Trademark Law Updates | New Judicial Opinions
July 13, 2007
Bach v. Forever Living Products U.S., Inc.
C05-970MJP, 2007 WL 445447, W.D. Wash., 2/6/2007
Because literary purchase agreement granting motion picture rights in the book "Jonathan Livingston Seagull" was a license rather than an assignment of trademark rights, plaintiff had standing to bring trademark infringement action. Material issues of fact remained on trade dress claim, likelihood of confusion and whether plaintiff abandoned the mark.
Plaintiff, the author of the book “Jonathan Livingston Seagull,” brought both trademark and copyright infringement actions against defendant beauty product company. The court rejected defendant’s argument that the copyright claim precluded the trademark action since copyright law provides an adequate remedy, holding that the plaintiff sought to protect against different wrongs under different bodies of law. The court further held that the literary purchase agreement plaintiff executed limited the assigned rights only to motion picture and merchandising, while expressly reserving to the author all rights not granted. The author thus still owned the trademark rights. There was an issue of fact as to whether he had abandoned those rights by failing to maintain adequate quality control; defendant had not met its stringent burden of showing abandonment. Summary judgment was similarly inappropriate on the claims for trade dress infringement: regardless of whether plaintiff technically owned the trade dress, he had the right to royalties from others’ use of it and thus had standing to bring the trade dress claim. On the question of whether the trade dress had acquired secondary meaning, plaintiff had offered enough evidence of it to survive summary judgment. Finally, testimony from defendant’s distributors that they assumed defendant had permission to use the Jonathan name and likeness, which suggest endorsement or approval, was sufficient to defeat summary judgment on the likelihood of confusion claim.
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