By Saibra Noel
On January 5, 2018, Vlada Haggerty filed suit in the United States District Court of the Central District of California against Makeup Forever, LLC (hereinafter “MUFE”) alleging trademark infringement for the lip art MUFE used for their “Lustrous” makeup collection.
Vlada Haggerty is a makeup artist and lip art extraordinaire who gained recognition in the beauty industry from sharing her unique makeup art on Instagram. Ms. Haggerty specializes in providing phenomenal makeup application services, photography services, and creating innovative makeup looks. She is most known for her iconic dripping rose gold lip art which she now uses as a trademark for her corporation, VLADAMUA, LLC. Ms. Haggerty’s dripping rose gold lip art was officially registered with the USPTO on September 26, 2017 with the first use in commerce listed as May 12, 2015. In Mid-September 2017, MUFE launched their “Lustrous” makeup collection featuring dripping lip art in the color rose gold on the packaging. Although the images are not identical, they are similar enough for Ms. Haggerty to bring this action against MUFE.
The complaint filed on behalf of Ms. Haggerty has a strong argument for proving MUFE had actual knowledge of Ms. Haggerty’s trademark and that there is a strong likelihood of confusion. Regarding actual knowledge, MUFE reached out to Ms. Haggerty in September of 2016 and in January of 2017 to ask her if she would like to collaborate with them on a collection they planned to launch in 2017. In these emails, MUFE expressed great admiration for Ms. Haggerty’s work and stated they had been following Ms. Haggerty’s page for some time. This information precludes MUFE from claiming they did not have actual knowledge of Ms. Haggerty’s iconic rose gold lip art. Regarding likelihood of confusion, the complaint illustrates the likelihood of confusion through consumer comments on instagram. There are several instances where consumers have asked Ms. Haggerty if she collaborated with MUFE to create their “Lustrous” collection. This shows that consumers are in fact confused about the source of the products and believe Ms. Haggerty was involved with the MUFE collection.
I am interested in seeing how this case will play out. Ms. Haggerty is an independent, instagram makeup artist and I am excited to see her taking on such a major corporation to defend her intellectual property rights. There are many corporations who scour social media feeds for ideas to make their marketing campaigns without crediting or getting permission from the artists they rip off. A victory for Vlada Haggerty is a victory for all makeup artists, and creatives in general, who have been victimized by large corporations.
The complaint can be viewed at: https://smcarthurlaw.com/wp-content/uploads/2018/01/MUFE-Complaint-Exhbits_.pdf
Vlada’s trademark is pictured on the left. MUFE “Lustrous” logo is pictured on the right.
Coca-Cola, “Just Do It”, and The McDonald’s Golden Arches immediately come to mind when we think of trademarks. Traditionally, trademarks consist of words , graphic elements, or a combination of the words and the graphics However, a trademark can be almost anything, as long as it is capable of identifying and distinguishing a particular individual or company as the source of goods or services. Over the last 20 years, the USPTO has seen an increase in applications for non-traditional marks such as scents, touch, sounds, fluid marks, color, and movement.
In 2006, the iconic two-strike "chung chung" sound at the beginning of Law & Order received a sound mark. In 2008 and 2010, Music Legend Stevie Wonder successfully registered touch marks for apparel and entertainment performances with the wording “a wonder summer’s night” or “Stevie Wonder” written in Braille. In 2014, the University of Arizona successfully registered a Sensory Mark for the chant “Woooooooo. Pig. Sooie!”. On May 18, 2018, Play-Doh joined a small group of 13 active registrations when it received a trademark registration for its scent.
Successfully registering non-traditional marks can be an arduous process. The key to successfully registering these types of marks are to be precise, demonstrate that the mark has acquired distinctiveness, collect evidence, and show that the mark is not functional.
When registering a non-traditional mark, it is important that the applicant describe and the mark very clearly and precisely. For example, the two-strike "chung chung" sound for Law & Order is described as: “two musical notes, a strike and a rapid rearticulation of a perfect fifth pitch interval, which in the key of C sounds the notes C and G, struck concurrently”.
The primary impediment that many non-traditional marks face is demonstrating that the proposed mark is in fact distinctive. The USPTO may look to see if your mark has acquired secondary meaning in commerce. This means that the applicant must show that consumers connect the individual or company’s non-traditional mark as a source identifier for the goods and services it offers in commerce.
Play-Doh demonstrated that consumers identify their product with the “sweet, slightly musky, vanilla fragrance” because they were in the market for decades. The company submitted articles from various sources that described the distinctiveness of the toy’s aroma. For most companies, who do not have this type of information, they may have to generate evidence of consumer perception through conducting surveys. Additionally, it is in the individual or company’s best interest to focus on the “non-traditional” aspect of their product in their promotional materials and advertisements.
Similar to traditional trademarks, non-traditional marks cannot be functional. The mark cannot be essential to the use or purpose of the product, enhance the feature of the product, or affect the cost or quality of the product.
This country has just finished fighting one of its toughest battles: the confirmation of Judge Brett Kavanaugh. As you may be aware, Judge Kavanagh was accused of sexual assault by Dr. Christine Brinkley Ford during their high school careers. Dr. Ford vividly remembers the details of this event (Judge Kavanaugh denies any such occurrence) and recollects that the Judge and his friends were under the influence of alcohol during the high school party where her assault took place.
In an “attempt” to investigate this matter from more than 30 years ago the Senate judiciary held a hearing for both Dr. Ford and Judge Kavanaugh. During Dr. Ford’s testimony, she was clear about what happened, clear about the impacts that the assault had on her life, and straight forward in answering all of the questions being posed. During Judge Kavanaugh’s testimony it was obvious that the impact of this testimony was having a tremendous effect on the Judge and his family, that he was well educated and would never act in the manner accused, and that he liked beer. Beer became a huge topic of conversation during this hearing.
One would never think that a woman’s sexual assault, a supreme court justice, intellectual property and beer would come to a meeting point but here we are, in 2018 where nothing seems out of the ordinary. Back to beer. During Judge Kavanaugh’s testimony he referred to beer several times. On the same day as his testimony, a Brian William Chinavare, an Ohio resident filed a TEAS Plus application for the mark “Kavanaugh Beer.” Given that Kavanaugh’s name is within the trademark section 813 of the Trademark manual requires: 1) a statement that the living person has given consent on record and 2) written consent signed by the living individual whose name is being used in the mark.
If I had to guess, I’d assume that Judge Kavanaugh would not give consent for his name to be used in this way (but again, it is 2018). It is likely, that the application that Chinavare has filed will be rejected unless he is able to get consent from Judge Kavanaugh. Section 2(c) of 15 U.S.C. §1052explicitly states:
No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it consists of or compromises a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow.
In addition, the fact that Chinavare’s application only includes Kavanaugh’s last name and not his full name would not grant him registration without consent. Section 2 (c ) applies to shortened names, last names, nicknames, etc. where the individual is closely connected with the business where the mark is used or so closely connected that a connection could be assumed.
What a world we live in, right?
In recent years, there have been a number of cases brought in federal courts regarding the unauthorized use of graffiti art in advertising. In the 2014 case, Anasagasti v. American Eagle Outfiters, Inc., well-known Miami street artist David Anasagasti sued American Eagle for copyright infringement alleging unauthorized use of his signature “droopy eyes” in their global store displays and website. Italian brand Robert Cavalli was also sued in 2014 by Californian graffiti artists for using their work on the Just Cavalli clothing line. In 2018, Jason Williams, a Brooklyn moralist, sent a cease-and-desist letter to H&M for using his moral in their ads. H&M filed suit (which was later withdrawn) asking the court to declare that Jason Williams had no copyright to assert because his art was a criminal act. More recently, the Southern District of New York dismissed Gayle’s alleged copyright infringement case concerning a shot of graffiti on a dumpster that appeared in the HBO series Vinyl. The court ruled that the graffiti was never fully visible, let along legible and was there for de minimus.
When I first discovered this issue, I immediately thought of the trademark law implications that arise from these situations and whether the artists are successful – or not – in bringing trademark claims as well. I noticed that most of these cases have been brought under copyright claims; nonetheless, street artists are also filing claims under §43(a) of the Lanham Act for trademark infringement. However, courts are reluctant to grant trademark protection since expressive works are traditionally protected under copyright law. Most street artists, as opposed to creators of “fine art,” use marks in a trademark manner to build reputations and identify the source of their works. However, their claims of trademark infringement are often dismissed.
As I continued to research the impact of trademark law on the protection of graffiti art, I came across 2017 Boston College Law Review article “Get Your Own Street Cred: An Argument for Trademark Protection for Street Art” by Danielle Crinnion. In the article, Crinnion provides the transformative history of graffiti to “street art,” while also proposing three possible alternative interpretation of trademark law that should be adopted to provide street artists with protection against potential infringement.
Crinnion explains the evolution of graffiti culture’s association with a wide spectrum of positive, but mostly negative imagery, such as drugs, crime, music, and gangs. Street art, however, is becoming an accepted form of art as its departure from negative associations has dramatically increased. Furthermore, Crinnion explains street art’s deep roots “in the culture of tagging, in which a writer’s status within the tagging community depends on the repetition of their tag on public walls.” This manner of artistic branding establishes that street art is “uniquely situated for trademark protection.” However, many street artists veer away from commercialization and avoid the confines of galleries and museums. Thus, the connection to non-commercialization creates challenges for street artists claiming trademark rights under §43(a) of the Lanham Act, which requires that marks are used in commerce in connection with offered goods/services to qualify for federal protection against infringement. However, street art’s ties to the art world and increased commercial value has made it more attractive to companies who want to use graffiti and the artist’s reputation to increase their own street cred. Crinnion expresses that retailers sometimes seek approval from artists to use their marks or enter into collaborations, but there are times when brands use street art without consent. It is in situations like this where street artists fight back to protect their intellectual rights against infringing brands and are assisting in this battle by the courts. For example, the court in Craiglist Inc. v. 3Taps Inc. discussed the uniqueness of street art compared to other fine art forms. Additionally, the court found that both copyright and trademark violations may exist simultaneously when the use of a mark causes customers confusion and diminishes the mark’s value. In the same case involving the Just Cavalli clothing line (Williams v. Cavalli), the court held that the street artists had a valid claim of trademark infringement against Cavalli for misrepresenting to the public that its collection was being produced by or in association with the artists. However, Crinnion cites several cases where street artists have not been able to claim use in commerce through connections with collaborations and other avenues, resulting in the dismissal of their claims.
In the remainder of her article, Crinnion explains that the solution to this problem of federal trademark protection for street artists in centered around an “[re]interpretation of trademark law that protects consumers from market confusion and protects artists from the misuse of their marks.” First, Crinnion examines the increased popularity of street art and its connection to infringement for likelihood of confusion under §43(a) of the Lanham Act. Under the current case law, Crinnion states, graffiti writers and street artists who do not commercialize through the sale of merchandise featuring their mark as a source identifier or by participating in collaborations with commercial brands are left without trademark protection. Thus, Crinnion proposes that the requirement should be interpreted broadly to allow street artists the opportunity to bring trademark infringement claims against infringing retailers based on non-commercialized street art’s commercial value and heightened recognition of the artists (or street art itself) by the public. Moreover, its growing popularity increases the likelihood that a consumer will assume that a retailer’s use of a street artist’s signature artistic element indicates some sort of collaboration, and ultimately public confusion – the exact misperception the Lanham Act was enacted to mitigate.
Secondly, Crinnion relied on the 2001 Eleventh Circuit case Planetary Motion, Inc. v. Techsplosion, Inc. to examine the alternative standard to distinguish street art from other forms of art. Crinnion suggested that classifying street art as a charitable activity – distinguishable from other visual art forms for its aim to beautify or provide a free product to the community – would make it eligible for protection. Furthermore, Crinnion states that street art is additionally distinguishable because “stylistic elements do not merely function as the work itself because they also serve as marketing tools.” Street artists rely on repetitive stylistic elements to establish their brand and acquire respect and notability in their community and beyond. Moreover, Crinnion recognizes the distinct rights created by copyright and trademark law that “warrant simultaneous protection” based on the situation; however, she states that copyright law may simply protect a creative work. It does not protect a street artist’s right to control the goodwill surrounding mark – a distinct right that leads to distinct damage remedies street artists should be entitled.
Lastly, Crinnion states that the “use in commerce” requirement under §43(a) should be supplemented by Congress with a fame requirement similar to the rules of §2(a) that protect famous individuals from marks registered by third parties that falsely suggest connections to that person. Moreover, Crinnion proposes that street artists should not be required to prove commercialization to be eligible for trademark protection under §43(a). As Crinnion explains, a narrow reading of the Commerce Clause requires non-commercial activity to have a direct effect on the economy in order to be regulated by Congress. Under these standard, Crinnion states, it is difficult for non-commercial street art to satisfy this requirement. On the other hand, Crinnion also recognizes the challenge in proving the use of a street artist’s signature, signature style, or pseudonym in a type of commerce that lawfully regulated under the Commerce Clause. Nonetheless, Crinnion suggests that a broad interpretation of the Commerce Clause would allow street art to qualify as “use in commerce” since it is an activity that substantially affects commerce.
What do you think about Crinnion’s suggestions? Do you think they will provide artists with a better chance to file successful claims of trademark infringement? Are there any other suggestions would effectuate such a goal? For access to Danielle Crinnion’s Boston College Law Review article, please visit: https://lawdigitalcommons.bc.edu/cgi/viewcontent.cgi?article=3552&context=bclr.
Who is Colin Kaepernick? Colin Kaepernick is a former NFL Quarterback for the San Francisco 49ers. During the 2012-2013 NFL season, he became known in the sports world when he led the 49ers to Super Bowl 47. Unfortunately, they lost to the Baltimore Ravens 31-34.
During the 49ers’ third preseason game of the 2016 season, Kaepernick became nationally known beyond the sports world when he was noticed sitting down through the playing of the National Anthem. During a post-game interview, he explained that “I am not going to stand up to show pride in a flag for a country that oppresses black people and people of color. To me, this is bigger than football and it would be selfish on my part to look the other way. There are bodies in the street and people getting paid leave and getting away with murder.” After a discussion with former NFL player and U.S. Military veteran, Nate Boyer, Kaepernick switched to kneeling to give more respect to former and current U.S. military members.
Consequently, Kaepernick’s kneeling became highly controversial. The country took a stance on either supporting or not supporting Kaepernick’s actions. As a result of Kaepernick’s actions, he went unsigned throughout the 2017 season leading to allegations of being blackballed. Kaepernick claimed that he was unsigned due to his on-field political actions as opposed to his performance on the football field. Fortunately, Nike decided to partner with Colin Kaepernick and included Kaepernick in its 30th Anniversary ad of its Just Do It slogan on September 5th, 2018, which was the opener of the NFL 2018-2019 season.
On Friday, October 5th, Colin Kaepernick and his company, Inked Flash, filed an application with the United States Patent and Trademark Office to trademark his face. The trademark is an image of his face and will be used on various items such as shampoo, hairspray, jewelry, lampshades, cell phone cases and clothing. Kaepernick wants to use the image in association with “providing classes, workshops, seminars and camps in the field of self empowerment and awareness to properly interact with law enforcement.” Kaepernick also wants to “provide a website featuring information about education, social activism, self-empowerment and awareness.” As well as in association with “production of televisions shows and films.” The entire application includes 17 classes.
While there still remains controversy over Kaepernick’s actions, it can be said that Kaepernick represents an individual who believed in something by sacrificing everything.
Idia M. Egonmwan
And so, it began: Adidas and Forever 21 have entered into what seems to be a saga-like series of litigious events. Adidas is a German-based athletic brand, founded in 1949, and known for its Three-Stripe Mark. With over 2000 stores worldwide and 30 American stores, Adidas is no stranger to being on either end of intellectual property related lawsuits (think Skechers, Nike, and Under Armour). In 1984, California-based Forever 21 enters the retail market, garnering fame and a (some would say) cult-like following due to its trendy apparel offerings and low pricing. With over 600 stores worldwide, with 500 of those in the United States, Forever 21 has also seen its fair share of intellectual property-related lawsuits.
In May of 2015, Adidas filed a multimillion-dollar lawsuit against Forever 21. Adidas claimed Forever 21 intentionally adopted and used counterfeit and/or confusingly similar imitations of the Three-Stripe Mark. Adidas claimed that Forever 21 is misleading and deceiving consumers into believing the apparel’s source was Adidas. In a very surprising turn of events, however, Adidas filed to voluntarily dismiss the lawsuit, settling out of court. Sounds pretty settled, correct? Not a chance. Enters Forever 21.
In February of 2017, Forever 21 received a letter from Adidas’ counsel threatening to sue Forever 21 over it use of stripes on clothing. Forever 21 further claimed that it has repeatedly fallen victim to multiple similar threats by Adidas. According to Forever 21, Adidas has developed a pattern of complaining about striped apparel sold by Forever 21 since 2006; the threats have gradually increased to include virtually any apparel with three stripes. In an exhaustive effort to settle the matter once and for all, Forever 21 filed a declaratory judgment action against Adidas in March of 2017, asking a California district court to declare that it was not infringing on Adidas’ mark. In response to Forever 21’s action, Adidas filed its own action: a trademark infringement suit, claiming that Forever 21 has offered repurposed Adidas products on its website. In a surprising turn of events, that same month (March 13th to be exact) Forever 21 moved to voluntarily dismiss its declaratory judgment suit against Adidas. In response to Adidas’ suit, Forever 21 filed a motion asking for the court to order Adidas to provide a more definite statement of Adidas’ claim. True to form, however, In December of 2017 Adidas agreed to an out of court settlement.
While the details of the settlement have not been disclosed, a quick search on Forever 21’s website reveals none of the apparel Adidas alleged to be infringing on their Three-Stripe Mark. It seems safe to say that to Adidas go the spoils...for now.
The United States Patent Trademark Office (USPTO) registers trademarks, however, it will not enforce a registration—that is your responsibility. There are several ways an owner can protect their mark. For example, an owner could monitor filing on the USPTO website and challenge applications that threaten their mark. In the event an owner becomes aware of another use of the registered trademark, a “cease and desist” letter will likely stop an infringer. If that doesn’t work an owner can take it to court. It is smart to be proactive in enforcing your protections. However, an important question to ask in every scenario is—are the tactics highlighted above always necessary?
Big Universities spend large sums to protect their mascots, slogans and logs. Profitable universities with unlimited resources like Duke or Alabama will issue cease and desist orders (accompanied with strong threats of legal action) to small businesses they believe threaten their trademark.
In fact, just this year Duke estopped a small California wine company from trademarking Duke’s Folly. Notably, the company solely operates out of California, offers online orders only, and is owned by the Duke family. Duke Univ. claimed that the name would suggest an official partnership between the North Carolina school and the wine company. For the wine company, the best option was to save resources and settle. Duke ultimately permitted the use of Dukes’ Folly as opposed to Duke’s. It is up for debate as to whether or not consumers would assume a partnership existed between the two.
Ultimately, a business with fewer resources was prohibited from utilizing its desired mark and was essentially forced into settlement due to lack of resources. This is only one of many examples of well-funded universities targeting small companies throughout the U.S. for, what some would argue to be, minimal claims.
Many would call this “Trademark bulling.” Defined by the USPTO as the practice of a trademark owner that uses their rights to intimidate another business beyond what the law reasonably permits. However, others argue that this is effective and proactive enforcement of a registration. What do you think?
By Adonne Washington
On October 17, 2018 a lawsuit was filed in the District Court in the Southern District of New York against celebrity and business mogul Rihanna Fenty. Along with Rihanna, the suit also names Puma and Fenty Corp., Rihanna’s brand which she trademarked in 2014. Who could have filed such a suit against one of the world’s largest and well-loved celebrities? Freedom United. Never heard of them? Unfortunately, Rihanna wishes she could say the same thing. Freedom United is a clothing brand who’s IC is similar to that of Fenty, selling men’s and women’s clothing, hats, beanies, scarves, bags, jewelry, art, music, styling products, skin care products, private label beverages, water, energy drinks, and has been developing sandals and flip flops. All of these products, with the exception of the beverages and drinks, are things that Rihanna and Puma have worked together on and independently. The issue here is Freedom United’s registered trademark “FU” and Rihanna and Puma’s Collection which features clothing and shoes bearing the “F.U.” logo. Rihanna and Puma are presented with claims of trademark infringement and unfair competition.
Freedom United has had a registered trademark since 2006 and recently renewed the registration in 2014 upon showing continuous and substantial use of the mark. This lawsuit is claiming that Rihanna and Puma’s physical products are confusingly similar in appearance to Freedom United’s and were only marketed and sold after Rihanna and Puma had actual knowledge of Freedom United’s products and in particular the FU Marks. The owner of Freedom United had been in contact with members of Rihanna’s team, giving them information about the brand and providing them with merchandise which featured the FU mark. Freedom United has also been strategic enough to include Instagram direct messages and text messages between members of Rihanna’s team and inner circle, some of which include photos of these individuals in the FU brand clothing. Freedom United has also hosted and sponsored events which celebrities have attended and Rihanna herself has been invited to; all of this evidence showing that she had actual knowledge of the Freedom United brand and the trademarked logo that they use on their clothing and shoes. Freedom United is seeking injunctive and monetary relief as a result of this lawsuit.
This lawsuit is not the first of its kind; sadly there are many lawsuits between celebrities and smaller business or brands. The lawsuits go both ways, however it is quite often that one will find a celebrity who has stolen some IP from an Instagram business or from a designer who is simply an online individual with limited exposure. For example, Jenner found herself in hot water when she was accused of stealing a design/pattern from PluggedNYC after Jenner’s team had been in touch with PluggedNYC about purchasing some of the products. This systematic issue of celebrities creating brands and taking their “creative” ideas from other brands and designers. One has to believe that celebrities are often times well aware of how much influence they have considering their elevated public status, it makes you wonder if they have the thought of “I don’t care” when they rip-off people knowingly. It will be interesting to see how Rihanna and Puma get out of this lawsuit without paying up and taking down all the “F.U.” merchandise.