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During the dot-com boom, domain name disputes dominated the trademark scene and filled court dockets. No longer. Now that the dot-com economy is kaboom, domain names don’t have the cachet that they had in the nineties. Although there are still active disputes involving domain names, they tend to be handled more swiftly and at a lower cost by online alternative dispute resolution forums. Courts made of bricks and mortar now handle disputes involving products you can touch and feel. Trademark lawyers are returning to the real world, which, it turns out, is not such a bad place to practice. With this in mind, we spent several weeks reviewing dockets in search of novel, cutting-edge, and — we’ll admit it — just plain fun cases. A few have roots in the electronic frontier, but the most fascinating ones tend to be of the off-line variety. George Lucas, the protective creator of Star Wars, filed suit against both an animated pornographic movie and a medical device. Mattel Inc. sued an artist who wanted to make art, not play house, with the Barbie doll. And Curious George keeps on getting in the middle of things — this time, it’s a trademark dispute involving Jews for Jesus. There are fewer trademark cases these days. In fiscal 2001, which ended in September, the number of federal suits filed fell by about 17 percent to fewer than 3,500. But trademark lawyers have plenty to keep them busy, so long as they follow our twist on Neil Young’s advice: Keep on rockin’ in the real world. Here, our ten favorite trademark cases that have been in the courts the past year. BARBIE IN THE BLENDER Case: Mattel Inc v. Walking Mountain Productions Inc. Filed: August 23, 1999 Court: Central District of California Plaintiff’s counsel: Michael Zeller and Adrian Pruetz of Los Angeles’ Quinn Emanuel Urquhart Oliver & Hedges and Albert Bedecarre, a partner in the firm’s San Francisco office Defense counsel: Partners Annette Hurst and Douglas Winthrop of San Francisco’s Howard, Rice, Nemerovski, Canady, Falk & Rabkin and Peter Eliasberg of the American Civil Liberties Union of Southern California Artist Tom Forsythe created a series of photos of vintage kitchen equipment with Mattel’s popular Barbie doll. Forsythe says that Barbie “symbolizes the real power of our culture — the seamless ability to commodify everything.” Mattel of El Segundo, Calif., has rigorously protected its Barbie trademark over the doll’s 42-year lifetime. Mattel has gone after, among others, fan-run Web sites, “bondage Barbies,” a chain of Barbie’s Grill restaurants, and a fan-produced magazine for Barbie doll collectors. Mattel sued Forsythe in 1999, charging the artist with trademark infringement. In August 2001 federal judge Ronald Lew in Los Angeles ruled that Forsythe’s project — which included nude Barbie dolls in such images as “The Barbie Enchiladas,” “Malted Barbie,” and “Blended Barbie” — was noncommercial and fell within the realm of fair use. The decision is under appeal. DILUTED WATER Case: Jack Daniel’s Properties Inc. v. Aubryn International Inc. Filed: June 14, 2001 Court: Central District of California Plaintiff’s counsel: Partner Christopher Larkin of Los Angeles’ Small Larkin Defense counsel: Frank DeSantis of the law office of Frank DeSantis in San Diego, Calif. Jack Daniel’s Properties Inc. of San Rafael, Calif., is the trademark enforcer for the Jack Daniel’s division of Louisville, Ky.’s Brown-Forman Corp. The agency sued Aubryn International of Uplands, Calif. Aubryn entered into an agreement with a man named Jack E. Daniels for water rights to 1,700 acres in Gorman, Calif. In May, Aubryn introduced a “Jack Daniel’s” bottled water. The distillery sued for trademark dilution. Aubryn countersued, charging the distillery with libel and filing a frivolous lawsuit. LOST IN CYBERSPACE Case: Interlochen Center for the Arts v. Interlocken International Camp Inc. d/b/a Interlocken Center for Experiential Learning Filed: September 10, 2001 Court: Northern District of Illinois Plaintiff’s counsel: Partner Daniel Lawrence Kegan of Chicago’s Kegan & Kegan Defense counsel: Partner Thomas Michael Durkin of Chicago’s Mayer Brown & Platt Interlochen Center for the Arts of Interlochen, Michigan, which has operated since 1921, is suing New Hampshire’s Interlocken Center for Experiential Living for trademark infringement. The New Hampshire company was founded in 1961. Both companies offer educational programs, music festivals, and arts camps, and have coexisted relatively peacefully for decades. The Internet changed their relationship. While it would be relatively difficult to set out — by car — for Michigan and wind up in New Hampshire, it’s an easy thing to do online. The Web addresses of the two organizations are almost identical: www.interlochen.org and www.interlocken.org. Interlochen claims that the similar-sounding names cause consumer confusion. It is seeking to be assigned the “interlocken” domain name in addition to its own. HEAVENLY NUMBER Case: Richard Childress Racing Enterprises v. Heavenly Enterprises; Childress Racing Enterprises v. Heavenly Designs Filed: September 13, 2001 Court: Middle District North Carolina Plaintiff’s counsel: Associate John Morrow, Jr., of Winston-Salem, N.C.’s Womble, Carlyle, Sandridge & Rice Defense counsel: None NASCAR racer Dale Earnhardt drove a black Chevrolet bearing a stylized number 3. His racing team, Childress Racing Enterprises, registered that mark in 1996. Earnhardt’s death during last February’s Daytona 500 left Childress with a dilemma: How to protect the mark without alienating loyal fans who have built and created memorials to the driver using the trademarked number 3. Trademark owners often face this issue in cyberspace: Should they crack down on fan’s Web sites that use trademarked material? Heavenly Designs and its owners Barry Baker and Billi Jo McCall Baker of Charlotte, N.C., apparently went too far when they started selling hats, T-shirts, decals, and stickers featuring Earnhardt’s racing number with wings and a halo. Childress sued. The case has been stayed pending resolution of a bankruptcy petition filed by the Bakers. TOO CURIOUS Case: Houghton Mifflin Co. v. Jews for Jesus Filed: September 4, 2001 Court: Southern District of New York Plaintiff’s counsel: Partner Marya Lenn Yee and associates Francine Miller and Linda Dragas of New York’s Donovan & Yee Defense counsel: Partner Spencer Scheer and associate Michael Imfeld of Woodland Hills, Calif.’s Polk, Scheer & Prober Jews for Jesus, a controversial Christian organization established in order to convert Jews to Christianity, was sued by publisher Houghton Mifflin for infringing the trademark, trade dress, and copyright associated with Curious George. George is the inquisitive monkey featured in a popular series of children’s books that includes “Curious George Rides a Bike,” “Curious George in the Big City,” and “Curious George Visits the Zoo.” Margaret and H. A. Rey created the character more than 50 years ago. Houghton Mifflin objected to a religious pamphlet, entitled “Are You Curious?” distributed by Jews for Jesus, which featured a Curious George lookalike reading the Bible. Defense counsel Scheer says that the case has already settled and that Jews for Jesus never intended to infringe the Curious George trademark. At press time, however, the docket remained open. HAVE A BLISSFUL DAY Case: Bliss Salon Day Spa v. Bliss World LLC Filed: April 17, 2000 Court: Northern District of Illinois Plaintiff’s counsel: Partner Harry Levy of Chicago’s Emrich & Dithmar Defense counsel: Partner Richard Lehv of New York’s Fross, Zelnick, Lehrman & Zissu Bliss Salon, a single-outlet suburban spa in the Chicago area, is trying to keep New York’s Bliss World from selling its products in local department stores. The Chicago Bliss argued that the term “bliss” had acquired a secondary meaning as a source of beauty care in the area and asked for an order barring a potential competitor from using the word in its name within a 100-mile radius of Chicago. A federal judge in Chicago didn’t grant an injunction, and the 7th U.S Circuit Court of Appeals upheld that ruling. In October, the appeals court noted that a number of other beauty-related businesses in the area were already using “bliss” in their names. That left New York’s Bliss World free to market its hair care products. The case is set for trial in November 2002. THE EMPIRE STRIKES EVERYWHERE Case: Lucasfilm Ltd. v. Minrad Inc. Filed: July 24, 2001 Court: Northern District of California Plaintiff’s counsel: Rosemary Tarlton, of counsel at San Francisco’s Morrison & Foerster Defense counsel: Partner Paul Perlman of the Buffalo, N.Y., office of Boca Raton, Fla.’s Hodgson Russ George Lucas has taken great pains to protect his Star Wars properties, says William Coates, a partner in the Menlo Park, Calif., office of San Francisco’s Orrick, Herrington & Sutcliffe. Even in markets where there is little likelihood of consumer confusion, Lucas is an active enforcer. Lucasfilm of San Rafael, Calif., for example, went after Minrad, a maker of laser-guided biopsy devices, including syringes and needles. Lucas objected to Minrad’s use of the term “light saber” for its instruments. The Jedi knights in Lucas’s science-fiction films, of course, have trademarked light sabers of their own. Although no order has yet been entered, David Anderman, Lucasfilm’s director of business affairs, says that the dispute has been settled for undisclosed terms. Case: Lucasfilm Ltd. v. Media Market Group Ltd. Filed: October 26, 2001 Court: Northern District of California Plaintiff’s counsel: Partner William Coates of the Menlo Park, Calif., office of San Francisco’s Orrick, Herrington & Sutcliffe Defense counsel: no notice of appearance filed with the court George Lucas went after New York’s Media Market Group Ltd. in a trademark case of a different kind to block distribution of an animated pornographic film known as Star Balz. Besides Star Wars characters, the film contains references to a number of other popular cultural icons from films such as “Titanic” and “Silence of the Lambs.” In one scene Star Wars’s arch-villain Darth Vader wears Mickey Mouse ears. Lucasfilms does not want viewers to think that it is in the pornography business or that its characters engage in such hanky-panky. TRADEMARK MADNESS Case: National Collegiate Athletic Association and Host Communications Inc. v. Coors Brewing Co. Filed: November 26, 2001 Court: Southern District of Indiana Plaintiff’s counsel: Partner James Hinshaw of Indianapolis’ Bingham, Summers, Welsh & Spilman (NCAA); partner Linda E. Roesch of Cincinnati’s Dinsmore & Shohl (Host Communications) Defense counsel: Coors has not yet filed a notice of appearance Indianapolis-based NCAA and Host Communications of Cincinnati have charged Golden, Colo.’s Coors Brewing with trademark infringement based on the brewer’s ticket giveaway from the 2001 “Final Four” men’s basketball tournament. Coors gave away four tickets as part of a sweepstakes contest, but failed to get permission from the NCAA. The suit was filed after lengthy communication with Coors, says an NCAA spokesperson. The athletic organization also wants to forestall a similar Coors ticket giveaway for the 2002 tournament. The NCAA wants Coors to be barred from sponsoring another contest for tickets, and also to quit using phrases such as “Final Four,” and “March Madness” in its promotions. This is not Coors’ first brush with sports-licensing problems. In 1999, Coors was a defendant in a trademark infringement suit brought by the National Football League in connection with a licensing deal the brewer made with the National Football Players Association. Coors was promoting a nonalcoholic beer as “the official brew of NFL players.” The NFL sued, saying that the league had an exclusive licensing agreement with a different brewer. In December 1999 the 2nd U.S. Circuit Court of Appeals ruled in the NFL’s favor. MANSION IS NOT A MARVEL Case: Biltmore Co. v. Marvel Enterprise Filed: August 1, 2001 Court: Western District of North Carolina Plaintiff’s counsel: Partner Steven Schnedler and associate Derel Monteith of Carter & Schnedler of Asheville, N.C. Defense counsel: Partner David Fleischer of the New York office of Los Angeles’ Paul, Hastings, Janofsky & Walker The Biltmore House serves as the background in six Marvel Comics X-men comic books. Biltmore Company, which operates the mansion in Asheville, N.C., did not want its famous French chateau facade used in such a fashion. Biltmore House, constructed by Cornelius Vanderbilt in 1895 as one of the nation’s premier trophy houses, has 250 rooms, 43 bathrooms, and its very own winery producing a range of European table wines. A drawing of the house is featured on all the winery’s labels. Owners of buildings, like the Rock and Roll Hall of Fame and Museum, sometimes register them as trademarks. The Pebble Beach golf course in California has even registered a living cypress tree overlooking the ocean, and restricts commercial use of that image. Comic book backdrops are apparently inconsistent with the gracious-living image cultivated by Biltmore Company, which today operates the house and ancillary businesses.

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