Rolling Stone loses Round One in T-shirt case

By Eriq Gardner

A California judge won't dismiss a lawsuit alleging that Rolling Stone magazine violated trademarks and rights of publicity by taking cover images of famous musicians and slapping them on t-shirts.

Live Nation, F.E.A. Merchandising, and Bravado International Group filed the complaint in California district court in October claiming Wenner Media was hawking products featuring Nirvana, Beyonce and other musicians. The plaintiffs, repped by Howard King and his firm, have exclusive licensing deals with the artists and allege unfair competition. 

Not surprisingly, Wenner asserted a First Amendment and fair use defense, saying the merchandise was expressive non-commercial speech part of a "subscription promotion campaign."

Judge Valerie Fairbank ruled yesterday that she needed to see more evidence in the case, including examples of merchandise not submitted by the defendants. The judge also rejected the argument that the lawsuit was inadequately pled.

Here's the ruling.

Rolling Stone also is in the midst of a battle with 185 indie rockers alleging misappropriation of likenesses for featuring a spread entitled "Indie Rock Universe" next to a four-page advertisement for Camel cigarettes.

Which came first, actress Ashley Madison or cheating-spouse website AshleyMadison.com?

By Eriq Gardner

Normally we wouldn't care too much about a cybersquatting claim by a minor actress named Ashley Madison, best known for a brief affair with James Woods and a role on "Entourage." But the countersuit in the case caught our eye.

Last week, Madison sued AshleyMadison.com, a dating website that proudly encourages married individuals to have an affair and has unsuccessfully attempted to advertise during the Super Bowl. (The site recently offered Tiger Woods $5 million to be a sponsor.)

Now the website has reportedly filed a $1 million countersuit against the actress for, ahem, cheating the website's trademark. The site alleges that the actress' real name is Ashley Madison Myrick and she only began using her "stage name" in 2005, three years after the website registered "Ashley Madison" with the U.S. Patent & Trademark Office. Here's the trademark registration. 

Since taking stage names is common in Hollywood, here's some free legal advice: Before changing a name, do a quick search at the USPTO's website.

Why hasn't Fox sued makers of Duff Beer? (UPDATED)

By Eriq Gardner

UPDATE BELOW

If boxing announcer Michael Buffer can sue a Texas radio station for infringing his catch-phrase, "Let's get ready to rumble," surely 20th Century Fox can go after a Mexican individual who has come out with a new version of Duff Beer.

Fox hasn't yet filed a claim against Tijuana-based Simpson's Brewing Company, makers of the new Duff Beer. But we imagine that it's only a matter of time. Fox reportedly once filed a trademark infringement lawsuit against a line of Duff beer in Australia in the late 1990s, and it's been aggressive in cracking down on knockoff "Simpsons" merchandise (although we once bought a remarkably lifelike yet certainly unlicensed Bart Simpson pinata in line at the Mexican border). 

A better question is this: Why hasn't Fox licensed any beverage maker to brew Duff Beer yet? Maybe Fox owner Rupert Murdoch is too busy saving the journalism business to realize there's lots of gold in a marketable Duff Beer product. Or perhaps the company doesn't want to send the message to its younger viewers that it supports unhealthy behavior like beer-drinking. As Homer Simpson once said, "To alcohol — the cause of...and solution to...all of life's problems."

UPDATE: We're not giving Murdoch's lawyers enough credit. We hear Fox has initiated Duff Beer-related legal actions in at least four countries:

In Spain there is a lawsuit pending against a local distributor called Duff Europe-Asia with a trial date set for early 2010.

In Belgium, a suit is pending against a European brewery that was manufacturing Duff Beer.

In Argentina, Fox got a preliminary injunction against local distributors and is moving forward with the lawsuit.

And in Mexico, there is a preliminary injunction in place against a man named Jesus Diaz (and a seizure of offending product was apparently carried out late last week). That's not the same person as Rodrigo Contreras, the Duff brewer in the Financial Times story that prompted this post, but we imagine Murdoch's forces will soon descend on him as well.

Mickey Mouse sues Donald Duck. Yes, really

By Eriq Gardner

If it looks like a duck, swims like a duck, and quacks like a duck, it still may not be a duck.

That's the only conclusion we can draw from seeing that Mickey Mouse has filed a trademark infringement claim against Donald Duck yesterday in Florida Southern District Court. 

Yes, an actual lawsuit was filed by an apparently clever and totally anonymous prankster. 

Mickey Mouse is being represented by Juan Abagado. ("Abagado" means "lawyer" in Spanish.) Donald Duck is being represented by Pluto. And the deputy clerk in the case is Goofy, who has issued the summons.

(Hat tip to Legal Pad.)

Christian publishers battle over 'God's Little Princess'

By Eriq Gardner

When Moses came down from Mount Sinai, he reportedly told his followers, "Thou shalt not covet thy neighbor's goods."

If only Moses could have lived to see a new lawsuit filed in Tennessee district court by Christian publisher Thomas Nelson Inc. against another Christian publisher Zondervan Corp.

Both companies publish Biblical-themed children books and release related products like DVDs, dolls, toys and apparel. According to the complaint, Thomas Nelson hired an illustrator named Meredith Johnson under a work-for-hire agreement to provide illustrations for a successful series entitled "Gigi, God's Little Princess." 

Thomas Nelson alleges that Johnson was not satisfied with her compensation under the agreement and negotiated with Zondervan to illustrate a new series entitled "The Princess Twins." The illustrations were substantially similar, says Thomas Nelson, and as a result, Johnson breached her contract and Zondervan committed intentional interference, copyright and trademark infringement, and unfairly competed in the marketplace.

We're hoping this holy war is resolved before anyone violates other Commandments.

Glenn Beck loses 'raped and murdered' arbitration

By Eriq Gardner

Fox News' Glenn Beck has lost a claim that a website called glennbeckrapedandmurderedayounggirlin1990.com was registered in bad faith and in violation of his trademark rights.

The website was founded by Isaac Eiland-Hall earlier this year in response to a joke on odd-news site Fark about Beck's lack of denial for a non-existent murder/rape. Eiland-Hall argued to WIPO that he registered the website as a satirical critique of Beck's conspiratorial politics.

WIPO's arbitration panel agreed that the website appeared "to be engaged in a parody of the style or methodology that (Eiland-Hall) appears genuinely to believe is employed by (Beck) in the provision of political commentary, and for that reason (Eiland-Hall) can be said to be making a political statement."

The domain name dispute resolution body added Eiland-Hall's speech was "strongly protected" under the First Amendment. Here's the decision.

Having won the case, Eiland-Hall rejoiced by giving the website domain to Beck with a thumb-in-the-nose letter:

"It bears observing that by bringing the WIPO complaint, you took what was merely one small critique meme, in a seas of internet memes, and turned it into a super-meme. Then, in pressing forward (by not withdrawing the complaint and instead filing additional briefs), you turned the super-meme into an object lesson in First Amendment principles...

Rather than choosing to strive for excellence and civic contribution, you simply pander the fears and insecurities of your audience. And in the process, you do them, and us all, a great deal of harm.

Shame on you Mr. Beck..."

The website, glennbeckrapedandmurderedayounggirlin1990.com, is now down.

Disney settles Pixar 'Luxo, Jr.' lamp case

By Eriq Gardner

Anybody who's ever seen an animated film by Disney's Pixar should be familiar with the iconic squeaky desk lamp character featured in the opening credits. 

The character was created by Pixar chief creative officer John Lasseter more than two decades ago for Pixar's first film — an animated short entitled "Luxo, Jr." The short earned an Academy Award nomination, and the character has become an iconic mascot for the studio ever since.

But two months ago, trouble broke out after Disney began selling limited-edition "Luxo Jr." lamps packaged with a Blu-ray version of "Up." There also is a six-foot animatronic version of the lamp at Walt Disney World.

Norwegian lamp-producing giant Luxo AS wasn't exactly turned on by Disney's growing commercialization of the lamp. On September 3, Luxo sued Disney for trademark infringement. saying the sale of Pixar lamps would "cause devastating damage to Luxo and dilute the goodwill which Luxo has built up."

Fortunately, Pixar won't have to turn off the lights on its famous character. 

We've learned that the parties have reach an amicable settlement and the lawsuit has been withdrawn. Disney will stay out of the lighting business, and for now we hear that Luxo doesn't have any problem with "artistic renditions" of the lamp.

Pixar may be off the hook — but what about Luxo, Jr.?

Check out this short film produced two weeks ago by CollegeHumor.com where Jr. gets into criminal trouble and ends up being sentenced by a judge to electrocution. Get it?

Judge blocks Sublime bandmembers from using name

By Matthew Belloni

A Los Angeles judge has shut down an effort by former bandmembers of Sublime to perform under the name.

The preliminary injunction was issued today in a trademark lawsuit brought by the estate of the 90’s ska-punk band's lead singer Bradley Nowell. Nowell died of a drug overdose in 1996, but surviving band members Eric Wilson and Bud Gaugh have continued to perform. For years they played as the Long Beach Dub Allstars but recently they revived the Sublime moniker when they recruited newcomer Rome Ramirez as lead vocalist.

That didn’t sit well with Nowell’s family. In advance of the band’s performance at the Cypress Hill Smokeout Festival, the Bradley Nowell estate and merchandising entity filed a trademark infringement suit on Oct. 21 in U.S. District Court in Los Angeles.

"Prior to his untimely passing, both Bud and Eric acknowledged that Brad Nowell was the sole owner of the name Sublime,” the Nowell family posted on the band’s MySpace page. “It was Brad's expressed intention that no one use the name Sublime in any group that did not include him, and Brad even registered the trademark 'Sublime' under his own name."

Now Judge Howard Matz has agreed with the family, today issuing the injunction citing the estate's likelihood of prevailing on its trademark claim. Matz asked attorneys for the estate—Howard Weitzman, Jeremiah Reynolds and Randall Whattoff of Santa Monica’s Kinsella Weitzman firm—to draw up a written injunction for him to sign.

The injunction, when finalized, will likely block the band from:

• Using the “Sublime” name and trademark (or anything similar) in connection with any live performances or “musical sound recordings;”

• Using the “Sublime” name or trademark on any clothing, posters, books related to music, calendars, decals or stickers;

• Using any Internet domain name containing the “Sublime” name or trademark, or any other confusingly similar domain name.

 UPDATE:

Nowell's family has issued a statement:  "We are gratified the Court ruled in our favor and found that Bud, Eric and Rome could not use the name Sublime without first obtaining permission from Brad's heirs.  We believe this will help protect and preserve Brad's musical legacy."

The band also issued a statement: "Our goal continues to be sharing the music and message of Sublime with all of our fans around the world.  We intend to take the court's advice and work on a business solution to this issue.  We hope the Estate follows suit so the music of Sublime can live on and be accessible to everyone."
 

'Twilight' fans told to stop making Rob Pattinson t-shirts

By Eriq Gardner

When most people think of the intellectual property fights with user-generated content websites, they think of cases like Viacom v. YouTube. Assuming that slow-moving case ever gets to trial, a court will determine what kinds of legal obligations the video sharing website has in policing its network for copyright infringement. 

Here's an interesting new case to watch:

Summit Entertainment filed a lawsuit last week in California district court against print-on-demand merchandising outlet Zazzle.com. The site allows users to upload images and place them on t-shirts, coffee mugs, mouse pads and other items.

According to the complaint, Zazzle's users are stealing "tens of thousands" of trademarked images from its highly successful "Twilight" series, putting them on merchandise, and thus interfering with Summit's exclusive licensing arrangements.

In November, 2008, Summit sent Zazzle a cease-and-desist letter. The studio alleges that Zazzle continues to market and sell these items and that the defendant's conduct constitutes "willful" infringement. Summit seeks an injunction, an accounting, actual damages and punitive damages.

We'll have to wait to see whether Zazzle tries to shift legal responsibility to its users. The website makes its users sign an agreement agreeing not to invade intellectual property rights, threatening to cancel the accounts of those in violation. Interestingly, Zazzle claims that users assign them the rights of images uploaded to the website.

No word, though, on whether the company takes active steps to monitor for infringement, but the website does provide an e-mail address for IP owners to send complaints of misuse.

WWE vs. wine school; trademark smackdown!

By Eriq Gardner

World Wrestling Entertainment has sent a cease-and-desist letter to the Wine School of Philadelphia over a wine series that was to be called "Sommelier Smackdown."

The WWE claims trademark rights to the term "smackdown" and wants to cork the school's attempt to hold a competition that pits a professional sommelier's food and wine pairings against those of a member of the Wine School team.

According to our sober investigative efforts, in August 2005 the WWE filed for a trademark on "Friday Night Smackdown," the show that garners more than 3 million viewers each week. That's three years earlier than the Wine School's registration attempt and also beats Stellar Productions' attempt to trademark "Movie Smackdown." 

Looks like WWE chairman Vince McMahon has an edge in this trademark battle, but perhaps the Wine School can show their mark won't confuse consumers or dilute the WWE mark.

In a press release, Wine School founder Keith Wallace challenges McMahon and WWE superstar Chris Jericho to a wine-tasting double-team cage match, saying, "They don't have a leg to stand on. I am not going to bow down to a bully."