TRADEMARK

Walmart Inc. is shamelessly selling copycat versions of more than 20 pairs of Vans' bestselling shoes, flooding the market with cheap, confusingly similar shoes that rip off the shoemaker's trademark rights, according to a lawsuit filed in California federal court.

Walmart knows it isn't authorized to sell Vans Inc.'s "Old Skool" low-tops, checkerboard slip-ons, and other iconic shoes, but that hasn't stopped it from continuing a campaign to rip off all of Vans' shoe designs, despite takedown requests and enforcement actions, according to the 106-page complaint filed by Van's.

"Walmart's copying of Vans' shoes is not subtle or inadvertent; rather, Walmart started selling over 20 blatant knockoff versions of Vans shoes while willfully infringing Vans' trademark and trade dress rights," Vans alleged in the complaint.

According to the complaint, one of Vans' most valuable trademarks is its "jazz stripe" on the side panel of many of its shoes, and is an inherently distinctive symbol of the Vans brand. Vans said it has spent millions of dollars advertising its products bearing the side stripe mark, including sponsoring athletes like Tony Hawk and events like the Vans Warped Tour.

"As a result of Vans' promotional and sales efforts over the past four-plus decades, the side stripe mark is one of the most recognizable, iconic, and valuable trademarks in the world," Vans said. "Due to Vans' efforts, consumers readily identify products bearing the side stripe mark as being high-quality merchandise emanating from, sponsored by, or approved by Vans."

Vans' "Old Skool" low-top skate shoe has been around since the 1970s and is one of the brand's bestselling shoes of all time, according to the suit. The shoe's trade dress consists of a distinctive combination of elements, including the side stripe mark, a rubberized sidewall, visible stitching, and the uppermost portion of the sidewall featuring a three-tiered appearance among other things, the suit states.

"Walmart has truly flooded the market with its cheap, poorly made, and confusingly similar knockoff shoes," Vans said

"Despite how closely they mimic the look of Vans' shoes, Walmart's infringing shoes fail to mimic genuine Vans shoes' high quality or durability," Vans said, noting that post-sale confusion involving Walmart's infringing shoes will likely harm Vans' reputation.

Vans' suit includes claims of trademark infringement, unfair competition, and false designation of origin.

It seeks to bar Walmart and the other defendants from advertising, making, or selling the infringing shoes and from using Vans' trademarks or trade dresses. It also seeks treble and punitive damages, restitution, litigation costs, and attorney fees.

Walmart urged a California federal judge Monday to deny sneaker maker Vans' request for a preliminary injunction to temporarily block the superstore from selling shoes that allegedly infringe Vans' designs, arguing that removing the shoes from U.S. shelves would cause "tremendous losses" amounting to "tens of millions of dollars."

The issuance of a preliminary injunction would be an "extraordinary and drastic remedy" that would cost Walmart "tens of millions of dollars in a case that does not involve alleged counterfeiting, does not involve identical marks, and in which Vans' claims are weak and the issues of infringement and validity of Vans' purported trade dress are hotly contested."

Vans' alleged 'trade dress' is not unique to Vans and that the design is functional in the fashion world; as such, the trade dress is wholly unprotectable."

The retail giant said Vans' alleged trade dress has not acquired secondary meaning, that Walmart and Vans' shoes have "vastly different logo designs," obviating any likelihood of confusion, and that the contested shoes are sold in distinct channels of commerce.

TRADEMARK

Question 1: In an essay (1) identifying Van's trademark interests; (2) the strength of Van's trademark claim against Walmart; and (3) whether Vans is entitled to obtain injunctive relief against Walmart.

COPYRIGHT

Question 1:

Tim DoLittle works for the esteemed U.S. Senator Sirius as a speechwriter. DoLittle is tasked with jazzing up Sirius' speeches. DoLittle and fellow speechwriter, Mike DoLess, are hanging around campaign headquarters working on a speech to honor Benjamin Franklin. DoLittle throws out an impromptu joke idea - "What happened when Ben Franklin told a joke to the Liberty Bell? ... It cracked it up!" UGH, says DoLess, "give me a break. That is terrible!"

Tim DoLittle heads back to his office but he is stumped. He then thinks back to DoLess' comments that the Ben Franklin jokes need to incorporate positive aspects of the founding father. Inspired by this perspective, DoLittle writes down the following joke: "Why was Ben Franklin so healthy? ... He had a good Constitution!" DoLittle tells DoLess this joke, but DoLess is still NOT impressed. Frustrated, DoLittle crumples up the paper and throws it away in the trash.

Senator Sirius' wife, Sally Sirius, overhears the back-and-forth between DoLittle and DoLess, and she decides to steal these jokes and use them at her next lunch with the ladies. She fishes the crumpled paper with the Constitution joke written on it out of the trash.

(a) If Sally Sirius steals the Liberty Bell and Constitution jokes and tells it to her friends at lunch, has she engaged in copyright infringement?

(b) Who owns the copyright in the Constitution joke, DoLittle, DoLess, or both?

Question 2:

DoLittle and DoLess collaborate on the rest of the Ben Franklin speech, trading ideas and concepts, and together they present a polished speech to Senator Sirius. We should note that DoLittle and DoLess are independent contractors (poorly paid, and basically a step up from volunteers). They write speeches with little direct guidance from Senator Sirius. They use Senator's office space and equipment, along with a handful of other speechwriters. The Senator's Chief of Staff assigns speeches for them to write and gives them a general overview of the message and arguments they should convey. The speeches are also subject to full editorial control by Senator Sirius, although he rarely ever changes a word. Poor DoLittle and DoLess grind away as speechwriters but they do not receive a W2 salary or benefits; instead, they receive a small financial stipend and the occasional staff appreciation pizza.

DoLittle and DoLess' speech is a hit and goes down in history as one of the most important speeches on Ben Franklin given by a U.S. Senator. Newspapers publish the speech in full without seeking a license from the Senator, or from DoLittle and DoLess.

Who owns the copyright in the Ben Franklin speech - Senator Sirius, DoLittle, and/or DoLess?

Question 3:

20 years later, Senator Sirius is now President of the United States, and First Lady Sally Sirius is offered a multi-million book deal. DoLittle is now the esteemed editor of the Washington Post. Sally's book includes photocopies of private love letters that DoLittle wrote to her while a lowly speechwriter for then-Senator Sirius during their decades-long affair from the 1970s to 1985. The publisher of Sally's book, Salacious Publications Inc., knows that DoLittle has not given permission to publish these letters. The love letters are spicy, scandalous, and cause much embarrassment for DoLittle and political instability for President Sirius. DoLittle feels especially betrayed because these letters were intended to be private and have never been shared. DoLittle has obviously never registered the letters with the U.S. Copyright Office and the letters do not have any copyright notice.

(a) Does Sally need DoLittle's permission to publish the letters?

(b) If yes, does Sally have a fair use defense for the publication of these love letters?

(c) Assuming Sally does not have a fair use defense, can DoLittle bring a lawsuit for copyright infringement of his letters, and could he obtain an injunction to enjoin the publication of this book?

(d) What kinds of claims could DoLittle bring against Salacious Publications Inc.?