Fighting the Crimson Tide of Litigation: Auburn University v. Mike Moody, Trademark Infringement, Profit Motive, Similarity and Likelihood of Consumer Confusion, University Marks

Auburn Univ. v. Moody, 2008 U.S. Dist. LEXIS 89578 (M.D. Ala. Nov. 4, 2008)


Mike Moody, football coach for the University of Alabama’s Crimson Tide, made a comical six fingered foam hand with the trademarks of Auburn University’s football team, including the Auburn University School name and their War Eagle chant. (Mike Moody was an Auburn alumnus, and Auburn at the time was on a winning streak.) The court found that Auburn’s trademarks are uncontestable. Moody claimed he had no real motive for profit, rather he wanted, "fun to celebrate and hopefully, make enough money to pay the costs and buy some beer." However, the court found that the foam hands were placed in commerce, because they were being sold online at sixfingeryear.com and he was unlucky enough that a member of Auburn's Trademark Management and Licensing Office bought one. Against Moody’s contention that the Auburn mark is geographically descriptive, the court found that the widespread use of the marks proved that they are strong. The court then considered the overall impression of similarity between Moody’s six fingered foam hand and Auburn University’s licensed foam hands. The court found that the colors were similar, and that even though Moody didn’t use the interlocking AU® mark on his hand, the words, “Auburn,” and “War Eagle” were enough for similarity and likelihood of confusion. The court also found that the consumers were the same, because only Auburn University students would be interested in either of the foam hands. The court found that the factors for trademark infringement weighed in Auburn’s favor, and found that their requested preliminary injunctions to prevent Moody from selling the foam hand, to destroy the hands and to remove trademarks from the sixfingeryear.com website were appropriate.

Trademark Counterfeiting Act: Parallel Brands, The Helms-Burton Act, Cuban Cigars

United States v. Penton, 2008 U.S. App. LEXIS 25373 (11th Cir. Fla. Dec. 17, 2008)


NOTICE: SEE FEDERAL RULES OF APPELLATE PROCEDURE RULE 32.1 WHICH GOVERN CITATION TO UNPUBLISHED OPINIONS.

The Defendant appealed from a judgment that found him in violation of 18 U.S.C.S. § 2320(a), the Trademark Counterfeiting Act. The defendant was caught when an undercover officer went to his shop and purchased cigar boxes that looked similar to trademarked “Cuban” cigar boxes. The defendant contended that the trademarks of the “Cuban” cigars were not valid United States trademarks because of the Helms-Burton Act, at 22 U.S.C.S. § 6032(h). However, the companies at issue, although originally from Cuba, had set up independently in the United States after the owner families fled from Cuba. The companies had established trademarks in the U.S. by common law. In the meantime, back in Cuba, there were still the other separate brands with the same marks, now run by the Cuban government. Consequently, parallel brands had developed, with the Cuban government selling Cuban style cigars made in Cuba to the rest of the world, and the Cuban exile company selling Cuban style cigars made in the United States distributing them in the U.S. The trademarks for the company owned by the Cuban government are not U.S. trademarks and not entitled to U.S. trademark protection. However, the companies at issue here were the companies based in the United States which own common law U.S. trademarks. Therefore, the trademarks in question are U.S. trademarks, the Helms-Burton Act does not apply here, and these U.S. trademarks are protected. Also, testimony of consumers and experts was not necessary to prove confusion.

Fashion Business: Some Important Legal Issues

I. Intellectual Property
Copyrights
Trademarks
Trade Dress
Dilution
Design Patents
Utility Patents
Trade Secrets
II. Business Entity Forms
Sole Proprietorship
General Partnership
Limited Liability Partnership
Limited Partnership
Limited Liability Limited Partnership
Limited Liability Company
Corporation
III. Other Registrations, Filings and Occupational Licenses
Fictitious Name
Certificate of Use
City License
Restricted Business License
Home Office Permit
Occupational Licenses
Retail Store
Cutting/Sewing/Pressing Service
Embroidering/Monograming Service
Consultant
Designer or Interior Designer
Artist/Illustrator
IV. Contracts
Employment
Work for Hire
Consulting or Independent Contractor
Confidentiality and Non-Competition
Commercial Workspace
Real Estate Purchase Agreements
Commercial Leases
Materials
Manufacturing and Distribution
Website Development, Hosting and Maintenance Agreements
Licensing
Advertising and Publicity
Merger or Acquisition of Fashion Businesses

Fashion Report: New Orleans

When talking about New Orleans fashion, it isn’t just about the clothes. New Orleans is a way of life, a spirit. There is a certain joie de vivre about the people and everything about the city. I arrived the Sunday of the French Quarter Jazz Festival. It seems like every other week there is some kind of festival in New Orleans. Even when I went in the week or weekend not during a festival, the people and atmosphere are vibrant and have that back-beat cool. There are always street performers and artists on every block, painting, playing chess, a guitar, sax, or miming.

People in New Orleans express their love of eccentricity and tradition with their clothing. If there is one uniform in New Orleans, it is the hat. The hat of New Orleans is the fedora. Jazz musicians wear fedoras as they play in dark smoky bars, revelers wear them as they walk through the parades, and residents wear them while sitting on their front porch reading a newspaper. And if you are looking for a truly original hat, go to Fleur de Paris on Royal Street. This is a couture French millinery, which specializes in marvelous hats worn by local society women and celebrities the likes of Elizabeth Taylor and Madonna.

The next generation of New Orleans continues the funky vibe by mixing and matching vintage. A treasure trove of unique pieces by young designers is the Decatur St. Exchange. The pieces here are all made by local designers and have a deconstructed multicolor look. Definitely go check this place out.

Whatever you wear in New Orleans, it has to be worn with a party attitude. After all, Mardis Gras beads are available here year round. Laissez le bon temps roulez!