• IP BLAWG

    Bad Spaniel Has First Amendment Rights

    Beverly A. Berneman
    6/30/20

    VIP Products LLP sells a series of dog toys called “Silly Squeakers”. The toys are often fashioned to look like well-known beverage containers. One of the toys is called “Bad Spaniels”. It looks like a Jack Daniel’s whiskey bottle but with alterations. Of course, the name was changed from Jack Daniel’s to Bad Spaniels. But it didn’t stop there. Instead of “Old No. 7”, it said “Old No. 2 on your Tennessee Carpet” (which should resonate with dog owners). The alcohol description read 42% POO BY VOL” and “100% SMELLY” (again something instantly recognized by dog owners).

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  • IP BLAWG

    Judge’s Campaign Wasn’t Very Judge-Like

    Beverly A. Berneman
    2/21/17

    False advertising in a judge’s election has consequences. %CUT% West Virginia judge, Stephen Callaghan, thought it would be a great idea to literally paint a picture of his opponent partying while their county lost jobs. Callaghan Photoshopped a picture of his rival next to President Obama, gave the President a glass of beer and strewed party confetti in the background. Callaghan knew that nothing of the sort had ever happened. Turns out; using a false ad to keep your seat as a judge isn’t such a good idea. After winning the election by 220 votes, Callaghan had to face the wrath of the Supreme Court of Appeals of West Virginia. Upon hearing about Callaghan’s campaign ad, the Court suspended Callaghan without pay for 2 years and fined him $15,000. In a written opinion, the Court stated that the ad was “in every sense, materially false.” Callaghan argued that the ad was “substantially true”, hyperbole or parody. The Court didn’t accept any of his arguments. Callaghan has now filed suit contending that the disciplinary action violated his First Amendment rights.

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  • IP BLAWG

    Trademarks for the Humor Impaired

    Beverly A. Berneman
    1/31/17

    Louis Vuitton found nothing funny about “My Other Bag is a Louis Vuitton”. %CUT% My Other Bag (“MOB”) manufactured and sold canvas bags that replicate pictures of famous and expensive brands. One of its bags replicated the Louis Vuitton bag. If you look at the picture of the bag, you can see that no one would mistake this for a real Louis Vuitton bag. The bag is meant to parody high priced leather goods and that not everyone can afford them. However, Louis Vuitton did not appreciate the humor. So it sued MOB for trademark infringement, dilution by blurring and copyright infringement. The District Court granted summary judgment to MOB stating that this was an obvious attempt at humor and is not likely to cause confusion. The Second Circuit agreed and affirmed the judgment. The Second Circuit noted that “A parody must convey two simultaneous – and contradictory – messages: that it is the original, but also that it is not the original and is instead a parody”.

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  • IP BLAWG

    The New York Yankees Didn't Get the Joke

    Beverly A. Berneman
    4/4/16

    The New York Yankees were not amused when someone tried to register parodies of its famous trademarks %CUT%. IET Products thought it would be funny to register trademarks that parodied the New York Yankees longtime logo and catch phrase. IET replaced the bat on the logo with a syringe referring to alleged steroid use by the players. Not willing to stop there, IET also sought to register “The House that Juice Built” as a parody of the famous catch phrase “The House that Ruth Built” (meaning Babe Ruth for the initiated). The TTAB refused to allow registration of IET’s marks. The TTAB reasoned that IET wasn’t really interested in making commercial use of the marks because they were going to be used as an “ornaments” on IET’s goods.

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