Orange County Trademark Attorney® Blog

April 2012 Archives

Biker Changes Domain Name Fearing Trademark Dispute with Harley-Davidson

April 19, 2012,

motorcycle-harley-body.jpgOrange County - A thirty-six-year-old Delaware man has agreed to change the name of his social networking site for motorcycle enthusiasts after the world-renowned Harley-Davidson accused him of trademark infringement earlier this year.

According to Jimmy Coulbourne, the owner of the biker website HarleySpace.com, will now become IronRides.com to avoid any further conflict with Harley-Davidson. The famous Milwaukee-based motorcycle manufacturer argued that Coulbourne's use of the world "Harley" in his domain name, along with orange and black logos, constituted cybersquatting and trademark infringement. Harley insisted that by using the word Harley in the domain, Coulbourne was attempting to profit from its trademark.

Coulbourne, a one-time owner of a Harley-Davidson SuperGlide, acquired the HarleySpace.com domain two years ago, with the goal of uniting fellow bikers for rides and other social meet-ups.

"They said I was trying to profit off their name," stated Coulbourne. "HarleySpace isn't their name. It's Harley-Davidson. If they think they own HarleySpace, why didn't they own HarleySpace?" Coulbourne went on to say, "Harley is one of my favorite motorcycle brands. The passion that follows that brand is one that I embrace. I just wanted to target that lifestyle."

However, as one of the world's most identifiable brands, among motorcycle riders and non-riders alike, Harley-Davidson isn't taking any chances with its name, which has been around for more than one hundred years. The iconic company has been serious about protecting its intellectual property, especially after taking the brand overseas. The company has numerous registered trademarks associated with the brand, including the word "Harley."

Coulbourne's similar domain name came onto Harley-Davidson's "global brand protection" unit's radar earlier this year after seeing that in just two months, HarleySpace.com had registered over eight hundred user accounts. The site included user forums and a members' map for riders to plot their locations. Despite including a disclaimer that the site was operated independently from the iconic brand, Harley-Davidson was quick to send a cease and desist letter to Coulbourne.

After realizing he didn't have the money to fight a large motorcycle company, Coulbourne gave in and changed the website name.

"I just felt like Harley was shoving their nose up at me," he said. "They wouldn't even talk to me," he added. "I'm a human being, and they wouldn't even pick up the phone to discuss my ideas, my thoughts. Anything."

Gucci v. Guess - the "G" Trademark Lawsuit Intensifies

April 11, 2012,

shoes-heels.jpgOrange County - In 2009, Gucci filed a lawsuit against Guess and its licensed footwear brand, Marc Fisher, for infringing on its infamous "G" monogram and other designs. It was originally said that the two powerhouse brands would have a private mediation, however, after three years the case is now a full blown out feud.

There are four designs in particular that Gucci is accusing Guess of infringing. These four designs consist of a green and red stripe pattern that can be found on a Gucci shoe, the interlocking "G" pattern, the square "G", and lastly Gucci's signature script font. The alleged infringed designs appear on Guess products that include shoes, purses, and wallets. Gucci is claiming that Guess has made more than $200 million by selling its 1,495 Guess products that use the infringed designs and Gucci is seeking to claim more than $200 million in damages.

This week, Guess' CEO Paul Marciano was examined by Gucci's trademark attorney in a four-hour examination. While on the stand, Marciano did not admit to any wrongdoing, however, he did acknowledge that the designs in question had some similarities. Ederer told a judge last week that Guess was in a "massive, complicated scheme to knock off Gucci's best-known and iconic designs."

During the case, it was revealed through obtaining Guess' emails that Marc Fisher, the shoe designer, went as far as sending Gucci fabric samples to Guess' fabric suppliers in order to duplicate the patterns of the "G" logo on its shoes. This evidence cannot be good for Guess' case. Gucci's trademark lawyers presented even more ammunition explaining that Marc Fisher Footwear received four cease and desist letters in 2008 from Coach, Adidas, Jimmy Choo, and Yves Saint Laurent accusing Fisher of infringing on designs.

During this week's hearing Marciano admitted to being "inspired" by other designers and stated to Gucci lawyers, "What I understand here, which is very frequent [in fashion], is an inspiration to create an original bag of G's with the same components," and "That's what design is." Just before leaving the courthouse Marciano stated of the accusations, "I truly believe that if this is something Gucci was genuinely concerned with, they would have acted within days, everywhere. Are you telling me today that suddenly you realize what's happened in 1995?"

The case is being estimated to extend through the end of April, however by the looks of it we may be hearing about the "G" feud long after that.

Justin.tv Wins Partial Dismissal of Ongoing Trademark Infringement Dispute

April 2, 2012,

boxing_gloves.jpgOrange County - Justin.tv, the online video streaming service, has won a partial dismissal in a trademark infringement lawsuit filed against it by Zuffa, LLC for what Zuffa claimed were illegal broadcasts of UFC 121 (Ultimate Fighting Championship, Lesnar vs. Velasquez).

Justin.tv filed the motion to dismiss the claims on the grounds that they "improperly duplicate their copyright claims." While some of the counts of infringement were dismissed altogether, the court ruled that Zuffa is unable to use trademark law to prosecute copyright violations.

In its complaint, Zuffa alleged that UFC was liable for trademark infringement because certain items such as the UFC logos were displayed on the online broadcasts without permission from Zuffa. However, the court did not agree. "Zuffa would possess a mutant-copyright or perpetual copyright because nobody would ever be able to copy the video and display it regardless of whether the copyright had entered the public domain," as stated in court documents.

In addition to getting trademark claims dismissed, Justin.tv was also successful in getting claims of 'stealing cable' thrown out as well. Essentially, Zuffa's claims of stealing cable were not clearly covered by the Digital Millennium Copyright Act's Safe Harbor provisions.

The court's decision to dismiss the stealing cable claims were based on its emphasis that it was not Justin.tv itself that was receiving the broadcast, an observation that Zuffa does not argue with. The court did add that while it is Justin.tv's legal responsibility to monitor how third-party users feed in to the broadcast, Zuffa's specific argument to support its charges was inapplicable.

Certain trademark claims in addition to the copyright claims still must be decided by the court. No date has been set as to when the court will make its decision.