Arkansas IP Litigation Cases for the Week of November 10, 2007

The U.S. District Court for the Eastern or Western District of Arkansas was chosen as the forum for litigating the following case(s), as published by Justia:

  • Coulson Oil Company Inc v. Deweese Enterprises Inc; No. 4:2007cv01102; Filed: November 9, 2007; Court: Arkansas Eastern District Court
    Here is a Trademark Infringement lawsuit involving gas stations run by both companies, both called “Super Stop.” Coulson Oil, an Arkansas based company, seeks a declaratory judgment that they are not infringing the trademark of Deweese Enterprises, a Mississippi based company. Deweese registered a federal trademark for “Super Stop” in 1982. Coulson is arguing that it obtained Arkansas trademark rights due to its continuous use of the name in commerce. Coulson also operates the Super Stop Co-op, a bulk purchasing group for convenience store owners.


Dell Cybersquatting Case

Last week, the U.S. District Court for Southern Florida unsealed a lawsuit that Dell filed in October. See story here: Dell Takes Cybersquatters to Court. The cybersquatting/typosquatting lawsuit is unique in that they are going after several registrars as being “responsible for registering and profiting off of nearly 1,100 domains that were “confusingly similar” to Dell’s various trademarks.” In the suit they allege that the companies earn “millions of dollars from Internet traffic intended for Dell and dozens of other Fortune 500 companies.” For me, this is the best case this year.

Red Hot Chili Peppers vs. Showtime in Californication Showdown

The band the Red Hot Chili Peppers have sued Showtime Networks for their use of the word “Californication” as the title of one of their shows. It was also the name of RHCP’s 1999 album and song. Claims are being made under federal trademark law and state unfair competition law. There are a number of issues her that could go both ways, but what I found amusing is singer Anthony Kiedis’s statement that:

“Californication’ is the signature CD, video and song of the band’s career.”

I always thought that it was John Frusciante’s guitar in Under The Bridge and Give It Away and the wise hand of Rick Rubin on Blood Sugar Sex Magik that put the band on the map and everything good since has been trying to recapture the feel of those songs. But then again, I became an attorney, so what do I know. Kiedis say’s that Californication is everthing that the band is or has been and I will have to take him at his word.

Full story here and Here.

Complaint here.

And for those who need a history lesson, Californication is a word coined to describe out of control urban sprawl, as noted in this 1972 Time Magazine article:

“Legislators, scientists and citizens are now openly concerned about the threat of “Californication”—the haphazard, mindless development that has already gobbled up most of Southern California.” 

Album info at Amazon

Show info at Showtime.

Arkansas IP Litigation Cases for the Week of November 3, 2007

C.B.C. Distribution and Marketing, Inc. v. Major League Baseball Advanced Media, LP. – Affirmed on appeal; Player names and statistics are in the public domain

Monday, the 8th Cir. affirmed U.S. District Court Judge Mary Ann Medler’s ruling last year in C.B.C. Distribution and Marketing, Inc. v. Major League Baseball Advanced Media, LP. At issue was a purely contractual issue, which we don’t care about here (CBC had a contract with MLB to use players names and stats. When it ended they kept using them), and an issue over the use of the names and likenesses of players, which we very much care about. At issue was whether CBC needed to pay Major League Baseball (or the MLB Players Association) for the use of player’s names and statistics. Last year, the district court said no – that the First Amendment trumped any right of publicity claim the players might have.

On appeal the 8th Cir. first laid out the elements of a right of publicity claim under Missouri law:

In Missouri, “the elementsof a right of publicity action include: (1) That defendant used plaintiff’s name as a symbol of his identity (2) without consent (3) and with the intent to obtain a commercial advantage.”

While the district court found that all the elements of a claim had not been met, here the court held that all three elements were met, and so CBC’s use did support a right of publicity claim. The Court found that there was no consent and, differing from the district court, that the names were being used as a “symbol” of the player’s identities. Here the Court found that while the commercial advantage was not of the type to be included in a right of publicity claim, CBC still derived commercial advantage:

CBC’s use does not fit neatly into the more traditional categories of commercial advantage, namely, using individuals’ names for advertising and merchandising purposes in a way that states or intimates that the individuals are endorsing a product. . . .

Because we think that it is clear that CBC uses baseball players’ identities in its fantasy baseball products for purposes of profit, we believe that their identities are being used for commercial advantage and that the players therefore offered sufficient evidence to make out a cause of action for violation of their rights of publicity under Missouri law.

The Court’s court’s decision helps us all for recent precedent on the First Amendment preempting the type of right of publicity sought to be protected in this case. In doing so it cited to the Supreme Court’s decision 1977 decision in Zacchini v. Scripps-Howard:

The Supreme Court has directed that state law rights of publicity must be balanced against first amendment considerations, see Zacchini v. Scripps-Howard Broad., 433 U.S. 562 (1977), and here we conclude that the former must give way to the latter.

However, in the end, though, the Court talked so much about the “public value of information about the game of baseball and its players” because baseball is “the national pastime” that any value on the First Amendment issue may have been reduced to the facts of this case.

After affirming the contract dispute (there was a dissent on this issue) the 8th Cir. affirmed the district court’s decision. 

Note to students. This case was affirmed on, arguably, different grounds than the district court’s decision and was an appeal from a grant of summary judgment. This case was won and lost on the merits of the arguments contained in the brief’s.

Apologies to Judge Arnold, who wrote this opinion. I typically praise his writing. But knowing he is a baseball fan, I think the subject was too tempting to pass up, and so the precedential portion of the opinion is chock full of information that only serves to reduce its long term value. I will, however, look for you at the next Traveler’s game.

Additional Material:
USA Today story,
Bloomberg story
full text of C.B.C. Distrib. and Mktg., Inc. v. Major League Baseball Advanced Media, L.P., 443 F. Supp. 2d 1077 (E.D. Mo. 2006), and
full text of C.B.C. Distrib. and Mktg., Inc. v. Major League Baseball Advanced Media, L.P., Nos. 06-3357/3358 (8th Cir, Oct. 10, 2007).

Lance Armstrong Foundation v. Ohman et al: We own the color yellow!

Lance asserts ownership of the color yellow, in combination with any word ending in “strong.” Lance Armstrong’s Foundation has sold over 70 mil. of those yellow LiveStrong wristbands for $1 each. And, they are trademarked. No surprise then that they had a problem with the Animal Charity Collar Group, Inc. for their yellow dog collars with either BarkStrong or PurrStrong on them.

In the suit the foundation asserts that the collars “are confusingly similar to, and are likely to cause confusion, mistake or deception” regarding their source of origin.

The foundation wants Animal Charity Collar Group to stop using the phrases, the yellow bands and the Web site The lawsuit also seeks to have Animal Charity Collar Group’s Purrstrong trademark canceled and the pending application for the Barkstrong trademark canceled, in addition to unspecified monetary damages.

Full story at Lance Armstrong Foundation sues Oklahoma pet collar company.

Arkansas IP Litigation Cases for the Week of October 6, 2007

The U.S. District Courts for the Eastern or Western District of Arkansas was chosen as the forum for litigating the following case(s), as published by Justia:

  • Thirty Eight Street Inc et al v. Bajrang LLC, No. 07-920 (4:2007cv00920) (E.D. Ark., filed Oct. 2, 2007)

    Thirty Eight Street brought suit against Bajrang for trademark infringement. Thirty Eight Street licensed the name “Best Value Inn” to Bajrang. When the license was terminated, Bajrang continued using the trademark. Complaint contains six claims (including one for Intentional Interference with Prospective Business Relations), but it is the infringement of a registered trademark that has teeth.

    Kevin Lemley, who was my IP Law professor, has a copy of the complaint up on his blog, the Arkansas Business Litigation Blog.


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