Way more than an everyday interest in IP
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In April we commented on Tiffany’s loss in the US Second Circuit Court of Appeals over its claims of direct and contributory trade mark infringement, trade mark dilution and false advertising against eBay for sales of counterfeit Tiffany products on the eBay website. To view the history of proceedings in this case, you can read our previous post here.
Rosetta Stone Ltd, an American company that produces language-learning software, has appealed the summary dismissal of its claim against Google Inc. in relation to use of its trade marks as keywords for paid advertisements using Google AdWords (for a refresher on AdWords, see one of our previous posts on this topic).
A recent domain dispute involving a website devoted to criticism of the Irish airline, Ryanair, has shown the distinction between a criticism website that legitimately uses a trade mark as part of the website’s domain name and a website that misuses a trade mark for commercial gain. In this case, the receipt of £322 in advertising revenue generated from the site was sufficient to turn a criticism website into a commercial website.
In her classic mid ‘80s hit, Madonna famously claimed that she is a “Material Girl”. Fast forward 25 years, and now Madonna has used the iconic song title as her brand name for various products marketed in the US, including fashion and accessories. However, Madonna’s use of “MATERIAL GIRL” is not without its challenges thanks to the rigorous brand protection of US traders using similar brands.
Most of us would know Australian rock band INXS for their hits “New Sensation” and “Need You Tonight” from the late ‘80s. Or the younger readers among us would remember the airing of the reality TV show Rock Star: INXS in 2005, featuring 15 contestants competing for role of lead singer. Believe it or not, 15 million viewers tuned in to watch Canadian vocalist J.D. Fortune win the title.
The Hells Angels motorcycle gang, sorry, make that “non-profit mutual benefit corporation” (according to their complaint), also names Saks (the operator of high-end department store Saks Fifth Avenue in New York) and Zappos.com (an online retailer owned by Amazon) as defendants. Hells Angels claims all three parties illegally manufacture, source, market and/or sell jewellery, apparel and accessories that infringe and dilute their trade marks.
Coca-Cola’s trade mark for its classic bottle shape has long been ‘the’ talisman example of how a shape can be registered if it is sufficiently distinctive. So, why would Pepsi decide to use a similar bottle? Like all things IP, the answer is not as simple as it looks.