Archive for the ‘Litigation’ Category

Pharma Industry Challenges Drug Take-Back Law

Monday, December 17th, 2012

The pharmaceutical industry – represented by the Pharmaceutical Research and Manufacturers of America, (“PhRMA”), the Generic Pharmaceutical Association and the Biotechnology Industry Organization - is challenging an Alameda County, California ordinance that requires the pharma industry to  be  responsible for running — and paying for — a program that would allow consumers to turn in unused medicines for proper disposal.   Drug companies have to submit plans for accomplishing it by July 1, 2013.  The pharma industry filed its lawsuit on December 7, 2012.

Such take-back programs exist; however, most existing programs are run and paid for by local or other government agencies.

Supporters of the ordinance argue that the industry that profits from the sales of these products should have the financial responsibility for proper management and disposal.  In other words, this law does not really enact new programs.  Rather, it shifts the burden of these programs from taxpayers to the pharmaceutical companies.

The pharma industry counters that the law is unconstitutional.   PhRMA’s general counsel, James Spears, asserts, ““They are telling a company in New Jersey that you have to come in and design and implement and pay for a municipal service in California.  This program is one where the cost is shifted to companies and individuals who are not located in Alameda County and who won’t be served by it.”

Mr. Spears said it would be best left to sanitation departments and law enforcement agencies, which must be involved if narcotics, like pain pills, were to be transported.

Alameda’s ordinance is based in part on on the system in British Columbia and two other Canadian provinces.

This should be an interesting case to watch.  On balance, we suspect the ordinance will ultimately be upheld.  From our perspective, there is really nothing unconstitutional about the law.   If a company based in New Jersey can sell its products in Alameda county there is really no hardship is operated a disposal program there.

The original complaint may be found here.

L&G Wins Injunction

Friday, November 16th, 2012

Lombard & Geliebter LLP partners, Mathew Lombard and Darren Geliebter, secured a trademark victory for Aventis Pharmaceuticals Inc.

After an opposition proceeding at the U.S. Patent & Trademark Office’s Trademark Trial & Appeal Board (“TTAB”), Aventis Pharmaceuticals filed an appeal with the District Court for the Southern District of New York seeking review of the TTAB’s decision.

When negotiations with the applicant/infringer failed to achieve a settlement, Aventis pursued the action in court.  On September 28, 2012, Judge Engelmayer issued a default judgment in favor of Aventis.   The order finds that Heal the World, Inc.’s applied-for trademarks LAZACOR and LAZACOR+ infringe and dilute Aventis’ NASACORT mark.

Accordingly, the court ordered the U.S. Patent & Trademark Office to refuse registration of LAZACOR and LAZACOR+, enjoined Heal the World from ongoing use of the marks and ordered Heal the World to destroy existing products, labels and advertising and to take down any and all web sites using the LAZACOR marks.

The deadline to appeal has expired, and the court’s order stands.

We congratulate Aventis Pharmaceuticals and its parent company, Sanofi, for a successful action.

Apple Sued Over iBooks Mark

Thursday, June 16th, 2011

A week after Apple was sued by iCloud Communications for the name of its upcoming cloud service, iCloud, NYC publisher John T. Colby is claiming that he has used the name long before Apple popularized the it.  In fact, he has sued Apple over the name.

According to Bloomberg:

Colby bought in 2006 and 2007 the assets of various entities owned by New York publisher Byron Preiss, who had published more than 1,000 hardcover and paperback books under the “ibooks” name starting in September 1999, according to the lawsuit, which was filed in U.S. District Court in Manhattan today.

Not surprisingly, no comment from Apple.

Apple Sued Over iCloud

Friday, June 10th, 2011

In the same week that Apple announced its plans to launch its iCloud service later this year (as a replacement to its less-than-impressive MobileMe service), Apple has been slapped with a lawsuit.  The lawsuit was filed yesterday in U.S. District Court in Arizona by iCloud Communications, LLC.  The suit alleges:

The goods and services with which Apple intends to use the “iCloud” mark are identical to or closely related to the goods and services that have been offered by iCloud Communications under the iCloud Marks since its formation in 2005. However, due to the worldwide media coverage given to and generated by Apple’s announcement of its “iCloud” services and the ensuing saturation advertising campaign pursued by Apple, the media and the general public have quickly come to associate the mark “iCloud” with Apple, rather than iCloud Communications.

A copy of the complaint may be found here.

Relatedly, German company, Simfy, has filed a lawsuit against Apple, claiming Apple rejected its iPod app (yes, “app” means application) because Simfy is a potential competitor to Apple’s iCloud service.

While Apple certainly markets its i-formative marks and products better than its competitors, Apple has rarely been first to market with many of those i-formative marks.

For example:

  • Cisco owned a 1999 registration for iPhone for “computer hardware and software for providing integrated telephone communication with computerized global information networks” long before Apple filed its first iPhone application in 2006;
  • InPub, LLC filed an application for iPhone in 1999; Apple filed its own in 2001; and
  • Mag-Tek, Inc. owns a 2008 registration (filed in 2000) of iPad for “KEYPADS FOR ENTRY OF PERSONAL IDENTIFICATION NUMBERS IN E-COMMERCE” (Apple first filed for iPad in 2003).

Let’s not forget Apple chose Mighty Mouse as the name for its first wireless mouse despite the fact that Mighty Mouse is a famous and iconic 20th Century Fox character.

Finally, McIntosh Labaratory had been using McIntosh as a trademark for audio, video and stereo equipment since 1978.  Apple’s first application for MacIntosh was not filed until 1984.

In all fairness, Apple does seem to be the first to have used and filed for iTunes.  (Even a broken clock has the right time twice a day.)

Despite Apple’s origins (or at least its original marketing stance) as an anti-establishment company (see its first ad here), Apple has become that which it first advertised against 25 years ago.

We suspect that Apple will ultimately pay iCloud Communications to own (or license) the mark iCloud.  It should nonetheless be an interesting case to follow.

 

 

NFL Wins Suit Against Florida Casino

Saturday, March 12th, 2011

The NFL won a victory against Jacks or Better LLC after the business repeatedly refused to remove a photo of Jaguars quarterback David Garrard from its web site. The photo illustrated the casino boat’s sports betting.

Jacks or Better LLC, whose casino boat departs from Mayport, Florida and sails off-shore for gambling, agreed to pay $5,000 and not use images of Garrard or any NFL trademarks without first getting written authorization.

This seems a pretty straight-forward case.  You can’t use a famous person’s likeness to market your own services without his permission or compensation.

Source.

 

 

 

How Things Change

Saturday, May 9th, 2009

Celebrity gossip Perez Hilton (né Mario Lavandeira)  has won an injunction against those who operate the site PerezRevenge.  The PerezRevenge site styled itself as an antidote to Lavandiera’s mean-spiritedness.

Here’s the rub:  When Lavandeira started his blogging career he called his site PageSixSixSix (a rather obvious play on the New York Post’s Page Six gossip column).  The Post objected, and won.

Then he adopted the moniker Perez Hilton, an obvious reference to Hilton heiress, Paris Hilton.  Indeed, a good choice since both are famous for nothing.

“He also routinely doctors celebrity photos, arguing that sprinkling cocaine dots on them is a transformative use, entitling him to publish them.”  Ugh.

It is ironic that one becomes famous “borrowing” from others, but when others borrow from you when seeking fame, you object like it’s nobody’s business…  With any luck, Perez (and Paris) will just be a flash in the pan.

How ‘bout that picture?

Liz Claiborne Loses Infringement Motion

Friday, April 24th, 2009

Yesterday, McKool Smith announced a partial summary judgment award in favor of its client against fashion house Liz Claiborne.

The court’s ruling may be found here.

QuikSilver Wins ROXY Battle

Friday, April 18th, 2008

On Wednesday, Quiksilver Inc. announced it had won a 6 year trademark battle against Kymsta Corp.

The decision stems from a 2002 lawsuit Quiksilver brought against Kymsta, which makes women’s clothing under the Roxywear, Roxywear by Roxanne Heptner and Roxywear by Roxx brands.  Quiksilver also sells clothing under the brand name ROXY.

Kymsta has 18 months to phase out its use of Roxywear, Roxywear by Roxanne Heptner and Roxywear by Roxx.  Thereafter, it cannot use the marks.

French Skiing Trademarks

Sunday, March 2nd, 2008

This judgment comes from the Grenoble (France) civil appeals court.  So, this article has meaning since I spent a good deal of time in Grenoble in the 1990s.

The trademarks “Écoles de ski internationale” and “ESI snowboard award école de ski internationale” were registered in 1994 by Michel Vachez an independent ski instructor based at l’Alpe-d’Huez.  Mr. Vachez created the first ski school independent of the Ecole de Ski Francais (ESF) in 1974.

SIMS was a federation which changed its structure to a union in 2001.  Mr. Vachez disagreed with the changes made at SIMS and demanded that the organization cease using his trademarks.  It did not.    The Grenoble civil appeals court ruled in favor of Mr. Vachez.

The judgment will mean that other independent ski schools will have to change their brochures, update websites and even alter the medals they award. The SIMS has 1700 instructors in 84 ski schools in France.

Big vs. Little

Wednesday, December 26th, 2007

2005 winner of the television show  "Hell’s Kitchen" is now facing a trademark lawsuit by one of the world’s largest recording labels.

Chef Terry Miller shot to fame on television series Hell’s Kitchen, when he won praise for his signature dish named Rockafella.

The prawn and mash creation then inspired the name of the Newcastle restaurant he opened after winning the competition.

UMG Recordings Inc, which owns the Roc-a-Fella’s record label and whose artists include Elton John, U2 and rapper Kanye West, are objecting to Terry registering Rockafella as a trademark to protect the restaurant’s name.

If a legal battle goes ahead it could result in a hearing in London next year.

You can read the entire story here.