Gucci Trademark Infringement Against Guess

After three years, the Gucci v. Guess trademark infringement battle finally ended earlier this month when Gucci received a settlement of $4.7 million in damages (Gucci initially demanded $221 million). The judge’s words: “Over the past three years, the parties have put in countless hours and spent untold sums of money, all in the service of fashion — what Oscar Wilde aptly called ‘a form of ugliness so intolerable that we have to alter it every six months.’”

Ever since the end of the case, the web has been abuzz with talk about what this decision means for future trademark disputes and how it relates to the now-infamous Louboutin v. YSL lawsuit. In that case, a judge ruled that Louboutin could not protect its red-soled shoes from use by YSL based on the idea that denying an artist the use of a certain color is too restrictive. Louboutin appealed that decision, but the appeal is still pending.

The Gucci v. Guess case echoes aspects of Louboutin v. YSL because one of the marks that Gucci alleged that Guess copied was its green-red-green color stripe pattern. Additionally, Gucci claimed that Guess copied its “quatro G” pattern of interlocking G’s. Along with the settlement mentioned above, the judge awarded a permanent injunction, which means that Guess is now barred from using the “quatro G” pattern, the green-red-green color pattern, and other square G marks on Guess merchandise. Gucci reportedly says that it will file similar cases in Italy, China, and France.

It’s possible that this case could lead to stricter restrictions in the fashion industry with respect to using a similar pattern to another brand. However, it doesn’t seem that a win for Gucci signals a sure victory for Louboutin on appeal. While Louboutin disputed the use of the color red, Gucci argued against the use of a striped pattern of color. It’s unclear whether this would make a difference to the district court judge that decided the Louboutin case, but the fact that Guess used a similar color pattern and not just a solid color does seem to make the two cases distinguishable. It also gives less weight to the idea of artistic freedom to use a certain color because it involves a specific pattern.

A judge could decide though that the use of the red-sole deserves trademark protection based on public recognition and secondary meaning associated with the red-sole (partly thanks to “Sex and the City”). Louboutin continues to fight for protection against similar use and it will be interesting to see the outcome of the case after appeal.

Ipad Chinese Proview v. Apple Trademark Update

So what’s new in Proview vs. Apple? If you remember from our earlier blogs, since late 2011 the two companies have engaged in a trademark dispute over the iPad name. Proview Technology, a now bankrupt Chinese manufacturer, registered the trademark “iPad” in 2001. Apple released the iPad in 2010 and states that it purchased the rights to the “iPad” trademark in 10 countries from Proview in 2009. Apple paid Proview around $55,000 for purchasing the trademark, but Proview later demanded $10 million for Apple’s use of the name “iPad” in China.

Proview says that it still retains the right to the trademark in China because when Apple purchased the trademark in 2009, it dealt with Proview Electronics (Proview’s Taiwanese affiliate) and not Proview Shenzhen (which it claims owns the Chinese trademark). Thus, Proview did not honor the agreement to transfer the trademark right to use in China. Until Apple paid up, Proview threatened to request custom officials to cease the import/export of Apple iPads into China. In February, a Chinese court ruled that Apple distributors should stop selling the iPad in China and authorities began removing the Apple iPad. A Shanghai court denied Proview a preliminary injunction and allowed continued sales of the iPad in Shanghai.

However, Apple claims that it was led to believe that Proview Electronics had the right to transfer trademark ownership of use in China. Additionally, prior to bankruptcy in 2010, Yang Rongshan served as the chairmen and chief executive officer for all Proview’s entities. A judge hearing the case in the High Court of Hong Kong sided with Apple (Proview appealed), but the Beijing National Copyright Administration recognized Proview as the rightful owner of the iPad trademark in China even after the 2009 transaction.

Earlier this year, Proview filed the case in a California Superior Court, but a judge dismissed the case. A spokesperson for Apple previously said that Apple feels that Proview is “unfairly trying to get more from Apple for a trademark we already paid for.” Now, the two companies are participating in out-of-court settlement talks. Earlier this month, Apple offered Proview a settlement (supposedly $16 million), which Proview said is too little.

Top Trademark Firms Cohen IP Law Group, P.C.

We are proud to announce that Michael N. Cohen of Cohen IP Law Group, P.C. has again ranked in the 2012 edition of Intellectual Property Today magazine survey for its Top Trademark Law Firms . The law firms are ranked according to the number of U.S. trademark registrations issued in 2011 where the firm or attorney is listed as the legal representative on the registration. This is the third year in a row that Cohen IP Law Group, P.C. has received this honor.

Cohen IP Law Group, P.C. is a premier boutique intellectual property law firm specializing in complex trademark prosecution and litigation matters in addition to other intellectual property transactions and litigation. Our firm has litigated successfully against some of the largest law firms in the world at a fraction of the cost. Michael N. Cohen is highly regarded in the trademark community and has been interviewed by the BBC, The Wall Street Journal, and other news sources to discuss intricate matters of intellectual property.

Great Article About INTA (International Trademark Association)

http://www.forbes.com/sites/jesscollen/2012/05/10/265/

Tupac Hologram Copyright and Intellectual Property Issues

Most of you have probably heard about the Tupac hologram at the Coachella Music Festival in California over the weekend. If you haven’t…read the news, there was a Tupac hologram at the Coachella Music Festival over the weekend. Now that’s out of the way, why is this important? First, it was a great post-mortem performance along side Dr. Dre and Snoop Dogg which can be seen here.

Tupac hologram copyright

Second, in addition to the incredible technical feat of the hologram, which was a collaboration pushed by Dr. Dre and done by Digital Domain Productions and AV Concepts, Pandora’s box blew up with speculation of resurrecting great performers like Jim Morrison and Michael Jackson for possible tours.

So what does this mean? IP issues run amok. Where do we begin? Essentially it can be broken down into copyright law and right of publicity. Namely, the creators of the hologram would need to obtain a license of the music that was performed. Most likely AV Concepts obtained the rights from ASCAP for that, nothing too unusual there. However, the creation of the hologram, which we believe was an original recreation of Tupac’s movement (rather than just a copy of footage from one of Tupac’s prior videos) would be a copyright owned by AV Concepts or whomever created the hologram.

But the biggest question is the right of publicity which would be the threshold question. Right of publicity laws are state laws, and in California Cal. Civ. Code Section 3344 states:

“Any person who knowingly uses another’s name, voice, signature, photograph, or likeness, in any manner, on or in products, merchandise, or goods, or for purposes of advertising or selling, or soliciting purchases of, products, merchandise, goods or services, without such person’s prior consent…shall be liable for any damages sustained by the person or persons injured as a result thereof.”

Therefore, Dr. Dre and AV Concepts had to get consent from the executors of Tupac’s estate which is controlled by Afeni Shakur, Tupac’s mother who was apparently thrilled with the end result. So although obtaining consent to a celebrity’s likeness to be used with products is nothing new; posthumous hologram acts for live performances places a new intellectual property spin the likes of which we’ll probably see more of. Now if we can just get Dr. Dre to bury the hatchet and get Eazy-E to come back, how epic would that make up be?

The Velvet Underground Sues Andy Warhol Foundation for Trademark Infringement

Issues of copyright and trademark ownership can become tricky when an artist makes a work for hire.  This is currently the case with The Andy Warhol Foundation for the Visual Arts and 60’s rock band The Velvet Underground.  Many people would recognize the Andy Warhol stylized print of a banana as the Velvet Underground’s unofficial logo.  Many of the same people would also know that the banana was created by Warhol, who often collaborated with the band.  But who owns the rights to the iconic print? 

The banana print was never properly trademarked through a trademark attorney, neither was the copyright.  The Velvet Underground recently filed a trademark infringement lawusit that claims that the print was taken from a newspaper ad that was part of the public domain.  The Andy Warhol Foundation currently owns most of Warhol’s copyrights, which are valued at over $120 million.  The foundation earns about $2.5 million a year by licensing these copyrights.  When the foundation decided to start using the banana print as part of its copyrighted repertoire, the band sued.  According to the lawsuit, the band wants a judicial declaration that the foundation has no copyright protection for the banana icon.

Yahoo Patent Infringement Dispute with Facebook

 

As Facebook readies itself for an initial public offering this spring, tensions are running high in Silicon Valley.  A bit too high, perhaps.  Yahoo has just sued Facebook for patent infringement over 10 patents that involve methods to advertise online.  A similar suit occurred in 2004, when Yahoo sued Google just prior to its IPO.  Yahoo has recently come under the management of a new CEO, and it looks like he means business.  After initially becoming the internet’s main source of networking and online searching, Yahoo has fallen in recent years to Google and Facebook.  A Facebook spokesman recently told the L.A. Times “We’re disappointed that Yahoo, a longtime business partner of Facebook and a company that has substantially benefited from its association with Facebook, has decided to resort to litigation.”

Apparently this kind of lawsuit has been on the rise in recent months in Silicon Valley.  Most of these suits come from firms that buy technology patents to create large IP portfolios.  The Yahoo suit is more of a surprise, although the cozy business relationship implied by Facebook’s statement is probably a bit of an exaggeration.