Seattle Trademark Lawyer

Yesterday, The New York Times reported on a lawsuit one restaurant owner instituted against another for copying “each and every element” of her restaurant, including “the white marble bar, the gray paint on the wainscoting, the chairs and bar stools with their wheat-straw backs, the packets of oyster crackers placed at each table setting and the dressing on the Caesar salad.”

The Times goes on to quote celebrity chef Tom Colicchio of “Top Chef” fame (pictured right), who expressed frustration over his perceived inability to stop a sandwich shop from cloning his “Witchcraft” restaurants: “There’s nothing you can do,” he said. “You can’t protect recipes, you can’t protect what a place looks like, it’s impossible.”

Unless you know a trademark lawyer, that is. Here is my partner Bob Cumbow’s (pictured bottom right) take on the issue:

“As I read the story, three issues are raised, one with an easy answer, two others not so.

“1. One of the persons asks, How can you protect the way a place looks? He’s obviously unfamiliar with Two Pesos v. Taco Cabana, in which the U.S. Supreme Court confirmed that trade dress applies to restaurant decor and that it can be protectable even without secondary meaning, as long as it is shown to be inherently distinctive — which is the challenge facing the plaintiff in this case.

“2. Are recipes and menus protectable? Under copyright law, probably not, except to the extent that they embody original expression. Also, a list of items, each unprotectable alone, may be protected as an original selection and arrangement under Feist v. Rural Telephone — but with respect to an oyster house menu this would be a very ‘thin’ copyright, since the offerings of restaurants within such a narrow niche are likely to be substantially similar from one restaurant to another, and protecting one party’s menu from another party’s even near-identical menu could be the first step on a ‘slippery slope’ of granting one restaurateur exclusive rights in something that its competitors ought to be allowed to do.

“3. Can recipes and menus be included as part of a restaurant’s overall trade dress? Probably not, because they are almost certainly functional. But this is a novel argument that may seek to expand the notion of ‘tertium quid’ trade dress to include menu offerings as part of the overall ‘look and feel’ of a restaurant. I’d be surprised if it were successful — but I’ve been surprised before.”

Great analysis, Bob. Thanks for sharing!

The case cite is Powerful Katinka, Inc. v. McFarland, 07-6036 (S.D.N.Y).

Photo credits: Bravo TV and Graham & Dunn PC

We have a juicy-sounding band name dispute right here in Seattle: members of the historic Washington band called “The Wailers” brought suit in the Western District June 20 against Bob Marley’s historic band of the same name. The complaint states that plaintiffs John M. “Buck” Ormsby and Kent E. Morrill have been performing as “The Wailers” (Washington) since 1959. Plaintiffs allege they obtained federal registrations for the WAILERS service mark in January 2003, which they say Aston “Family Man” Barrett and the other members of “The Wailers” (Jamaica) have infringed and diluted.

According to the complaint: “The Wailers have influenced the musical careers of bands such as The Beatles, Jimi Hendrix, The Sonics, the Rolling Stones, and Paul Revere and The Raiders. Most notably, The Wailers’ performance of the song ‘Louie Louie’ inspired The Kingsmen of Portland Oregon to record the same song.”

The Wailers (Washington) in 1960s
Photo credit: Pacific Northwest Bands

The complaint states defendants’ original group was formed in Jamaica in 1963 by Bob Marley, Peter Tosh, and Bunny Wailer. It alleges: “On or about 1974, the original group broke up, and Defendant Barrett and Bob Marley formed the musical group Bob Marley and the Wailers. Following the death of Bob Marley in 1981, The Wailers, including defendant Barrett, continued to stage live musical performances as a group, initially as The Bob Marley Wailers, and eventually simply The Wailers. This musical group has continued to stage live musical performances as The Wailers to the present day.”

The Wailers (Jamaica)

“The Wailers” (Washington) claim “The Wailers” (Jamaica)’s use of the same mark is likely to cause confusion and to dilute plaintiffs’ famous mark. “The Wailers” (Washington) also claim “The Wailers” (Jamaica) have wrongfully obtained the registration for wailers.com and have used the domain name to market, promote, and sell the entertainment services of “The Wailers” (Jamaica), causing confusion in the industry and among the general public.

“The Wailers” (Jamaica) have not yet answered the complaint.

The case cite is Ormsby v. Barrett, No. 07-5305 (W.D. Wash.)

The Seattle Times reported June 23 that the Portland, Ore.-based Moonstruck Chocolate Co. and Duvall, Wash.-based Moonray Espresso Corp. have settled their dispute over the trademark MOONRAY. Terms of the settlement are confidential, but the Times reports the suburban Seattle cafe will change its name. It states the owner, Mike Snow, recently took down his Web site at  www.moonrayespresso.com and temporarily closed the cafe’s doors to decide his next step.

The case was widely reported in the Northwest press. STL discussed the case here, here, and here.

By way of disclosure, STL’s publisher represented Moonray in the litigation.

The case cite is Moonstruck Chocolate Co. v. Moonray Espresso Corp., No. 07-0091 (W.D. Wash.).

On June 19, Brooks Sports, Inc., filed a Notice of Dismissal voluntarily dismissing the infringement and unfair competition claims it filed in the Western District last month against Payless Shoesource, Inc., Exeter Brands Group, LLC, and Nike, Inc. Brooks had alleged that defendants’ TAILWIND shoe logo was confusingly similar with Brooks’ shoe logo. STL blogged about the suit here.

The Olympian newspaper from Olympia, Washington, reports: “The terms of the settlement are confidential. But Nike spokesman Vada Manger said the company will use a revised logo for its Tailwind products going forward.”

Here are the original shoes in question:

Before Settlement: Tailwind (top) and Brooks running shoes
(photo credit: OregonLive.com/The Oregonian)

The Oregonian’s blog, Playbooks & Profits, reports that after the settlement, defendants’ TAILWIND logo will look like this:

After Settlement: Tailwind’s new look
(photo credit: OregonLive.com/The Oregonian)

As Playbooks & Profits put it, the “Only ones who might sue over this one might be an ice-axe manufacturer.” Of course, trademark practitioners could pick that comment apart but it’s pretty amusing so I’ll leave it alone.

The case cite is Brooks Sports, Inc. v. Payless Shoesource, Inc., No. 07-0695 (W.D. Wash).

On June 18, the Ninth Circuit affirmed the Western District of Washington’s grant of partial summary judgment in Experience Hendrix LLC v. The James Marshall Hendrix Foundation, finding that father Al Hendrix had no right of publicity to assign to the plaintiffs/appellants because no posthumous right of publicity existed in New York at the time of Mr. Hendrix’s death.

In its short opinion, filed only 15 days after hearing oral argument, the Ninth Circuit found:

“Experience Hendrix, LLC and Authentic Hendrix, LLC (collectively ‘Experience’) claim they own the exclusive rights to publicize Jimi Hendrix’s personality under the Washington Personality Rights Act (“WPRA”), Wash. Rev. Code § 63.60.030. Applying Washington conflict of law rules, we first determine there is an actual conflict between Washington and New York law because the WPRA recognizes a posthumous right of personality, while New York did not recognize such aright at the time of Jimi Hendrix’s death in 1970.

“Since an actual conflict exists, Washington choice of law rules direct us to determine which jurisdiction has the ‘most significant relationship’ to a given issue, looking at the factors listed in Restatement (Second) of Conflict of Laws § 6 (1971). The WPRA does not contain a statutory directive to apply Washington law to this case because it does not include a choice of law provision nor does the legislative history expressly indicate an intent that the WPRA apply to out-of-state facts. Having considered the factors stated in Restatement (Second) of Conflict of Laws § 6(2) (1971), and in light of the general rule that New York law should apply because it was the domicile of Jimi Hendrix at the time of his death, we conclude that New York has the most significant relationship to the intellectual property rights and the parties at issue here.

“Because we conclude that New York law applies to this case and because we hold that no posthumous right of publicity existed in New York at the time of Jimi Hendrix’s death, we affirm the district court’s grant of partial summary judgment and its award of attorney’s fees in favor of the James Marshall Hendrix Foundation.”

This decision seems to bode well for Electric Hendrix, LLC, and the other makers of “Hendrix Electric” vodka, who Experience Hendrix and Authentic Hendrix sued in March for, among other things, using the deceased singer’s name, image, and signature without their authorization. As STL previously wrote, the Western District’s grant of summary judgment on the right of publicity issue likely explains why Experience Hendrix and Authentic Hendrix did not assert a right of publicity claim in that suit. (Additional STL coverage here.)

The case cite is Experience Hendrix LLC v. The James Marshall Hendrix Foundation, No. 05-36029 (9th Cir.).