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Opportunity is missed by most people because it is dressed in overalls and looks like work.
Thomas Edison

In determining whether there is trademark infringement, a court will look for a “likelihood of confusion” caused by the two marks in question. Although trademark law varies in the United States, depending on which state the action is brought, the courts balance several common factors for a trademark infringement suit.

The courts will generally weigh more heavily on these factors when making a trademark infringement determination:

Comparison of the Marks
This factor is generally considered the most important in trademark infringement cases. In comparing the marks at issue, a court considers appearance such as common letters, pronunciation, meaning, and commercial impression.

Strength of the Mark
The strength of a trademark is based on whether the mark is suggestive, fanciful, or arbitrary.

A mark that is suggestive of the goods or services is considered the weakest form of marks (i.e. a computer retailer named “Computer Store”). On the other hand, an arbitrary mark is considered as a strong mark because the name has no relation to the underlying goods or services (i.e. BlackBerry). In the middle lie fanciful marks, which are comprised of made up words (i.e. Google).

Comparison of the Goods or Services
This factor looks to whether the goods or services sold under the respective marks are closely related.

Channels of Trade, Purchaser and Pricing
Under this factor, a court will analyze how the mark appears with the goods and the target consumer. A consumer who takes time in making an expensive purchase is less likely to be confused by similar marks. However, a consumer purchasing an inexpensive item is more susceptible to confusion.

Actual Confusion
A court will also look to see if there has been actual confusion, such as customers calling the wrong business or returning products to the wrong company.

The determination of trademark infringement is not limited to these factors and there is no formula to determine infringement. It is subjective and in the eyes of the court.

Humility is not thinking less of yourself, but thinking of yourself less.
C.S. Lewis

As expected a summary judgment has been issued by the judge in the Oriol v. H&M matter. However, Judge Real has dismissed Oriol’s suit against H&M, concluding that the Plaintiff did not demonstrate any substantially similar (or protectable) elements between the “LA Fingers” photograph shot by Oriol and the shirt in question sold at H&M retail stores.

The judge noted that the graininess of the photograph opposed to the shirt were different, as well as other elements in the two works such as the background, camera angle and lighting. 

An appeal by Oriol’s team is expected.

In the related matter of Oriol v. Brandy Melville, a judge entered a default judgment against the Defendant last month for failure to defend the action.

This is an interesting outcome given that there appears to be a heavy influence from smaller artists and designs with products sold in larger retail stores. The attorneys for Oriol stated that “The fight will go on against those clothing manufacturers that continue to misappropriate protected artistic expression under the guise of ‘inspiration.’”

Estevan Oriol has filed an Opposition to a second H&M Motion to Dismiss. This comes after a U.S. District Court dismissed Oriol’s original complaint under Federal Rule of Civil Procedure 12(b)(6) back in October. The complaint was dismissed because Oriol did not identify the protectable elements of his work and how his work and and H&M t-shirt are similar. 

According to the amended pleadings, Oriol claims his work contains unique expressive elements that are sufficiently original (separating it from the mere idea of using hands to form an “LA” symbol), and thus, broadly protected under the Copyright Act. 

Oriol also contends that the designs H&M purportedly were inspired by in creation of the controversial t-shirt were not in existence until after July 2012, insisting that date stamps were doctored. These images on Google and Instagram show different females making a “L.A.” gesture with their hands.

Additionally, Oriol claims he holds a valid copyright for his L.A. Fingers photograph issued by the U.S. Copyright Office. A public records search shows that a copyright for “LA Fingers” was registered by Estevan Oriol on June 7, 2013. A Ninth Circuit ruling requires only a complete copyright application to maintain a valid copyright complaint.

The hearing is set for next Monday, January 21, 2014. Sources have indicated that the judge has taken the motions under submission and that a summary judgement may be coming.

Build your own dreams, or someone else will hire you to build theirs.
Farrah Gray

1. What is a trademark?

A trademark is a word, symbol, or phrase, used to identify a particular company’s products and distinguish them from the products of another. Trademarks protect the words and symbols that identify the sources of goods and services

Example:  Nike & the “Swoosh” logo are both used to identify the products made by Nike. From the word “Nike” or the “Swoosh” logo, a consumer can distinguish a Nike product from products made by another company (Reebok, Adidas etc.).

If the company is provides services rather than products, their marks are “service marks” and generally treated the same as trademarks.

2. What is the difference between a trademark and a registered trademark?

Any distinctive name, symbol, or word can be designated as trademarked by using the symbol ™. The ™ symbol notifies others that the company owns the product’s name and design. However, a company is not protected from another producing a similar product or using name by simply using the ™ symbol.

In the event of a dispute with an unregistered trademark, the company must prove that it was the first to use the name or design. Further, a trademark that is unregistered may be left without a legal defense.

A registered trademark is identified by the symbol ®. This symbol may be used once a trademark is registered with the United States Patent & Trademark Office (USPTO) and is considered a “Federally Registered Trademark.”

3. Do trademarks, copyrights, and patents protect the same things?

No. Trademarks, copyrights, and patents protect different types of intellectual property.

A trademark typically protects brand names and logos used on goods. A copyright protects an original artistic or literary work. A patent protects an invention.

4.  Why should I register a trademark?

Registration of a trademark constitutes nationwide constructive notice to others that the trademark is owned by the registering party.

There are several benefits of registering, including: (1) enabling a party to bring an infringement suit in federal court;  (2) allowing a party to potentially recover treble damages, attorneys fees, and other remedies; and (3) registered trademarks can, after five years, become “incontestable,” conclusively establishing the exclusive right to use the mark.

5.  What is trademark infringement?

The standard for a trademark infringement suit is “likelihood of confusion.”  In a trademark infringement suit, the court will consider whether by using a mark that is too similar to a registered trademark in the sale of goods, there may likely be confusion with the customer as to who created the goods in the first place.

Example:  Using a “Swoosh” logo on a pair of shoes may confuse people into thinking they are buying a Nike product.

In deciding whether consumers are likely to be confused, the courts will typically look to a number of factors, including: (1) the strength of the mark; (2) the proximity of the goods; (3) the similarity of the marks; (4) evidence of actual confusion; (5) the similarity of marketing channels used; (6) the degree of caution exercised by the typical purchaser; and (7) the defendant’s intent. Polaroid Corp. v. Polarad Elect. Corp., 287 F.2d 492 (2d Cir.), cert. denied, 368 U.S. 820 (1961).

6.  What is trademark dilution?

An owner of a trademark can also bring suit for “trademark dilution” under either federal or state law.

Under federal law, the standard used by courts is whether the mark is “famous.” To determine whether the mark is “famous” or not, the court will look at the following factors: (1) the degree of inherent or acquired distinctiveness; (2) the duration and extent of use; (3) the amount of advertising and publicity; (4) the geographic extent of the market; (5) the channels of trade; (6) the degree of recognition in trading areas; (7) any use of similar marks by third parties; and (8) whether the mark is registered.

Under (most) state laws, a mark does not need to be “famous” for a dilution claim. Instead, the standard is that (1) the mark has “selling power” or, in other words, a distinctive quality; and (2) the two marks are substantially similar.

No matter how many close people you have in your network, if you want to be truly great, you must have three essential people in your life at all times:

1. A person who is older and more successful than you to learn from;

2. A person who is equal to you to exchange ideas with;

3. A person below you to coach and keep you energized.

Brenton Weyi

The ultimate achievement is to defeat the enemy without even coming to battle.

Sun Tzu

A settlement has been proposed in the Morey v. Louis Vuitton class action lawsuit. The class action alleges that Louis Vuitton violated California Civil Code §1747.08, prohibiting retailers from requesting and recording personal identification information (i.e. address, phone number, e-mail address) in conjunction with certain credit card transactions.

Under the proposed settlement, the luxury brand would provide a Louis Vuitton Merchandise Certificate to customers who made a purchase using a credit card at one of its California retail locations if, in connection with that purchase, a LV employee requested and recorded the customer’s personal identification information for any reason other than shipping, delivery, servicing or repairing of the purchased merchandise or for special orders or paid holds, or other special purpose incidental but related to the individual credit card transaction.

For more information on the settlement, see the Morey v. Louis Vuitton Settlement website.

People who have been starved of water for a long time will drink anything, even if it’s polluted.
N.T. Wright
Estevan Oriol vs. H&M, Brandy Melville
In 1995, celebrity photographer Estevan Oriol shot a photo of a female’s fingers forming the letters “LA.” The symbolic imagery represented not only the city of Los Angeles, Oriol’s hometown, but the rugged street culture and gang influences of LA. Aptly titled, “LA Hands,” the photograph has become an iconic image throughout Southern California lifestyle and culture. Oriol also printed the image onto t-shirts as he launched his own clothing line in 2006.
Fast forward to 2013 when Brandy Melville, an Italian fashion house, designed a women’s top featuring an image that is strikingly similar to Oriol’s original work of art. The Melville top in question was sold exclusively at H&M retail stores worldwide.
As a result, Oriol and the Yourist Law Corporation have filed a copyright infringement lawsuit in the U.S. District Court in Los Angeles alleging that the t-shirt sold by H&M and manufactured by Melville improperly uses and misappropriates Oriol’s copyrighted photo.
According to Oriol and his lawyers, H&M and Brandy Melville misappropriated his “LA Hands” photograph by printing a similar image on women’s tank tops sold in H&M stores. The lawsuit filed by Oriol contend that the Defendants infringed on his artistic work by using his photograph to create a “derivative and substantially similar image” on women’s tank tops that are sold worldwide in H&M retail stores.
The defendants in this matter will likely argue that their work falls under the Transformative Use Doctrine and thus not an infringement on Oriol’s work. The judge will likely consider whether Oriol’s original photo was used to create something new by adding a new meaning or merely copied into another work.

Estevan Oriol vs. H&M, Brandy Melville

In 1995, celebrity photographer Estevan Oriol shot a photo of a female’s fingers forming the letters “LA.” The symbolic imagery represented not only the city of Los Angeles, Oriol’s hometown, but the rugged street culture and gang influences of LA. Aptly titled, “LA Hands,” the photograph has become an iconic image throughout Southern California lifestyle and culture. Oriol also printed the image onto t-shirts as he launched his own clothing line in 2006.

Fast forward to 2013 when Brandy Melville, an Italian fashion house, designed a women’s top featuring an image that is strikingly similar to Oriol’s original work of art. The Melville top in question was sold exclusively at H&M retail stores worldwide.

As a result, Oriol and the Yourist Law Corporation have filed a copyright infringement lawsuit in the U.S. District Court in Los Angeles alleging that the t-shirt sold by H&M and manufactured by Melville improperly uses and misappropriates Oriol’s copyrighted photo.

According to Oriol and his lawyers, H&M and Brandy Melville misappropriated his “LA Hands” photograph by printing a similar image on women’s tank tops sold in H&M stores. The lawsuit filed by Oriol contend that the Defendants infringed on his artistic work by using his photograph to create a “derivative and substantially similar image” on women’s tank tops that are sold worldwide in H&M retail stores.

The defendants in this matter will likely argue that their work falls under the Transformative Use Doctrine and thus not an infringement on Oriol’s work. The judge will likely consider whether Oriol’s original photo was used to create something new by adding a new meaning or merely copied into another work.

The less I needed, the better I felt.
Charles Bukowski

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