the Subway jingle touting their five-dollar footlong sandwich. For that matter, if you’ve EVER sat in front of a television, you’ve probably needed some form of medical help to get that “any, any, any FIVE” exorcised from your brain.
Be that as it may, it seems Subway has taken claim to the word, “footlong”. Now, I use the term “word” loosely—as, after all, any self-respecting writer or editor would tell you that “footlong” is not, actually, a word. (Don’t believe me? Refer to the layman’s abridged Merriam-Webster online edition of the dictionary. It simply is not a word.) But, let’s just assume for now that it is.
Iowa chain store Casey’s General Stores, Inc.—which uses “footlong” on its menu boards—has filed a lawsuit against Subway seeking a federal judge to rule that “footlong” is a part of the vernacular, part of the “general English language” and not a word that can be the special property of Subway. Why, it would be as silly as suggesting that “yardstick” or “half-gallon size” were trademarkable. And what? Would every vendor who pushes a footlong hot dog be subject to trademark infringement if Subway could put a claim on the word?
You can see the absurdity of it. And, for that matter, why The Washington Post reports that the lawsuit filing also charges Subway with “frivolous litigation”. Think about it—there are well-paid attorneys working on this for Subway.
Speaking of Subway in-house counsel, Valerie Pochron is the attorney who had written to Casey’s to inform them that Subway had applied for a trademark on “footlong” and that Casey’s should cease and desist from using the word or face the consequences…the wrath of Subway in the form of legal action.
Interesting thing about Pochron though. This isn’t her first at-bat over trademark issues—hell, let’s hope not as she’s apparently a trademark attorney. Pochron had not too long ago gone after a website “MySubwayRewards.com”, claiming trademark infringement. She filed a complaint with the WIPO Arbitration and Mediation Center in January, 2010. Now, yes, it’s a similar looking and sounding name and if Subway, the food chain, had actually been using “MySubway” or “MySubwayRewards” maybe Pochron would’ve been onto something.
But, while acknowledging that “Subway” is a fairly well known—perhaps even “famous” name—the owners of “MySubwayRewards.com” apparently never responded to the complaint (bluemaumau.com), and, here’s the kicker, the decision as it’s stated on the case document was as follows: “For all the foregoing reasons, the Complaint is denied.”
Ouch! It was pretty plain as day that such a URL could ultimately be a trademark issue—ok, maybe not right at that moment, but you could see where Pochran may have stood a chance. But no! And more specifically, the case doc states that “Inasmuch as the Panel finds that Complainant has failed in these proceedings to discharge its burden of establishing that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights, it is unnecessary to consider whether the second and third elements of the Policy have been met in the circumstances of this case.”
Failed to discharge it’s burden?!?
Slam! Case closed!
Don’t get me wrong here—I’m sure Pochron is a good lawyer who’s won a case or two. Be that as it may though, with the MySubwayRewards.com case as a backdrop, let’s see how successful Pochron is at claiming “footlong” is trademark infringement when she couldn’t even cough up enough to establish trademark violation when the company namewas being used. Note also that Subway tried to go after Sheetz Inc. convenience stores in Pennsylvania in 2009 for use of the word “footlong”—and they left that one empty-handed as well.
Given that neither Pochron or Subway had either offered comment or responded to the Casey’s lawsuit, maybe they’re taking a move out of MySubwayRewards.com’s playbook and figuring silence is golden. More to come.
Facebook Made a Hero out of Adam Guerbuez
October 7th, 2010. By Hunter West
Okay, we’ve all heard about him by now. “The 873 Million Dollar Man,” otherwise known as Adam Guerbuez, the Montreal computer whiz and self-confessed internet marketer who was found to have sent millions of unwanted and uninvited solicitations to Facebook users for everything from erectile dysfunction and penis enlargements to marijuana products.
Facebook took him to court, and two years ago a California court convicted Guerbuez of violating US anti-spam laws. He was fined a couple of hundred bucks for every spam (advertisement) he sent, which totals $873.3 million, when you add it all up.
Last week the Quebec Superior Court upheld the US ruling, in theory requiring Guerbuez to pay the judgment.
Give me a break.
First of all, no one of Guerbuez’s financial stature and position has that kind of money lying around. This is just a guy and a laptop. And if you want to be really impressed, that $873.3 million when converted to Canadian funds at the 2008 exchange rate equates too more than a billion dollars Canadian.
That’s like the US music publishing industry fining a single mom millions of dollars for allegedly pulling off music from peer Internet music sites without permission, violating copyright. Or fining some guy millions of dollars for pulling movies off the web before their theatrical release.
Okay, if they re-sold this stuff and made millions, then such a fine would be appropriate. But they’re not. We’re talking a single mom pulling down tunes because her daughter is Read the rest of this entry »
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