Sometimes, the last word isn’t really the last word. %CUT% Here are some updates for previous posts:

Just in time for summer, Mister Softee gets its just desserts courtesy of a federal judge. %CUT% The war started when Dimitrio Tsirkos decided to rebrand his “Mister Softee” trucks as “Master Softee”, including mimicking the graphic of the delicious ice cream cone. Tsirkos was a former vendor of the venerated purveyor of the taste of summer. As a vendor, Tsirkos had to pay royalties. As a non-vendor, he got out of having to pay Mister Softee. Mister Softee sued and obtained an injunction permanently enjoining Tsirkos from operating his rogue ice cream trucks using confusingly similar branding. Tsirkos refused to surrender. He continued to operate his Master Softee trucks despite the injunction. A federal court judge held Tsirkos in contempt repeatedly and ordered him to pay $329,000.00 in damages. When he still wouldn’t stop, the court entered another order adding $287,258.00 in attorney’s fees and $52,605.00 in costs.

A phantom trademark can be exorcised. %CUT%A 'phantom trademark' is in which an integral portion of the mark is represented by a blank or missing information. The USPTO will refuse registration of a phantom mark because it would be hard for someone to identify and distinguish the goods and services covered by the mark. Enterprise Holdings, Inc. got caught in the vortex of phantom marks when it tried to register this trademark for vehicle dealerships, fleet management services and vehicle rental services. The examining attorney refused registration on the basis that the mark was missing information. Part of the problem was that the specimens of use each separately showed the mark with added words “car sales”, “commercial trucks” and “fleet management” in the bottom white space. The examining attorney called this ‘mutilation’ of the mark. Enterprise Holdings, Inc. wouldn’t take no for an answer and appealed to the TTAB. The TTAB reversed the refusal. The TTAB held that the added terms were generic descriptions and could not function as a trademark alone. The added terms can be deleted from the mark without changing the commercial impression.

It looks pretty; but how protectable is it? %CUT% Two recent cases highlight how different types of IP law protect the structure of a product. In one case, In DeVinci Editrice S.r.l. v. Ziko Games LLC, a court held that the structure of the “Bang!” card game cannot be protected by copyright. While the plaintiff could copyright the artwork on the cards, the game structure, mechanics and rules are not protectable. Millennium Laboratories, Inc. v. Ameritox, Ltd., a court held that the structure of medical test reports can be protected as trade dress as long as the structure isn’t functional. In this case, the owner chose the structure because it didn’t look like any of its competitors’ reports.

President Obama signed the Defend Trade Secrets Act (“DTSA”) into law on May 11, 2016. It was a long time coming but we’re glad it’s here. %CUT%

Fake bad reviews are worse than real bad reviews. %CUT% A competitor of Romeo & Juliette Laser Hair Removal, Inc. posted fake bad reviews on Yelp.com and CitySearch.com using fake accounts. Romeo & Juliette sued the competitor because it was losing customers. The competitor’s defense was “hey, I’m out of business so you can’t touch me.” Not quite. Recognizing that false comments posted on the Internet have an immeasurable detrimental effect, the judge hearing the case entered a permanent injunction requiring the removal of the false reviews.

Trade dress can help protect the look and feel of a website. %CUT% Many businesses put a lot of time and effort into their websites. With good reason. A website is the perfect place to show what the business can do and how it does it. But how can a business protect its well-designed website from being mimicked by a competitor? In Ingrid & Isabel, LLC v. Baby Be Mine, LLC, a California federal court denied the defendant’s motion for summary judgment on the issue of whether the plaintiff’s website could be protected as trade dress. In doing so, the court acknowledged that the "look and feel" of a website qualifies for trade dress protection.

The FTC had a problem with Machinima, Inc. for not telling anyone that it paid people to post endorsements. %CUT% Machinima describes itself as the dominant network for fandom and video gamer culture. Its services include distribution, support and monetization of YouTube channels. Things went sideways for Machinima when it paid ‘influencers’ to post YouTube videos that were supposed to be objective opinions about Microsoft’s Xbox One system. The FTC issued an administrative complaint against Machinima for failing to adequately disclose that the influencers were being paid for their opinions. Jessica Rich, Director of the Bureau of Consumer Protection summed it up well. “When people see a product touted online, they have a right to know whether they’re looking at an authentic opinion or a paid marketing pitch. . . That’s true whether the endorsement appears in a video or any other media.” The FTC and Machinima have agreed to settle. Machinima will be prohibited from similar deceptive conduct in the future and it must ensure its influencers clearly disclose when they have been compensated in exchange for their endorsements.

The passive licensor can find itself on the receiving end of a huge strict liability judgment. Or not. %CUT% Strict liability means if you’re anywhere in the chain of commerce of a defective product, you’re liable for damages caused by it. This can be really harsh for passive trademark licensor who does nothing more than license a name of the product. Tort reform has been trying to find ways to lessen the hit on anyone who is in the chain of commerce but really had nothing to do with the design or manufacture of the product. The defendant in Shukrullo Dzhunaydov v. Emerson Elec. Co., et al., licensed the trademark of what turned out to be a defective product. The license allowed the defendant/licensor to inspect the use of the trademark and have some control over the product. But it didn’t exercise those rights. The court held that the defendant/licensor wasn’t liable for damages caused by the defective product.