[The News Journal]The Connecticut brothers who built a successful clothing company that embodies the prepster lifestyle of Martha’s Vineyard have stirred up a nor’easter for a Rehoboth Beach T-shirt shop.
Vineyard Vines LLC, a company started by Ian and Shep Murray in 1998, has sued Rehoboth Lifestyle Clothing Co. for selling tops and sweatshirts that say “rehoboth” and are embroidered with big smiling whales. The jaunty-tailed whales bear a striking resemblance to the iconic trademark seen on the Murrays’ high-end ties, shirts, jackets, dresses and other products, the lawsuit alleges.
The way the Stamford, Connecticut, company sees it, Rehoboth Lifestyle is infringing on its registered trademark and diluting its “famous trademark,” according to a lawsuit filed in federal court. Vineyard Vines clothing, which has been spotted on movie stars and several presidents, is pricey, with a cotton dress shirt selling for $128 on the company’s website. […]
I doubt a court would find that the Vineyard Vines whale, even as popular, well-known and iconic as it may be, is indeed a “famous mark” as that term is defined under the Federal Trademark Dilution Act. Bigger ‘fish’ have tried and failed. The short list includes: XEROX, KODAK, COCA-COLA, and REEBOK. Read more about trademark dilution and famous mark cases. But it seems that Vineyard Vines has a strong case in establishing the “likelihood” of confusion. Actual confusion of consumers is not required.
I was quoted in the article to explain why it is important for trademark owners to police and to protect their marks. The consequences of not doing so could be extremely costly to their brand and business. And the failure to police may also lead to “genericide”, causing the owners to lose their exclusive right to use the mark in connection with the sale of its goods and services. Common examples of well-known companies whose marks became generic
In the article, I also explained the general purposes of trademark law. Read the full article:
So what do you think? Are consumers likely to be confused, even if initially, by the local t-shirt company’s mirror-image, stylized pink whale? More specifically, is it more likely than not that some consumer might be confused? If so, what’s the harm?
As a bit of a renaissance woman, I have a passion for all things intellectual and expressive. In fact, before becoming an Associate Professor of Law, I was known as “Lawyer by Day, Poet by night“. I am also obsessed with capturing the creative while viewing life through my lens.
I’m not trained (yet). But I am inspired to capture creative shots, especially city views and nature scenes. As an intellectually curious person and life-long learner, I always seek new opportunities for creative expression. With the advent of high-tech smart phone digital camera technology, I fell in love with the photographic images I captured throughout my travels.
After receiving an announcement from public relations Director Mary Allen about the Widener University’s “Evening of the Arts”, I decided that it was time for my photos to have a life beyond my smart phone and Canon PowerShot. Although not high-end photog gear to be sure, I’ve managed to shoot some beautiful photos and to nurture my creative curiosity in the photographic medium.
V (which stands for victory) is Victor Willis’s new favorite letter of the alphabet. That’s because he, the “policeman” member of the Village People, successfully used a powerful right in the Copyright Act called termination of transfers to reclaim his copyright in the popular and perennial hit YMCA and other songs.
The termination right is a little known but powerful opportunity for people who’ve created copyrighted works (like a songwriter, writer, photographer, for example) and transferred them to others (a recording or publishing company, for example) to get their rights back 35 years after the transfer. It’s a right that exists regardless of what the original transfer document said. So all of that “in perpetuity” language? Forget about it. The right cannot be contracted away but it can be forever lost if not exercised in a timely or proper fashion. Continue reading “Village People member & writer of YMCA uses law to reclaim his copyrights!”→
