Archive for May, 2009
Rebranding is supposed to provoke a response, right? Consumer interest? Marketing awards? A trade-mark lawsuit?
Brick Brewing Co., an independent Ontario brewery, recently rebranded their Red Baron beer, updating the look with a new label, to the right. The old label, at left, was used since the late 1980s and was registered as a trade-mark in 1991.
The new label attracted the attention of rival Labbat Brewing Company and last week Labbat sued for trade-mark infringement and sought an injunction, alleging that the new Reb Baron label was confusing with Labbat’s Brava label (left). The Brava label was also registered as a trade-mark in April, 2009.
Though the word marks RED BARON v. BRAVA, for beer, are not at all similar, the look, colour, and layout of the labels is arguably more similar, since the word Baron is given more prominence in Brick’s new label. This highlights the risks of rebranding. The lessons for business? Sometimes an updated label will be launched without the same level of scrutiny that is given to a new brand. Even with a “soft” launch such as this, trade-mark searches, trade-mark advice and industry awareness can help mitigate the risk of trade-mark disputes before a new brand or label is launched.
And sometimes, you get hit with a lawsuit just because your competitor is your competitor.
Calgary – 10:30 MSTNo comments
In the (now notorious) Colorado case of InfoMedia, Inc. v. Air-O-Matic Inc. (Court Case Number: 1:09-cv-00302-ZLW), two makers of rival iPhone applications are in a trade-mark battle over the use of the phrase “Pull My Finger” in association with an application for the mobile device. InfoMedia uses the phrase “pull my finger” in its marketing and is seeking a declaration that the phrase is generic when applied to the product, and cannot function to distinguish Air-O-Matic. Air-O-Matic counters that InfoMedia is riding its coat-tails by using the phrase. Air-O-Matic has applied for registration of the phrase as a trade-mark, in association with “Computer application software for mobile phones”, though the application is encountering trouble because of the specimen that was filed. (They should have taken a screen-shot from iTunes.) In any event they’re both enjoying some additional press, which may have been the whole point to the dispute in the first place.
Battles between competing iPhone apps will become a feature of the legal landscape, and these cases trace their lineage to the old video-game disputes of the early 1980s:
- Atari Inc. v. Williams, a 1981 case out of California, pitted Atari’s famous Pac-Man against a rival game, Jawbreaker. The court found that the strategy of the Pac-Man game was not protectable.
- Atari Inc v. Tyrom Inc., a 1982 case, decided that rival “Gobbleman” was infringing in its use of characters and design features; Pac-Man won that round.
- Williams Electronics Inc. vs. Artic International Inc. , a 1982 case over the popular game “Defender”, established important principles in video game copyright infringement cases, and specifically determined that a player’s interaction with a game – such that the player is “creating” or “authoring” new scenes as the game is played – does not detract from the copyright protection afforded the game.
We’ve come a long way from Pac-Man… though 25 years later, that game retains a certain diginity when measured against the “Pull My Finger” fart-simulator.
Calgary – 14:45 MSTNo comments
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Calgary – 10:00 MSTNo comments
In the long-running IP battle between Mattel Inc., the makers of Barbie dolls, and MGA Entertainment Inc., the makers of rival Bratz dolls, a California federal court has issued a decision this week that appears to put a nail in the Bratz coffin. The court dismissed MGA’s application to reduce the $100 million damage award granted to Mattel Inc. and went further. The court also implemented the order which bars MGA from making or selling the Bratz dolls. A temporary receiver was also appointed to oversee MGA’s business. The end of the battle appears to be near, through Bratz may still have some fight left. The dispute arose after a designer, while he was under contract with Mattel, designed the Bratz concept, then secretly sold the concept to MGA. The dispute centred on copyright and intellectual property claims that ultimately put the Bratz designs back into the possession of Mattel.
The lessons for business? MGA obviously knew what it was doing, but to avoid the risk of inadvertently importing intellectual property belonging to a competitor, consider special clauses in employment and contractor agreements that can help mitigate the risks of hiring employees or contractors who bring trade secrets or IP with them when they join your company.
Calgary – 11:45 MSTNo comments
It was another long battle for Microsoft, this time against a retail chain in Toronto trading under the banner “PC Village”. In April, a Federal Court judge in Microsoft Corporation v. PC Village Co. Ltd. (2009 FC 401) awarded damages of $10,000 per copyright violation for a total of $150,000; plus $50,000 in punitive damages against all defendants jointly and severally; and a lump sum of $50,000 for solicitor/client costs and disbursements. This means both the corporations and the individual employees are liable for the total award of $250,000.00 in damages. The defendants initially resisted the allegations, retained a lawyer and appeared to mount a defence. Then their defence collapsed, the defence lawyer resigned, and Microsoft won the case.
Calgary – 15:30 MSTNo comments
Two Canadian domain name decisions:
- In the saga of the domain name forsale.ca, another chapter has been written. This domain name was the subject of an earlier battle between Globe Media and the then-owner, Dawn Internet (Globe Media International Corporation v. Dawn Internet Telephony Systems Inc, CIRA Decision 00059 (2006). Globe Media failed in that dispute because any rights it claimed arose after the original registration of the domain name in 2000. The domain name registration then lapsed, and was snapped up by a new registrant in January, 2009. Globe Media offered to buy the domain name for $5,000, but by then the domain name had been flipped and sold to Bonfire Development, Inc. for $30,000. Globe Media launched this complaint in February. The panel found that the domain name “is so clearly generic that its registration cannot be seen as being registered in bad faith.” The complaint was dismissed. Further, the panel awarded costs of $5,000 against Globe Media for “reverse domain name hijacking“, the first award of its kind. Case Decision
- At first glance, this is a case determining that Americans cannot hold dot-ca domain names. In a dispute over the domain name clearlylasik.ca, the complaint was summarily dismissed because the US complainant, who claimed rights to the mark ‘Clearly Lasik’ in Canada and carries on business in Canada under that name, failed to satisfy the Canadian presence requirements. In fact, it appears the complainant does hold a registered trade-mark for CLEARLY LASIK, but failed to submit evidence of this. The complaint would have likely succeeded since there was no response. The disputed domain names now resolve to the Complainant’s site, suggesting that the matter was likely settled after this decision was rendered. Case Decision
Calgary – 10:30 MSTNo comments