Over the years I have run across trademark licenses and trademark infringement settlement agreements where one party or the other wants the ability to donate counterfeit goods that may have been confiscated to a charity.  Rights holders often refuse because of the concern that the counterfeit goods may not actually go to a charity, but be placed back into the stream of commerce and resold in the marketplace.  A bigger concern for trademark holders is the quality and safety of the counterfeit/infringing items.  Could someone be hurt by a dye in fabric or paint on a toy?

This December, the homeless in LA benefitted from recently passed Senate Bill 324.  The Los Angeles Police Department piracy unit donated 10,000 pairs of confiscated counterfeit athletic shoes.  Under the California Penal Code section 350, the police may donate, with consent of the trademark owner, confiscated counterfeit goods to organizations serving the homeless.

The New York Times reported this week that in 2009 the City of New York shredded and incinerated tons of “knock-off” clothing collected in police raids.  In the past the City donated these garments to charity organizations that removed the counterfeit trademark markings.  In 2009 the City reports there were no requests for the goods to go to charities.

The US Customs and Border Protection are involved as well.  The New York/New Jersey US Customs and Border Protection field office is the fourth US Customs office to develop a counterfeit donation program.  Los Angeles, Detroit and San Francisco US Customs and Border Protection field offices already have such programs in place.  Most of the items included in the donations are clothing, but there have been some donations of televisions. 

Article 46 of the TRIPS agreement governs what the US Customs and Border Protection may do with confiscated items.  This link is a law review note that gives lots of details on the pros and cons of donating items to charity.   The article looks at the situation that occurred where over $20 million dollars in seized infringing items were provided to hurricane survivors after Hurricane Katrina.

Visual artist Daniel Moore won at the trial level against the University of Alabama's lawsuit alleging Moore's original fine art violated the University's trade dress rights in the school’s football uniform and crimson color.

Moore, a visual artist who attended the University of Alabama, and has sent his children to the University as well, is well-known for his real-life paintings of “great moments” in University of Alabama football history. 

The litigation began in 2005 after numerous years of an amicable relationship between the parties.   In a very large nut shell, from 1991 to 2000 there was a licensing agreement in place allowing Moore to reproduce and offer for sale certain visual works that included “indicia” of the University/Football team.   “Indicia” was defined to include logos, seals, symbols and “Colors: Crimson PMS 201 Gray PMS 429.”  “Uniforms” were never included as “Indicia.”

After the agreement ended, Moore continued to create fine art visual works that included the football team, and uniforms --- but not “Indicia.”  Moore’s defense, “if I am not including ‘Indicia’ there is no reason to pay a royalty.”  The University claimed common law trade dress rights in the team’s uniforms and crimson color and that Moore’s paintings infringed upon such trade dress rights. 

The Opinion is long but does a good job of setting out the arguments.  The case in my mind really turns on the decision in ETW Corp. v. JIREH Publishing, Inc., 332 F.3d 915 (6th Cir. 2003). ETW is the Tiger Wood’s case where the publisher distributed limited edition fine art prints of Tiger Woods. The court in ETW made it clear that First Amendment freedom of expression trumps publicity rights when the work is an original or true limited edition fine art.  If they were talking about coffee mugs and t-shirts, a different decision would have been rendered.

The case style is University of Ala. Bd. of Trustees v. New Life Art, Inc., Civ. No. 7:05-cv-00585-UNAS-RBP (N.D. Ala. 2009).

On June 13th, Facebook will begin implementing a new policy that allows trademark owners to preemptively block others from using their registered trademarks as user names on its site.  Under the new policy trademark owners may record their trademarks with Facebook in order to prevent use of the marks by third parties. This new policy appears to supplement the existing policy which allows trademark owners to request Facebook remove trademarked user names that already illegally be used by a third party.

It's nice to see Facebook jump in here to take prempetive action against trademark abuse.  Facebook, Twitter and other social network sites have long been a haven for trademark abuse and misuse. Perhaps others will now follow Facebook's lead and take similar action.  Those who own trademarks would be wise to preemptively record their registered word marks with Facebook in advance of the June 13th policy change.

Last week an appellate court in Malaysia brought to an end an ongoing legal battle that began in 2001.  McDonald’s corporation sued the owners of the McCurry restaurant in Kuala Lumpur claiming likelihood of consumer confusion between the McCurry name and the McDonald’s trademark.

The menu at McCurry is traditional Indian food and the name supposedly stands for Malaysian Chicken Curry.  There was no use of the Golden Arches in the McCurry trademark.  The Appeals Court ruled there was no proof that the owner of the McCurry mark misrepresented the business to the public or confused consumers.  The court examined the differences in food sold as well as the differences in the consumers.

During the pending legal battle, the owner of the McCurry restaurant removed the “c” from Mc on its signage.   The “c” was replaced last week after the ruling. 

DOMAIN NAMES/CYBERSQUATTING/DILUTION

A series of cases found Mattel's trademark "BARBIE" famous, and that domain names containing derivatives barbiesplaypen.com, barbiesbeachwear.com and barbiesclothing.com diluted the mark.

Mattel, Inc. v. Internet Dimensions, Inc., 55 U.S.P.Q. 2d 1620. (S.D.N.Y. 2000)

Mattel Inc., v. Jacom, Inc., 48 U.S.P.Q.2d 1467 (S.D.N.Y. 1998)

Mattel, Inc. v. Adventure Apparel, 2001 WL 1035140 (S.D.N.Y. 2001)

Mattel, Inc. v. Barbie-Club.com, 310F.3d 293 (2d Cir.2002) 

Mattel, Inc. v. Global China Networks, LLC, 2007 WL 3332662 (S.D.N.Y.,2007)

Odds & Ends:

Entm't v. KIDdesigns, Inc., 2005 U.S. Dist. LEXIS 44386

Mattel was sued as co-defendant alleging Mattel allowed a Barbie compilation CD to be released with knowledge that royalties were not being paid properly by another party.

Gunther-Wahl Productions, Inc. v. Mattel, Inc., 104 Cal.App.4th 27, 128 Cal.Rptr.2d 50 (Cal.App. 2 Dist., 2002.)

Plaintiff sued Mattel for breach of an implied-in-fact contract, alleging that toys were based on ideas he presented to Mattel. Plaintiff claimed that his Flutter Faeries ideas were “taken from him.” Gunther-Wahl claimed that ideas for various Mattel dolls, including Barbie and the Polly Pocket line, that followed his presentation to Mattel of Flutter Faeries in 1993 were similar to his concept for Flutter Faeries. The jury found for the Plaintiff. The court of appeals tossed the jury instructions, so the case was remanded.

This is not an exhaustive list of litigation involving the Barbie brand, but a fun look at selected cases. I have inserted links to either free case law or topical discussions on the cases when available. Special thanks to third year law student James “Mitch” Mitchell for his research assistance.