As we enter the Christmas season, it is time to reflect on a busy year in the intellectual property world. In this article we recap some of the amusing courtroom dramas, wacky inventions, and racy trade mark cases that have arisen in New Zealand and overseas in 2012.
X-rated ice cream
Well-known ice cream maker Ben & Jerry's is not averse to using risqué names for its own ice creams, having produced flavours such as "Schweddy Balls" and "Karamel Sutra". However, a "Ben & Cherry's" series of adult video DVDs released by a third party in the USA was a step too far for the company. Ben & Jerry's issued proceedings against the makers of the "Ben & Cherry's" adult videos, eventually obtaining an injunction by consent requiring the DVDs to be recalled.
The source of inspiration for the theme of the "Ben & Cherry's" adult videos is striking. Ben & Jerry's ice cream flavours include "Boston Cream Pie," "New York Super Fudge Chunk" and "Peanut Butter Cup". The "Ben & Cherry's" adult videos used titles such as "Boston Cream Thigh", "New York Fat & Chunky" and "Peanut Butter D-Cup". The DVD box covers also incorporated imagery similarly used on Ben & Jerry's packaging, including grazing cows, green grass and white clouds appearing on ice cream tubs.
The North Face was unimpressed when it discovered that James Winkelmann Senior and Junior began selling a clothing line named "The Butt Face". The North Face's frustration was compounded by the fact that they reached a settlement agreement in 2009 relating to the Winkelmanns' use of "The South Butt" name for clothing. The North Face issued proceedings against the Winkelmanns for violation of the settlement agreement. The company also claimed that survey evidence shows around 35% of people surveyed associated "The Butt Face" name with The North Face.
The media attention from The North Face's proceedings is said to have increased the popularity of Winkelmann Junior's other clothing line, "Olop", a parody of Ralph Lauren's Polo. Winkelmann uses the "Olop" name alongside a logo of a horse riding a human figure. No word yet on whether Ralph Lauren has taken issue with Winkelmann's activities.
New Zealander Levi Hawken became an internet sensation when he used the phrase "nek minnit" in a Youtube video. Reported in our earlier article, the video shows Levi saying "Left my scooter outside the dairy. Nek minnit...", as he points to the remains of his scooter on the ground. The video has been viewed millions of times, and the phrase "nek minnit" is now popularly used in everyday language in New Zealand.
Levi was upset when Supré, the Australian fashion retail chain, began selling t-shirts in New Zealand bearing the phrase "Nek Minute". Levi's concerns were aired on consumer affairs programme Fair Go, after which Supré received a negative public reaction via social media, such as the Facebook page "Used to like Supré, Nek Minnit".
A New Zealand beverage-maker, Makan Distiller, filed an application to register the trade mark NEK MINIT for soft drinks. Makan Distiller's trade mark application has since been assigned to Levi, and Levi has successfully registered the NEK MINNIT trade mark in New Zealand for a variety of goods and services.
A crack in the case
The Apple v Samsung patent infringement case in the USA was a battle between two technology heavyweights involving a significant claim of damages by Apple. Understandably, things got tense due to the tight timeframes set for the proceeding.
With four hours left to present its case, Apple sought to adduce 75 pages of briefings for 22 of its witnesses. US District Court Judge Lucy Koh reportedly reacted by saying "I mean come on. 75 pages! 75 pages! You want me to do an order on 75 pages, (and) unless you're smoking crack, you know these witnesses aren't going to be called when you have less than four hours."
Apple's lawyer is said to have replied to Judge Koh, "Your honour, first of all, I'm not smoking crack. I can promise you that." Perhaps fortunately for Apple, the case was decided by jury.
All sorts of weird and wonderful inventions are claimed in patent applications. How about a patent application for a garment that looks like a stretched g-string with adjustable straps that extend over one's shoulders? That is how you might describe the invention claimed in a USA patent application for a "Scrotal Support Garment".
The images in this application may even seem familiar to some. That is exactly what the patent examiner thought when they objected to registration of the application, citing as prior art the swimsuit worn by Sacha Baron Cohen in the movie Borat: Cultural Learnings of America for Make Benefit Glorious Nation of Kazakhstan. The examiner even went to the effort of including in the examination report images of Sacha Baron Cohen wearing the amusing one-piece.
Although the "Christmas crackers" above are somewhat unusual, they are still grounded in serious intellectual property issues, including the management of reputation and brand identity in conflicts. We are happy to advise on protection and enforcement of your intellectual property rights, and strategies for managing contentious issues. But for now, have a great Christmas!