iPhone

For years, the rumor mill has expected Apple to release a mobile phone, with the name assumed to be “iPhone,” to be consistent with the iMac and iPod.
Cisco owns a federally registered trademark for iPhone and introduced new VoIP phones in the iPhone brand at the end of last year: Cisco — not apple — announces iPhone branded VoIP phones.
Today, Apple introduced its iPhone device, which is a mobile communicator and media player that also happens to run a version of OS X.


I’m ready to line up to buy one.
Not surprisingly, Reuters reports that Apple and Cisco are preparing to enter a licensing agreement over the mark: Cisco expects Apple agreement on iPhone trademark: “Cisco spokeswoman Penny Bruce said the two companies had been in discussions, and it believed that Apple intends to agree to a final document and public statement concerning the trademark.”
In addition, the company is now known as Apple, Inc and no longer as Apple Computer, Inc., reflecting the move beyond the computer into consumer electronics.

Trademark Dilution Act

The Trademark Dilution Act was signed into lawMoseley v. V. Secret Catalogue, Inc. that in order to prevail on a trademark dilution claim, the plaintiff must establish the existence of actual dilution, not simply the likelihood of dilution. But the bill reshapes trademark dilution law
Eric Goldman, Trademark Dilution Revision Act of 2006: “Ostensibly, this law was intended to overturn the Moseley case’s requirement that plaintiffs show ‘actual dilution’ instead of a ‘likelihood of dilution.’ However, the act morphed into an omnibus dilution revision effort that reshapes dilution law on a number of fronts. The result is a mixed bag–there is a little good news mixed in with the bad.”
Attorney(s) at Kaye Scholer: The Trademark Dilution Revision Act of 2006: A Major Overhaul of Federal Trademark Dilution Law: “On October 6, 2006, the President signed the Trademark Dilution Revision Act (“TDRA”), a significant revision of federal trademark law intended to clarify and amend the scope of protection afforded to “famous” marks under Section 43(c) of the Lanham Act, 15 U.S.C. §1125(c). While it addresses and resolves a number of issues that have arisen since the introduction of dilution protection to federal law in 1995, the TDRA, nonetheless, has the potential to create numerous other issues, thereby making it likely that dilution will remain a controversial and evolving aspect of trademark law for many years to come.”
William McGeveran, Info/Law, Trademark Dilution Revision Act Becomes Law: “The dilution concept has long been criticized for separating a trademark claim from its conceptual moorings: in theory, the principal interest protected by trademark law has been to prevent consumers from being confused. But that theory has been highly attenuated for a long time, so maybe it is better to admit that trademark law now protects big companies’ brand names for their own sake.”

Just for one day

The Hollywood Reporter, Esq.: Hand Mangling on NBC’s ‘Heroes’ Leads to Trademark Claim

The maker of a garbage disposal device depicted shredding a character’s hand on the pilot episode of the NBC series “Heroes” has sued the studio for trademark infringement and defamation stemming from the broadcast.
The seven-count complaint, filed Monday in federal court in St. Louis on behalf of Emerson Electric Co., manufacturer of the In-Sink-Erator garbage disposal, alleges the show “implies an incorrect and dangerous design for a food waste disposer” and paints the device “in an unsavory light, irreparably tarnishing the product, Emerson’s In-Sink-Erator trademarks, and the associated goodwill.”

The NY Post reports: Heroes cuts: “NBC officials said they did not think there were any legal problems with the show, but will change the offending scene anyway.”

Unfortunately, the lawsuit is more entertaining than the band

A quick follow-up to last week’s post about the Supernova injunction. The junior user– the band made up of Tommy Lee, Jason Newsted, Gilby Clarke and winning Rock Star: Supernova contestant Lukas Rossi– will record and tour under the name “Rock Star Supernova.”
(Trademark litigation, reality TV and rock music together in a single story. How can I not blog this to the full extent possible?)

Like two stars colliding… in a courtroom

US District Judge John A. Houston ruled yesterday in favor of Supernova from CyNot3 and granted a preliminary injunction against Mark Burnett and Rockstar Entertainment from “using the mark SUPERNOVA in conjunction with performing rock and roll music, or recording or selling rock and roll music recordings.” Supernova from CyNot3 LLC v. Mark Burnett Productions, Inc., 06-CV-1334, (S.D.Cal., Sep. 12, 2006) (Order Granting Plaintiff’s Preliminary Injunction Motion).
Plaintiff has a valid trademark in SUPERNOVA.
The mark SUPERNOVA is arbitrary with regards to rock music. It requires imagination by the consumer in order to associate with a rock and roll group. The plaintiff does not need to establish secondary meaning in an arbitrary mark to show the validity of the mark.
However, the senior mark user can only assert trademark use in which it has legally sufficient market penetration and a zone of natural expansion. The court found that the plaintiff established substantial evidence of nationwide use of their mark in commerce- nationwide and Canadiian tours in 94, 95, 96, 99 and availability of records on the internet.
Abandonment
The defendants argued that the plaintiffs abandoned the mark by failing to perform live or record new music between 1999 and 2006. The court found that argument unpersuasive, noting that the plaintiffs earned royalties as songwriters, made their records available for sale online and in retail outlets, and took a break to start families, finish educations and catch up on life.
License
The defendant licensed a Supernova mark from Nasar Abadey, owner of Trademark Reg No. 1,699,491 (the “491 Mark”). The 491 Mark is a work for the phrase “Supernova Multi-Directional Music Ensemble Nasar Abadey.” The court agrees with the Plaintiff’s argument that Defendants have not established any rights outside of the “multi-directional musical ensemble” field (generally known as avant-garde jazz.) The court cites a number of Ninth Circuit cases that found no likelihood of confusion where the music genres differ between the mark holders, including M2 Software, Inc. v. Madacy Entertainment, 421 F.3d 1073 (9th Cir. 2005) (no likelihood of confusion between sports music and interactive music distributors); M2 Software, Inc. v. M2 Communications, L.L.C., 149 Fed.Appx. 612 (9th Cir. 2005) (no likelihood of confusion between interactive music and Christian music distributors) and Echo Drain v. Newsted, 307 F.Supp.2d 1116 (C.D. Cal.2003) (no likelihood of confusion, in part, because of
difference between “funk and groove” and pop music genres. And yes, Jason Newsted was a defendant in that case, too.)
Because the 491 Mark only covers the rights to the Supernova name for the performance of avant-garde music, Abadey could license rights to the mark for the performance of rock and roll music, since those are outside the scope of the rights he holds in the 491 Mark.
Likelihood of Confusion
In order to establish the likelihood of success on the merits for a preliminary injunction, the plaintiffs must establish a likelihood of confusion using the 9th Circuit’s Sleekcraft multi-factor test.

Defendants assert that the marks are “distinctly different” because the band “Supernova from Cynot 3 uses the ‘Supernova’ name exclusively in connection with a band that is from outer space that performs dressed in silver space suits.” Doc. No. 37 at 19 (emphasis in original). In contrast, Defendants’ SUPERNOVA mark is used “exclusively in connection with the Rock Star: Supernova TV series and famous rock musicians Tommy Lee, Jason Newsted, and Gilby Clarke.”

Gilby Clarke is famous?
The court finds that the marks are identical in sight and sound. SUPERNOVA = SUPERNOVA.
The parties’ goods and services are identical or closely related. The defendants assert that space punk music is distinct from “old school rock and roll” and that performing in large arenas and stadiums is distinctly different from playing in small pubs and bars. The court does not buy the argument, finding that a reasonable music consumer treats “space punk” and “old school rock and roll” to be fungible and that both bands draw their customer base from the same pool of consumers. The court finds it reasonable that the defendants will market their SUPERNOVA band through “the internet, commercial venues, such as music stores, as well as through performances at live venues that will advertise its concerts.”
Because Supernova is an arbitrary mark when applied to rock music, the court finds that this factor weighs in favor of the plaintiffs, but it is not a particular significant factor in the Ninth’s Circuit’s likelihood of confusion analysis.
The plaintiff introduced evidence of nine instances of actual reverse confusion among consumers. Venues that booked the plaintiff’s band Supernova received calls and emails inquiring if the Supernova performing at those venues would include Tommy Lee, Jason Newsted and Gilby Clarke. The defendants argue that this indicates that consumers are aware that there are multiple Supernova rock bands and are exercising due care to make sure that they do in fact see (or avoid) the Supernova from TV. The court finds that this evidence of actual confusion weighs heavily in favor of the plaintiffs.
When evaluating the level of consumer care, the court attempts to balance the fact that compact discs are relatively inexpensive (which typically establishes low level of consumer care) against the fact that music consumers are “nonetheless highly knowledgeable about different bands.” This factor weighs slightly in favor of the plaintiffs.
The court finds a likelihood of confusion, and therefore a likelihood of the plaintiff’s success on the merits at trial. Once a senior user has demonstrated a likelihood of success on the merits on a trademark infringement claim, irreparable injury is presumed. A likelihood of success on the merits and irreparable injury? Sounds like the recipe for a preliminary injunction.

Plaintiff’s motion for preliminary injunction is GRANTED. Defendants are enjoined from using the mark SUPERNOVA in conjunction with performing rock and roll music, or recording or selling rock and roll music recordings under the same pending a trial of this action on its merits, or until otherwise ordered by the Court.

The finale of Rock Star: Supernova airs tonight. (The plaintiff and CBS stipulated that the preliminary injunction is not targeted against the production, broadcast or promotion of the Rock Star: Supernova TV series.) Not good timing for Mark Burnett and the members of the band fronted by the winner of the Rock Star: Supernova series.
Previously: Reality TV and the Law.
Elsewehere: Are we there yet?, Penultimate Performances.

Reality TV and the Law

The only summer reality tv show to capture my interest has been Rock Star: Supernova, which could be considered Mark Burnett’s take on American Idol. Fortunately, Burnett’s version of the talent competition format is much better than Idol’s. First, the judges (Tommy Lee, Jason Newsted and Gilby Clarke who are forming the band “Supernova”) have a personal interest in seeing who wins the competition, because the winner will be fronting their band. Secondly, the contestants are encouraged to rearrange and reinterpret their songs with the aid of the House Band. Unfortunately, none of the members of Supernova nor associate judge Dave Navarro are able to criticize the contestants as well as Idol’s Simon Cowell. But I digress.
Supernova is also the name of a California band that formed in 1989 and released its major label (Atlantic) debut album, Ages 3 and Up, in 1995. Among the uses made in commerce of the Supernova brand, the band’s song Chewbacca was used by Kevin Smith on the Clerks soundtrack and by the 1997 MTV Movie Awards, where MTV and Carrie Fischer awarded Chewbacca (Peter Mayhew) the award our favorite Wookie never received at the end of Star Wars.
Supernova: Chewbacca (iTunes link).
Supernova (founded in 1989) filed a lawsuit in the federal district court for the Southern District of California against Mark Burnett Productions, CBS Broadcasting, Rockstar Entertainment Inc., JMPB Inc., as well as Tommy Lee, Jason Newsted and Gilby Clarke. Here’s the complaint: Supernova From Cynot3, LLC v. Mark Burnett Productions, Inc.
The plaintiffs claim:
1. Willful Trademark Infringement
2. False Designation of Origin (§43(a) of the Lanham Act)
3. Intentional Interference with Prospective Economic Advantage
The plaintiffs seek:
1. Declaratory Judgment that Defendants are Not Entitled to Registration of the Marks SUPERNOVA and ROCK STAR: SUPERNOVA
2. Injunctive relief
3. Damages (including treble damages for willful infringement, punitive damages and attorney fees)
MTV reports: Supernova Sue ‘Rock Star: Supernova’ Producers, Bandmembers: “The lawsuit, filed in federal court in San Diego, names Mark Burnett Productions, Rockstar Entertainment Inc. and CBS Broadcasting as defendants, along with Tommy Lee, Jason Newsted and Gilby Clarke — the three future members of the group this season’s ‘Rock Star’ is supposed to spawn and endow with a lead singer. After someone’s chosen to front the band, the foursome will eventually record and release fresh material before touring the nation, all under the Supernova moniker.”
In other reality TV legal news, 43(B)log reports on a California contract case of Reality TV jurisprudence: “The network and producers tried to compel arbitration pursuant to a release agreement executed by the siblings (some of whom were minors) prior to the broadcast. The court found the arbitration clause unconscionable and thus unenforceable.”

TiVo Genericide?

Matt Haughey, PVRBlog: Quit saying “tivo” when it isn’t a TiVo: “I know I’m being a bit of a stickler here, but last week on Pimp My Ride, they opened the show by saying they’d stick hi-def TiVo into a guy’s van. I watched closely knowing that’s no easy task and unsurprisingly, even though you hear the word ‘TiVo’ in the episode about half a dozen times, it most definitely wasn’t TiVo.”
Haughey concludes, “I know on the one hand it’s a testament to how great a product/service is when people use it as a generic term but in the case of TiVo it seems to be leading to a lot of customer confusion.”

Budweiser Update

Both Czech brewer Budvar and American brewer Anheuser-Busch sell beers under the Budweiser mark. Not surprisingly, the mark is the subject of a far-reching series of litigation in many jurisdictions around the world.
Here is a handy cheat sheet to figure out which beer consumers are getting when they buy a Budweiser in their home countries:

Anheuser-Busch Budvar
Argentina
Australia
Austria
Brazil
Canada
Denmark
Finland
Hungary
Italy
New Zealand
Nigeria
Spain
Sweden
Tajikistan
United States
Budvar
Australia
Austria
Cambodia
Czech Republic
Germany
Hungary
Lithuania
Portugal
Slovakia
Spain
South Korea
Taiwan
Deutshe Welle: Two Beers United by One Name

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