Patently-O Bits and Bytes NO. 306

  • A University of Missouri student and entrepreneur was recently sued by the North Face for trademark infringement. The student’s company is called “the South Butt.” On the issue of confusion, the South Butt’s attorney indicated that the public knows the “difference between a face and a butt.” [AP]  The complaint [Download NorthFaceComplaint] includes allegations of trademark infringement, dilution (which does not require proof of confusion), false designation of origin, contributory trademark infringement, common law trademark infringement, common law unfair competition, and violation of the Missouri anti-dilution statute.  I think that SouthButt has a good chance of winning the straight trademark claims based simply on likelihood of confusion.  The defense of parody often turns on the judge's sense of humor.  
  • The judge assigned to the South Butt case (Judge Sippel) has presided over several trademark cases in his 12 years on the bench.  His most recent case involves a solar panel manufacturer using the name PRG suing another company who had registered the domain name PRG.com and was selling other solar panels on that site. Patterson v. ABS Consulting. The most recent opinion in that case involved the denial of the defendant's motion to dismiss for failure to state a claim. 
  • Google has been ordered to stop scanning French books. The Google Book project has scanned upwards of 10,000,000 books. [NYTIMES]
  • I just agreed to speak at the Texas IP Symposium two months from now in Austin (Feb 19). [Info will be available soon]
  • Listen to Kevin Noonan (MBHB & PatentDocs) and Dan Ravicher (PubPat) debate Gene Patenting on NPR’s Science Friday. [Link]
  • Recent Presumption if Irreparable Harm Cases:
    • Multiquip Inc. v. Water Mgmt. Sys. LLC, 2009 U.S. Dist. LEXIS 117022 (D.Id December 16, 2009)(in breach of contract case, holding that plaintiffs are given no presumption of irreparable harm in the context of a preliminary injunction)
    • Apple Inc. v. Psystar Corp., 2009 U.S. Dist. LEXIS 116502  (N.D. Cal. December 15, 2009) (“Except for trademark infringement claims, there is no presumption of irreparable harm with respect to permanent injunctions.”)
    • BorgWarner, Inc. v. Dorman Prods., 2009 U.S. Dist. LEXIS 115871 (E.D.Mich. December 11, 2009) (in a patent case, finding that the presumption of irreparable harm had not been overcome in the context of a preliminary injunction)
    • Bushnell, Inc. v. Brunton Co., 2009 U.S. Dist. LEXIS 110612 (D. Kan November 25, 2009)(“The Court is persuaded by the reasoning of those courts which have found that the presumption does not apply to preliminary injunctions in patent cases.”)
  • See also (cites from Bushnell opinion),
    • Voile Mfg. Corp., 551 F. Supp.2d at 1306 (eBay eliminated presumption of irreparable harm in preliminary injunction context);
    • Tiber Labs., LLC v. Hawthorn Pharms., Inc., 527 F. Supp.2d 1373, 1380 (N.D. Ga. 2007) (eBay eliminates presumption of irreparable injury in patent cases, whether raised at preliminary or permanent injunction phase);
    • Sun Optics, Inc. v. FGX Int'l, Inc., No. 07-137-SLR, 2007 U.S. Dist. LEXIS 56351, 2007 WL 2228569, at *1-3 (D. Del. Aug. 2, 2007) (presumption of irreparable harm in preliminary injunction analysis did not survive eBay);
    • Torspo Hockey Int'l, Inc. v. Kor Hockey Ltd., 491 F.Supp.2d 871, 881 (D. Minn. 2007) (same);
    • Chamberlain Group v. Lear Corp., No. 05 C 3449, 2007 U.S. Dist. LEXIS 56351, 2007 WL 1017751, at *5 (N.D. Ill. March 30, 2007) vacated on other grounds, 516 F.3d 1331 (Fed. Cir. 2008) (same);
    • Canon Inc. v. GCC Int'l Ltd., 450 F.Supp.2d 243, 254 (S.D.N.Y. 2006) (consistent with equitable principles set out in eBay, preliminary injunction movant must demonstrate likelihood of irreparable injury in absence of requested injunction);
    • z4 Techs., Inc. v. Microsoft Corp., 434 F.Supp.2d 437, 440 (E.D. Tex. 2006) (eBay eliminated irreparable harm presumption in permanent injunction context)).
  • But see
    • Christiana Indus. v. Empire Elecs., Inc., 443 F.Supp.2d 870, 884 (E.D. Mich. 2006) (eBay did not eliminate presumption);
    • Idearc Media Corp. v. Nw Directories, Inc., 623 F. Supp. 2d 1223, 2008 WL 2185334, at *9 (D. Or. 2008) (copyright case).

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

42 thoughts on “Patently-O Bits and Bytes NO. 306

  1. “The complaint itself establishes that state law is preempted”

    Sounds right to me…

    “The pure trademark infringement claims also look awfully close to the line”

    Except that plaintiffs have won similar cases. Kinda hard to give sanctions in that situation.

  2. …rather than admitting that he said something incorrectly, perhaps all Malcolm meant was that Weird Al is an example of someone who uses parody in the attempt to paint SB’s actions as a parody of NF.

    The ability to make money off of parody does not in itself rule out that parody is in use.

    Malcolm is indeed correct (in what I think he is trying to say).

    The fact that the symbol rotated as it is resmebles the seat of someone’s pants is rather clever. I applaud SB’s antics.

  3. Just Visiting: “State anti-dilution law is preempted (by statute) when the mark is federally registered, but maybe not under other situations.”

    There are a couple of circuit cases that make the point that federal anti-dilution act preempts state anti-dilution claims for federally registered marks. Enterprise v. Advantage is one – 3CA. But The North Face has about a dozen US registrations and it pleads those federal registrations in its complaint. The complaint itself establishes that state law is preempted.

    Looks to me like North Face’s 7th claim for relief could support a motion for sanctions. The pure trademark infringement claims also look awfully close to the line, as if any reasonable customer would confuse South But with North Face.

    Posted by: Babel Boy | Dec 22, 2009 at 11:18 AM — reposted because Dennis’ lame censor/filter boots South Bu__ in an article about South Bu__.

  4. MM,

    “Sorry, friend. I was giving you a well-known real world example to contradict your statements above about what is parody and what isn’t.”

    Good attempt of obfuscating the issue, Malcolm, but “Weird Al Yankovic” did not use another’s mark to develop his own mark “Weird Al Yankovic”; hence, no analogous defense of parody with respect to the development of a mark.

    Nice try.

  5. WCG Just pointing out the non-analogous argument that you’ve made. You’re arguing apples and oranges.

    Sorry, friend. I was giving you a well-known real world example to contradict your statements above about what is parody and what isn’t.

    In any event, I think this thread is veering off into a discussion about what makes dilution laws so crappy.

  6. I haven’t seen anyone go after Al for TM use and haven’t seen any TM-type use other than the “Alapalooza” image graciously provided above.

    I’m sure there are others. Spend some time looking. It took me 30 seconds to find that one.

    And obviously this one would not pass likelihood of confusion muster, so no defense of parody would be needed.

    Just as obvious as the marks at issue here, as you admit. Thank you.

    What one does with the mark does matter when it comes down to arguing parody. If you’re selling goods with a confusingly similar mark

    You’re not making sense. There is no “confusingly similar mark” at issue in Weird Al’s case or in the case at issue. The point is: why does it matter what I’m doing with the mark if the mark is NOT confusingly similar? i.e., if the mark is intended to be a humorous parody of another mark?

  7. What makes a mark “famous” and how stringent is the test? Is it a case where the Judge, “knows it when he sees it”?

    And, “uh-oh”, the Missouri anti-dilution statute seems to require the mark be only “distinctive”.

    Heck, I thought a mark needed to be “distinctive” merely to correctly perform its function as a mark. Does that make all marks in Missouri protected under the anti-dilution statute?

  8. Those insisting SB is parodying NF using Good Ol’ Weird Al as their model for parody should note that because Weird Al is in the business of selling music, he generally pays statutory damages (in copyright) for his uses.

    I haven’t seen anyone go after Al for TM use and haven’t seen any TM-type use other than the “Alapalooza” image graciously provided above. And obviously this one would not pass likelihood of confusion muster, so no defense of parody would be needed.

    What one does with the mark does matter when it comes down to arguing parody. If you’re selling goods with a confusingly similar mark, that’s not going to be found to be a valid parody defense IMHO.

    In this case though I do admit I’m pulling for the student. The NF mark should not be considered “famous” within the requirements of the federal law, and hopefully the state-based anti-dilution statute has similar requirements (or is pre-empted as mentioned above).

    Then it’s down to likelihood of confusion and I’d be surprised if the proper target consumer group would be confused in this case.

    Just because NF doesn’t LIKE what the student is doing does not give NF the legal right to stop him.

  9. MM,

    “Is that an argument?”

    Just pointing out the non-analogous argument that you’ve made. You’re arguing apples and oranges.

    Furthermore, if you want to bring up Weird Al to make your point, your analogous argument would be to say that the term “Weird Al Yankovic” draws attention to itself through the use of the another’s mark. To the best of my knowledge, Weird Al did not use another’s mark to develop his own mark (i.e., his name).

  10. MM,

    “Parodists always draw attention to themselves using widely recognized trademarks. See, e.g., the Onion, Weird Al Yankovic, etc.”

    South B___ is not in the business of parody. It is in the business of selling clothes and is a competitor of North Face.

  11. What trademarks does Weird Al use to draw attention to himself. Song titles and lyrics are not trademarks.

    Oh give me a break, of course Weird Al parodies trademarks:

    link to lifebyalbum.com

    And so does the Onion. It’s what parodists DO.

  12. What trademarks does Weird Al use to draw attention to himself. Song titles and lyrics are not trademarks.

  13. WCG As I have defined parody, South B___’s mark is not parody.

    Real progress here.

    South B___ is drawing attention to itself through the use of the North Face mark (South B___’s mark is definitely not arbitrary

    Parodists always draw attention to themselves using widely recognized trademarks. See, e.g., the Onion, Weird Al Yankovic, etc.

  14. 6,

    “Changing face to bu tt is not parody?”

    Not when the two are competitors and not as the mark is used here. It is clear to me (and should be clear to you) that South B___ is drawing attention to itself through the use of the North Face mark (South B___’s mark is definitely not arbitrary but developed through the use of the North Face mark). As I have defined parody, South B___’s mark is not parody.

  15. MM,

    Why do you say there is no parody?

    Pull out your favorite legal dictionary (or feel free to cite some case law).

    South B___ has not made a transformative use of the North Face mark for the purpose of satire, ridicule, critique, or comment. Instead, South B___ is alluding to North Face mark to draw attention to the South B___ mark.

  16. I don’t know if a defense of parody would apply between the competitors in the instant matter because there is no parody.

    Why do you say there is no parody?

    And just to be clear: it’s the dilution statutes that I find particularly annoying.

  17. MM,

    Allow me to re-phrase:

    I don’t know if a defense of parody would apply between the competitors in the instant matter because there is no parody.

  18. MM,

    “So Duracell can’t make a commercial showing the Energizer bunny drunk on skid row? Why not?”

    A drunken bunny is not a fair use of the bunny, nor does it closely imitate the bunny.

  19. WCG: I don’t know if a defense of parody would apply between competitors.

    So Duracell can’t make a commercial showing the Energizer bunny drunk on skid row? Why not?

  20. What about the decision do you find to have been incorrect?

    Well, mainly the result. 😉

    Like many large corporations, Coke tirelessly and endlessly shoves its product and ads into our faces. Then some guy pushes back with a T-shirt that trades not on Coke’s reputation as a producer of soft drinks but rather on Coke’s reputation as a giant corporation from whose trademarks no escape is possible. Likewise, McDonald’s universal reputation as a relentless and ubiquitous peddler of cheap, fast, and heavily processed “food” is similarly fair game. How could it not be?

    Yes, it would be one thing if a substantial number of consumers were reasonably confused about one of Coke’s products (or one of North Face’s products) because a third party was having a joke at the expense of the company’s trademark. But that’s not what’s happening here.

    Those who purport to defend innovation and enterprise should be alarmed by what happened in Gemini Rising. It can happen again.

  21. WCG–

    I believe this may be what you’re looking for.

    Quality Inns Int’l v. McDonald’s Corp. 695 F. Supp. 198 (D. Md. 1988)

  22. I don’t know the caption, but does anybody know the case in which McDonalds sued a hotel chain for using the “Mc” is describing its low-cost hotels (or maybe it was room package deals). This wasn’t the hotel chain, but as an example, McQuality Inn.

    The instant case could might run along the same course.

    Thanks.

  23. Mooney–

    What about the decision do you find to have been incorrect?

    And check it out: “The Business Lawyer” publication found that the other two most recognizable trademarks at that time were B.V.D. and Singer. Really?

  24. State anti-dilution law is preempted (by statute) when the mark is federally registered, but maybe not under other situations.

  25. “The complaint [Download NorthFaceComplaint] includes allegations of trademark infringement, dilution (which does not require proof of confusion), false designation of origin, contributory trademark infringement, common law trademark infringement, common law unfair competition, and violation of the Missouri anti-dilution statute.”

    Since when and under what conditions is state anti-dilution law NOT preempted by federal anti-dilution law?

  26. Dennis,
    What are you going to be talking about at the TIPLJ symposium?
    I’m debating on whether I should make the drive down there again.

  27. Even the top-o-the-line Justices in our country don’t abide their Oath’s of Office – e.g., look at the eBay abomination.

  28. Hi Mr. Six,

    Re: “It is the lawyer’s job to make this situation crystal clear to the court so that they cannot screw up.”

    You are right; however, even with the best lawyers,
    some Judges can, and do, whatever they fuckin please.
    E.g., some go with their ego;
    some go with what’s politically correct;
    some go with their beliefs even though their beliefs may be inconsistent with case law or enacted law.

    At least that’s my experiences.

    Happy Holidays – stay well my friend.

  29. “Christiana Indus. v. Empire Elecs., Inc., 443 F.Supp.2d 870, 884 (E.D. Mich. 2006) (eBay did not eliminate presumption); ”

    Someone had a bad lawyer for that particular trial. It is the lawyer’s job to make this situation crystal clear to the court so that they cannot screw up.

  30. “Tiber Labs., LLC v. Hawthorn Pharms., Inc., 527 F. Supp.2d 1373, 1380 (N.D. Ga. 2007) (eBay eliminates presumption of irreparable injury in patent cases, whether raised at preliminary or permanent injunction phase);”

    Who could have ever seen that coming? Oh wait, idk, anyone with the superpower of reading?

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