It Doesn’t Get Much Lower Than This – “Susan Boyle Does a Porno?”

Representing adult entertainment industry clients makes my cocktail party discussions somewhat interesting (to say the least). Often, I get asked “okay, but where do you personally draw the line?” I have always said that I’ll know it when I see it.

I have now seen it.

An adult entertainment company has registered susanboylexxx.com and has placed an offer on that site to pay Susan Boyle $1 million if she will lose her virginity on camera. Aside from the fact that this has to be one of the most douchebaggy things I’ve ever seen, the company that registered that website is certainly violating 15 U.S.C. § 1129 and probably violating 15 U.S.C. § 1125(d).

If Susan Boyle wants to simply collect $100,000 plus attorneys fees, she ought to sue them instead of taking them up on her offer.

Short Url: http://bit.ly/CWKgS

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Technorati :  Adult Entertainment Law, adult entertainment trademarks, ass hat, trademark

Violet Blue no names Jane

By LaTeigra Cahill
Guest Author

There’s no way to overstate the strong aversion toward mainstream everything in San Francisco. It’s also not a stretch to say that in the age of file sharing disputes, enforcing intellectual property rights can create the impression that an artist has crossed over from being independent to being a “sellout.”

When I heard that Violet Blue, the undeniably hip, fetish model/sex columnist for the San Francisco Chronicle, filed a highly publicized law suit against mainstream porn actress Violet Blue (now known as No Name Jane) alleging trademark infringement, trademark dilution, violation of a CA right of publicity statue, and unfair competition, I was intrigued not only by the legal ramifications of a personal name trademark, but also with how Violet Blue’s “indie” reputation would be affected.

Some Facts from the Opinion:

1. Violet Blue (the writer) first used the pen name in an online article in 1999; No Name Jane first used the name as a stage name in 2000.
2. No Name Jane has appeared in hundreds of adult films over the years under the name “Violet Blue”.
3. Violet Blue legally changed her name to Violet Blue, registered her name as a trademark in early 2008, and promptly filed suit.
4. The Northern District court granted Violet Blue’s motion for a preliminary injunction, ruling that she had a valid, defendable trademark. (However, the court was not convinced Blue would succeed on the merits of her trademark dilution claim because the Federal Trademark Dilution Act requires that her trademark be famous prior to the time No Name Jane began using it.) (Opinion)

So why would a progressive, sex positive writer be so enraged that an adult star used the same name? Was it simply the next part of a ridiculous counter culture vs. mainstream war? If so, wouldn’t a trademark dispute put Violet’s “cool” at risk? On Violet Blue’s blog, she asserted her disgust in seeing her name on porn box covers like “Planet of the Gapes” and “White Trash Whore #22” and reading No Name Jane’s interviews (which, Violet characterized as “small minded” and “ignorant”).

What’s most interesting though is that Violet Blue, whom I have a hard time believing has a ton of celebrity status outside of The Bay Area, truly seemed to believe that No Name Jane was using her name on purpose to capitalize off of her fame as a blogger/writer:

“I mean, look at all the trouble and confusion poor Tyra BanXXX goes through, having her name diluted by some model with a TV show. And Marey Carey — she’s just trying to run for governor and get some new teeth and better tits, and some singer has to come along and ride her coattails to fame.” (Blog Post)

The drama got worse when Boing Boing, a popular tech site with publicly radical views on IP reform, risked a serious censorship issue with their fans when they unpublished all of Blue’s material from their site for undisclosed reasons, stating only that, “Violet behaved in a way that made us reconsider whether we wanted to lend her any credibility or associate with her.” Many commentators on the post felt the unpublishing had to do with the No Name Jane law suit.

I find it unfortunate that many artists have to make tough decisions between protecting their hard work versus maintaining their ”scene cred” in the face of the public’s negative perception of IP laws – largely caused by overreaching mega corporations. In the end, Violet Blue won her trademark dispute but she gained more critics than fans, and she took far more of a hit to her cred than she bargained for.

LaTeigra (real name, not yet a trademark) is a law student at University of California, Hastings College of the Law in San Francisco. LaTeigra’s main legal interests are free speech rights, anti-censorship issues, IP, art and politics. LaTeigra is the Co-Chair/Co-Founder of Hastings Advocates for the Arts, a student organization that promotes freedom of self expression through integrating art into law school culture.

Suit Filed in Utah Over Male Chastity Belts

by Jason Fischer

A.L. Enterprises, Inc. (“ALE”), a Nevada corporation, sued a Canadian manufacturer of male chastity belts in Utah this week. ALE alleges that Latitudes International (“Latitudes”) has shipped products into the United States that bear ALE’s federally registered trademarks.

While this story would seem to be of a kind that would appear first on this blog, we were scooped by Mr. Gile over at Las Vegas Trademark Attorney. Respect.

“[I]t’s simulated wood design gives it a ‘warm, earthy feel.’”

As the owner of federal registrations for the trademarks “CB-3000″ and “CB-6000″, to be used in association with devices conducive to male chastity, ALE has the right to prevent others from selling similar products in the U.S. under the same marks. Latitudes is accused of doing just that.

According to the complaint, Latitudes is selling counterfeit versions of ALE’s products at two websites, http://www.chastitydeviceformen.com/ and http://www.latitudes-international.com/. Indeed, the website does appear to be offering the same three types of “devices” that ALE sells and using the same trademarks to identify its goods.

Perhaps the most interesting detail in this story, at least to this observer, is that the USPTO has two separate classes of goods for:

• “Devices conducive to male chastity, namely, chastity belts for men” and
• “Adult sexual aids conducive to male chastity, namely, chastity restraints for men”

Hypocrites for Community Values Lose Round One

Citizens for Community Values is a hyper-right wing group of busybodies who are essentially the seeds of an American style Taliban who operate out of Cincinnati. The First Amendment be damned, they tirelessly work to try to decide what kind of entertainment that you and I can enjoy, or not enjoy. CCV’s lack of respect for the First Amendment reached new heights recently as it tried to shut down a competing political action committee by mis-using trademark law. The Northern District of Ohio gave them a setback in a recent decision.

Barbie v. China Barbie Update

Regarding this earlier post on the Mattel v. China Barbie case.

Fox just had China Barbie on to discuss the dispute with Mattel. They treated her as if she were being prosecuted for providing harmful material to minors.

Interesting note. She said that prior to this lawsuit, she was getting about 100 hits a day. Now she gets about 100,000 hits a day. The Fox analyst interpreted that as meaning that she was profiting from the name “Barbie.” It seems more like she is profiting from the publicity that Mattel shined upon her.

Barbie® v. China Barbie

Note, to kink to this post, use this link: http://tinyurl.com/22vd8u. It seems that the use of the “®” in the title messes up the permalink for some browsers.

Perhaps inspired by Nautica’s® attempt to stop Nautica Thorn from registering her name as a trademark, Mattel, manufacturer of the Barbie® doll, just fired a shot across the bow of adult entertainer, China Barbie. (source).

The lawsuit said Global China Networks used a domain name containing the word “barbie” in a “bad faith attempt to profit from Mattel’s Barbie® trademarks” and had damaged Mattel’s good name.

The lawsuit asked the court to order the transfer of the domain name registration to Mattel, to award damages of up to $100,000 and to order that any profits Global China Networks achieved be given to Mattel.
…
According to the lawsuit, the offending Web site is registered to Global China Networks LLC and is operated by Terri Gibson, a Hollywood, Fla., resident. (source)

I have not seen the complaint yet, but it sounds like Mattel filed an ACPA claim under 15 U.S.C. § 1125(d), and a dilution claim under 15 § U.S.C. 1125(c)(1), as well as a good old fashioned infringement claim under 15 U.S.C. § 1125(a) (note, the complaint says 15 U.S.C. § 1114(a), but there is no such thing. That is the counterfeiting section of the Lanham Act. I presume that this was a mere typo in the complaint — we all do it sometimes) and a common law unfair competition count for good measure. (Complaint) (complaint linked from WSJ blog)

I’d prefer to read the complaint before commenting more, but My initial odds-making is that the ACPA claim is unlikely to succeed. The bad faith factors just don’t seem to stack up. Yes, the ACPA provides for remedies even for domain names that dilute famous marks, nevertheless, the nine factor (nonexclusive) test provide for by 15 U.S.C. § 1125(d)(1)(B) seems to fall in China Barbie’s favor.

The dilution claim, on the other hand, might be a little stronger. Dilution law is all over the place these days, and dilution claims are unpredictable. However, as a good friend of mine once said “in dilution, the [adult entertainer] always loses.” I wouldn’t agree that the adult entertainer “always loses,” but the deck is definitely stacked against her. China Barbie is going to have a fight on her hands with the 1125(c) count.

If anyone has a copy of the complaint, you can get some good karma by sending me a link to it.

With respect to the 15 U.S.C. § 1125(a) (pled as § 1114(a)) count, Mattel is going to need to prove some likelihood of confusion. I think that there is very little likelihood that anyone would seriously contend that they were confused as to the origin of the services provided by China Barbie. As far as the unfair competition count goes, perhaps I am being too dismissive, but since when does Mattel compete in the porn market?

China Barbie definitely has a fight ahead of her. Nevertheless, Mattel has not been all that successful in its attempts to place Barbie on intellectual lockdown. For example, in 2002, Mattel tried to rid the world of the Aqua song “Barbie Girl.” Mattel lost that case. Mattel also lost a case against artist Tom Forsythe who parodied barbie in a series of artistic works like Cutting Board Barbie and Barbie Enchilada (source). Mattel eventually had to reimburse Forsythe $1.8 million in attorneys’ fees. (source). The Case is here. Mattel also lost in a case with an artist who made “Bondage Barbie.” See Mattel, Inc. v. Pitt, 229 F. Supp. 2d 315, 324 (S.D.N.Y. 2002) (”The sale or display of “adult” dolls does not appear to be a use Mattel would likely develop or license others to develop.”).

Finally, in a recent case involving an Alberta, Canada sex shop called “Barbie’s Shop,” Mattel lost on jurisdictional grounds. (source). Mattel said that it considers the case to be ongoing, since they didn’t lose on the merits. Nevertheless, in that case, the owner of the shop’s name? Wait for it…. Barbie Anderson-Walley. Mattel’s reaction to that little “bad fact?”

We own the Barbie name, clothing and dolls. Even if your name happens to be Tommy, Ralph or Barbie, in some areas that’s already a trademark. (source)

My take on that one is that Mattel is lucky that it only lost on jurisdictional grounds. They should have been sanctioned for filing that case.

Mattel’s losing streak doesn’t exactly make them the Chicago Cubs of intellectual property enforcement though — for two reasons: 1) Everyone loves the Cubs, and 2) Mattel has a chance at winning this one. (Sorry Chicago, I love you, but this is not the year).

Here are some things that China Barbie will likely raise to increase her odds (in addition to simply arguing that there is no chance that the relevant consuming public will be confused).

Laches defense. China Barbie has been running her website and performing under this name since 2004. Until I see the complaint, I can’t fully comment on that issue. There is no statute of limitations in trademark cases, and the courts look to the s.o.l. on relevant state laws. I don’t know what that limitation is in New York, and I don’t have time to research it right now. Nevertheless, statute of limitations or not, there does appear to be some prejudice to China Barbie due to Mattel waiting so long to file. China Barbie has built up a name for herself for at least three years. I don’t know if that will be persuasive to the Southern District of New York, but it would be a worthwhile defense to raise.

Also, Mattel seems to be particularly vulnerable to parody defenses.

The word Barbie has come to be used as a derogatory slang term for a girl or woman who is considered shallow, most notably in the 1997 pop song Barbie Girl (see Parodies and lawsuits below). In July 1992 Mattel released Teen Talk Barbie, which spoke a number of phrases including “Will we ever have enough clothes?”, “I love shopping!”, and “Wanna have a pizza party?” Each doll was programmed to say four out of 270 possible phrases, so that no two dolls were likely to be the same. One of these 270 phrases was “Math class is tough!” Although only about 1.5% of all the dolls sold said the phrase, it led to criticism from the American Association of University Women. In October 1992 Mattel announced that Teen Talk Barbie would no longer say the phrase, and offered a swap to anyone who owned the doll. (source)

Now China Barbie’s expression might not fit as neatly into the parody defense as all those who have previously triumphed over Mattel. You do never know though. Is China Barbie trying to say something about Barbie®? Does China Barbie’s sexual expression criticize or mock Barbie®? Was that her intention? I haven’t interviewed her, so I don’t know. Nevertheless, Mattel isn’t racking up the victories when the parody defense is well-argued. I could see that one going her way, if she raises it.

Note: Andrew Contiguglia linked to this site from his Entertainment Law blog, where he wrote:

[M]aybe Mattel is just being vindictive of anything Chinese because of all the lead paint incidents (source)

Attorney Contiguglia might have a point. I hate to be too cynical, but before this suit hit the media, I’m sure that the top 50 search engine hits for “china” and “barbie” brought up stories and articles about the lead paint problem.

Not anymore.

If Mattel filed this suit to game the search engines, I’d have to hand them a dart and a laurel. A laurel for a magnificent machiavellian public relations coup, and a dart for misuse of the legal system.

Nautica® v. Nautica Thorn

The adoption of a nom de plume is a time-honored tradition. Francois Marie Arouet became Voltaire, Samuel Clemens became Mark Twain, Theodore Geisel is known to us all as Dr. Seuss.

Movie actors ran with this tradition from the earliest time that celluloid fell to a cutting room floor. Moses Horwitz, Louis Feinberg, Jerome Horwitz, and/or Samuel Horwitz, couldn’t get a reservation at Denny’s. Moe Howard, Larry Fine, Curly Howard and/or Shemp Howard, on the other hand, would soitanly be seated, reservations or not — and certainly somewhere better than the big D. Ramón Gerard Antonio Estévez, Carlos Irwin Estevez, went with Martin and Charlie Sheen. (Charlie’s younger brother Emilio seems to have a little more Latino pride).

Actors and actresses choose screen names for any number of reasons, but Wikipedia says, “The Actors’ Equity Association (AEA) advises performers to select a name that is easy for others to pronounce, spell and remember. (source)”

Ms. Tokumi, for whatever reason, upon her entrée into adult entertainment chose to reinvent herself as “Nautica Thorn.” This is more original than most exotic dancers’ stage names, and she has never, to the best of my knowledge, claimed that she is “just doing this until she finishes nursing school.” (FN1) (By the way, her favorite foods are sushi, steak, pasta, spam musubi, and ketchup. (source).

The Fuck Brief

Here it is, the Infamous Fuck Brief. The filings are all public record and are freely available on the USPTO website. Nevertheless, anyone’s convenience, here they are.

1. The USPTO’s initial rejection of the application.
2. The initial appeal to the Examiner – this is the one that sparked the articles.
3. The USPTO’s second refusal.
4. The appeal to the TTAB – Not as fun to read as the appeal to the Examiner, but this is our brief of legal arguments for the Trademark Trial and Appeal Board.

Some nice ink on this case

1. Orlando Weekly article
2. XBiz Article.

For an interesting read on the use of Fuck, check out this Sexual Intelligence Blog entry.

Unintended Uses, another Sex Toy Trademark Case

Who knew that the British were so innovative. A few weeks ago, we had the iGasm story where annsummers.com, an online sex shop in the UK was selling a vibrating iPod attachment. Apple’s Imperial trademark lawyers were not amused.

Now, Love Honey, another crafty UK manufacturer of sexual accoutrements has developed a vibrator attachment for an Oral B electric toothbrush. The current ad is here, but the much more interesting story is here.

I don’t know much about UK trademark law, but this suggests that there is a strong distinction between UK trademark fair use and our version.

Kink.com Appeals USPTO Refusal to Register “Immoral and Scandalous” Trademarks

Orlando Weekly published an article chronicling Kink.com’s attempts to secure registration of several of its trademarks, such as fuckingmachines and whippedass.

Trademark registration is a standard practice for any business that wants to protect its interests. However, Kink.com and others who have attempted register trademarks that contain a “dirty word” have been told by the United States Patent and Trademark Office (“USPTO”) that “Registration is refused because the proposed mark consists of or comprises immoral or scandalous matter.”

Kink.com is appealing the board’s rejections, claiming that they are unconstitutional and unsupported by the evidence provided by the government. Kink is determined to prove to the Courts and Trademark Office that while “fuck” might raise an eyebrow in polite conversation, in modern times, “fuck” does not rise to the level of “scandalousness” claimed by the USPTO.

Under the legal standard, the mark itself must be “shocking,” and “calling out for condemnation.” Kink has argued through that this particular word’s prevalence in common conversation and popular culture discredits the argument that the American marketplace, and especially the adult internet marketplace, would be “shocked” by this registration. The previous appeal for whippedass was successfully argued on similar grounds.

The iGasm gets Apple’s Panties in a Twist

Geez… and I thought Apple was the cool computer company….

The Mac Daily News reports that a sex shop in the UK is selling the iGasm, a little toy that attaches to the iPod and is intended to provide music-driven genital stimulation. Ann Summers, the retailer describes the iGasm as follows:

Load up your iPod with killa choons and take your appreciation of music to a whole new level. This genius little device hooks up to your iPod, MP3 player, laptop or CD player and vibrates in sync with the beat. Go at it hard and fast with a pounding drum and bass track or chill with the ambient classic. Just turn up the volume to increase the strength of the vibrations and believe us when we say that full whack is PHENOMENAL. And here’s a tip, you’ll make him the happiest man on the planet if you let him be DJ for the night.

The iPod attachment is displayed below:

Apparently, Apple is not disturbed by the name, nor by the fact that someone found a way to mate the iPod with a vibrator. However, the ad campaign for the iGasm is rubbing Apple’s lawyers the wrong way. Here is the ad that drew Apple’s ire:

Of course, this is all UK based, but when we threw the tea into Boston Harbor, we weren’t throwing their trademark law into the water along with their taxes. Nevertheless, I’ll just comment from a US perspective.

I can see Apple’s point. The silhouette and white cord has become a very distinctive source identifier for Apple’s products. On the other hand, there might be some interesting and creative fair use arguments.

One thing is for certain, with one “haughty” demand letter (as described on News of the World), I would imagine that Apple has just boosted sales of the iGasm to levels that Ann Summers never could have imagined.

Not Fellini’s “La Dolce Vita”

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Adult Video News and The Wall Street Journal Law Blog reports on the suit between International Media Films Inc. and Manhattan filmmaker Andrei Treivas Bregman. The complaint alleges trademark and copyright infringement for the X-rated films he made under his industry name, Michael Lucas. The lawsuit seeks to stop sales of the gay-themed adult films, “Michael Lucas’ La Dolce Vita” Parts 1 and 2. The judge in the case recently denied International’s request that he enjoin Lucas from distributing the film, citing “inexcusable delay” in waiting 5 months to seek the injunction.