IP grab bag: Ke$ha, Tommy Hilfiger, Adidas, and (a little) more!

Posted by Charles Colman

In the interest of efficiency, LAW OF FASHION is going to blow through a few different fashion-related IP "episodes" today.  The first (and most appalling) involves singer Ke$ha's threats against Wimo Labs over its sale of an iPod Nano wristband marketed under the name "Tik Tok," which -- surprise! -- looks a lot like a watch:

It's been a while since this writer's KinderCare days, but he's pretty sure that watches go "tick tock" (just like cows go "moo" and pigs go "oink.")  So why is Ke$ha up in (defaced) arms over this seemingly harmless accessory?  Well, as fans of the singer or the TV show "Glee" are no doubt aware, Ke$ha's multi-week status as a cultural icon was launched by an admittedly catchy tune titled "TiK ToK."

The thing is, the federal courts are often wary of alleged trademark rights based on a single artistic work.  This hesitance might be prompted in part by the USPTO's policy of refusing to register the title of a single work as a trademark.  But the courts' skepticism also arises from the recognition that "the title of a single work is, by its very nature, at best, descriptive of that work."  Like color and product design trade dress, items in this particular category of inherently descriptive marks receive protection only upon a showing of "secondary meaning" -- again, a mental association made by a significant portion of the relevant public between a particular source and the good or service at issue.  To be sure, courts have found that some artistic works carry the requisite secondary meaning (Young Guns and Twin Peaks, for example), but the courts have rejected many other purported "title trademarks," especially where there are multiple artistic works that bear the same title.  (Perhaps Ke$ha should have picked a more original song name, since courts have rejected claims of trademark rights in far less common song titles.  Incidentally, courts adjudicating trademark cases tend not to care whether one spells a word in the supposed mark correctly or not, so it's likely that Ke$ha would not only be up against identically misspelled titles, but would also have to explain away the tidal wave of correctly spelled "Tick Tock" songs that pre-date her hit.)

Perhaps for these reasons, Ke$ha didn't actually file suit against Wimo Labs: her lawyers simply sent a cease-and-desist letter.  But if a putative trademark owner is hoping to avoid expensive litigation, shooting off C&D letters can backfire: there is a neat little mechanism in the federal courts called a "declaratory judgment" action that essentially allows the would-be defendant to initiate the suit, so as not to live under the specter of legal action.  (In fact, it's not just a threat of litigation that entitles a would-be defendant to initiate a declaratory judgment suit; some courts have held that a DJ action is appropriate "even where there has been no actual threat of suit, so long as defendant [in the DJ action -- i.e., the letter-sender] has notified plaintiff that defendant claims his [intellectual property] has been infringed.")  That's exactly what happened here: Wimo didn't take kindly to Ke$ha's lawyers' threats, and it filed its own lawsuit -- on its home turf.  The moral of the story (about an amoral, if not immoral, song): if you're going to send a cease-and-desist letter, be prepared to litigate the issue... and be prepared to litigate it in your opponent's preferred forum.  (True, a letter-sender can generally get rid of a DJ suit simply by stipulating that it won't sue the plaintiff in the future, but of course, this gives the supposed infringer exactly what it wants -- and makes the letter-sender look bad in the process.)

Since we've been talking about trademark rights in individual artistic works, LOF should briefly draw your attention to this charming but derivative ad for Tommy Hilfiger's Spring 2011 collection.  Derivative of what?  Wes Anderson's brilliant film The Royal Tenenbaums, of course.  Given the striking similarities between the two works, which many have observed, LOF finds it unimaginable that Tommy Hilfiger would not have cleared the necessary rights to the film.  After all, in this situation, we are dealing with not only potential trademark (specifically, trade dress) infringement, but copyright infringement as well.  In the unlikely event that Hilfiger didn't get clearance, you can bet the lawyers at Touchstone Pictures (a division of the "notoriously litigious" Walt Disney Company) had a very long, very serious meeting about how to handle the situation.

One final blip on the fashion law radar, which we needn't dwell on for long because LOF has discussed the relevant legal issues on multiple occasions: sportswear company Adidas has sued Lands' End in Oregon federal court over the alleged infringement and dilution of its "Three-Stripe Mark."  In this instance, Adidas has actually registered the mark at issue with the U.S. Patent and Trademark Office... a couple of times, in fact.  Here's what a registered illustration for a product feature trademark looks like, in case you're curious:


Adidas crammed some great media quotes into its complaint, including a New York Times reference to the company's "trademark three-stripe logo" and a Footwear News passage in which Adidas's three stripes are described as "iconic."  But will all of this be enough to get Lands' End on the hook for these rather benign-looking shoes:


Based on that solid KinderCare education mentioned earlier, this writer is pretty sure that "two" is different from "three."  (As for the second Lands' End shoe, LOF just doesn't see a legally cognizable similarity with Adidas's registered design.)  So while LOF is generally loath to make predictions about pending litigation, this time it's going to take the plunge and call the case for Lands' End... that is, unless Adidas can survive a motion to dismiss and turn up a smoking gun document that litigators (sometimes literally) dream of -- for example, an e-mail from Lands' End's CMO to its CEO saying "this new design of ours is guaranteed to trick consumers into thinking our shoes are made by Adidas, and by selling the deceptive design, we'll not only divert Adidas's rightful profits to us, we'll poach its goodwill and dilute its brand in the process.  Mwa ha ha ha ha!"

But that's not going to happen.

[This post is for entertainment and informational purposes only, and does not constitute legal advice or create an attorney-client relationship among any individuals or entities.  Any views expressed herein are those of the writer on the particular date of this post, and should not necessarily be attributed to his law firm or its clients.]