U.S. Intellectual Property and
New Media Law Update
Volume I, Issue XX - Monday, September 15, 1997
TABLE OF CONTENTS:
This Newsletter Wasn't Sealed with a Kiss - But
We Could If We Wanted To -
Descriptive Use of Mark
is Permitted
Another Court Determines That Internet Advertising Or Commerce
is Sufficient Contact for State Jurisdiction
NEWSLETTER:
This Newsletter Wasn't Sealed
with a Kiss - But We Could If We Wanted To - Descriptive Use of Mark is
Permitted
Cosmetically Sealed Industries, Inc.
v. Chesebrough-Ponds USA Co. and Jean Philippe Fragrances, Ltd. (2d Cir.
-Decided- September 2, 1997)
The Second Circuit confirmed the opinion of a
district court dismissing the complaint. The Plaintiff manufactured
and sold a line of lip gloss which was advertised as smear proof, smudge
proof and kiss proof.* The registered trademark used for the product is
"SEALED WITH A KISS." The trade dress included a registered trademark
of a pair of bright red lips.
Defendant Chesebrough marketed a long wearing
lipstick called "CUTEX COLOR SPLASH." Its promotional campaign used
a cardboard display holding 60 trial size lipsticks and a number a complimentary
postcards on which appeared a line drawing of a pair of lips and the message,
"I thought you could use a kiss." The display invited the customers
to take one of the postcards, place a lipstick imprint of her lips on it
and mail it. Next to the cards were words in larger script type,
"Seal it with a kiss." A product named "COLOR SPLASH" appeared in
the center of the display card in red block letters at least twice the
size of the lettering for "Seal it with a kiss." CUTEX also appeared
in block letters three times the size.
The trademark law specifically provides that a
term or device which is descriptive of and used fairly and in good faith
only to describe the goods or services of a party, does not constitute
an infringement, 15 U.S.C. § 1115(b)(4). The Court noted that
this exception to infringement extended to any use in a descriptive sense.
Here "Seal it with a kiss" was used by Defendant as an instruction to be
used with complimentary postcards. If any confusion resulted, this
is a risk that Plaintiff accepted when he decided to identify his product
with a mark which could be used as a well-known descriptive phrase.
* - The Court assumed that kiss proof meant that
a kiss would not disturb a woman's lipstick, not that she would not be
kissed. Judicial humor strikes again.
The decision can be viewed at:
http://www.law.pace.edu/lawlib/legal/us-legal/judiciary/second-circuit/test3/96-9538.opn.html
Who Said the Courts Don't Change
With The Times - Hypertext Linked Opinion
C.L.I.C. Electronics International, Inc.
v. Casio, Inc., (M.D. Fla. -Decided- September 4, 1997)
Magistrate Judge David A. Baker of the Middle
District of Florida recently issued an Order in connection with a Defendant's
motion of non-infringement in a patent case. The Judge denied the
motion since there were questions of fact. A straight-forward not
very difficult motion with a straight-forward opinion.
However, this is an opinion fated to be unique
for another reason. The case is hyperlinked to the abstract of the
patent, the claims of the patent, Defendant's web page and cited cases.
The decision can be viewed at:
http://www.fedjudge.org/96-929.htm
Another Court Determines
That Internet Advertising Or Commerce is Sufficient Contact for State Jurisdiction
State of Minnesota v. Granite Gate Resorts,
Inc., d/b/a On Ramp Internet Computer Services; et al., (Minn. Ct. App.
-Decided- September 5, 1997)
In July 1995 the Minnesota Attorney General filed
a complaint that Defendants had engaged in deceptive trade practices, false
advertising and consumer fraud by advertising in Minnesota that gambling
on the Internet is lawful. The Minnesota Court found that through
the Internet advertising, the Defendants demonstrated a clear intent to
solicit business for markets that included Minnesota and as a result has
had multiple contacts with Minnesotan residence including at least one
successful solicitation for their gambling services. The cause of
action arises from these advertisements that constitute Defendants' contacts
with the state and implicates Minnesotan's strong interest in maintaining
the enforceability of its consumer protection laws. Thus, the Defendants
were subject to personal jurisdiction in Minnesota. The Court did
note that the balance of equities might be different if it were Defendant
disseminating a message on the Internet for purposes other than solicitation
of business.
This decision can be viewed at:
http://www.courts.state.mn.us/
The Net Can Be Blue Both In Missouri and New York
Since NY Long-Arm Isn't That Long
Bensusan Restaurant Corp. v. Richard B. King,
individually and d/b/a The Blue Note, (Second Circuit, Decided- September
10, 1997)
Plaintiffs are the owners of "The Blue Note Jazz
Club," a registered federal trademark for cabaret services and the famous
Blue Note jazz club located in Greenwich Village, NY. Defendant is
situated in Columbia, Missouri, a small white-collar community having three
colleges and a small cabaret with the name "Blue Note."
The mark was registered by the Plaintiff in 1985
and a letter of complaint was sent to the Defendants in 1993, but no further
action was taken until April 1996, when Defendant created a web site which
featured its Missourian "Blue Note." Plaintiff then brought the present
action. Plaintiff sought an injunction. Defendants' website
clearly indicated its Missourian roots, among other things by noting it
is mid-Missouri's finest live entertainment venue and a specific disclaimer
which contained the following text: "The Blue Note's cyber spot should
not be confused with one of the world's finest jazz clubs, The Blue Note,
located in the heart of New York's Greenwich Village. If you should
ever find yourself in the Big Apple, give them a visit." The text
hyperlinked at this point to Plaintiff's website. After complaint
from Plaintiff, Defendants toughened up their disclaimer indicating they
should not be confused in any way, yata, yata, yata.
The Court of Appeals looked to the New York long-arm
statute which has two relevant provisions. First, the statute provides
for personal jurisdiction based on tortuous acts of a non-domiciliary who
does not transact business in New York. As interpreted by the New
York State courts, the New York State Act only confers personal jurisdiction
when the non-domiciliary commits acts within the state and reaches
only tortuous acts performed by a defendant who is physically present in
New York when he performed the wrongful act. Thus, a New Jersey Militia
can mount its mortars on the Palisades and let loose with impunity under
New York law. The Militia would have to be sued in New Jersey. The
second pertinent provision of the New York long-arm statute allows a New
York court to exercise jurisdiction over a non-domiciliary who commits
a tortuous act outside the state causing injuring to personal property
within the state. It is, however, restricted to persons who expect
the tortuous act to have consequences within New York and who derive substantial
revenues from interstate commerce. The Court found that the Defendants'
hiring of bands of national stature and receiving revenues from customers
in Missouri was not sufficient to meet either test. No acts were committed
by a person in New York, and the website did not derive revenue from anyone
other than people having a drink in Missouri.
State law governs long arm statutes. This case
was decided on the peculiarities of the New York statute. Thus, while
contrary to the trend seen in other state and federal courts in result,
this case does not contradict the other cases since it is merely interpreting
New York law. In any case, the result would have been different if the
website was soliciting sales in New York.
This decision can be viewed at:
http://www.law.pace.edu/lawlib/legal/us-legal/judiciary/second-circuit/test3/96-9344.opn.html
NOTICE: If you have a background in Intellectual Property Law and/or
New Media Law and have a client base compatible with ours, we would like
to talk to you about integrating our practices. Contact us at bdpc@dti.net
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