“Stripper Idol” Part Deux

Gene Quinn at IP Watchdog has written this post about the ongoing “Stripper Idol” lawsuit (blogged by yours truly here).  In the post, he argues that the commentators on Fox News covering the story argued on the Bill O’Reilly program that because no one would confuse a strip club with American Idol, there’d be no likelihood of confusion as to source of the services, and therefore the strip club wins.  Gene writes:

While I do enjoy O’Reilly, the fact of the matter is that his legal correspondents were dead wrong, as are most legal correspondents when the attempt to pontificate about matters relating to patents, trademarks or copyrights.

He then states that a trademark dilution theory is most likely to be successful, as “likelihood of confusion” need not be proven.  While I agree with him that the O’Reilly commentators were “dead wrong” in their assessment of the merits of the suit, I respectfully disagree that dilution is the best theory for FremantleMedia to pursue.

First, dilution is sticky because you have to prove that your mark is “famous.”  Under the Texas dilution statute, which may be more liberal than the Section 43(c) of  the Lanham Act, fame may be easier to prove.  But it’s still a significant threshold of proof that the plaintiffs must overcome.

Second, a number of recent federal decisions have noted that for a junior mark to dilute a senior mark, the junior mark must be nearly identical to the senior mark.  In other words, if we’re not going to look at consumer confusion, you have to prove a very close nexus between the allegedy famous mark and the allegedly diluted mark.  While STRIPPER IDOL and Design may be close the AMERICAN IDOL and Design design, it’s a hard burden to show that the more risque mark actually dilutes the distinctive quality of AMERICAN IDOL or tarnishes its image.

My continuing belief is that the best theory revolves around likelihood of confusion, not as to source of the goods, but as to sponsorship or affiliation. A typical survey question used to support Plaintiff’s case may ask something like “Do you believe this strip club had to get permission from anyone to use this logo? If so, who?”  I wouldn’t be surprised if a good percentage of people would respond “Yes; American Idol.”  That’s confusion as to sponsorship or affiliation.

Dilution is a good idea, too, particularly under Texas law (which may be more lenient than the federal standards), and I can’t wait to see how the case unfolds.

Selling knock-off Rolexes is illegal? But everybody else is doing it!

This watch is for sale online. A real Rolex or a $99 fake?

The Wisconsin State Journal brings us this story of Vincent Konicek, the owner and developer of toprolexreplica.com, who has surprisingly been sued for–can you believe it–selling knock-off Rolex watches over the Internet and cybersquatting.  His reply?  Essentially admit the conduct, assert the “everybody’s-doing-it” and “ignorance-of-the-law” excuses, and then admit that you need a lawyer:

Konicek said Wednesday that he started selling the fake Rolexes after a trip to China, where they were being sold on the street for $10. Konicek sells his own Chinese-made Rolexes for $99.

The lawsuit states that Rolex found out about the site in October and wrote to Konicek. He faxed back a letter five days later, saying that when they finish “suing all of the following merchants listed on Google search pages, call me and let me know you are going after me next.”

He attached two pages of a Google search that used the terms “Rolex replica.” Rolex concluded that Konicek is “fully aware” that what he is doing is illegal and willful, the lawsuit states.

But Konicek didn’t sound all that certain.

“I didn’t know I was going to run into copyright infringement,” he said. “I guess I’ll have to talk to an attorney and see what I can do.”

Here’s the Complaint (pdf). Among the surprising allegations:

• Konicek registered the domain name in his own name, and left the whois record active. (Maybe he really didn’t know it was illegal?)
• Rolex sent a cease and desist letter based only on the domain name before the site was active. (Isn’t this the time to at least consult a lawyer on the legalities of your enterprise?)
• Konicek responded to the cease and desist with a Google printout of other replica sites and a message of ““[w]hen you finish suing all of the following merchants listed on Google search pages, call me and let me know you are going after me next” and went ahead with the site.

I’m slightly sympathetic to Vince.  It always amazes me that so many businesses can sell direct knock-offs of products and seemingly get away with it.  IP owners can register their marks with the Customs and Border Patrol to intercept shipments of counterfeit goods, but that only works when there’s actually an inspection.  There are also administrative procedures with the International Trade Commission to prevent import of products, but that doesn’t stop the piece-by-piece shipment of goods to the U.S. by mail from some foreign company selling on an anonymous website. And raiding mom-and-pop stores in Chinatown isn’t a way to build up goodwill.

I was fortunate enough to work for a company that marketed jewelry and watches in the United States that never sold fakes and was careful to ensure that its products were not likely to infringe any intellectual property rights of others.  And I would guess that the owners of that business would have shared Vince’s frustration that, just because he was an American who was trying to run a transparent business, he gets sued for hundreds of thousands of dollars and dozens of other websites just keep on counterfeiting.  Still, if all of your friends copy music on BitTorrent and get away with it, you can’t cry foul when the RIAA comes after you.  When you sell knock-offs, you can’t be surprised that the original IP owners will be upset.  But what really gets me is why Vince didn’t just go to a lawyer and figure out his options when he got the cease and desist letter. If he was lookin’ for a fight, he got one, and with all of his admissions, he’s in serious trouble.

But who knows–maybe he can become a successful merchant of Obama thongs. (Then again, that may get him into trouble, too.)