Archive | March 2013

Oh No, Yoko! Yoko Ono Sued for Copyright Infringement Over Opening Ceremony Line

By: Amelia Wong

On Friday March 22, 2013, Brooklyn designer Haleh Nematzadeh filed a suit against Yoko Ono in Brooklyn federal court for infringement of Nematzadeh’s designs. Nematzadeh claimed that Ono’s team saw her clothing designs, changed them slightly, and sold the styles online, passing off the designs as Ono’s own work. Outraged, Nematzadeh has stated, “They took everything with no shame. They stole from me blatantly.”[1]

The 14-page complaint alleges, “The offending collection copied exact designs as well as imitated the designs and concepts from plaintiff’s collection. In order to conceal their thievery…defendants renamed the collection and called it a collection for men. Despite defendants’ feeble attempt at disguising the unlawful use of plaintiff’s collection, it is clear that defendants copied plaintiff’s design.”[2] The complain explains further “One piece of the collection is a bra-like design. Defendants copied the design and used a male model to model it. The ridiculousness of this farce stands on its face.”[3]

Nematzadeh claims that she met with Opening Ceremony, the retailer who sells Ono’s line, in July 2012 seeking to get her “Gonna Walk the Night” collection into their catalogue. Nematzadeh further alleges that Opening Ceremony photographers were supposed to meet with Nematzadeh, but instead decided to work with Ono and change the designs into a menswear line.

Nematzadeh’s “Gonna Walk the Night” line is fetish-inspired, involving nipple holes, sheer material, and handprints all over the crotch and breast. Ono’s collaboration with Opening Ceremony also features nipple holes and handprints on crotches. Ono’s statement on the Opening Website reads “I was inspired to create fashion for men, amazed at how my man was looking so great. I felt it was a pity if we could not make clothes emphasizing his very sexy body. So, I made this whole series with love for his hot bod and gave it to him as a wedding present. You can imagine how he went wild and fell in love with me even more.”[4]

ImageNematzadeh’s designs on the left, Yoko Ono’s on the right.
(Picture from: http://www.huffingtonpost.com/2013/03/26/yoko-ono-sued-haleh-nematzadeh-opening-ceremony-collection_n_2956009.html)

Nematzadeh fires back in her suit arguing that Ono’s statement is transparent and this has been the first time Ono has designed clothes. “She’s trying to put fetish in context, but since when does fetish and John Lennon go together? When you think of the Beatles, you think of dove and trees, not that,” Namatzadeh stated.[5]

Nematzadeh’s lawyer Aymen Aboushi said that “They [big companies] rip off pieces here and there all the time, but you don’t see up-and-coming artists really trying to fight for their rights.”[6] His client Nematzadeh seeks $10 million for copyright infringement, disgorgement of unjust profits, and delivery or destruction of the offending products.

Costco Sued for Selling “Tiffany Setting” Engagement Rings

By: Anny Mok

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Tiffany & Co. has filed a lawsuit against Costco accusing the wholesaler of counterfeiting and trademark infringement. Costco advertises and sells engagement rings described as “Tiffany setting” or “Tiffany style”. Tiffany is concerned that customers are likely to be confused into believing that they are purchasing a Tiffany & Co. ring, which costs a lot more than the rings being sold by Costco.

Costco argues that there is no infringement because the term “Tiffany setting” is a generic term. It is well understood by the jewelry business that “Tiffany setting” simply describes an engagement ring style featuring a solitaire diamond. Costco claims that it is unlikely for customers to think they are purchasing a ring from Tiffany & Co.

In trademark law, a generic mark cannot be protected because it inhibits competition in the marketplace.  Even if a mark has been registered in the federal registration system, it may lose trademark protection if it has become generic. A company may try to prevent genericide through active policing of the mark. However, prevention is difficult because it all depends on how consumers view the mark. Some examples of marks that lost trademark protection due to genericide include: “aspirin”, “cellophane”, “thermos”, and “zipper”.

Lawyers are at a disagreement over whether “Tiffany-style” or “Tiffany setting” is generic. Some believe that most consumers, when they see “Tiffany setting” will believe that they are buying a ring with a setting from Tiffany & Co. Other lawyers, such as Charles Colman, of the Law of Fashion blog, say that confusion is unlikely because the packaging is different and people shopping for rings will have sufficient knowledge to understand that “Tiffany setting” is only used to describe the ring style. A federal judge has yet to rule on this matter.

Juicy Couture Unable to Block Hong Kong Website’s Counterfeit Goods

By: Amelia Wong

On March 12, 2013, a New York federal judge held that the Court did not have jurisdiction over the foreign entity Bella International Ltd. (Bella), a Hong Kong-based retailer, to ban Bella from selling alleged counterfeit Juicy Couture Inc. (Juicy) items on its Hong Kong website. The Court’s rationale was that Bella did not have enough ties to the United States for the Court to have jurisdiction over Bella.

Juicy first filed the Hong Kong suit against Bella in 2008, alleging trademark infringement because Bella sold “Juicy Girl” clothing and accessories. Juicy brought the U.S. action in July 2012 alleging that Bella violated U.S. and New York law by selling $3000 worth of Juicy Girl to U.S. consumers, some of which were Juicy Couture’s investigators.

Juicy sought an injunction to enjoin Bella from counterfeiting and infringing the Juicy mark. While Juicy was successful in obtaining a preliminary injunction to enjoin Bella from selling the goods to U.S. customers, the Court declined to exercise extraterritorial judgment over Bella’s foreign activities. The Court found that infringement was likely to exist because of the public recognition and strength of the Juicy mark. Additionally, the Court declined to exercise extraterritorial judgment because Bella’s activities in the U.S. were not enough to give an American court jurisdiction. The website only sold $3000 worth of merchandise to U.S. customers and U.S. customers were not its biggest target.

Judge Ronnie Abrams stated, “The strength of the plaintiff’s marks, similarities of parties marks and competitive proximity…all strongly favor the plaintiff…However, the court concludes that the Lanham Act should not be applied extraterritorially…to any other websites hosted abroad.”[1] Judge Abrams further stated that the Hong Kong action would determine whether the Juicy Girl mark was enforceable in Hong Kong.

Juicy’s representative was pleased that the court recognized Juicy’s trademark and believed it was a good direction. Juicy is currently taking action against defendants in Hong Kong and Canada, believing that the Court’s trademark recognition would play a strong role in future cases.

Judge Abram’s decision is significant because she refused to apply the Lanham Act to a foreign company and left it up to the Hong Kong courts to decide. This could be viewed as a weakness because “Juicy Girl” items are still available on .hk websites. If trademark infringing items are allowed to be sold on international websites, U.S. consumers can still access these websites and purchase the items through E-commerce. Due to the fast-paced nature of technology and E-commerce, Judge Abram’s decision could instead be seen as a setback to trademark protection.