Louboutin, Waffle House, Davis, Levi,: Intellectual Property

A judge put off deciding whether to cancel Christian Louboutin SA’s trademark for high-fashion red- soled women’s shoes in the company’s lawsuit against Yves Saint Laurent America.

Louboutin’s lawyers urged U.S. District Judge Victor Marrero in New York not to convert his earlier refusal to bar Yves Saint Laurent from selling its own red-soled shoes into an outright cancellation of the U.S. trademark. The judge said Aug. 19 he will delay a ruling while Louboutin appeals his decision.

“The better course is to simply allow the appeal to proceed and halt any further proceedings till we get guidance” from the New York-based federal circuit court, Marrero said.

The judge on Aug. 10 rejected closely held Louboutin’s request for a preliminary injunction to protect the trademark while the case proceeds, saying it’s not likely to win its fight for a trademark for a color.

“Color serves ornamental and aesthetic functions vital to robust competition,” the judge said. “Louboutin is unlikely to be able to prove that its red outsole brand is entitled to trademark protection.”

Louboutin, a Paris-based fashion company, said in the lawsuit, filed in April, that Yves Saint Laurent’s red-soled shoes “threaten to mislead the public.”

Yves Saint Laurent, a unit of Paris-based PPR (PP) named for the designer who died in 2008, began selling shoes with red outsoles “long before Mr. Louboutin began using them,” David Bernstein, a lawyer for the company, said at a hearing last month.

Lee C. Bromberg, a lawyer for Louboutin, argued Aug. 19 that the company needed more time to show why the trademark shouldn’t be canceled.

“We need an additional opportunity to marshal evidence,” Bromberg told the judge. He said he seeks evidence on how the fashion industry operates, how designers select colors and whether Louboutin’s trademark would be a “hindrance to competition,” as the judge indicated in his ruling.

Jyotin Hamid, a lawyer for Yves Saint Laurent, argued that a search for evidence would be time-consuming and costly.

“The fundamental fact that color serves a function in fashion is not in dispute,” Hamid said. “The facts are not going to change as a result of reviewing e-mails in France.”

Designer Christian Louboutin got the idea for the red soles when he painted red nail polish on the black soles of a pair of women’s shoes.

All of Louboutin’s luxury shoes have had red soles since their introduction in 1992, according to court papers. “Louboutin is only in the shoe business,” Bromberg said.

Louboutin’s high-heeled shoes are priced from $535 to $4,645 a pair on the website of department store Barneys. Many celebrities have been photographed wearing the shoes, including Oprah Winfrey, Angelina Jolie and Heidi Klum.

According to the database of the U.S. Patent and Trademark Office, Louboutin registered a lacquered red sole as a trademark for “women’s high fashion designer footwear” in January 2008. That same month the company also registered the image of a red shoe sole as a trademark for other classes of goods, including handbags, parasols, luggage and wallets.

The case is Christian Louboutin SA v. Yves Saint Laurent America Inc., 11-2381, U.S. District Court, Southern District of New York (Manhattan).

Australian Health Minister Says Cigarette Packaging Bill Will Pass

Australia’s Health Minister Nicola Roxon told the Herald Sun she expects the bill requiring plain packaging for cigarettes will pass in Parliament, despite opposition from the tobacco industry.

The government wants all cigarettes sold in Australia to be packaged in a plain olive brown wrap beginning in mid-2012, according to the Herald Sun.

One part of the proposed legislation will protect tobacco companies’ trademarks from authorized use, the newspaper reported.

Opposition leader Tony Abbott said that while his party supported plain packaging, it was opposed to the section of the legislation related to trademarks because it would “overturn the ordinary parliamentary arrangements under which legislation becomes regulation, according to the Herald Sun.

Waffle House Demands Hip-Hop Performer Change His Song Title

Waffle House Inc., the Norcross, Georgia-based restaurant chain, sent a cease-and-desist letter to rapper J.R. Bricks demanding he change the name of his “Waffle House” single, the AllHipHop.com music news website reported.

Bricks’s suggestion he change the name to “Wafflehaus (After the Club)” was also rejected by the chain, according to the music website.

The singer told AllHipHop.com that while he didn’t think the request was motivated by racial prejudice -- he is black -- he thought perhaps the company didn’t want to be associated with the hip-hop lifestyle.

Miles Davis’s Trademark Owners Sue New York’s Miles’ Cafe

The owners of the late jazz trumpeter Miles Davis’s trademarks sued the operators of a Manhattan jazz club called Miles’ Cafe alleging infringement.

Miles Davis Properties LLC, which includes two of Davis’s children and a nephew, said today the club and an owner, Satoru “Miles” Kobayashi, violated registered trademarks including one of a silhouette of the musician and composer playing his trumpet, in a complaint in federal court in Manhattan.

“Defendants are intentionally free-riding off the goodwill associated with the Miles Davis marks by using them to promote a jazz club entitled Miles’ Cafe in a way that is likely to mislead the public,” lawyers for the trademark owners said in the complaint.

Kobayashi, a trumpeter, told a publication that Miles Davis appeared to him in a dream and told him to change his first name to Miles and open a cafe in his name, according to the complaint.

No one answered the phone at the Miles’ Cafe on 52nd Street in Manhattan. According to the club’s website, Miles’ Cafe was founded in Tokyo in 2000.

Davis, who died in 1991, released 67 studio albums and 51 live albums, court papers state. His 1959 album “Kind of Blue” is the best-selling jazz album of all time, according to the complaint. A pioneer in various styles of jazz including cool, hard bop, modal and fusion, Davis received eight Grammy awards and was inducted into the Rock ‘n’ Roll Hall of Fame.

Miles Davis Properties hasn’t authorized any use of the name for a jazz club or other entertainment venue, the complaint states.

The case is Miles Davis Properties LLC v. Miles’ Cafe Corp., 11-5816, U.S. District Court, Southern District of New York (Manhattan).

For more trademark news, click here.

Patents

Spain to Cut Price of Older Drugs Without Generic Equivalents

Spain’s Cabinet agreed to cut by 15 percent the prices of drugs 10 years old and older for which there is no generic version available, the Health Ministry said in an Aug. 19 statement. The government will exclude from this measure drugs that are protected by patent in all the states of the European Union, the ministry said.

Spire Gets U.S. Patent on Light-Powered Cancer Cell Zapper

Spire Corp. (SPIR), a maker of solar energy equipment, received a patent on a nano-sized device that can be used to limit the growth of cancer cells.

Patent 7,955,965 covers a device and the method of making the device that is light-powered and can use an electric charge to target specific cells and either kill them or interfere with their growth.

Roger Little, Spire’s founder and chief executive officer, is one of three inventors named on the patent. According to the database of the U.S. Patent and Trademark Office, he’s a named inventor on more than 30 issued U.S. patents.

Spire applied for this patent in August 2010 with the assistance of Thomas J. Engellenner and Reza Mollaaghababa of Boston’s Nutter McClennen & Fish LLP. The patent was issued to the Bedford, Massachusetts-based company in June.

Kimberly-Clark Accused of Infringing Sanitary Pad Design Patent

Kimberly-Clark Corp. (KMB), the maker of Huggies diapers and Viva paper towels, was sued for infringing an inventor’s design for a sanitary pad.

Tonya M. Parker of Olympia Field, Illinois, said the Dallas-based company’s Poise Hourglass Shape Pads for incontinence, introduced this year, infringe her design patent D589,611.

The patent was issued in March 2009, according to the database of the U.S. Patent and Trademark Office. Parker claims that several times in 2009 and 2010 she wrote to Kimberly-Clark inquiring about the company’s taking a license to her patent.

According to the complaint filed Aug. 18 in federal court in Chicago, Kimberly-Clark responded to each of her queries by saying the company had made copies of her material and “our staff concluded that it is not in keeping with our business plan.”

Kimberly-Clark didn’t respond immediately to an e-mailed request for comment on the suit.

Parker is seeking money damages equal to Kimberly-Clark’s profit from its sale of the allegedly infringing item, and extra damages to punish the company for what she says is deliberate infringement.

Parker, who is also seeking litigation costs and attorney fees, is represented by Lee F. Grossman and Mark M. Grossman of the Grossman Law offices of Chicago.

The case is Parker v. Kimberly-Clark Corp., 1:11-cv-05658, U.S. District Court, Northern District of Illinois (Chicago).

For more patent news, click here.

Copyright

Levi’s Photographer Didn’t Infringe Artist’s Work, Court Says

Levi Strauss & Co., the San Francisco-based maker of blue jeans, is off the hook in a copyright-infringement case filed by an art photographer.

Janine Gordon, whose work has appeared in the Whitney Museum and the San Francisco Museum of Modern Art, sued Ryan McGinley in federal court in Manhattan in February. She claimed his infringement was “surreptitious” and that he gained access to her work by attending her exhibitions.

In the process, Gordon said, he created images that were “both blatantly and subtly derivative” of her work. Levi Strauss was sued for using the allegedly infringing photos in advertising campaigns for sportswear.

U.S. District Judge Richard Sullivan in Manhattan dismissed the case. In an opinion filed Aug. 18, he said he might have hoped Gordon or her attorneys were “presumably familiar with the basic tenets of copyright and intellectual property law, would have recognized the futility of this action before embarking on a long, costly and ultimately wasteful course of litigation in a court of law.”

He called Gordon’s reliance on a “battery of art experts” misplaced and said their testimony bore “no relevance to the issue of substantial similarity in this case.” Several of the experts disavowed “any familiarity with copyright law,” the judge said.

The judge, who said he inspected “a representative sample” of the pictures, included in his opinion copies of several of both Gordon’s and McGinley’s photos.

Gordon claimed one photo of a stunt biker with a motorcycle was infringed by McGinley’s photo of two nude models on roller skates. Sullivan said no reasonable jury could find that the two works were substantially similar.

The case is Gordon v. McGinley, 11-cv-010001, U.S. District Court, Southern District of New York (Manhattan).

For more copyright news, click here.

To contact the reporter on this story: Victoria Slind-Flor in Oakland, California, at vslindflor@bloomberg.net.

To contact the editor responsible for this story: Michael Hytha at mhytha@bloomberg.net.

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