Louis Vuitton, one of the world’s premier designer brands, is suing Warner Bros for the use of fake Louis Vuitton luggage in the comedic film “The Hangover Part II.”
Vuitton claims that despite their instructions not to use fake goods in the airport scene in the movie, the studio disregarded the request by filming one of the main characters carrying replica luggage marked “LVM” and proclaiming “Careful, that is a Louis Vuitton.” In their complaint, Louis Vuitton alleges that Warner Bros violated Section 43(a) of the Lanham Act by falsely designating the origin of the goods and thereby leading to consumer confusion. The luxury brand seeks an order from the court mandating the destruction of all copies of “The Hangover Part II” and related promotional materials, as well as profits from the film plus damages.
Louis Vuitton, undoubtedly aggressive in their brand protection strategies, names Diophy, a Chinese American company, as the manufacturer of the counterfeits. The use of knock-off goods undermines the global fight against counterfeits.
No stranger to legal action, Warner Bros recently settled a copyright case for the unauthorized use of Mike Tyson’s tattoo design. In the instant matter, the complaint also alleges unfair competition and trademark dilution. The studio may invoke the affirmative defense of fair use. A parody can use just enough elements of the original to conjure up the original, while at the same time be different enough that it does not lead to consumer confusion. Where a pet product manufacturer, Haute Diggity Dog parodied famous luxury products, the court concluded that the dog toys could not be mistaken for the luxury brand nor did the toys dilute the brand image.
Who will prevail?
Empress Hair Care Products has filed a lawsuit against Sean Combs alleging trademark infringement and unfair competition. According to the lawsuit, filed on January 10, 2012, Combs infringed the “Empress” trademark when he used the name for his new women’s fragrance line. AllHipHop.com reports that according to Empress Hair Care Products, Sean Combs tried to file a trademark for the name “Empress” while knowing that Empress Hair Care Products owned the trademark. The application was rejected and Empress Hair Care Products claims that in February 2010, attorneys from Combs’ Sean John Clothing Company contacted Empress Hair Care Products to obtain permission to use the “Empress” mark in exchange for compensation. Empress Hair Care Products did not enter into an agreement with Sean John nor grant Sean John the right to use the mark. Combs’ proceeded to file a second application to trademark the name “Empress Sean John” but it was also rejected. Finally, Combs’ decided to launch his Sean John Empress perfume in summer 2011.
Under the Lanham Act, the test for trademark infringement is the “likelihood of confusion” among consumers about the origin of the goods or services. 15 U.S.C. §§ 1051–1127. The plaintiff has the burden to first show that it has a protectable trademark right in the mark at issue, and that the defendant is using that mark or a confusingly similar mark in such a way that it will create consumer confusion, mistake, or deception. Consumer confusion can occur when both parties sell similar products, or when it appears that one party is somehow associated, affiliated, or connected with the other party’s products. Here, Empress Hair Care Products holds a trademark right to the name “Empress,” and alleges that Comb’s use of this mark on its products will create consumer confusion as both companies target the same consumers. Empress Hair Care Products sells hair products for African American women, while Sean John’s Empress Perfume and Lotion line will sell perfume and lotion products to women, including African American women.
Old Navy has responded to Kim Kardashian’s lawsuit, filed last summer, alleging that The Gap-owned retailer used a Kardashian look-a-like — a “Fauxdashian” as racked.com has dubbed model Melissa Molinaro — in its commercials. Old Navy’s retort? “What are you really worth these days?”
On November 15, 2011, Belal Amin Alsaidi, a thirty-year-old Virginia store owner, pleaded guilty to trafficking counterfeit goods. Alsaidi admitted that he sold counterfeit shoes and apparel at two of his stores from May 2007 through March 2009.
According to the U.S. Department of Justice, Alsaidi admitted that he purchased over 1,400 packages of counterfeit merchandise from an individual in New York. The merchandise included knockoff apparel from brands including Nike, NFL, Lacoste, True Religion, and Coogi. Alsaidi faces a maximum penalty of 10 years in prison and a $2 million fine. The punishment illustrates law enforcement’s attempt to deter potential counterfeiters from committing this crime.
So, what will happen to all of these seized items?
According to Chicago Breaking Business, American Eagle Outfitters is suing a chicago-based furniture store “American Eagle Furniture, Inc.” for trademark infringement. American Eagle Outfitters and American Eagle Furniture, Inc. both operate stores in Gurnee Mills and the Woodfield Mall, and the former alleges that the latter creates consumer confusion.
American Eagle Outfitters is an American clothing and accessories retailer that has existed since 1977 and operates over 900 retail locations in the U.S. and Canada. The brand sells items such as outwear, jeans, graphic T-shirts, polo shirts, and swimwear.
American Eagle Furniture, Inc. has existed since 2006. The furniture store owner, who has also used the name “Titanic Furniture”, argues that American Eagle Outfitters is making too big a deal of this name use, as both stores sell completely different items and people should not be deceived as which source is providing the goods. The furniture store owner also states that he trademark registered the name “American Eagle Furniture Your Home’s Best Friend” in 2006. Is an individual protected from liability just because it owns a trademark in the disputed name? No. When you clear a name with the Secretary of State- it does not mean that you are now completely protected and can use the name without any issues. Registering your trademark is not enough. Similar names may exist and protection arises from use and is determined on a first-come basis.
According to PRNewsWire, Tony Duquette, Inc., has filed suit against J. Crew Group, Inc. for trademark infringement and other causes of action. Tory Duquette, Inc.is a high-end home design, furniture, and jewelry firm. The firm alleges that J. Crew infringed on Tony Duquette’s trademark and created unfair competition when it produced a leopard-print cardigan and called it “Duquette Leopard Print Sweater.”
The Tony Duquette, Inc. trademark claim is not solely based on the fact that J. Crew used the Duquette name on its sweater, but it also used Duquette’s image. In the 1950s, Duquette was known for using leopard print designs on fabric, clothing, carpet, wallpaper, and furniture. The print has become a symbol of the brand and its designs. Now, the firm fears that its mark is connected to J. Crew. According to WWD, the J. Crew sweater and the Duquette name have been linked together in more than 150,000 online searches! It’s no surprise that J. Crew has changed the name of its sweater to exclude the Duquette name!
In addition to the trademark infringement claim, Tony Duquette, Inc. is concerned with its exclusive licensing agreement with Jim Thomson, Inc. Tony Duquette, Inc. has a license to provide Jim Thomson, Inc. with a collection of woven and printed textiles, which includes a signature leopard print pattern! It also has an agreement with Roubini, Inc. for carpets and tapestries in Duquette’s signature leopard print.
Tony Duquette, Inc. may have a trademark infringement claim against J. Crew for the use of its mark on their sweater. However, the company probably does not have a claim towards the leopard print sweater itself- as reports state that J. Crew created the print and as it is highly unlikely that a court will find that this leopard print is trademark protected.
According to Start Up Smarts, fashion designer Collette Dinnigan is suing Colette Hayman for using the name “Colette Accessories.” Collette Dinnigan is a well known Australian label for women and its products are known as “Collette” or “Collette Dinnigan.” Dinnigan wants Hayman to stop selling its products under its current name and logo, and seeks damages or an amount equal to the profits that Hayman has made by Colette Accessories. Dinnigan argues that its “Collette” products have gained substantial reputation and goodwill for its fashion garments and accessories, and that the term Collette has become an indicator of solely Dinnigan products, and Hayman’s use of “Colette” on its accessories is causing confusion and deceiving consumers. Hayman, however, states that Colette is a common name and Dinnigan doesn’t own it. Colette Accessories currently operates 12 stores across Australia.
While the word Collette or Colette is a common name, Dinnigan has used the term for some time in association with its products and may have developed secondary-meaning among Australian consumers for a trademark infringement claim. One cannot claim their own name as a trademark to identify themselves. However, one can obtain trademark protection for their name if they use their name in commerce as an identifier of a source of goods or services. In order to receive trademark protection from the name “Collette,” Dinnigan will have to show that the name Collette has acquired secondary meaning because the public associates the mark (Collette) with a particular producer (Collette Dinnigan), rather than the underlying product (fashion garments and accessories).
Target Corp., Urban Outfitters Inc. and other retailers lost a motion to dismiss unfair competition and trademark infringement claims brought in New York by Bruce Lee’s estate over T-shirts bearing the martial arts icon’s image.
The suit was originally filed in Indiana, but defendants moved for transfer of venue to either New York or Nevada. Defendants’ motion was granted, and the case is now in front of the southern district court in New York.
According to the pleadings, Bruce Lee Enterprises, LLC (“BLE”) sought damages and equitable relief for the “alleged unauthorized manufacture and sale of t-shirts bearing images of Bruce Lee owned by Plaintiff”. (2011 U.S. Dist. LEXIS 36406)
Bruce Lee, the martial artist and film star, died in 1973, leaving behind many registered trademarks as well as publicity and other intellectual property rights, including rights in Lee’s “name, image, likeness, persona, distinctive appearance, and photographs”. (Id. ¶ 3.)
Plaintiff alleges that Defendants, without BLE’s consent, made and sold t-shirts bearing Lee’s image on Urban, Target, and other Web sites and in Urban and Target stores. (Id. ¶ 16. )
According to BLE, “[t]he Infringing Merchandise designed, manufactured, marketed, and / or sold by . . . the Defendants bearing the LEE Intellectual Property are [sic] substantially similar to licensed merchandise marketed and sold by BLE’s licensees . . . .” (Id. ¶ 46.)
The court held that these allegations adequately plead a likelihood of confusion. Thus the plaintiff’s second amended complaint sufficiently plead a Lanham Act false endorsement claim, and BLE prevailed.
In October, Sketchers faced ridicule for creating an almost identical copy of a TOMS shoe, and selling it using TOMS’ philanthropic concept. TOMS founder, Blake Mycoskie, started selling TOMS shoes with the marketing tactic that he would donate a pair of shoes to a needy child for every pair of shoes sold. Sketchers followed up by coming out with BOBS, which not only looked identical to TOMS, but were named in similar fashion- a short, three letter, name in plural form. If Sketchers couldn’t make the product any more similar to TOMS, it also decided to offer the same charity concept! – buy one pair of BOBS and it would donate another to a needy child.
Last week, Racked reported that Aldo was following in Sketchers’ steps. Aldo is currently selling a TOMS look-a-like shoe called Kalaoa, without any philanthropic approach.
Reuters recently reported that Christian Louboutin is suing Yves Saint Laurent for using red soles on their shoes. Christian Louboutin trademarked the red soles mark in the US in 2008 and alleges that the defendants’ use of red outsoles on the shoes is virtually identical and likely “to cause and is causing confusion, mistake, and deception among the relevant purchasing public.” According to New York Magazine, Yves Saint Laurent’s spring 2011 collection features shoes in a variety of colors with each colored shoe having a matching colored sole. The collection includes a pair of red suede shoes with red soles, as well as purple, navy, and green shoes with their matching color sole. Louboutin is clearly saying that no other company can create a shoe with red soles.
The advantage of Louboutin owning a federal trademark registration is that the registration creates a presumption of ownership over the specific mark and gives Louboutin the exclusive right to use that mark “nationwide on or in connection with the goods/services listed in the registration.” Therefore, Louboutin can stop others from using the “red soles” trademark or a confusingly similar mark, if the mark is being used on competing goods or services, and if consumers are likely to be confused by this use.
Color in a trademark is rarely protected. It is only protected under certain circumstances as courts are concerned with the “color depletion theory”- Since there are only a limited number of colors in the universe, to permit one or a few people to use colors as trademarks would deplete the amount of useable colors. Eventually, it would create an advantage to some competitors and a disadvantage to others. In Qualitex Co. v. Jacobsen Products Inc., 514 U.S. 159 (1995), the Supreme Court held that a color by itself could meet the legal trademark requirements if it had a source-distinguishing ability of a mark. Here, Louboutin has clearly linked in the public’s mind that footwear with red soles indicate Louboutins.