Focus on Intellectual Property

Trademark prosecution and enforcement can be a lot of fun, and there are plenty of examples of entertaining trademark disputes.

One of my all-time favourites involves the website ThinkGeek.com, which sells all sorts of neat stuff, such as electronic T-shirts, ninja fighting chopsticks and Star Trek bathrobes. Two years ago the site launched a fake product for April Fools' Day called "Canned Unicorn Meat," which was marketed as "The New White Meat." The humour was lost on National Pork Board members who instructed their lawyers to send Think Geek a demand letter, claiming infringement and dilution of the Board's trademark rights in "the other white meat."

In a similar case, a teenager looking for money to fund his post-secondary education started up a clothing company called South Butt, which sold products with taglines such as "Never Stop Relaxing." He was sued by the outdoor clothing company North Face, whose tagline was "Never Stop Exploring." North Face claimed a likelihood of confusion between the marks, which the teenager rejected on the basis that consumers were perfectly capable of differentiating between butts and faces. The parties later settled.

North of the border, and several years earlier, a B.C. teenager named Michael Rowe started a web design company which he operated through MikeRoweSoft.com. Microsoft sent him a 25-page demand letter, at which point Rowe turned to the media. What resulted was a public relations nightmare for Microsoft. After going to the media, his website generated so much traffic he had to upgrade his ISP service. Apparently, the settlement terms included a transfer of the domain name (MikeRoweSoft.com now bounces you to Microsoft's website) in exchange for a subscription to the Microsoft Developer Network, an Xbox, a bunch of games, some training and an all-expenses paid trip to the Microsoft Research Tech Fest.

Microsoft's competitors have also had their fair share of trademark troubles. Apple Inc. was involved in litigation for decades with the Beatles' record company, Apple Corp., over the use of the term "Apple." The matter was settled in 2007 with Apple Inc. purchasing all trademarks relating to "Apple," and licensing back some of the marks to Apple Corp.

That may have ended Apple's trademark issues with the Beatles, but there was a much more costly settlement to come. Several years ago, Apple set up a company to purchase the "iPad" trademark rights from various companies around the world. One of those transactions was with a Taiwanese company and involved the purchase of various iPad registrations for the equivalent of about $56,000. However, once the iPad tablet achieved broad commercial success, the Taiwanese company claimed that the purchase did not include rights to the trademark in China. The parties ended up in court, and Apple's tablets were pulled from retail stores in China (which is one of its largest markets). Apple reportedly settled the lawsuit for $60 million.

Recently, Sony tested the boundaries of normal trademark infringement claims by suing one of its actors. The actor, Jerry Lambert, originally appeared as fictional marketing vice-president Kevin Butler in TV commercials for Sony's PlayStation. The commercials were successful and helped reinvigorate the PlayStation brand. However, after that work dried up, the actor moved on to play a similar role in a commercial for Bridgestone tires, alongside other actors who were playing games on Nintendo's Wii. Sony took offence and sued.

"We invested significant resources in bringing the Kevin Butler character to life and he's become an iconic personality directly associated with PlayStation products over the years. Use of the Kevin Butler character to sell products other than those from PlayStation misappropriates Sony's intellectual property, creates confusion in the market and causes damage to Sony," the company said.

Bridgestone responded by saying the Kevin Butler character did not appear in its advertisements (it was simply the same actor), that Sony had no trademark rights in him in the actor or character, and that there was no likelihood of confusion. At press time, both sides were still locked in battle.

Another pending trademark claim involves the ice cream company Ben and Jerry's, which maintains a family-friendly image. It recently sued an adult entertainment company for using parodies of Ben and Jerry's products in a line of x-rated movies. The movies were entitled "Ben and Cherry's XXX Ice Cream," and featured subtitles such as "Boston Cream Thighs," "Chocolate Fudge Babes," and "Peanut Butter DCups," which are similar to Ben and Jerry's "Boston Cream Pie," "Chocolate Fudge Brownie" and "Peanut Butter Cup" flavours.

There is somewhat of a Canadian equivalent to this case too. In the 1990s, the organizers of the Miss Universe pageant sued the organizers of the Miss Nude Universe pageant for trademark infringement. The trial judge dismissed the case, concluding that there was a vast difference in "ambiance" between the two contests which rendered the later trademark distinctive. The Federal Court of Appeal disagreed, and overturned the decision on the basis that the Miss Universe mark was famous and was completely subsumed within the Miss Nude Universe mark.

There have been other great trademark disputes. In 2006, Hershey's sued a drug dealer for trademark dilution after the dealer laced Hershey's chocolate Kisses with drugs. In a domain name dispute, the Tolkien estate sent a demand letter to the owners of shiremail.com, despite the fact that a shire is an administrative unit in England which has been in use for centuries.

And last year, Subway sent out demand letters to stop the use of "footlong" in association with sandwiches, despite the fact that Subway's trademark application for the term had not been successful (it is currently being opposed by several other restaurant chains). If Subway's application is successful -- which seems unlikely because of the descriptive nature of the mark -- then there may well be additional lawsuits for our enjoyment next year.

This article originally appeared in the November 23, 2012 issue of The Lawyers Weekly.