Over-aggressive trademark enforcers "advised to chill".

August 14, 2002 10:36 AM

Over-aggressive trademark enforcers "advised to chill". Tommy Hilfiger's trademark is not infringed by Timmy Holedigger perfume for dogs. Perhaps this can be used as precedent in responding to silly cease and desist letters.
posted by kcmoryan (12 comments total)

"Hilfiger fails to see the humor in all this," Mukasey wrote in Tommy Hilfiger Licensing Inc. v. Nature Labs LLC, 99 Civ. 10713. He called Tommy Hilfiger's position "dour" and said the company "is 'advised to chill,'" as were the litigants in a recent trademark case before the 9th U.S. Circuit Court of Appeals, Mattel Inc. v. MCA Records Inc., 98 Civ. 56577.

I can't believe the judge actually told Tommy Hilfiger to chill out. That's great.
posted by insomnyuk at 10:52 AM on August 14, 2002

great? [snort!]
corporations have ways of dealing with intransigent judges. it may have been great, but i seriously doubt anyone at hilfiger actually *heard* it.
posted by quonsar at 11:01 AM on August 14, 2002

Still, as long as trademark law is written the way it is, policing a mark will remain essential to trademark holders lest they face a future ruling that their mark has become generic. This decision doesn't affect that practice at all; it merely underlines existing case law regarding confusion, dilution and (to a lesser extent) parody.
posted by dhartung at 11:06 AM on August 14, 2002

and said the company "is 'advised to chill,'"

seems kind of unoriginal to me... seeing as how another judge said the same thing two weeks ago...
posted by mhaw at 11:37 AM on August 14, 2002

I have always hated Tommy Hilfiger's bastardization of the American Flag as his trademark. Were does Tommy Hilfiger Licensing Inc. get off, telling some one else that they can't use their unoriginal design. Do they now own all designs that include some thing of the American Flag?
posted by Steve_at_Linnwood at 1:10 PM on August 14, 2002

Tommy Hilfiger's logo is based on an american flag? I always thought it was a likeness of standard sailing flags, being an upscale brand and all....
posted by nomisxid at 1:36 PM on August 14, 2002

Some lawyers are paid to be assholes.
posted by ParisParamus at 1:38 PM on August 14, 2002

Frivolous lawsuits deserve a flippant answer - the judge is right on. This was way beyond the boundaries of "policing a mark." Parody is protected use; Hilfiger can go piss on someone else's tree.
posted by junkbox at 1:45 PM on August 14, 2002

Judge Kozinski who issued the Barbie "advised to chill" opinion a few weeks ago is one of the few judges in the country to fully grasp trademark and copyright law. His opinion in Wendt v. Host International is highly regarded and his dissent in White v. Samsung is often cited in "right of publicty" cases.
posted by anathema at 6:41 PM on August 14, 2002

Oh, dhartung, whatever you may be doing with your life now, you will always remain a lawyer. By the way, update the copyright notice on your webpage to reflect the change in the year.
posted by stvc15 at 8:49 PM on August 14, 2002

I've never been a lawyer, and if you want to make comments about my site, mail me. That's just rude.
posted by dhartung at 9:31 PM on August 14, 2002

Not intentionally rude, unless you mean the type of rudeness inherent in calling someone a lawyer.

When you wrote:

"Still, as long as trademark law is written the way it is, policing a mark will remain essential to trademark holders lest they face a future ruling that their mark has become generic. This decision doesn't affect that practice at all; it merely underlines existing case law regarding confusion, dilution and (to a lesser extent) parody."

You succinctly demonstrated that you understand TM law better than most lawyers. My point is, same applies for copyright. BTW, you might want to include your email on your website.
posted by stvc15 at 10:34 AM on August 15, 2002