Seattle Trademark Lawyer

CHICAGO - In one of the few programs I’ll have time to attend — making and renewing relationships with other trademark practitioners is just too important to pass up — I spent some time today learning more about how different countries approach the right of publicity. The International Trademark Association’s session on the “Right of Publicity Around the World” emphasized that the rights of publicity, privacy, and free speech we recognize in the United States are not necessarily the same rights other countries recognize. Take these cases for example:

• In Argentina, soccer superstar Diego Maradona obtained an injunction enjoining publication of a book titled, “Diego Maradona: The 1000 Most Famous Phrases in His Career.”
• In Germany, Princess Caroline of Monaco won a right of privacy case against the publisher of photos depicting her skiing, horseback riding, and doing other activities in public. The European Court of Human Rights found that the public did not have a legitimate right to know what the princess did in her private life.
• In Spain, a court found that photos depicting celebrities on vacation could not be published without the celebrities’ consent.
• In the United Kingdom, supermodel Naomi Campell prevailed over a British tabloid who published a photograph of her leaving a Narcotics Anonymous meeting.

In each of these cases, the plaintiff prevailed over the publisher. Suffice it to say, the results may very well have been different if the claims had been brought in the United States.

Any chance international courts will evolve into a unified approach to the right of publicity? The presenters believe we’re a long way away from that.

CHICAGO - The International Trademark Association annual meeting continues to grow. This year, more than 8,524 practitioners, academics, and members of the press have gathered at the gigantic McCormick Place convention center in Chicago to schmooze and and stay on the cutting edge of trademark law. According to the INTA Daily News account, INTA’s 129th annual meeting is being attended by 3,584 from the United States, 488 from the United Kingdom, 370 from Canada, 294 from Germany, and 271 from France. Mexico, Japan, Australia, India, Spain, Italy, Switzerland, Brazil, Argentina, the Netherlands, Sweden, Taiwan, the Philippines, and Singapore round out the top 20 most represented countries. In all, attentdees from 140 countries are here. It seems shocking that there are this many of us all in one place.

On April 24, the Southern District of New York revisited Louis Vuitton Malletier v. Dooney & Bourke, Inc., in preparation for the parties’ upcoming infringement and dilution trial stemming from their arguably similar handbags. (Louis Vuitton’s complaint here.) In doing so, the court found the Trademark Dilution Revision Act’s “likelihood of dilution” standard did not apply retroactively to claims for monetary relief. Therefore, it found Louis Vuitton must prove “actual dilution” before it can recover damages. This finding differs from courts’ retroactive application of the TDRA to requests for injunctive relief.

The TDRA states: “In an action brought under this subsection, the owner of a famous mark shall be entitled to injunctive relief as set forth in section 1116 of this title. The owner of the famous mark shall also be entitled to the remedies set forth in sections 1117(a) [providing for damages] … [if] the mark or trade name that is likely to cause dilution by blurring or dilution by tarnishment was first use in commerce by the person against whom the injunction is sought after October 6, 2006….”

Louis Vuitton argued this provision entitles it to recover damages on its dilution claim by proving Dooney & Bourke is using a mark that is “likely to cause dilution.”

The court disagreed. It found: “The second sentence of subsection 1125(c)(5), entitling owners of famous marks to dilution damages, contains an unambiguous date restriction that authorizes the application of the ‘likelihood of dilution’ standard as a basis for recovering damages to civil actions where the dilution mark or trade name was first introduced after October 6, 2006.”

The court added: “Louis Vuitton attempts to evade this express proscription by arguing that ‘the TDRA is ambiguous as to its temporal reach.’ This is nonsense. The language of subsection 1125(c)(5) providing for monetary remedies unambiguously and explicitly prescribes its temporal scope to the day. Congress did not intend that the relaxed evidentiary standard would apply retroactively, and it is difficult to imagine how Congress could have been any clearer on this point.

“Louis Vuitton’s federal dilution claim is not, as Louis Vuitton suggests, ‘extinguished’ if the Court declines to retroactively apply the ‘likelihood of dilution’ standard to its prayer for monetary relief. Rather, the controlling standard is that which governed prior to the TDRA. Accordingly, Louis Vuitton’s federal dilution claim survives, although under the applicable standard, it will not reap monetary remedies absent a showing of actual dilution.”

In the court’s view, the TDRA should be applied retroactively to requests for injunctive relief but prospectively to claims for monetary relief because the first sentence of subsection 15 U.S.C. § 1125(c)(5), which provides for injunctive relief, “lacks any reference to the explicit date restriction contained in the second sentence, which addresses monetary relief.”

The case cite is Malletier v. Dooney & Bourke, Inc., No. 04-2990, 2007 WL 1222589 (S.D.N.Y.).

Seattle mortgage lender Evergreen Moneysource Mortgage Co., Inc., voluntarily dismissed without prejudice its trademark infringement and unfair competition claims today against Puyallup resident Joel Lundberg and others who offer competing mortgage lending services under the “Evergreen Mortgage” trade name and EvergreenHomeLoans.com domain name.

Evergreen’s complaint had alleged that defendants’ use of “Evergreen” infringed Evergreen’s federally-registered trademark, EVERGREEN MORTGAGE.

Interestingly, Evergreen’s complaint states: “Defendant admitted through their attorney, by letter dated October 24, 2005, addressed to a representative of Plaintiff that ‘[t]here is, of course, at least a possibility, if not a likelihood, of confusion among consumers about [plaintiff] Evergreen Moneysource and [defendant] Evergreen Mortgage being one and the same, but we believe that this is more hypothetical than real.’”

Evergreen was able to dismiss its case under Rule 41(a)(1)(i) because it filed its notice of dismissal before defendants served their answer.

The case is Evergreen Moneysource Mortgage Company, Inc., v. Lundberg, et al., No. 07-05127 (W.D. Wash).