Mickey Mouse sues Donald Duck. Yes, really

By Eriq Gardner

If it looks like a duck, swims like a duck, and quacks like a duck, it still may not be a duck.

That's the only conclusion we can draw from seeing that Mickey Mouse has filed a trademark infringement claim against Donald Duck yesterday in Florida Southern District Court. 

Yes, an actual lawsuit was filed by an apparently clever and totally anonymous prankster. 

Mickey Mouse is being represented by Juan Abagado. ("Abagado" means "lawyer" in Spanish.) Donald Duck is being represented by Pluto. And the deputy clerk in the case is Goofy, who has issued the summons.

(Hat tip to Legal Pad.)

Christian publishers battle over 'God's Little Princess'

By Eriq Gardner

When Moses came down from Mount Sinai, he reportedly told his followers, "Thou shalt not covet thy neighbor's goods."

If only Moses could have lived to see a new lawsuit filed in Tennessee district court by Christian publisher Thomas Nelson Inc. against another Christian publisher Zondervan Corp.

Both companies publish Biblical-themed children books and release related products like DVDs, dolls, toys and apparel. According to the complaint, Thomas Nelson hired an illustrator named Meredith Johnson under a work-for-hire agreement to provide illustrations for a successful series entitled "Gigi, God's Little Princess." 

Thomas Nelson alleges that Johnson was not satisfied with her compensation under the agreement and negotiated with Zondervan to illustrate a new series entitled "The Princess Twins." The illustrations were substantially similar, says Thomas Nelson, and as a result, Johnson breached her contract and Zondervan committed intentional interference, copyright and trademark infringement, and unfairly competed in the marketplace.

We're hoping this holy war is resolved before anyone violates other Commandments.

Glenn Beck loses 'raped and murdered' arbitration

By Eriq Gardner

Fox News' Glenn Beck has lost a claim that a website called glennbeckrapedandmurderedayounggirlin1990.com was registered in bad faith and in violation of his trademark rights.

The website was founded by Isaac Eiland-Hall earlier this year in response to a joke on odd-news site Fark about Beck's lack of denial for a non-existent murder/rape. Eiland-Hall argued to WIPO that he registered the website as a satirical critique of Beck's conspiratorial politics.

WIPO's arbitration panel agreed that the website appeared "to be engaged in a parody of the style or methodology that (Eiland-Hall) appears genuinely to believe is employed by (Beck) in the provision of political commentary, and for that reason (Eiland-Hall) can be said to be making a political statement."

The domain name dispute resolution body added Eiland-Hall's speech was "strongly protected" under the First Amendment. Here's the decision.

Having won the case, Eiland-Hall rejoiced by giving the website domain to Beck with a thumb-in-the-nose letter:

"It bears observing that by bringing the WIPO complaint, you took what was merely one small critique meme, in a seas of internet memes, and turned it into a super-meme. Then, in pressing forward (by not withdrawing the complaint and instead filing additional briefs), you turned the super-meme into an object lesson in First Amendment principles...

Rather than choosing to strive for excellence and civic contribution, you simply pander the fears and insecurities of your audience. And in the process, you do them, and us all, a great deal of harm.

Shame on you Mr. Beck..."

The website, glennbeckrapedandmurderedayounggirlin1990.com, is now down.

Disney settles Pixar 'Luxo, Jr.' lamp case

By Eriq Gardner

Anybody who's ever seen an animated film by Disney's Pixar should be familiar with the iconic squeaky desk lamp character featured in the opening credits. 

The character was created by Pixar chief creative officer John Lasseter more than two decades ago for Pixar's first film — an animated short entitled "Luxo, Jr." The short earned an Academy Award nomination, and the character has become an iconic mascot for the studio ever since.

But two months ago, trouble broke out after Disney began selling limited-edition "Luxo Jr." lamps packaged with a Blu-ray version of "Up." There also is a six-foot animatronic version of the lamp at Walt Disney World.

Norwegian lamp-producing giant Luxo AS wasn't exactly turned on by Disney's growing commercialization of the lamp. On September 3, Luxo sued Disney for trademark infringement. saying the sale of Pixar lamps would "cause devastating damage to Luxo and dilute the goodwill which Luxo has built up."

Fortunately, Pixar won't have to turn off the lights on its famous character. 

We've learned that the parties have reach an amicable settlement and the lawsuit has been withdrawn. Disney will stay out of the lighting business, and for now we hear that Luxo doesn't have any problem with "artistic renditions" of the lamp.

Pixar may be off the hook — but what about Luxo, Jr.?

Check out this short film produced two weeks ago by CollegeHumor.com where Jr. gets into criminal trouble and ends up being sentenced by a judge to electrocution. Get it?

Judge blocks Sublime bandmembers from using name

By Matthew Belloni

A Los Angeles judge has shut down an effort by former bandmembers of Sublime to perform under the name.

The preliminary injunction was issued today in a trademark lawsuit brought by the estate of the 90’s ska-punk band's lead singer Bradley Nowell. Nowell died of a drug overdose in 1996, but surviving band members Eric Wilson and Bud Gaugh have continued to perform. For years they played as the Long Beach Dub Allstars but recently they revived the Sublime moniker when they recruited newcomer Rome Ramirez as lead vocalist.

That didn’t sit well with Nowell’s family. In advance of the band’s performance at the Cypress Hill Smokeout Festival, the Bradley Nowell estate and merchandising entity filed a trademark infringement suit on Oct. 21 in U.S. District Court in Los Angeles.

"Prior to his untimely passing, both Bud and Eric acknowledged that Brad Nowell was the sole owner of the name Sublime,” the Nowell family posted on the band’s MySpace page. “It was Brad's expressed intention that no one use the name Sublime in any group that did not include him, and Brad even registered the trademark 'Sublime' under his own name."

Now Judge Howard Matz has agreed with the family, today issuing the injunction citing the estate's likelihood of prevailing on its trademark claim. Matz asked attorneys for the estate—Howard Weitzman, Jeremiah Reynolds and Randall Whattoff of Santa Monica’s Kinsella Weitzman firm—to draw up a written injunction for him to sign.

The injunction, when finalized, will likely block the band from:

• Using the “Sublime” name and trademark (or anything similar) in connection with any live performances or “musical sound recordings;”

• Using the “Sublime” name or trademark on any clothing, posters, books related to music, calendars, decals or stickers;

• Using any Internet domain name containing the “Sublime” name or trademark, or any other confusingly similar domain name.

 UPDATE:

Nowell's family has issued a statement:  "We are gratified the Court ruled in our favor and found that Bud, Eric and Rome could not use the name Sublime without first obtaining permission from Brad's heirs.  We believe this will help protect and preserve Brad's musical legacy."

The band also issued a statement: "Our goal continues to be sharing the music and message of Sublime with all of our fans around the world.  We intend to take the court's advice and work on a business solution to this issue.  We hope the Estate follows suit so the music of Sublime can live on and be accessible to everyone."
 

'Twilight' fans told to stop making Rob Pattinson t-shirts

By Eriq Gardner

When most people think of the intellectual property fights with user-generated content websites, they think of cases like Viacom v. YouTube. Assuming that slow-moving case ever gets to trial, a court will determine what kinds of legal obligations the video sharing website has in policing its network for copyright infringement. 

Here's an interesting new case to watch:

Summit Entertainment filed a lawsuit last week in California district court against print-on-demand merchandising outlet Zazzle.com. The site allows users to upload images and place them on t-shirts, coffee mugs, mouse pads and other items.

According to the complaint, Zazzle's users are stealing "tens of thousands" of trademarked images from its highly successful "Twilight" series, putting them on merchandise, and thus interfering with Summit's exclusive licensing arrangements.

In November, 2008, Summit sent Zazzle a cease-and-desist letter. The studio alleges that Zazzle continues to market and sell these items and that the defendant's conduct constitutes "willful" infringement. Summit seeks an injunction, an accounting, actual damages and punitive damages.

We'll have to wait to see whether Zazzle tries to shift legal responsibility to its users. The website makes its users sign an agreement agreeing not to invade intellectual property rights, threatening to cancel the accounts of those in violation. Interestingly, Zazzle claims that users assign them the rights of images uploaded to the website.

No word, though, on whether the company takes active steps to monitor for infringement, but the website does provide an e-mail address for IP owners to send complaints of misuse.

WWE vs. wine school; trademark smackdown!

By Eriq Gardner

World Wrestling Entertainment has sent a cease-and-desist letter to the Wine School of Philadelphia over a wine series that was to be called "Sommelier Smackdown."

The WWE claims trademark rights to the term "smackdown" and wants to cork the school's attempt to hold a competition that pits a professional sommelier's food and wine pairings against those of a member of the Wine School team.

According to our sober investigative efforts, in August 2005 the WWE filed for a trademark on "Friday Night Smackdown," the show that garners more than 3 million viewers each week. That's three years earlier than the Wine School's registration attempt and also beats Stellar Productions' attempt to trademark "Movie Smackdown." 

Looks like WWE chairman Vince McMahon has an edge in this trademark battle, but perhaps the Wine School can show their mark won't confuse consumers or dilute the WWE mark.

In a press release, Wine School founder Keith Wallace challenges McMahon and WWE superstar Chris Jericho to a wine-tasting double-team cage match, saying, "They don't have a leg to stand on. I am not going to bow down to a bully."

Is Rolling Stone allowed to sell T-shirts of its famous covers?

By Eriq Gardner

Most musicians would love to be on the cover of Rolling Stone. Back in its heyday, a cover spot was even worth millions of dollars in record and concert sales.

But take a Rolling Stone cover, slap it on to a T-shirt and sell it to fans — that equals trouble.

The Wenner Media publication is now being sued by concert promotion giant Live Nation, F.E.A. Merchandising and Bravado International Group Merchandising Services for hawking products that feature the names and likenesses of popular musical artists like Nirvana, Beyonce and Run-DMC.

According to a complaint filed in California district court, the plaintiffs claim Wenner violated the trademarks and rights of publicity for numerous "Live Nation Artists" in connection with merchandising sold at Macy's and Wal-Mart.

"Defendants have done so without any input, approval, or quality control from the Artists,"  says the lawsuit, filed by Howard King and Seth Miller at LA's King Holmes Paterno & Berliner.

Seems it's impossible to get a break on the IP front these days. Just yesterday, Rolling Stone broke news that Guns n' Roses was being sued for violating the IP of a German electro artist by incorporating some of the artist's ambient noise on its last album. Now Live Nation, which represents the interests of artists thanks to exclusive licensing deals, is suing a media company for using its own cover images on tote bags.

A court will decide whether Wenner's use of these covers dilutes the IP value of those artists, creates the impression that they are endorsing the merchandise, or unfairly competes with the plaintiffs in the merch market. But we're wondering whether the litigation will impact which artists Rolling Stone chooses to grace its covers. 

Michael Jackson estate goes after 'Heal the World' charity

By Eriq Gardner

As the administrators of Michael Jackson's estate and the late singer's family continue to squabble over assets, hopefully all parties can at least agree that there's no place for a purported charity that allegedly tricks Michael Jackson fans into giving it money.

John Branca and John McClain, administrators of the estate, have filed a lawsuit in California district court against the Heal the World Foundation, a company formed the day Michael Jackson died to carry on the work of Jackson's Foundation.

According to the complaint, two days after Jackson's death, HTWF president Melinda Johnson posted a message on the Internet that said, "It is unclear if the Jackson Family will want to continue his charity work and humanitarian legacy and in what matter. The staff at HTWF only ask that the public be patient with us and allow the family time to grieve as we wait for the direction they would have us go..."

After the posting, fans debated the legitimacy of HTWF but some confirmed it had donated money. Jackson once wrote a hit song called "Heal the World," registered the trademark, and donated a lot of money to charity, but the plaintiffs say HTWF has no connection with the Jackson family at all. Suing for trademark infringement, unfair competition, cybersquatting, and violation of publicity rights, Branca and McClain ask for a permanent restraining order.

'Glenn Beck Raped and Murdered' website fights back in domain name flap

By Eriq Gardner

An individual named Isaac Eiland-Hall is sticking up for his right to run a website called glennbeckrapedandmurderedayounggirlin1990.com.

Fox News host and recent Time Magazine cover boy Glenn Beck is the target of the satirical site whose domain name is a riff on a joke made by comedian Gilbert Gottfried at a Comedy Central roast that rumors that "Bob Saget raped and murdered a girl in 1990" have to stop. After a commenter on the odd-news website Fark asked, "Why haven't we had an official response to the rumor that Glenn Beck raped and murdered a girl in 1990?" the joke became a web sensation on Digg, Reddit and other social-media websites.

Beck, who has become notorious for his conspiratorial rants, wasn't amused when Eiland-Hall registered glennbeckrapedandmurderedayounggirlin1990.com — featuring videos of crying women and purportedly examining Beck's lack of denial about the rape/murder — and earlier this month he filed an administrative complaint with WIPO. The complaint claimed that the website was improperly using a trademark and the domain name was registered and being used in bad faith. (Beck also seems to be exploring a defamation claim.)

Yesterday, Eiland-Hall's lawyer, Marc Randazza, filed his response. In it, he says the site should be his because it's a valid critique of Beck's politics.

"The website is a legitimate criticism site, consists of political satire, and thus the Respondent has legitimate rights in the domain name," the response brief reads. "Mr. Beck's attempt to censor this criticism is improper and should be rejected."

The brief offers an history of esoteric inside jokes that became Internet meme phenomena, from "Mr. Spock Ate My Balls" to Richard Gere's unflattering "Gerbil story." But this case also makes a political point, noting an interview Beck conducted with Congressman Keith Ellison, a Muslim, in which Beck said, "I like Muslims, I've been to mosques...And I have to tell you, I have been nervous about this interview because what I feel like saying is, sir, prove to me that you are not working with our enemies."