We get results for our clients daily. We do not measure the accomplishment by the size of the defendant or the amount of the award. Every situation is as different as each client. Successfully counseling a client regarding its IP rights, procuring a patent, securing an important trademark registration here or abroad, successfully opposing a trademark registration or obtaining a settlement of a claim or lawsuit, all of these are part of the everyday fabric of a vital law firm. Some of the results we have obtained for our clients include:
Collen IP Prevails at Federal Circuit on Issue of First Impression
On June 4, 2015, the US Court of Appeals for the Federal Circuit issued a decision affirming Collen IP's earlier victory before the US Trademark Trial and Appeal Board. On behalf of its client, a famous Swiss watch manufacturer, Collen IP argued that the applicant, a watch manufacturer headquartered in New York, did not have a "bona fide intent" to use its iWATCH mark when it filed an application under Section 1(b) of the Trademark Act. The appeal provided the Federal Circuit with its first opportunity to consider whether an application can be challenged for lack of a bona fide intent. The Federal Circuit held that an applicant must show "objective evidence of intent" and "the circumstances must indicate that the applicant's intent to use the mark was firm and not merely intent to reserve a right in a mark." The appeal was argued by partner Jeffrey A. Lindenbaum.
Collen IP Argues Issue of First Impression at the Federal Circuit
December, 2014 - Partner Jeffrey A. Lindenbaum argued an appeal before the United States Court of Appeals for the Federal Circuit involving the proper standard for determining whether a party has a bona fide intent to use a mark at the time it files a Section 1(b) application. Collen IP had earlier prevailed at the Trademark Trial and Appeal Board when it successfully argued that a New York-based watch manufacturer did not establish it had a bona fide intent to use the trademark iWATCH. The watch manufacturer's appeal provided the Federal Circuit with an opportunity to consider, for the first time since the Lanham Act was amended in 1988, the proper standard for examining a party's bona fide intent.
Collen IP Prevails at Trademark Trial and Appeal Board
October, 2014 - Following trial and final hearing, Collen IP prevailed at the Trademark Trial and Appeal and successfully opposed registration of the trademark SW:TCH. In its decision, the Board endorsed Collen IP's arguments that its client's mark was famous and entitled to a broad scope of protection. The Board concluded that the applicant's mark was likely to cause confusion, and sustained the Opposition under Section 2(d) of the Lanham Act. The case was litigated and argued by partner Jeffery A. Lindenbaum, with assistance from associate Kristen Mogavero.
Collen IP Prevails on Appeal at Federal Circuit
On February 4, 2014, partner Jeffrey A. Lindenbaum successfully argued an appeal before the United States Court of Appeals for the Federal Circuit in Washington, D.C. Mr. Lindenbaum had prevailed at summary judgment in this patent infringement lawsuit before the United States District Court in Los Angeles, California. The District Court dismissed all claims against Collen IP's client, finding no infringement of the asserted patent. Mr. Lindenbaum also secured the extraordinary remedy of recovering our client's attorney's fees and costs, convincing the District Court that this was an "Exceptional Case." On February 7, 2014 the District Court's entry of summary judgment and its award of attorney's fees and costs were affirmed by the Federal Circuit.
The published decisions can be found at:
Collen IP to Present Oral Arguments at the U.S. Court of Appeals for the Federal Circuit
October 4, 2012 -- The U.S. Court of Appeals for the Federal Circuit is traveling to Denver, Colorado to hear oral arguments as part of an annual road show. Partner Jeffrey Lindenbaum is on the docket to go before the panel of judges in one of four cases that will be heard at Sturm College of Law at the University of Denver. Mr. Lindenbaum will be arguing that the mark A BRAND NAME LAW FIRM is not merely descriptive because the mark creates a double entendre, for which the second meaning is suggestive.
Post-Suit Covenant Not to Sue divests court of subject matter jurisdiction under Declaratory Judgment Act
Plaintiff filed suit seeking a declaratory judgment that defendant Andy Warhol Foundation did not own a valid U.S. copyright in the design of a banana created by the artist Andy Warhol for the cover of record album. After suit was filed, the Warhol Foundation provided plaintiff with a broadly worded covenant not to sue plaintiff or plaintiff's licensees for infringement of the banana design. In granting the Warhol Foundation's motion to dismiss, the U.S. District Court for the Southern District of New York held that the covenant not to sue eliminated the existence of an actual, live controversy between the parties. Collen IP represents the Warhol Foundation.
Omega v. Costco
Five months after the split decision by the United States Supreme Court affirmed the position argued by the Collen IP -directed legal team in favor of its client Omega, the case continues to attract attention. The presenters at the Fashion and Design Protection Seminar focused on the case, displaying it on a jumbo screen while discussing the issues and results. Not only were the case specifics prominently displayed, but Collen IP attorneys were sought out by other attorneys interested in adopting similar strategies for their clients.
The Supreme Court found that the first sale doctrine does not apply to goods manufactured and sold abroad, which allows U.S. copyright holders to maintain and enforce their rights in the U.S. to distribute and control the importation of works manufactured and sold abroad.
Balenciaga v. Steve Madden
Another hot topic at the Fashion and Design Protection Seminar was Balenciaga v. Steve Madden, a Collen IP case that is currently pending in the Eastern District of New York. Balenciaga had created fancy and colorful shoes, playfully nicknamed LEGO shoes, which received a lot of attention and were worn by Beyonce during a televised performance. Soon after, Steve Madden came out with its Bukled shoe. Collen IP brought suit for copyright and trade dress infringement, claiming that Madden's shoes were knockoffs of Balenciaga's.
Collen IP is a premier intellectual property law firm that represents domestic and international clients, from multi-national luxury goods makers and entertainment industry leaders, to start-up technology ventures and local businesses.
Affirmed: Supreme Court Upholds Limitation of U.S. First Sale Doctrine in Favor of Omega
November 2010 - The U.S. Supreme Court is being asked to decide whether to uphold the Ninth Circuit's decision that the first sale provision under 17 U.S.C. § 109 is inapplicable to copyrighted works that are manufactured and sold abroad in the context of a copyright infringement action under 17 U.S.C. § 602(a) for infringing importation. Read the full story at: http://www.collenip.com/costcoomega
The oral arguments for Costco Wholesale Corp. v. Omega S.A. will be heard by the Supreme Court on November 8, 2010
November 2010 - The U.S. Supreme Court is being asked to decide whether to uphold the Ninth Circuit's decision that the first sale provision under 17 U.S.C. § 109 is inapplicable to copyrighted works that are manufactured and sold abroad in the context of a copyright infringement action under 17 U.S.C. § 602(a) for infringing importation. Read the fact sheet, history and case documents and more about Collen IP's activity in this historic matter: http://www.collenip.com/costcoomega
Collen IP Obtains Permanent Injunction, Damages in Excess of $1 Million and Award of Attorney's Fees in Trademark Dispute
Collen IP filed suit in the Southern District of New York on behalf of its clients, Dutch manufacturers of fire suppression products, and owners of U.S. Trademark Registrations for the marks FIT and FIT5. The complaint alleged federal and common law claims of trademark infringement and unfair competition. On May 20, 2011, Judge Lawrence M. McKenna entered Judgment against the defendants and awarded Collen IP's client full recovery of its damages in the amount of approximately $1.3 million, as well as recovery of its attorney's fees and costs for the litigation. The Judgment found in favor of Collen IP's clients on all counts and permanently enjoined the defendants from future use of the FIT and FIT5 marks. The Judgment also: (1) dismissed all of the defendant's counterclaims; (2) directed dismissal of the defendant's cancellation actions at the Trademark Trial and Appeal Board challenging the FIT and FIT5 marks; and (3) directed cancellation of the defendant's FIRE INTERRUPTION TECHNOLOGY trademark.
Collen IP Succeeds in Trademark Opposition - Securing Refusal of Registration of Confusingly Similar Mark
On behalf of its client, Morinaga & Co., Ltd., a Japanese manufacturer of candy and other food products, Collen IP commenced an Opposition at the Trademark Trial and Appeal Board against registration of the mark MYCHEW for candy. Collen IP argued that registration of MYCHEW for candy would be confusingly similar to Morinaga's registration of, and rights in, the mark HI-CHEW. Following trial and oral argument on the merits, the TTAB, on February 17, 2011 issued a ruling finding in favor of Collen IP's client and against registration of the confusingly similar MYCHEW mark. A copy of the decision can be found here.
ABA Agrees to Settle COLLEN IP v. American Bar Association Trademark Infringement Lawsuit
September 12, 2008 – The American Bar Association agreed to settle a lawsuit in which COLLEN IP alleged that the ABA's Section of International Law, which had recently adopted a new logo, infringed upon COLLEN IP's federally registered trademark. In the case pending in federal court in Washington, D.C., COLLEN IP alleged that the Section's globe mark was likely to cause confusion, mistake and deception with COLLEN IP's distinctive logo, which has been used since 1998. In the settlement, the ABA has acknowledged the validity of COLLEN IP's trademark and registration, and agreed not to challenge or attack the registration. The ABA agreed that its use of COLLEN IP's globe logo will always be in conjunction with an ABA mark, according to the Association's Graphics Standards Manual. Further, the Chair of the Section of International Law has agreed to provide written assurances that the Section had no intention of applying to register the logo, and that the Section would remove from circulation those items which bear the logo without the ABA identifier, and that the Section will cooperate with COLLEN IP to address concerns which may arise in the future. As a result, COLLEN IP jointly agreed to, with the ABA, to dismiss the complaint with prejudice, and have done so through a stipulation, each side agrees to bear its own legal costs and fees.
Collen IP Client Prevails in Case Which Brings Clarity to a Gray Market
On September 3, 2008, the United States Court of Appeals for the 9th Circuit held in favor of Collen IP's client, famous Swiss watch maker Omega SA, and against defendant Costco Wholesale Corp. The panel of three judges unanimously held that the first sale doctrine, under section 109 of the Copyright Act, provides no defense to copyright infringement and unlawful importation claims, such as that against Costco, where the copies at issue were manufactured and sold outside the United States and then imported into the United States without the copyright owner's authorization. See published decision at: Omega S.A. v. Costco Wholesale Corp., 541 F.3d 982 (9th Cir. 2008);.
The Omega Globe Design is copyright protected artwork, created for hire and owned by Omega SA, and registered with the United
States Copyright Office. The design was engraved into the Omega brand watches, at issue in this case, at the time of manufacture
by Omega in Switzerland. The watches were sold and distributed by Omega outside the United States only, in places such as
Paraguay, Turkey, and Egypt, and not intended for importation and resale in the United States. The copies at issue were imported into the United States without Omega's authorization by Costco's supplier and then distributed by Costco at
its warehouse clubs.
Since the copies at issue were not manufactured, sold or imported into the United States under Omega's authority, Omega sued Costco claiming copyright infringement and unlawful importation of its copyrighted works. Costco had claimed that a 1998 U.S.
Supreme Court case "effectively overruled" Ninth Circuit precedent, and changed the law in its favor. But, no court anywhere in the United States having analyzed similar facts had ever ruled in the way stated by Costco in the 10 years since the Ninth Circuit's decision. In essence, Costco alleged, the first sale defense was applicable if the copyright owner had manufactured and sold the copies at issue anywhere in the world, not just the United States. The Ninth Circuit held Costco's interpretation to be incorrect and affirmed its longstanding precedent.
The panel of judges also found no genuine dispute that Omega made the copies at issue of the Omega Globe Design in Switzerland,
and that Costco sold them in the United States without Omega's authority. Accordingly, the Ninth Circuit held, the first sale
doctrine is unavailable as a defense to Omega's claims for infringement.
Among the cases cited by the Ninth Circuit in support of its ruling in Omega's favor, are prior cases in which Collen IP has successfully enforced its clients' rights against gray market and parallel imports. One such case is in the 11th Circuit, Southern District of Florida, in the matter of Swatch SA v New City, Inc., where Collen IP won summary judgment in favor of the famous Swiss watchmaker on its copyright infringement and unlawful importation claims. See published decision at: Swatch SA v. New City Inc., 454 F. Supp. 2d 1245 (S.D. Fla. 2006); HYPERLINK "http:// www.collenip.com/swatchnew-city-sdfl.pdf"
As in the Omega case before the Ninth Circuit, the Florida district court in Swatch held that the copyright owner had the right to prevent goods bearing copyright protected artwork, which were manufactured and sold outside the United States, from entering the United States and competing with the identical products authorized to be distributed here.
U.S. District Court in Michigan Grants Collen IP's Motion to Transfer Case to NDNY
Collen IP's client, an automobile recycling facility located in upstate New York, was sued by an automobile manufacturer for using the manufacturer's trademark in connection with its dismantling of the vehicles and selling the used parts to the relevant public. Plaintiffs filed suit in Federal Court sitting in Michigan, where the plaintiffs' headquarters are located, and in which they claimed the injury took place. The Court granted Collen IP's motion to transfer the litigation to the Northern District of New York pursuant to 28 U.S.C. § 1404(a), finding the Northern District of New York to be the more convenient forum for Collen IP's client.
See Published Decision at: Audi AG v. Shokan Coachworks, Inc., 2007 U.S. Dist. LEXIS 10054 (E.D. Mich. 2007)
Nevada Court Strikes Plaintiffs' Amended Complaint as well as Plaintiffs' Supplement to their
District Court granted Collen IP's motion to strike the plaintiff's first amended complaint to add a new party and to add a claim for infringement of right of publicity under Nev. Rev. Stat. § 597.800 et seq., as well as plaintiffs' supplement to the motion for leave to amend the complaint to add a new party.
See Published Decision at: Fifty-Six Hope Rd. Music, Ltd. v. Mayah Collections, Inc., 2007 U.S. Dist. LEXIS 35034 (D. Nev. 2007)
Nevada Court holds that Plaintiffs' Objections to Defendants' Discovery Requests are Deemed
Nevada District Court grants Collen IP's motion to compel and holds that Plaintiffs' Objections to Defendants' discovery requests are deemed waived, and Plaintiffs must account for all communications between attorney and clients.
Nevada Court held that in light of hundreds or thousands of allegedly privileged documents, Court does not require a privilege log, but compels Plaintiffs' counsel to submit a declaration under oath which states and describes the following:
(1) That Plaintiffs have made a diligent and good faith effort to locate and produce all relevant and non-privileged documents, including emails, responsive to Defendant's requests.
(2) The number, or a reasonable estimate of the number, of the privileged email communications that exist.
(3) That Plaintiffs have reviewed the alleged attorney-client or work-product privileged emails to ensure that relevant, non-privileged email communications are not being withheld from production and that Plaintiffs' counsel verifies that no arguably non-privileged email communications are being withheld.
(4) In the case of emails as to which the attorney-client privilege is claimed, the affidavit or declaration should include a verification that the emails were not provided to persons other than the client and attorney. If such communications were provided to non-clients, and the attorney-client privileged is still claimed, then a privilege log consistent with Diamond State for each such communication should be provided.
(5) In the case of attorney-work product, the privilege may extend to persons other than the attorneys or the client, such as investigators. To the extent any attorney work-product emails have been provided to persons other than the attorneys or the client, an appropriate privilege log consistent with Diamond State should be produced for each such communication and an explanation provided as to why the work-product privilege applies.
Court denied Plaintiffs' request to shift costs of reviewing and preparing declaration of privileged documents to Defendants.
See Published Decision at: Fifty-Six Hope Rd. Music, Ltd. v. Mayah Collections, Inc., 2007 U.S. Dist. LEXIS 43012 (D. Nev. 2007)
Collen IP Obtains Emergency Preliminary Injunction Withdrawing Its Client's Sponsorship of a
Concert at Radio City Music Hall
One of Collen IP's clients agreed to be a corporate sponsor of the 2007 Chinese New Year Spectacular at Radio City Music Hall. After receiving information that the promoters of the concert were using the event to pursue a political agenda and just days before the beginning of opening night, Collen IP's client withdrew its sponsorship of the event and affiliation with the organization. The promoters continued to boast its sponsorship of the event and to use Collen IP's client's trademarks in its advertising.
Collen IP filed an emergency lawsuit, complaint, and request for a temporary restraining order in the U. S. District Court for the Southern District of New York. Notwithstanding that its client agreed to sponsor the event, the Court found that it had the right to control use of its trademark and trade name, and enjoined the defendants from continued use of the mark.
The Swatch Group (U.S.) Inc. v. New Tang Dynasty TV (NTDTV), SDNY Action No. 07-CV-404.
Collen IP Obtains Summary Judgment for Client for Unlawful Importation of Gray Market Watches
Pursuant to Section 602(a) of the Copyright Act
The United States District Court for the Southern District of Florida granted summary judgment in favor of Collen IP's client finding that defendant's unauthorized importation and sale of gray market watches violated the Section 602(a) of the Copyright Act. Because the wristwatches at issue here were manufactured and first sold abroad, the District Court held that the Supreme Court's precedent in Quality King did not protect defendant from violating § 602(a) by unauthorized importation. Quality King v. L'Anza, 523 U.S. 135 (1998). Under Section 602(a), Collen IP's client had the right to prevent these products from entering the United States and competing with the identical products authorized to be distributed here. Expressly rejecting defendant's Section 109(a) first sale argument, the District Court granted summary judgment in favor of plaintiffs. See Published Decision at: Swatch S.A. v. New City Inc., 454 F. Supp. 2d 1245, 1254-1255 (S.D. Fla. 2006)
Collen IP Obtains Order of Seizure, Temporary Restraining Order and Injunction Against
Counterfeit Sales of Curry Powder
Collen IP filed suit on behalf of its client, a curry powder manufacturer, alleging trademark infringement, trademark counterfeiting, false designation of origin, false advertising, trademark dilution and unfair competition by defendant curry powder sellers, in violation of 15 U.S.C.S. §§ 1114 and 1125(a). Collen IP obtained an order of seizure, temporary restraining order and permanent injunction against defendant's sales of counterfeit curry powder. Collen IP, with the assistance of the United States Marshalls Service, successfully seized over 22,000 units of counterfeit curry powder, and further obtained a notice of recall of all outstanding counterfeit powder in the retail market. See Published Decision at: Edward B. Beharry & Co. v. Bedessee Imps., Inc., 2006 U.S. Dist. LEXIS 79332 (D.N.Y. 2006)
Collen IP Successfully Enforces Settlement Agreement and Recovers Judgment Totaling
Approximately $500,000, Plus Attorney's Fees and Costs for Client
COLLEN IP filed a lawsuit in Federal Court against an oil exploration company for misrepresenting the background and qualifications of its principals, exaggerating its profits, and misrepresenting its production forecast. The lawsuit charged the company with securities fraud which divested COLLEN IP's client of approximately $500,000.
COLLEN IP successfully avoided an arbitration clause in the investment agreement, removed an ancillary state court action and consolidated
all matters before the United States District Court for the Eastern District of Tennessee. At the initial hearing on the matter,
the parties settled the case for nearly the entire amount of the lost investment funds.
Following the settlement, however, the defendants did not pay. COLLEN IP brought summary proceedings to accelerate payment of the settlement, impose financial penalties for failure to pay, and enforce the entire agreement. These proceedings resulted in a judgment granting the entire amount to COLLEN IP's client.
While granting COLLEN IP's subsequent motion for its attorneys' fees, the Court held, "[i]n the present case, while the plaintiff did not obtain all of the relief it requested, it did recover over 90% of the damages originally claimed. Accordingly, the Court finds that the plaintiff achieved excellent results in this case." See Published Decision at: Neft, LLC v. Border States Energy, LLC, 2006 U.S. Dist. LEXIS 68755, 19-20 (E.D. Tenn. 2006)
Patent Infringement: Collen IP Gains Order Compelling Production of Documents and Deposition
Testimony of Defendant's Former Trial Counsel
July 2003 - Magistrate Judge Peggy Leen of the United States District Court for the District of Nevada, granted Plaintiffs' motion to compel deposition testimony and the production of documents in a patent infringement case. Defendant was ordered to produce former trial counsel's entire litigation files. The plaintiff was represented by the New York based intellectual property firm Collen IP.
In a case brought by Collen IP on behalf of an eyewear manufacturer, the defendant elected to rely on the verbal opinion of its former trial counsel in defense of willful infringement. The Plaintiff obtained an order compelling the production of former trial counsel's entire litigation file and secured rights to take further deposition testimony. The defendant's former trial counsel had obeyed previous instructions not to answer by asserting attorney-client privilege, work-product privilege, and immunity from discovery because the information and material was prepared in anticipation of litigation. The defendant attempted to limit the waiver of attorney-client privilege to only that which was actually communicated to the client – the problem in this case was that former counsel did not put anything in writing and could not recall what he had told the client. Collen IP argued that the privilege, if waived, was waived entirely.
According to the Court's Order: "[Defendant] designated its former litigation counsel as an expert witness. The opinions on which [defendant] intends to rely were not reduced to writing and are oral. [Former trial counsel] has been deposed and was unable to recall with any specificity what he reviewed, when he reviewed it, what he discussed with the client, and what his opinions were based on. The majority of [his] deposition testimony was conclusory and unsupported by specifics. Under these circumstances, the court finds defendant has waived the work-product immunity for [former trial counsel's] file on the subject matter of the asserted defense, that is, evidence relating to willfulness, infringement, validity, and/or enforceability of the Patents-in-suit."
Collen IP Successfully Defends Motion For Preliminary Injunction Related To Bob Marley
Infringement & Right of Publicity By Jeffrey A. Lindenbaum
In March of 2008, Collen IP successfully defended a motion for preliminary injunction seeking to enjoin our client's right to use certain Bob Marley photographs on t-shirts being sold nationwide at Target retail stores and on Target's website. The District Court in Las Vegas, Nevada denied the motion after Collen IP argued that neither Nevada's Right of Publicity Statute, nor the Lanham Act could support plaintiffs' claim to exclusive rights to manufacture, advertise and sell products bearing the likeness of late reggae performer Bob Marley.
a. Right of Publicity
An increased number of claims to a person's right of publicity have prompted significant legislation as well as federal court rulings in recent years. An issue which remains controversial in many jurisdictions is whether a right of publicity can survive post-mortem, and if so, how can these rights be exercised and enforced by the heirs of the deceased. Presently, nineteen states recognize a post-mortem right of publicity: 14 by statute and five by common law.1
Further expanding this right, controversial legislation has recently been signed in California, and is currently being considered in New York. This legislation not only grants a post-mortem right of publicity to individuals who pass after the enactment of the legislation, but also affords such rights for successors-in-interest of persons who died long before a post-mortem right of publicity ever existed.
This recent legislative activity arises from two separate actions, one which commenced in the Southern District of New York and the other in the Central District of California.2 Both actions concern Marilyn Monroe's right of publicity. The California statute was expressly modified as a direct result of the California District Court's decision that a post-mortem right of publicity did not exist at the time of Marilyn Monroe's death, and therefore was not a descendible or transferable right. California's revised statute now states that a right of publicity is deemed to have existed in any person who died prior to January 1985.3 This amendment raises clear Constitutional challenges, and courts are already being asked to consider whether this violates the ex post facto prohibitions mandated under Sections 9 and 10 of Article I of the U.S. Constitution.
In contrast to California, New York stands virtually alone in expressly rejecting a post-mortem right of publicity.4 However, the recent Marilyn Monroe lawsuits have prompted a campaign to have New York's law revisited, and many are lobbying for an amendment consistent with California's statute. A response from the New York Legislature is expected shortly.
b. Protection of a Person's Name and Image Under Trademark Law
In addition to protecting a celebrity's image and likeness under a right of publicity, there have been a number of attempts to protect a person's name and image under trademark law. Many of these efforts have failed. This is because under U.S. law, an individual's name has long been classified as a descriptive mark, precluding registration.
However, as with all descriptive marks, a person's name may be protected and even obtain registration if the claimant can demonstrate that the person's name has acquired secondary meaning. For example, the use of the Henry Ford name "FORD" for automobiles and RALPH LAUREN for clothing are strong marks which have acquired secondary meaning, and are protectable as trademarks.
In the Bob Marley case, argued by Collen IP, the plaintiffs claimed to be successors-in-interest to commercial rights related to Bob Marley, and even obtained a federal registration for the words BOB MARLEY in connection with a wide range of goods, including clothing and t-shirts. However, in this instance, the plaintiffs were not only seeking to enjoin use of the words BOB MARLEY, but also attacked our client's use of images that were advertised and recognizable as Bob Marley.
With respect to the word mark, plaintiffs bore the burden of demonstrating that the words BOB MARLEY have acquired secondary meaning. Plaintiffs also had to convince the Court that defendant's use of Bob Marley was not descriptive, fair use, or protected by the First Amendment as free speech.
The second question presented to the Nevada Court was whether a trademark in the words BOB MARLEY could also protect all images of the late performer Bob Marley. Plaintiffs argued that each image of Marley constituted a separate trademark. Following briefing and argument on this issue, the Court endorsed Collen IP's arguments, holding that there were serious questions going to the merits of plaintiffs' claims which preclude issuance of a preliminary injunction.
Although this issue was novel to the Nevada Court, other federal courts have addressed these questions. The majority opinion holds that a person's image may only be protected as a trademark if that particular image is used consistently in commerce as a trademark (i.e. as a symbol to identify source). Moreover, obtaining trademark protection for one particular image of a celebrity will not entitle the trademark holder to sweeping rights to all images of the celebrity. Instead, the party must still establish a likelihood of confusion with the asserted mark.
While there may be a number of ways to protect the name and image of a person (deceased or living), each state has its own restrictions and laws which will determine the scope of the party's claim to a right of publicity. While trademark protection may also be available, the trademark holder must overcome the hurdle of establishing secondary meaning, and will always be limited to enforcing only those names and images that have actually been used as trademarks. Additionally, trademark rights will always be limited by the First Amendment and doctrine of fair use.
For questions or comments about this article, or about any issue regarding protecting a person's name or likeness, contact Jeffrey Lindenbaum at firstname.lastname@example.org.
1 McCarthy on Trademarks and Unfair Competition § 28:45 (4th ed. December, 2007).
2 The Milton H. Greene Archives, Inc. v CMG Worldwide, Inc., United States District Court, Central District of California, Case No. CV 05-2200, (May 14, 2007); and Shaw Family Archives Ltd. v CMG Worldwide, Inc., United States District Court, Southern District of New York, Case No. 05 Civ. 3939 (May 2, 2007).
3 Civil Code (modified by Senate Bill 771 signed on October 10, 2007, and effective January 1, 2008).
4 Stephano v. News Group Publications, Inc., 474 N.E.2d 580, 584 (N.Y. 1984). The only other state that has expressly rejected a post-mortem right of publicity is Wisconsin. 2 Rights of Publicity and Privacy § 9:19 (2d ed. March 2007).
Nevada Court Grants Collen IP's Motion to Dismiss Right of Publicity Claims and All Claims
Against Client as an Individual
Collen IP's client, holder of licenses to reproduce, market and sell original artwork created in connection with certain Bob Marley and Miles Davis musical concerts of the 1950's, 1960's and 1970's on tee shirts and other products, was sued by Plaintiffs who claimed to be the owner and/or exclusive licensee of the intellectual property rights for the late performers Bob Marley and Miles Davis.
The Federal Court in Nevada granted Collen IP's motion to dismiss plaintiffs' right of publicity claims in their entirety and also granted Collen IP's motion to dismiss all claims against Collen IP's client as an individual. See Published Decision at: Fifty-Six Hope Rd. Music, Ltd. v. Mayah Collections, Inc., 2006 U.S. Dist. LEXIS 40685 (D. Nev. 2006)
TTAB Sustains Oppositions and Denies Applications for Registration
The Trademark Trial and Appeal Board sustained an Opposition filed by Collen IP on behalf of world-renowned Swiss watch manufacturer, Omega, S.A., and denied registration finding applicants' proposed use to be confusingly similar to Collen IP's client's registration and use of its mark. See Omega, S.A. v. Panchacharam, Shawn, 2006 TTAB LEXIS 324 (TTAB 2006) (Opposition No. 91117378 to Application Serial No. 75282523)
Collen IP recently obtained a favorable decision for its client, Luxury Goods International, the owner of the YSL trademark for Yves Saint Laurent. The case was brought against encroachment by Goldfinger Hawaii, Inc. The U.S. Trademark Trial and Appeal Board ruled that the mark SL is confusingly similar to the famous YSL mark as shown below:
The TTAB agreed with Collen IP that the "YSL mark is strong and famous in the fashion field and entitled to a broad scope of protection." The Board accordingly denied registration of the SL mark.
District Court denies Plaintiff's Motion to Enforce Settlement Agreement
In a trademark infringement case the Plaintiff, an automobile manufacturer claims, among others, infringement and dilution of its trademarks by Collen IP's client, an automobile recycling facility (junkyard), in the business of selling used automotive parts. Collen IP defended a motion to enforce an unsigned settlement agreement. Finding in favor of Collen IP's client, the court held that an outstanding dispute among the allegedly agreed upon terms existed as well as ambiguity as to certain language, and enforcement was not appropriate. See Published Decision at: Audi & Volkswagen of Am., Inc. v. Shokan Coachworks, Inc., 2006 U.S. Dist. LEXIS 70201 (E.D. Mich. 2006)
COLLEN IP Successfully Defends Client's Trademark and Cancels the Plaintiff's Trademark
Tom Hansen was a first responder to the terror attacks on September 11, 2001. The chaos he witnessed inspired him to create AirVisual, Inc., a new company which would outfit law enforcement personnel with equipment to deliver multimedia information they needed in real time, such as traffic reports, photographs, building blueprints.
Addvisual, Inc., filed a lawsuit against AirVisual, Inc., and Tom Hansen personally, claiming that consumers would confuse AirVisual with Addvisual trademark ADDVISUAL for video surveillance equipment.
COLLEN IP discovered that Addvisual made misleading statements to the Trademark Office when it registered its trademark, and counterclaimed for cancellation. As a result, Addvisual withdrew its trademark infringement claims and the Court cancelled the ADDVISUAL trademark registration and prohibited Addvisual, Inc. from using its trademark again in the future. Addvisual Inc. v. Airvisual Inc., and Tom Hansen, 05-CV-7650 (S.D.N.Y. 2005)
Trade Mark Action Decided in Favor of Collen IP's Client, the SOUP NUTSY Restaurant Chain;
Alleged Trademark Infringement and Breach of Contract Action Dismissed in the Southern District of New York
July 2004 - Abandonment and 'intent to use' a trademark, in addition to a question of authority to transfer rights to a trademark, were the central issues in a recent United States District Court Ruling in favor of Collen IP client, The Soup Nutsy restaurant chain. The Defendant has restaurant locations in Union Station and The Reagan Building in Washington, D.C.
In the Southern District of New York, Collen IP successfully defended its client against allegations of infringement and breach of contract. Collen IP was able to establish that the Plaintiff/Licensor had abandoned the SOUP NUTSY mark. Most significantly, the Court held that Defendant gained superior rights in the mark and could prevent Plaintiff from use in the future. As a result, the Court dismissed Plaintiff's complaint.
Collen IP Secures Ruling on Claim of False Designation of Origin; Damages Awarded After Jury
June 2004 - Collen IP secured Summary Judgment on behalf of its client, a broker of cable television equipment, in a ruling by the United States District Court for the Eastern District of Tennessee. The case centered upon the mis-use of Plaintiff's customer list and information compiled in its Data Base, which contained detailed business contacts and information relating to its customer relationships and interactions. The Plaintiff alleged, and the Court found, that former officers of the corporation had unfairly communicated with Plaintiff's customers after leaving the firm, and confused those customers as to whether these former employees were still affiliated with Plaintiff.
Collen IP's lead trial counsel on the case said: "These former employees attempted to divert sales from Plaintiff 's customers to their new competitive business, unbeknownst to the customer, by trickery and deception. This is precisely what the Lanham Act is designed to prevent." He continued, "Luckily, one of the customers solicited by these former employees recognized that he was actually confused and wrote to the Plaintiff's principle to inquire of their status. It was at that point we knew that swift action was needed." Following a jury trial, Plaintiff was awarded damages. At trial and upon cross-examination by Collen IP, one of the Defendants apologized for his conduct.
Collen IP is very happy with this opinion. The value and significance to our client - and many other businesses - of protecting client databases and 'inside' information about clients and markets as trade secrets cannot be understated..
SDNY Grants Motion for Preliminary Injunction for Collen IP's Client Against Former Employee
for Misappropriation of Trade Secrets
Collen IP successfully obtained a preliminary injunction on behalf of its client, a manufacturer of cosmetic packaging and hair care accessories, against a former employee. The United States District Court for the Southern District of New York found a likelihood of success on the merits that defendant misappropriated plaintiffs' trade secrets and breached her fiduciary duty to the plaintiffs. The Court enjoined the defendant from discussing, revealing or using plaintiffs' trade secrets, as well as destroying any of plaintiffs' proprietary information. See Published Decision at: B.U.S.A. Corp. v. Ecogloves, Inc., 2006 U.S. Dist. LEXIS 85988, 23-25 (S.D.N.Y. 2006)
Collen IP Wins Summary Judgment in Favor of Client in Patent Infringement Action
May 2004 - In a recent ruling by the United States District Court for the District of Nevada, Collen IP prevailed in securing Summary Judgment on infringement of two patents related to eyewear.
In this case, on behalf of Plaintiffs, Collen IP alleged that a major player in the eyeglasses industry infringed upon two patents related to the construction and mechanism for magnetic attachment of auxiliary lenses to eyeglasses (typically sunglass attachments). Chief US District Judge Philip Pro, agreed with and supported Plaintiff's interpretation and construction of the patents claims and awarded Plaintiffs summary judgment on the issue of infringement. Collen IP's lead attorney for Plaintiffs said, "The Court's claim construction and award of summary judgment in this case reinforced scope of protection afforded by the Plaintiff's' patents. Defendant was unable to show how their product was essentially different in either construction or function from the patents at issue."
Collen IP was able to refute the other side's claims and expert testimony. At the end of the day, the firm is happy with its success in protecting our client's intellectual assets and the competitive advantage they are entitled to gain from them.
Collen IP Obtains $1.15 Million Award Recommendation for Infringement of Client's Website
February 2003 - A federal district court magistrate in New York has recommended that a Collen IP client be awarded $1.13 million in actual damages plus more than $20,000.00 in legal fees and costs based on a competitor's use of the client's trademarks and copyrighted materials on a competing website.
Collen IP had initially obtained an injunction prohibiting the defendant's illegitimate use of our client's trademarks and copyrighted material. The defendant made minor alterations to the website, and we successfully sought termination of the website under the Digital Millennium Copyright Act, and further requested that the court award our client damages for defendant's continuing contemptuous and willful acts. Collen IP is very pleased that the court accepted our evidence of harm, lost profits, and dilution of our client's marks, which the court described as "siphoning" our client's Internet sales.
The firm is also pleased that the defendant now has a website that includes none of our client's marks or copyrighted material.
Collen IP Obtains Judgment in the Amount of $250,000 for Infringement of Patent
Collen IP obtained a judgment totaling $250,000 in damages as well as a permanent injunction on behalf of its client, an eyeglass manufacturer and distributor against the manufacturer and distributor of magnetic eyewear found to be infringing plaintiffs' patents. See Decision at: Aspex Eyewear, Inc. v. Cheuk Ho SDNY Action No. 00-cv-2389 (2006).
Collen IP Executes Seizure on Behalf of an International Beauty Supply Company, Netting
Thousands of Pieces of Counterfeit Beauty Lotions, Cremes, and Soaps, and More Than 250,000.00 in Cash
August 2003 - Acting on behalf of an international beauty supply company which engages in the manufacture, import, export, and distribution of soaps, creams, and lotions worldwide, Collen IP obtained a temporary restraining order and order of seizure against a Brooklyn, New York based importer and distributor of counterfeit health and beauty supplies.
Execution was carefully coordinated and performed simultaneously at three New York locations yielding thousands of counterfeit products and more than a quarter million dollars in cash and bank accounts. "The success of this operation can only be attributed to the diligent efforts of our team of investigators, our support staff, and the United States Marshal's office," said counsel at Collen IP. Also cited as key factors was the decision to take action, upon good information, on an urgent and immediate basis. The temporary restraining order was converted into a preliminary injunction after an evidentiary hearing before Judge William Trager at the United States District Court for the Eastern District of New York in Brooklyn.