Among some of the biggest divorces and damages claims this year, Lawyer Monthly has picked out 10 really interesting and influential trademark battles that took the spotlight in 2017. Some of these have major implications for brands and in some cases, global industries, while others are a bit of a tickle for IP lawyers far and wide.
Let’s jump straight in with our picks for the top 10 trademark battles that swept 2017.
10. DC Comics Vs Stacey Lane Holmsley
Kicking off this top 10 is DC Comics, which recently decided to push stern opposition against a Superman Jesus image, which was put in for trademark application by Stacey Lane Holmsley in November 2016. The application came under the categories of “Decals; Decorative decals for vehicle windows; Magnetic decals; Temporary tattoo transfers.”
It’s obvious the image strongly reflects the classic superman shield, a DC Comics trademarked image. In June DC’s lawyers took note and filed for an extension on the opposition time, challenged the trademark and were surprised to see Stacey Lee stand his ground. The documents currently with the courts suggest grounds for deceit and public confusion.
Let’s see how this one pans out.
9. Eminem Vs New Zealand Party
In a relieving legal battle against a New Zealand campaigning party, world famous rapper Marshall Bruce Mathers, otherwise known as Eminem, won NZ$600,000 (£314,000) in October, after the party ran a political campaign ad featuring a soundtrack closely similar to ‘Lose Yourself’, Eminem’s crown jewel.
Judge Helen Cull, who made the ruling, determined that the National Party would have to pay losses to Eight Mile Style, Eminem’s music publisher. The President of the party, Peter Goodfellow said: “We purchased the piece of production music from a reputable Australian-based music production library, who had purchased it from a US supplier.” Ms Cull said it was not a mere coincidence the composer of Eminem-esque was listening to Lose Yourself as he composed his song.
Here’s the campaign ad. You can make up your own mind.
8. AM General LLC Vs Activision Blizzard Inc.
In November, General Motors, the largest longstanding car manufacturer in the world, filed a lawsuit against Activision Blizzard Inc., the guys who make the year after year gaming hit Call of Duty.
The lawsuit accuses Activision of using an image of their HMMWV (High Mobility Multipurpose Wheeled Vehicle) for the last fifteen years without any permissions. The Humvee has been used by the uS military for more than three decades, in more than 50 countries. However, Call of Duty has also featured Humvee’s pretty heavily through the years.
AM General is seeking compensatory, punitive and triple damages and this is one to keep watching!
Meanwhile, here’s a video of the HMMWV in action in Call of Duty: Modern Warfare 2.
7. Adidas AG Vs ELEAGUE/Turner
Adidas is claiming high stakes on its ‘three stripes’. With 52 opposition points, Adidas has opposed a trademark filing from Turner, owners of ELEAGUE, an official worldwide -sports league, for its principal logo image, which coincidentally also features three stripes.
As per many of these battles, confusion and dilution of brand is the main grounds for opposition, but some of the main points Adidas has put forward is the brand’s use of the ‘three stripes’ on electronic sports and video gaming, form sponsors, to the clothing on characters in the games. So it’s kind of understandable.
6. Super Union Holdings Ltd. Vs Amazon.com Inc.
So just before we enter the top 5, let’s look at Amazon’s surprise attack this year. A company called Super Union Holdings Ltd., a Hong Kong based company that pretty much sits on IP assets, owns the trademark rights to the word ‘Black Friday’ in Germany. Of course, this is a huge buzzword for sales come November time.
As you can imagine Amazon did not see this one coming, and have been sued for current and previous damages. Luckily, on such a small scale, this won’t be a big hit for Amazon, the largest retailer in the world. The estimated fine for infringement is up to €250,000.
5. Google LLC Vs Chris Gillespie
In 5th position is Google’s trademark case against an individual named Chris Gillespie, who has for years been trying to challenge the internet giant’s trademark to the word ‘google’ on the grounds of it now being a common term used by all.
Similar cases happened in the past, with hoover, thermos and aspirin. So, what does Google do now? The current legal battle has seen the US Supreme Court decline to review a petition against the trademarked word. The justices were told: “There is no single word other than google that conveys the action of searching the Internet using any search engine.”
The whole ordeal originated when Chris Gillespie, years back, registered 763 domain names with the term ‘Google’. Consequently, Google LLC intervened and he had to give them up. Since then Gillespie has been attempting to invalidate the official trademark for ‘Google’.
4. Donald Trump Vs China
Since becoming US President, Donald Trump has faced three-fold fame and along with that, people trying to rip him off; namely, Chinese companies. In a number of cases this year, from the Trump Condom to the Trump Toilet, apps with Trump’s brand, purses and bags, even a Trump International Hotel, the President has faced many IP battles with Chinese counterparts.
According to reports, Trump has 49 trademark applications currently at stake, all of which filed during his presidential campaign, and 77 marks already in action around the world. In the most recent case against Trump Toilets, Chinese courts granted him a victory, but the implications could be huge, given that retaining the rights to his brand name could mean 225 or even more Chinese products featuring the Trump name may have to stand down and desist.
In Mexico however, Trump Toilet Paper stands strong as a corporate lawyer seized the moment and introduced a Trump based product, with added building-a-wall based irony in its marketing, under a trademark nice Trump’s brand failed to cover, hygienic products….
3. Lexmark International Inc. v. Impression Products Inc.
In this case between Lexmark International, a Chinese-owned laser printer and imaging product manufacturer, and Impression Products, a family-owned West Virginia printer and cartridge company, rules surrounding the first sale doctrine changed.
The Supreme Court decided that after the sale of a patented item, the patent holder cannot sue for patent infringement relating to further use of that item, even when in violation of a contract with a customer or imported from outside the US.
Impression Products has been buying used Lexmark cartridges, filling them, replacing a microchip on the cartridge ands reselling them. This of course resulted in a lawsuit for infringement of several patents related to the ink cartridges. This decision can now affect many manufactured products, from high tech consumer goods to prescription drugs.
2. TC Heartland LLC v. Kraft Foods Group Brands LLC
This year Kraft Foods sued TC Heartland in the District of Delaware, alleging that three of its patents were infringed. TC Heartland does business in Indiana, and has no relevance in terms of business or other to Delaware. However, the products that allegedly infringed patents were shipped into Delaware.
TC Heartland then moved to transfer venue for the dispute to Indiana. The patent venue statute states that venue is appropriate either: (1) “in the judicial district where the defendant resides,” or (2) “where the defendant has committed acts of infringement and has a regular and established place of business.”
TC Heartland cited a previous case, Fourco, to justify that it did not meet either of the above. The Federal Circuit rejected the move to transfer venue, but later the Supreme Court agreed and the meaning of certain provisions, namely 28 U.S.C. § 1400(b): “a domestic corporate defendant may only be sued in its state of incorporation or in a state in which it has committed acts of infringement and has a regular and established place of business.”
1. Apple Inc. Vs Emonster KK, Samsung Electronics Co. & Nokia Corporation
Apple have been through a lot in recent year, and 2017 was a good year for Apple lawsuits. Therefore, we’ve crammed three in one here.
The first of the above relates to Apple Inc. Vs Emonster KK, a trademark case surrounding the use of Animojis, the animated emojis featured on the new iPhone X. Japan-based Emonster owns an app called Amimoji that allows the use of moving emojis. Apple’s new Animoji feature on the other hand allows use of the facial recognition technology to create animated emojis with the users face.
Emonster consequently filed a suit against Apple in October stating that “Apple made the conscious decision to try to pilfer the name (‘Animoji’) for itself.” Apple moved to buy the trademark and was refused, but carried on using the name Animoji. Emonster is now seeking damages and wants to Apple to stop using the trademarked name. More to come on this one.
The second case is huge: Apple Inc. Vs Samsung Electronics Co. Currently on remand from the Supreme Court, this covers an Apple design patent that Samsung allegedly stole. So it’s not strictly trademark, but patents are still very much a huge part of a company’s IP.
Beginning in 2011, Apple sued Samsung for the infringement of US Patent Nos. D618,677 (claiming an electronic device having black rectangular front face with rounded corners), D593,087 (claiming an electronic device having a rectangular front face with rounded corners and a raised rim) and D604,305 (claiming a grid of 16 colourful icons on a black screen of an electronic device). A jury then awarded $399 million in damages to Apple, which amounted to the whole sum of Samsung’s profits on the phones it sold infringing these patents.
Several years later, and now in question, Samsung is appealing the federal Circuit decision, claiming that the ‘article of manufacture’ by which the patent infringement includes several components, only part of which infringe on the patents. On remand, the Federal Circuit will have to decide whether “the relevant article of manufacture for each design patent … is the smartphone or a particular smartphone component.” This could have huge implications for thousands of tech consumer goods worldwide, most of which would be considered a build of components, each part of which would be up for debate when it comes to patent infringement cases.
Lastly, we have Apple Inc. Vs Nokia Corporation. In May this year, another patent case came about surrounding Apple’s use of Nokia technologies within its smartphones, tablets and other products. Apple decided it would no longer pay for the use of Nokia’s technology patents, stating that many of them are already built and established into Apple’s suite of products. It accused Finland-based Nokia of extortion on the use of its patents.
Nokia then moved to file 11 lawsuits across Europe and the US. The cases were then settled between the parties with a new agreement that Apple would pay royalties to Nokia as of 2Q17, and with further agreements, announced it would be stocking Nokia’s digital health products in its stores.
This case is an important one for 2017, as its shows Nokia, once the biggest manufacturer of phones in the world, refusing to give up its assets to Apple, now one of the big five and a company that outmuscled Nokia many years back. The technologies, patents and similar IP assets Nokia owns now continue to be the grand doe of Nokia’s annual turnover.
Some honourable mentions in 2017’s trademark dispute landscape include the following:
Nintendo – Smash Bros
The latest on Nintendo news is that it has filed trademark applications for news names, such as Super Smash Bros. The Legend of Zelda, Splatoon, and Animal Crossing. All classics in the Nintendo repertoire, possibly hinting at several reboots.
General Motors – Moving Humanity Forward
General Motors recently filed a trademark application for the phrase ‘Moving Humanity Forward’, which is a bold statement. On the ppliaction the phrase is stated to be aimed at “Promoting public interest and awareness of universal mobility, connectivity and technology solutions.”
The London Taxi Company Vs The Courts
The London Taxi Company attempted to trademark the shape of their cabs, which they manufacture in London, in 2016. This year the Court of Appeal upheld a decision that the cab’s shape lacked “distinctive character” and was not a “valid registered trademark.”
The trademark move came about when another rival company “substantially copied” their cab design. The London Taxi Company may now take this to Supreme Court.