September 28th, 2012
Kim Kardashian can finally breathe easy- her lawsuit against Old Navy was settled right before Labor Day weekend. The settlement terms are confidential, but Kim was suing The Gap, Inc. for the use of a look-alike in one of their advertising campaigns. She alleged the use infringed on her right of publicity under California law and also, violated the Lanham Act. Kardashian also sought unspecified damages and an injunction barring Old Navy from using Kardashian look-alikes in any other future ads.
Fashionistas listen up- the beloved red-soled shoes of notable footwear fashion designer, Christian Louboutin, are now protected by trademark law. In April 2011, Louboutin sued Yves Sant Laurent, for infringing on his widely recognized red-soled shoes when they sold their own line of shoes that had a red bottoms. The decision made on September 5, reversed the prior conclusion by a New York judge last August that denied Louboutin a preliminary injunction on YSL’s sales of their red-soled shoes. The appeals court panel decided that “Louboutin’s long-standing use of the red sole was ‘a distinctive symbol that qualifies for trademark protection’.” However, the protection only applies to shoes where the red sole contrasts with the other color of the shoe. Therefore, YSL is still legally allowed to sell their shoes that are red on the sole and also, red on the rest of the shoe. Overall, the decision is a win-win for both fashion dynasties. For more background on the lawsuit, read one of my previous blog posts here.
The popular UK boy band, One Direction, apparently wasn’t the only one out there. In April, the American boy band, One Direction, sued the UK band, Sony Music Entertainment, and Syco Entertainment for trademark infringement, asking for $1 million in damages. On September 5, the two parties settled and the UK band was allowed to go forward and keep the name “One Direction”. The US band then expressly abandoned their ownership over the mark. The settlement terms remain confidential at this point.
Indie metal label, Century Media, is suing about 7,500 people who have used illegal file-swapping to share two of their artists’ music, Iced Earth and Lacuna Coll. The label rep claims that the practice has “killed an entire industry.” We will have to wait and see if these lawsuits prove effective or if in the end, they unnecessarily destroy the bond between artist and fan.
James Taylor is suing his former record label, Warner Bros. Records, claiming around $2 million in damages from alleged unpaid royalties from digital outlets, like iTunes. As per usual, in his recording contract, Taylor received a higher royalty rate from licenses compared to sales. Through many audits, it was found that Warner Bros. had allegedly been underpaying Taylor, especially when it comes to royalties from digital outlets. This issue is particular relevant now because of the 9th Circuit decision in the Eminem case that concluded that digital downloads constituted licenses, not sales. It will be interesting to see how this case pans out.
The estate of Frank Sinatra was successful in blocking Bill Loizon’s attempt to trademark the name of his hot dog truck company, Franks Anatra. Loizon claimed that the name had nothing to do with the late singer. He stated that the term “Franks” means any frankfurter, hot dog, etc. and that “Anatra” means “duck” in Italian. The Trademark Office was not convinced by Loizon’s arguments and decided that the connection to Frank Sinatra is too strong and therefore, Loizon cannot use the name “Franks Anatra” for his hot dog business.
In other food news, Ben & Jerry’s, sued Rodax Distributers and Caballero Video for allegedly infringing on the Ben & Jerry trademark in various pornographic movie titles. A New York judge granted the ice cream company a temporary restraining order that required the porn companies to stop selling, distributing, advertising, and promoting the movies entitled, Hairy Garcia, Boston Cream Thigh, and Peanut Butter D-Cups, to name a few. Ben & Jerry’s is concerned not only that the porn video titles will dilute their trademark, but that the packaging and artwork on the DVDs are too similar to the ice cream company’s logos.
Beef Products Inc. sued ABC News alleging defamation by several reports that aired earlier this year that reported the South Dakota company’s “beef product was not safe, not healthy and not even meat.” Beef Products is suing ABC for $1.2 billion and claim they have lost millions of dollars in profit and also about half of their employees as a result of the reports. To make matters worst for the beef company, ABC has dubbed the product “pink slime” which has, unfortunately, stuck in the minds of many consumers.
Cindy Lee Garcia, an actress in the controversial film, Innocence of Muslims, has sued the producer, Nakoula Basseley Nakoula, alleging he misrepresented what the film was going to made into- apparently a film denigrating Muslims. In particular Garcia alleges the producers “violated her likeness and participated in fraud and unfair business practices.” In addition, Garcia is also seeking a permanent injunction against YouTube and Google, demanding they take the film down. Garcia claims that she has received death threats because of the film and also has been fired from her job and estranged from her family. Yet, Google still refuses to remove the content from their website. Furthermore, a Los Angeles judge also ruled against Garcia and decided not to grant her an injunction forcing Google to remove the film from YouTube. Judge Levin’s reasoning is that Garcia had not proven a likelihood of success on the merits.