Cases of the Month: The Cutting Edge Report – The Latest Trademark Law Cases

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Cases of the Month: April 2004

Throughout each month, we select several recent cases of interest from The Cutting Edge Report, and make the Case Summary Reports and court opinions available here on a complimentary basis.

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This month we feature these recent cases from The Cutting Edge Report –

As subscribers know, there have been many new trademark law decisions recently. The year got off to a roaring start, with 15 new decisions in the first half of January alone. These three recent decisions below were decided just before the end of the year in late December. They deal with three important areas of trademark law: parody, trademark infringement, and Internet pop-up ads.

Mattel, Inc. et al. v. Walking Mt. Productions, et al.

(9th Cir. Dec. 29, 2003) 2003 U.S. App. LEXIS 26294

Case Summary

Court Decision

We reject Mattel's Lanham Act claims and affirm the district court's grant of summary judgment in favor of Forsythe. Mattel cannot use 'trademark laws to ... censor all parodies or satires which use [its] name' or dress.
[p. 49]

"Food Chain Barbie" – Artist's Photographs Of BARBIE Dolls Are Parody and Protected Fair Use

Artist Thomas Forsythe created a series of 78 photographs, entitled "Food Chain Barbie," which are, according to him, "a parody of Barbie and the values she represents." They showed "Barbie" dolls in a variety of unflattering poses, many with kitchen appliances or in sexual situations. Mattel, of course was not amused.

Barbie last did battle on the parody front in the Ninth Circuit against the musical band "Aqua" because of its song "Barbie Girl" and accompanying music video which featured Barbie and Ken dolls. She lost. Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894, 898 (9th Cir. 2002), cert. denied, 537 U.S. 1171 (2003). This time, she also lost.

The Ninth Circuit ruled in this important decision that Forsythe's photographs were nonactionable parody, and protected as fair use.

It's hard being both a cultural icon and piece of intellectual property at the same time. Read the Case Summary Report and see why.

See the Case Summary

Star Industries, Inc. v. Bacardi & Company Ltd. Corp., et al.

(S.D.N.Y. Dec. 22, 2003) 2003 U.S. Dist. LEXIS 2341

Case Summary

Court Decision

It stretches credulity to believe that a sober consumer would go to a store, intending to purchase Georgi O vodka, and because of one graphic similarity on the label, purchase Bacardi's orange-flavored rum instead.
[p. 11]

Booze Battle – No "Sober Consumer" Would Confuse BACARDI O Rum For GEORGI O Vodka, Court Says

As this case shows, simply because two composite marks share a common design element doesn't mean that there will necessarily be a likelihood of confusion. That's the bottom line in this case pitting Plaintiff's GEORGI O mark for orange-flavored vodka against Defendant's BACARDI O mark used for its orange-flavored rum.

Following a bench trial, the court granted judgment for Defendants.

This case provides a lesson in word + design marks – how distinctive does the design have to be, and does the design obscure or show the word mark? Here, the court found that the "O" oval was not distinctive, and the words GEORGI vs. BACARDI sufficiently distinguished the marks. The court also found that as designed, Plaintiff's mark would be perceived as GEORGI, and not GEORGI O, because the "O" oval design would not be seen by consumers as the letter "O" in the word mark GEORGI O.

See the Case Summary

1-800 Contacts, Inc. v. WhenU.com, et al.

(S.D.N.Y. Dec. 22, 2003) 2003 U.S. Dist. LEXIS 22932

Case Summary

Court Decision

The harm ... from initial interest confusion lies not in the loss of Internet users who are unknowingly whisked away from Plaintiff's website; instead, [the] harm ... lies in the possibility that, through the use of pop-up [ads], Defendant Vision Direct 'would gain crucial credibility during the initial phases of a
deal.' [pp. 68-69]

Pop-Ups Put Down – Court Grants Preliminary Injunction Against Internet Pop-Up Ads Triggered By Plaintiff's Trademark And Domain Name

This is a hot area lately – litigation over Internet pop-up ads and other Internet advertising triggered by a competitor's trademark or domain name.

How would you like it if a competitor's ad appeared in a pop-up window over your website when users try to access your website?

After prevailing in a couple of recent cases, WhenU.com lost a motion for preliminary injunction in this recent case. WhenU.com provides "contextual marketing" services on the Internet, and can deliver your ads in pop-up windows depending on the user's browsing activity. It does this by maintaining a directory of terms, which includes trademarks and Internet domain names, grouped in categories. For example, if you visit ford.com to learn about FORD cars, that triggers the automotive category, and a competitor's pop-up ad will appear on your screen.

The court ruled that this constituted unlawful use of the trademark owner's mark, and causes initial interest confusion.

This case is a must read for anyone following the emerging law in this area.

See the Case Summary

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