Guest blog post by Melanie Garcia.  Melanie is a Summer Associate in the Washington, D.C. office of DLA Piper LLP.  She is a J.D. Candidate at the Georgetown University Law Center.

Unhappy customers have been embracing the Internet for years to vent their frustrations with companies.  Lately, several bloggers have capitalized on websites that lampoon popular companies and companies are beginning to fight back.  
Recently, Forever 21 threatened to sue fashion blogger Rachel Kane for diluting its brand and trademark with her blog, WTForever21.com.  Forever 21, a global retail chain of clothing and accessories for young men and women, reportedly sent cease-and-desist letters to Ms. Kane regarding her blog.  On WTForever21.com, Ms. Kane posts and satirizes images of clothing from Forever21.com.  For example, on April 14, 2011 Ms. Kane posted a picture of earrings from Forever 21 with the following caption, “Those bead curtains that provide no privacy and serve no other purpose than to get tangled around each other, or in your hair when you walk through them, came back from 1973 and decided to become earrings.”  While this is understandably offensive to the company, it seems Forever 21 has chosen not to pursue further action against Ms. Kane.  
There are many reasons why Forever 21 may have chosen not to bring a suit against Ms. Kane.  Forever 21 has had several widely publicized legal battles over alleged copyright infringement.  Widespread coverage of its actions against Ms. Kane throughout the fashion blogosphere and other social media outlets may be one reason Forever 21 shied away from the lawsuit.  
Another possible reason is that the law is also complicated in this area and any legal battle would be hard won.  In order to win a dilution claim, a plaintiff must prove that the defendant’s use of a mark is confusing and therefore dilutes the plaintiff’s trademark.  A dilution claim must also prove that the defendant is using the plaintiff’s mark as a mark.  It is possible that the WTForever21.com domain name does just that, but it is less clear whether this use is confusing.  
Moreover, a claim against WTForever21.com would not just involve a trademark dilution claim.  Because WTForever21.com is a blog such a claim would also implicate Ms. Kane’s First Amendment protected speech.  First Amendment freedoms would protect Ms. Kane’s blog from liability unless the court found that the title of the blog, WTForever21.com, has no artistic relevance to the blog’s product, i.e., its content.  The blog would also be liable if it made explicitly false statements regarding the original mark.  Because Ms. Kane’s blog is a critique or parody site of Forever 21, and because the site explicitly states that it is not affiliated with Forever 21, it is possible that First Amendment defenses might defeat a claim of trademark dilution.  
If  such a claim is not defeated on First Amendment grounds, it is possible that Ms. Kane could argue that the blog is a parody.  To be found a parody, the blog must fall under the exception in the Lanham Act that protects parodic competing marks from liability.  For a parody to meet this exception under the Lanham Act, it must  not be a “designation of source for the person’s own goods or services.”  15 U.S.C. § 1125(c).  Under the Second Circuit’s analysis in the “Charbucks” case, Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 588 F.3d 97 (2nd Cir. 2009), the competing Charbucks mark could not use parody as a shield because Charbucks used the mark “as a designation of source” for the defendant’s goods, and the mark was “at most, a subtle satire.”  The court held that the Charbucks mark did not meet the parody threshold because rather than being a “satire or irreverent commentary of Starbucks” it functioned as a signal to consumers that Charbucks was a Starbucks competitor.  Under the Second Circuit’s analysis, because WTForever21.com does not signal itself as a competitor but is in fact an irreverent commentary, Ms. Kane’s blog likely falls under the Lanham Act’s exception.   
Under the Fourth Circuit’s analysis of trademark parodies, finding that a mark is a parody is not an automatic defense to trademark infringement.   However, if a mark is found to be a parody this will likely weigh in favor of the defendant, especially if the original mark is recognizable and there is little chance of confusion.  An infringing mark is a parody in the Fourth Circuit if it successfully creates an association with the famous mark and simultaneously communicates that it is not the famous mark.  Under the Fourth Circuit’s analysis, WTForever21.com will also likely be free of liability because it both signals the famous global retailer Forever 21, and that it is not the retailer itself.
Like WTForever21.com, other sites like Lamebook.com or Regretsy.com may also be protected by the First Amendment and because they are parody sites.  While this may irk the original trademark owners, Facebook.com and Etsy.com, bloggers and blog-readers will continue to revel in the snide commentary these parody sites provide.  
However, First Amendment protections do not mean that bloggers always get a free pass.  Bloggers using a trademark to cultivate traffic to their site but whose site is not related to the trademark may be found to be infringing.  For example, if the blog Lamebook.com was about pet grooming rather than lame comments on Facebook, its title would have no relevance to the blog’s expressive content.  Facebook might then have a dilution of trademark claim against Lamebook.com if it could prove confusion.  Moreover, any blog that makes a false claim or purports to be authorized by the trademark owner will likely be subject to liability.  Even when it is possible that First Amendment claims might prevent blogger liability, trademark owners may still want to consider bringing suit against bloggers for trademark dilution when there is a real chance of confusion regarding the infringing mark.  
Companies should monitor the Internet for blogs that use their trademarks, including blogs that critique them, to ensure that bloggers are not making false claims and that the blogs are not being confused with the original marks.  Trademark owners should also consult with counsel if there are any blogs that they believe might cause trademark confusion, regardless of whether the blog is protected speech.  Counsel can help determine whether bringing suit is a viable option.

Unhappy customers have been embracing the Internet for years to vent their frustrations with companies.  Lately, several bloggers have capitalized on websites that lampoon popular companies and companies are beginning to fight back.  

Recently, Forever 21 threatened to sue fashion blogger Rachel Kane for diluting its brand and trademark with her blog, WTForever21.com.  Forever 21, a global retail chain of clothing and accessories for young men and women, reportedly sent cease-and-desist letters to Ms. Kane regarding her blog.  On WTForever21.com, Ms. Kane posts and satirizes images of clothing from Forever21.com.  For example, on April 14, 2011 Ms. Kane posted a picture of earrings from Forever 21 with the following caption, “Those bead curtains that provide no privacy and serve no other purpose than to get tangled around each other, or in your hair when you walk through them, came back from 1973 and decided to become earrings.”  While this is understandably offensive to the company, it seems Forever 21 has chosen not to pursue further action against Ms. Kane.  

There are many reasons why Forever 21 may have chosen not to bring a suit against Ms. Kane.


Continue Reading Parody Sites & Trademark Dilution

By John Wilks and Damian Herrington, DLA Piper UK

In its first ever ruling on an intellectual property case, the UK’s Supreme Court has decided in Lucasfilm v Ainsworth that the stormtrooper helmets used in the Star Wars films were not “sculptures”, and thus were not protected by the English law of copyright.

Significantly, however, the Supreme Court also ruled that the infringement claims based on US copyright brought by Lucasfilm in respect of Mr Ainsworth’s acts in the US were justiciable in the English courts, a ruling which could have wide-ranging implications for the ability of English courts to decide claims for acts taking place in foreign countries which infringe the copyright in those countries.  The case indicates that if a defendant is resident in England, the English courts will be prepared to deal with claims for infringement of foreign copyright.

Whether the decision leads to full scale forum shopping by copyright infringement claimants remains to be seen.  But it will give claimants a useful litigation option in cases where there is international infringement of copyright by an English-domiciled defendant.


Continue Reading UK Supreme Court Opens Door to Overseas Copyright Claims in UK Courts

UK CLIENT ALERT

At the end of a month where the main item of UK news has been the news itself, the English Court of Appeal has confirmed that headlines may be copyright works in their own right, and it is not a defence for an internet user accessing copyright-protected content to say they were merely browsing the relevant web page.

The Court of Appeal gave the first instance judgment of Mrs Justice Proudman in this case (NLA v Meltwater) a very definite seal of approval, describing it as “clear, careful and comprehensive”.  

While this case was about newspaper headlines and article extracts, the expansive approach taken to the scope of literary copyright will be encouraging to anyone seeking to assert rights in very brief strings of words- jokes, straplines, product names and titles of books, songs, and films spring to mind in particular.  The vagueness of the Court’s reasoning in this regard means it is, however, still difficult to determine where the borders of protection will fall for particular examples, but it is clear that what determines the point is the level of effort in the creation process, not the end result.


Continue Reading UK: HEADLINES PROTECTED BY COPYRIGHT, AND “MERELY BROWSING” NOT A DEFENCE

NEWS

Costa Rica: Ratification of Hague Apostille Convention

Greece: New Draft Trademark Law to Be Submitted to Parliament

New Zealand: Changes to New Zealand Designs Practice

Portugal: Creation of a Specialized Court of Intellectual Property, The IP Court

CASE LAW

CA Paris, Pôle 5 ch. 2, April 1st, 2011, Sté Elytel v/ Sté Univers Poche

CheapFlights International Ltd v OHIM, Cases T-460/09 and T-461/09, 5 May 2011.

DHL Express France v Chronopost SA, Case C-235/09, 12 April 2011.


Continue Reading EMEA’s June/July Trademarks and Design Newsletter