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Shape of Dior’s Saddle Bag Denied Trademark Protection in the E.U.

This month, French luxury fashion house Christian Dior was denied trademark protection for the shape of its well-known “Saddle Bag” purse in the European Union. The Saddle Bag, which Dior originally debuted in its Spring/Summer 2000 collection, exploded in popularity after its re-release in 2018. The luxury community quickly dubbed the iconic bag a Dior classic, and it topped the list of hottest women’s fashion products in the third quarter of 2018.[1]

Nevertheless, the European Union Intellectual Property Office (“EUIPO”) refused to register the shape of the Saddle Bag as a trademark. In denying the application, the EUIPO stated that the mark “lack[s] distinctive character” and “does not, as a whole, deviate significantly from the norm or customs of the leather goods sector.”

 In the U.S. Patent and Trademark Office (“USPTO”), Dior has pending Trademark Application Serial No. 90/635,020 which covers the shape of the flap or top portion of the Saddle Bag. The USPTO approved the application for publication in July.


[1] Q3 2018, The Lyst Index (https://www.lyst.com/the-lyst-index/2018/q3/) (last accessed Sept. 28, 2022 at 11:25 AM).

The Battle Over the Banana Ripens: Artist Maurizio Cattelan Answers Artist Joe Morford’s Copyright Infringement Complaint.

Back in January, Miami-based artist Joe Morford filed a lawsuit in the Southern District of Florida alleging Italian artist Maurizio Cattelan’s viral duct-taped banana sculpture, Comedian, is “plagiarized”. In the Complaint, Morford argues that Cattelan’s work is substantially similar to his vertical diptych, Banana & Orange, which has been registered with the U.S. Copyright Office since 2000.

Due to Judge Robert N. Scola Jr. rejection of Cattelan’s Motion to Dismiss the case, Cattelan recently filed an answer and 19 affirmative defenses. In his defense, Cattelan asserts that Morford’s claims for copyright infringement fail because Cattelan created the work “independently” and “without knowledge of or reference to Plaintiff’s work.” Moreover, Cattelan states that if any infringement occurred, it was innocent and not willful. Though, Cattelan largely questions the validity of Morford’s copyright to begin with.

Pursuant to the Joint Interim Status Report filed on September 20, 2022, discovery is ongoing, and the parties will mediate next month.   

 
Photo via court documents.

The case is 21-cv-20039, Morford v. Cattelan.  

Oprah Winfrey’s Company Sues “Oprahdemics” Podcast Creators

On August 9, 2022, Oprah Winfrey’s company, Harpo Inc., filed a lawsuit in New York federal court alleging trademark infringement, dilution, unfair competition, and cybersquatting against co-creators and co-hosts of the “Oprahdemics” podcast. The podcast aims to talk about all things Oprah, which Harpo Inc. alleges confuses listeners into believing it is actually endorsed by Oprah. Harpo Inc. further argues that this false association could cause exponential increases in sales, otherwise known as the “The Oprah Effect” or “The O Factor”. Accordingly, Harpo Inc. has demanded the podcast change its name to avoid further dilution of the Oprah brand.

The case is 1:22-cv-06787, Harpo, Inc. v. Jackson, et al.

Firm Associate Cleo Suero Moderated a Federal Bar Association Co-Sponsored Webinar on NFTs and Copyrights

On August 24, 2022, Firm Associate, Cleo Suero, moderated a webinar titled “NFTs and Copyrights”, which was jointly presented by the International Law and Intellectual Property Law sections of the Federal Bar Association. As moderator, Cleo had the privilege of introducing the webinar’s two speakers, attorney Natalia C. Aranovich, Esq. and author Beverly Macy. Overall, the Webinar provided attendees a better understanding of copyright opportunities for visual artists in the Web-3 era. Attendees also gained an overall understanding of Blockchain technology as it relates to the new NFT trend and how that could be relevant to businesses going forward.

Delhi High Court Views a Competitor’s Use of a Registered Trademark in a Google AdWord as Trademark Infringement

The case M/S DRS Logistics Pvt. Ltd and Anr. v. Google India Pvt Ltd and Ors is the latest addition to the more than 50 lawsuits that have been filed against Google AdWords internationally over the past ten years. India’s Delhi High Court made a preliminary ruling that use of a competitor’s registered trademark as a keyword in Ads creates confusion in the minds of consumers, and thus violates the rights of the trademark owner. Moreover, the Court found that invisible use of a trademark can result in trademark infringement. However , the Court ultimately set aside the interim injunction against Google and instead ordered an investigation into the matter. Nevertheless, this case showcases another nation’s interpretation of the trademark “use” requirement and lends support for trademark owners’ rights in Google AdWords disputes. 

The Battle Over The Birkin Continues: Hermes v. Rothchild Update

New York Southern District Judge Jed Rakoff has rejected artist Mason Rothchild’s motion to dismiss Hermes International S.A.’s lawsuit over his sale of non-fungible tokens called “MetaBirkins”. Judge Rakoff said he would lay out his reasoning in a later opinion. In the meantime, the case continues to be observed for its potential to explain trademark law’s applicability to NFTs. The case is Hermes Int’l v. Rothschild, S.D.N.Y., No. 1:22-cv-00384.

Vegadelphia Sues Dunkin Donuts and Beyond Meat Over Slogan for Plant-Based Breakfast Sandwich

A Philadelphia-based vegan food company recently sued Dunkin Donuts and Beyond Meat in the U.S. District Court for the Middle District of Florida.  At issue in the case is Dunkin Donuts’ and Beyond Meat’s alleged used of Vegadelphia’s trademarked slogan: “Where Great Taste is Plant-Based.”  In the lawsuit, Vegadelphia alleges that Dunkin and Beyond Meat promoted their breakfast sausage sandwich using the phrase:  “Great Taste, Plant-Based.”  Vegadelphia further claims that the defendants “knew about this federally registered trademark on information and belief when they adopted the indistinguishable ‘great taste, plant-based’ slogan for a celebrity-laden national advertising campaign supporting their Beyond Sausage meat substitute menu item.”  Vegadelphia is seeking an undisclosed amount of damages as well as injunctive relief preventing any further use of the trademark.

Google Files Application for PIXEL WATCH

For years, buzz has circled around whether Google would enter into the smart watch arena.  It appears the wait is now over, as Google recently filed a trademark application for PIXEL WATCH in connection with smartwatches and smartwatch accessories.  Although dates have not yet been confirmed, news leaks are reporting that the wearable device from Google may be announced as early as May, and be available for purchase in October.

Firm Partner, Meredith Frank Mendez, Chairs the 2022 Florida Bar IP Law Symposium, Associates Also Presenting

Firm Partner, Meredith Frank Mendez, is the Chairperson of the 2022 Florida Bar Intellectual Property Law Symposium, the premier event in the state for members of the IP Bar.  Held at the Biltmore Hotel in Coral Gables on April 28 and 29, the IP Symposium will feature a series of case study panel discussions covering a wide range of IP law topics, including a mock summary judgment argument before Honorable Lisette Reid from the Southern District of Florida and Honorable Julie S. Sneed from the Middle District of Florida, and the impact of the American Axle & Manufacturing, Inc. case on Section 101 of the Patent Act case with panelist, Honorable Paul Michel, former Chief Judge of the Federal Circuit. Panel discussions will also include relevant new topics such as NFTs and Name, Image, and Likeness in college athletics. The IP Symposium will also have a panel with David Carson, one of the first Copyright Claims Officers at the U.S. Copyright Office to discuss the recently-formed Copyright Claims Board. Each of the panels is expected to cover some of the more advanced aspects of IP.  The Keynote Speaker on Thursday is the Director of the U.S. Patent and Trademark Office, Drew Hirshfeld, who will be giving a “fireside chat” about many relevant topics, including the Trademark Modernization Act. The keynote speaker on Friday will be Dennis Crouch, author of the popular Patently-O blog that is regularly read by most U.S. patent law professionals. Firm Senior Associate, W. John Eagan, also will be presenting the patent section of the “Year in Review” program and Firm Associate, Cleo Suero, will moderate a panel about NFTs on April 29.  For more information: https://member.floridabar.org/s/lt-event?id=a1R1R0000088zSaUAI#/Agenda%20-%20Speakers