Internet and Intellectual Property Alert (Winter 2007)

Tressler, Soderstrom, Maloney & Priess, LLP
Internet & Intellectual
Property Law Update
January 2007
Jacqueline A. Criswell, Editor
Chewy Vuiton Dog Chew Toy Is
Permissible Parody
Louis Vuitton, a maker of luxury luggage and handbags that
use an interlocking “LV” monogram as a trademark, sued
Haute Diggity Dog for trademark and copyright infringement
and trademark dilution. Defendant makes plush stuffed dog
toys and beds that parody the products of other companies
and use names such as Chewnel #5, Dog Perignon and
Chewy Vuiton. The product at issue is defendant’s plush dog
toy shaped like a purse and bearing the logo “Chewy Vuiton.”
With respect to the trademark infringement claim, the Virginia Federal Court granted summary judgment in favor of
defendant, relying on Tommy Hilfiger Licensing, Inc. v. Nature Labs, which has analogous facts. The Hilfiger court
dismissed the infringement claim, finding use of the name “Timmy Holedigger” for a brand of pet perfume was a
permissible parody of the Hilfiger name. While the Louis Vuitton court found that the Vuitton trademark is very strong, it
concluded that this strength makes it unlikely that a parody involving a pet chew toy will be confused with the real product.
The marks and trade dress are similar enough for the average consumer to recognize a humorous association with the
Vuitton mark without confusing the pet toy with a real Vuitton product. Other factors it considered include: (1) while
Vuitton makes high end pet collars and leashes that sell for $215-$1,600, the Chewy Vuiton line is priced below $20, (2)
Vuitton sells exclusively through its own boutique stores or boutiques in department stores while defendant’s products are
primarily sold in retail pet stores and (3) there was no evidence of actual confusion.
This case is also the first in the country to test the revised Federal Trademark Dilution Act that went into effect in October,
2006. The revised statute benefits companies trying to protect their trademarks by requiring a plaintiff to prove only a
likelihood of dilution, rather than actual dilution. The court found that there was no dilution by blurring since the parody
made it obvious that the defendant intended the public to associate the use with the true owner. The court also concluded
that the Chewy Vuiton parody constituted fair use, a defense to copyright infringement. Louis Vuitton plans to appeal.
Louis Vuitton Malletier v. Haute Diggity Dog, 2006 WL 3182468 (E.D. Va.).
Congress May Pass Law Providing Copyright
Protection For Fashion Design
Congress recently held hearings on the Design Piracy Prohibition Act, which would amend the U.S.
Copyright Act to provide copyright protection for fashion designs. While clothing designers are
often involved in litigation to protect their trademarks from counterfeiters, the designs themselves
usually are not copyrightable. The proposed Act has garnered support in the fashion industry
due to the increased sale of knockoffs and counterfeits that are almost impossible to police. An
exception is when the company trademark is used throughout the design, such as Chanel’s double
C logo. The proposed Act defines apparel as men’s, women’s or children’s clothing, including
undergarments, outerwear, gloves, footwear and headgear; handbags, purses and tote bags; and
belts and eyeglass frames. Under the Act, registered fashion designs could receive protection for
three years and an infringer would be liable for the greater of $250,000 or $5 per copy.
Design Piracy Prohibition Act – H.R.5055.
Tressler, Soderstrom, Maloney & Priess, LLP Copyright 2007
January 2007
Possible Class Action Against Grand Theft Auto
Video Game For Hidden Sexual Content
The plaintiff sued Take-Two Interactive Software, Inc. in New York Federal Court,
accusing it of deceiving the Entertainment Software Ratings Board (ESRB), which
issued a no sexual content rating to its “Grand Theft Auto: San Andreas” video. Plaintiff
alleges that she bought the game for her grandson and was unaware of the hidden
sexually explicit scenes that can be accessed by children using software available
over the Internet. Plaintiff seeks to represent a nationwide class of all consumers who
purchased the video game since its introduction. The Complaint seeks compensatory
and punitive damages for consumer deception and false advertising in violation of New
York statutes, along with common law fraud and unjust enrichment. The case has been
consolidated with three others from New York and one from Illinois.
This is only one of a number of lawsuits relating to intellectual property rights and the
Grand Theft Auto video game. The November 2006 Update featured a lawsuit brought
by The Play Pen Gentlemen’s Club alleging trademark infringement as a result of the
game’s use of the term “The Pig Pen,” a fictitious strip club featured in the game.
In Re Grand Theft Auto Video Game Consumer Litigation (S.D. N.Y).
Back To The Future
Old Websites Available From Archive.org
And Google Cache
Although a website owner removes content from its website, the removed
material might still be viewable by Internet users. At least two popular
Internet websites, www.archive.org (“Archive.org”) and www.google.com
(“Google cache”), now allow computer users to view non-current versions
of websites. For example, versions of McDonald’s website dating back to
1996 are viewable from Archive.org. Should a website owner want an old
version of its website removed from either Archive.org or Google cache, it
can follow instructions on each site for doing so.
The availability of old versions of websites is significant from a litigation
standpoint. If an issue arises regarding statements or representations
made on an old website, a party can attempt to use the old version of the
site as evidence. The case law on admissibility of such sites is not yet well
formed. Some cases require an affidavit from a representative of Archive.
org or Google cache to properly authenticate the site. In Telewijza Polska
USA, Inc. v. Echostar Satellite Corp., 2004 WL 2367750 (N.D. Ill. October
15, 2004), defendant sought to have admitted into evidence a 2001 version
of plaintiff’s website that it retrieved from Archive.org. Plaintiff moved
to bar the admission of the website, arguing that it was hearsay and was
not properly authenticated. The court concluded that the website was
not hearsay because it was an admission of a party opponent. The court
also concluded that the website had been properly authenticated because
defendant had attached an affidavit from a representative of
Archive.org stating that it had retrieved the website as it appeared on the
date in question.
The ability to obtain long deleted websites of an opponent can be extremely
valuable in trademark cases to demonstrate the date of first use.
Tressler, Soderstrom, Maloney & Priess, LLP Copyright 2007
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January 2007
Evel Knievel Sues Rapper for Infringing
“Evel Kanyevel” Character
Retired daredevil Robert Craig “Evel” Knievel has filed suit against rap star Kanye West and his
record labels, asserting claims for trademark infringement and dilution, unfair competition and rights
of publicity as a result of West’s portrayal of daredevil “Evel Kanyevel” in his video for the song
“Touch the Sky.” Evel Knievel owns a federal trademark in his name. According to the Complaint,
Knievel’s public performance attire, consisting of his “world-famous personalized white jumpsuit, with
‘V’-shaped blue stripe emblazoned with white stars in the middle and red piping on each side on the
front of the jacket…and oval ‘EK’ belt buckle, is instantly recognized by millions of people…worldwide.”
Knievel also claims the jumpsuit has acquired secondary meaning and sales of Evel Knievel
merchandise exceed $300 million.
In West’s video, his Evel Kanyevel character wears a jumpsuit that is virtually identical to Knievel’s
and features Kanyevel riding a vehicle in an attempt to jump over a canyon that, according to the
lawsuit, mimics Evel Knievel’s “world famous attempt to jump the Snake River Canyon.” The case
is pending in Florida Federal Court.
Most Cell Phone Ringtones Are Subject To A
Compulsory License
The Recording Industry Association of America, Inc. (RIAA) submitted two novel questions of law to the
Register of Copyrights: (1) Does a cell phone ringtone qualify as a digital phonorecord delivery (DPD)
subject to statutory licensing under Section 115 of The Copyright Act, regardless of whether it is a single
melody line, both melody and harmony or a digital sound recording and (2) If so, what are the conditions for
such statutory licensing.
RIAA argued that ringtones are digital phonorecord deliveries and subject to statutory licensing because in
general, they contain no original material, are not protectable as derivative works and thus cannot infringe
on derivative works of others. Copyright Owners argued that all ringtones should be excluded from the
statutory license section of the Act because they are derivative works.
The Register of Copyrights ruled that ringtones meet the definition of DPD set forth in The Copyright Act.
Section 115 applies to all ringtones, including mastertones that are simple excerpts of the underlying
musical work, ringtones (monophonic, polyphonic and mastertones) that are adjudged to be derivative
works and those ringtones that do not change the basic melody or fundamental character of the work. If the status of a
ringtone is unclear, a judicial determination may be necessary.
In general, a ringtone will fall within the scope of the compulsory license unless it so altered the musical composition as to
constitute a derivative work. Simply excerpting a single portion of a licensed sound recording of a musical composition will
not constitute the making of a derivative work. Thus, many ringtones will fall within the scope of the Section 115 license
and the Copyright Royalty Judges must determine royalties payable for the making and distribution of ringtones under the
compulsory license.
In Re Mechanical and Digital Phonorecord Delivery Rate Adjustment Proceeding, (U.S. Copyright Office).
Tressler, Soderstrom, Maloney & Priess, LLP Copyright 2007
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January 2007
Mariah Carey Challenges Porn Star’s
Trademark Application
Singer Mariah Carey is opposing the federal trademark application of porn star and former
California gubernatorial candidate, Mary E. Cook, to register her stage name “Mary Carey.” The
singer argues that “Mary Carey” is too similar to her federally registered “Mariah Carey” marks
and that the applicant intends to use her “Mary Carey” mark on similar goods. She also argues
that the application falsely suggests a connection to Mariah and that the use of “Mary Carey”
dilutes the “Mariah Carey” marks.
If you have any questions concerning this update or TSM&P’s Internet & Intellectual Property Practice Group,
please contact Practice Group Leaders:
Jacqueline A. Criswell
312/627-4003
jcriswell@tsmp.com
James K. Borcia
312/627-4104
jborcia@tsmp.com
Tressler, Soderstrom, Maloney & Priess, LLP
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This update is for general information only and is not intended to provide, and should not be relied on for, legal advice in any particular circumstance or fact situation. The reader is advised
to consult with an attorney to address any particular circumstance or fact situation. The opinions expressed in this update, if any, are those of the author and not necessarily of Tressler,
Soderstrom, Maloney & Priess, LLP or its clients.
Tressler, Soderstrom, Maloney & Priess, LLP Copyright 2007
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