Florida IP Trends

This post is painful to write.  It involves tattoos.  I like tattoos.  I even wrote my final law school paper on the intellectual property issues surrounding tattoos.  It’s not painful to write this because of the pain of being tattooed, rather, it’s painful to write because it involves such a touchy subject in the tattoo world:  Don Ed Hardy.  He is a legend, and his Japanese-style tattoos are instantly recognizable.  So why is this incredible artist a touchy subject in the tattoo world?

This:

And this:

And this:

You see, Ed Hardy clothing has become the “uniform of the douche.”  Fair or not, that’s what has happened.  I won’t get into the psychology of it all, but you can find plenty of analysis online.  A simple Google search for “ed hardy douche” will point you in the right direction.  Here, I’ve done it for you.

I’m sure Mr. Hardy had no idea that a simple licensing agreement designed to bring in some extra cash would turn into this, but if you want some $140 jeans with “Ed Hardy” on the ass, proceed to the checkout.  Thank you, Christian Audigier (who may be the ultimate douche in all of this).

Given my respect for Hardy and my keen awareness of what has happened to the brand, I wasn’t really surprised when I saw this new complaint filed in the United States District Court for the Middle District of Florida.

• The case is Hardy Way, LLC v. A.J. Nails, Inc. and Johnny P. Tran.  Complaint HERE.

I have to admit that when I saw “A.J. Nails” as a defendant, I figured the case might involve some awesome airbrushed fingernail allegations.  I was wrong.  This is actually a fairly typical complaint concerning counterfeit goods – specifically, bogus Ed Hardy clothing.

The complaint spends half of its 12 pages praising Hardy’s talent, and Hardy Way’s marketing skill.  It’s actually a very nice wiki-esque explanation of how the licensing deal came about.  We are even treated to a list of goods that bear the Ed Hardy trademarks, including, but not limited to, shoes, hats, jewelry, beverages, home goods, skateboards, snowboards, mobile digital content, fragrances, tanning products (ed: biting tongue), toys, and, drumroll please…. limited edition Smart Cars, which, tellingly, come autographed by Christian Audigier, not Ed Hardy.

I predict that Don Ed Hardy clothing will be in the clearance bins soon – these ultra-trendy brands all share the same fate.  Von Dutch, FUBU, Ed Hardy – the rich and famous wear them for awhile and then the (orchestrated) coolness wanes while the next $140 pair of jeans is being stitched up overseas.

Anyway, until that time, enjoy Don Ed Hardy’s enforcement of its brand via this new lawsuit.

(Note:  no matter how “douchetastic” a brand may have become, the owner of the mark still has a duty to police its mark and prevent infringement and dilution of that mark.  In that regard, if the allegations in this complaint are true, then Hardy Way deserves the remedies it seeks.)

Shame, shame, shame.  This tale of trademark infringement comes from just a few miles away from my office.  Lake Mary High School is the home of the Rams, and apparently the person in charge of branding thought the Dodge Ram logo was just perfect for the school.

The Orlando Sentinel posted this comparison of the logos:

Oops.  More coverage HERE.

I know this blog is Florida IP Trends, but when my alma mater gets kicked around, I’ll bend the rules a bit.

The University of South Carolina.  My grandfather ran track as a student and went on to coach the swimming team for years.  My mom went there.  I met my wife there, and we were even married at the Alumni House on campus.  My blood is garnet and black (Pantone’s® PMS 202 for the garnet – if you’re picky…)

The Court of Appeals for the Federal Circuit has just affirmed a Trademark Trial and Appeal Board decision in favor of the University of Southern California based on a trademark opposition proceeding they initiated against USC.  (PDF of the decision HERE.)  The original TTAB decision was in 2008, and this new decision is merely the result of South Carolina’s appeal of that decision.  MP3 of the oral argument available HERE.  Basically, USC wanted to register the interlocking stylized SC logo as shown in the top hat in the picture to the left.  Southern California has a trademark registration for SC in “standard character form” for similar goods.  This essentially allows them to prevent any other company or university from using “SC” in any font for goods that are similar to those in Southern California’s registration.

In the wake of the appellate decision, the sports blogs and media outlets have been running with the story.  See HERE, HERE, HERE, HERE.  (John Welch of the excellent TTABlog® also commented HERE.)

Sadly, one of the most talked-about things in this whole case is the University of Southern California’s attorney’s attempt to be funny in remarking on the ruling.  The Los Angeles Times is reporting that attorney Scott Edelman suggested that the interlocking SC logo was a better fit for the Trojan’s warrior image as opposed to USC’s “goofy little chicken” and that it was “totally understandable” that USC would want to move way from the Gamecock logo (which USC isn’t doing BTW).  Say what?   If we must use “chicken” at all, we prefer the phrase “ass-kickin’ chicken” to “goofy little chicken,”  but the comment was just rude and unnecessary.  I’m sure all the Tommy Trojans out there will be high-fiving Edelman for his disrespect.

On one hand I think it’s great that people are talking about trademarks and the opposition process, but on the other hand, it’s painful to see the misinformation about that process.  I have seen several articles that suggest USC will not be able to use any “SC” logos anymore.  This is not true.

I’m directing you to a post that my law school Trademarks professor happened to write just the other day concerning the difference between opposing a trademark application and suing someone for trademark infringement.  There is a big difference, and the fact that USC might not be able to register the interlocking SC logo does not necessarily mean that they can’t still use it.  To prevent USC from using it, Southern Cal. would have to initiate and win an infringement lawsuit – a lawsuit which would be decided based on whether or not the consuming public is likely to be confused by the logos.  So, onward to Professor Randazza’s post.

NOTE: According to the oral argument, USC and S.Cal. have an agreement providing for both schools to have USC registrations.  A registration is very valuable when negotiating licenses because it shows the potential licensee that the trademark has been vetted by the USPTO – which, in theory, means the chance of a lawsuit over the trademark is diminished.

Ironically, if you would like more information about the University of South Carolina, please visit www.SC.edu.

The USPTO just issued their Performance and Accountability Report for Fiscal Year 2009.  (The trademark statistic tables start on page 126 of the Report.)

I previously posted the FY2008  statistics for Floridians filing trademark applications, and here’s the update.:

California 58,643  (2008 was 68,039)
New York 28,383  (2008 was 31,965)
Florida 18,730  (2008 was 21,973)
Texas 15,933  (2008 was 17,258)

Overall, U.S. residents filed 274,603 trademark applications in FY2009 (2008 was 314,510).

This looks like a pretty substantial decrease, and I think the logical reason points to the economy.

BONUS FACT:  Can you guess which foreign country files the most applications?  Volkswagen Group, BMW Group, Siemens, DaimlerChrysler, BASF…  Yep, Germany.  Germans filed 11,345 U.S. applications yet only received 4,409 registrations.  That’s a relatively high failure rate.  Any ideas why?

As mentioned in the Featured Case post, when I was exploring the Timmy Woods website to look for the allegedly infringing snowman purse, I noticed that Ms. Woods has also designed “The Obama Bag,” which can be yours for the low price of $375.

I’ve always been a fan of the “O” logo, and I was amazed at the “adaptability” of the logo throughout the Obama campaign.  Whether it was adding a rainbow flag (gay/lesbian) or notebook paper (students), it seems that every “special interest” group (self-defined or otherwise) was able to adapt the logo to fit that group’s interest.

As a trademark attorney, I naturally had to ask, is this ok?  From the Timmy Woods purse to the thousands of online vendors selling t-shirts, magnets, mouse pads, etc. – none of it seemed connected to the official campaign.  Perhaps this is a new phenomenon.  I see the reverse situation happen all the time:  Local or national political candidate “borrows” a popular ad campaign for his or her own use.  In the case of Ralph Nader using MasterCard’s “Priceless” campaign, a court found that Nader’s use constituted “fair use” and did not infringe MasterCard’s intellectual property.  (For more on that case, including the court’s decision, CLICK.)

But the Obama logo is different, this logo was designed by professional artists, and it is the people who claimed it as their own rather than a politician swiping something already embraced by the public.  (For a fascinating video interview with Sol Sender, design lead for the team developing the logo, check out this site.  The interview shows the design progression for the logo and how/why it’s different than the usual campaign slogan.)

With the rampant use of the logo, I had always wondered who, if anyone, owned it.  Once I saw the Timmy Woods purse, I had to investigate.  Lo and behold, “Obama for America” has a federal trademark registration for the logo!  The application was filed on 5/17/2007 and was registered on 12/2/2008.  The registration covers a myriad of products: bumper stickers, DVD’s, jewelry, mugs, water bottles, clothing, and other goods/services.

Along with ownership and registration of a trademark comes a responsibility that the owner protect the mark from unauthorized uses.  One consequence of failing to do so is called “naked licensing.”  Naked licensing occurs when the mark owner gives an express or implied license to another person so that that person can also use the mark, but the mark owner then fails to control the quality of the goods on which the marks was placed.  See Doeblers’ Pa. Hybrids, Inc. v. Doebler, 442 F.3d 812, 823 (3d Cir. 2006).  The result of naked licensing is that the mark owner will be deemed to have “abandoned” the trademark, thus losing rights in the mark.  Essentially, the mark loses its ability to identify a single source as controlling the goods.

Barack Obama’s official campaign website, http://www.barackobama.com, contains a “Downloads” page that allows anyone to download the “O” logo.  At the bottom of the page, the following text appears:

By downloading the Obama for America (“OFA”) logo from this site, you agree that you will use the logo only for your personal, non-commercial use. You cannot market, promote, sell, or exchange anything that bears this logo. To avoid having to register with the FEC, you should limit your printed flyers, posters, or other materials for any event to 500 or fewer.

This looks like a license to me.  The owner of the trademark, Obama for America, is granting the use of the logo in exchange for the user’s agreement to not “market, promote, sell, or exchange anything that bears [the] logo.”  (Wow, you can’t “exchange” anything bearing the logo?)  Since a finding of naked licensing results in abandoning the mark, the burden of proof is high, but it seems like there is rampant naked licensing of the O logo – at least with respect to people who may have created products from logos downloaded from the official webpage.  For those people that sourced the logo elsewhere and then created goods with the logo, my guess is that they might just be “regular” trademark infringers.  For those people, perhaps the uncontrolled use by the licensees could result in an abandonment of the trademark registration such that everyone – regardless of where they obtained the logo – might have a decent defense.  At that point, would the mark still be strong enough for the owner to assert common law rights?

Obviously, this is all academic because what are the chances that Obama for America will start litigating?  I do think it’s an interesting issue, and I would love to see some comments from readers.  Should Obama for America have even sought federal registration?  If Obama detractors use the logo in a negative way, would it be hypocritical to sue the detractor and not someone like Ms. Woods who used the logo as an apparent “fan” of the campaign?  Should all political slogans and logos be public domain for all – free for commenting, criticizing, and profiting?