Posts Tagged: "blurring"

Characters for Hire cite to Naked Cowboy in fighting Disney’s claims of copyright, trademark infringement

Characters for Hire also argued that the trademark infringement claims lacked the essential element of confusion. Citing to Naked Cowboy v. CBS, a case decided in Southern New York in 2012 involving trademark infringement claims asserted by a Times Square street performer against the use of his likeness in the soap opera The Bold and the Beautiful, Characters for Hire argue that the use of the names of fictional persons are merely descriptive of the entertainment services provided by the defendants. “Indeed, Plaintiff Disney is well aware of the limits of trademark enforceability having successfully defended a claim brought against them for using the famous ‘Caterpillar’ trademark for construction trucks in one of their films,” Characters for Hire argued. This statement references Caterpillar Inc. v. Walt Disney Co., a 2003 case decided in the Central District of Illinois wherein the court ruled that Disney’s use of construction vehicles with Caterpillar logos in the movie George of the Jungle 2 created no likelihood of confusion that Caterpillar either endorsed or sponsored the movie.

Steve Brachmann

October 28, 2017

Atari files suit against Nestlé for Kit Kat ad campaign that infringed on Breakout video game

Atari Interactive Inc. filed a lawsuit alleging trademark and copyright infringement claims against Swiss food and drink company Nestlé SA (VTX:NESN). The suit targets a worldwide and multi-platform advertising campaign produced by Nestlé for the company’s Kit Kat candy bars, which uses elements of Atari’s Breakout video game. The suit is filed in the Northern District of California. Atari’s suit alleges that Nestlé leveraged the look of Breakout for its Kit Kat ad campaign 40 years after Steve Jobs and Steve Wozniak created the game for Atari. “To be clear, this is not a case where a good faith dispute could exist between the rights holder and alleged infringer,” the complaint reads.

Steve Brachmann

August 22, 2017

U.S. v. Alvarez: Trademark Dilution and the First Amendment

Earlier this week, the United States Supreme Court handed down its opinion on the Stolen Valor Act (18 U.S.C. §§704). This poor little First Amendment case has been largely ignored for the simple fact that it was published just before the Healthcare Decision. U.S. v. Alvarez answers the question of whether it is acceptable to lie about receiving military awards, more specifically, the Medal of Honor. What is interesting about the opinion for us Intellectual Property nerds is that the concurrence and the dissent both appear to suggest that the harm resulting from such behavior is analogous to dilution in trademark law.

Beth Hutchens

July 3, 2012

Trademark Tarnishment: Trademark Law’s Dirty Little Secret

Dilution by blurring slowly whittles away at a trademark’s distinctiveness whereas dilution by tarnishment is an attack on the reputation and positive image of a mark. Here’s the thing: dilution by tarnishment is an entirely separate analysis from your garden variety Likelihood of Confusion analysis. But before click up your heels and scream “Yahtzee!” you should know that it’s really hard to make a tarnishment argument stick so don’t get all antsy to trot this one out. The standard is all over the place because it’s typically analyzed under a state’s dilution laws (if there are any). And I hate to do that lawyer “well, it depends” thing, but in this case, a tarnishment cause of action really does depend on the jurisdiction.

Beth Hutchens

October 21, 2010

IHOP v. IHOP: House of Pancakes Sues House of Prayer

On September 3, 2010, IHOP IP, LLC, a Delaware limited liability company, the owner of various IHOP registered trademarks in the United States, sued the International House of Prayer alleging various trademark infringement theories. The plaintiff IHOP brings two causes of action against the defendant. The first being the claim that the defendant through the use of various IHOP marks is engaging in dilution under 15 U.S.C. 1125(c). The second claim is straight trademark infringement under 15 U.S.C. 1114. Notably, the plaintiff IHOP did not bring a cause of action alleging likelihood of confusion, which is typically a ubiquitous cause of action in these types of cases.

Gene Quinn

September 30, 2010