IP News Roundup Week of May 23, 2020: Radisson Hotels Sued Over “Treasure Island” Trademark

The Prairie Island Indian Community, a federally recognized Native American tribe located in Minnesota, filed lawsuit against Radisson Hotels International, Inc. and Treasure Island, LLC (TI) for trademark infringement in the United States District Court for the District of Minnesota.

Specifically, the Plaintiff owns and operates “Treasure Island Resort & Casino” in Red Wing Minnesota, and owns a number of trademarks associated with the name “TREASURE ISLAND” in the categories of casino and restaurant services. The Defendant, TI, owns and operates “Treasure Island – TI Hotel & Casino” in Las Vegas and had, at one point, 17 different trademarks associated with the name “Treasure Island.”

In the past, both the Plaintiff and TI engaged in litigation over the use of the trademark “Treasure Island,” where the Trademark Trials and Appeals Board ultimately sided with the Plaintiff and cancelled several of TI’s trademarks as the Plaintiff was able to establish first use and priority in the marks. TI eventually abandoned its remaining marks and, in December 2008, the parties had settled their claims where, in part, the Plaintiff granted TI “a perpetual, non-cancellable, and exclusive license to use marks including and comprising the term ‘Treasure Island’ in any manner or form for the use in the hotel, casino and/or resort industry (the ‘TI License’).”

In July 2019, TI publicly announced its intent to affiliate itself with Radisson Hotels by “stating that Treasure Island – TI Hotel & Casino in Las Vegas, ‘will officially join the Radisson system later this year as Treasure Island – TI Hotel and Casino, a Radisson Hotel.’” Plaintiff contacted the TI to inquire on how its licensed mark would be used in TI’s newly-announced relationship with Radisson as defendant did not have “authority to grant, license, sublicense or assign rights to the TREASURE ISLAND Marks without the Plaintiff’s consent.” TI had, however, not responded to Plaintiff’s request and continued its venture with Radisson by allowing Radisson to advertise and promote the new relationship on its website by using the mark.

Thus, the Prairie Island Indian Community has bought lawsuit against both TI and Radisson for breach of contract claims, trademark infringement, and dilution.

Source:

• Complaint

IP News Roundup Week of May 23, 2020: Peloton Sues ICON/NordicTrak for Patent Infringement

Peloton Interactive (Peloton) has filed suit against ICON Health & Fitness Inc. (ICON) in the United States District Court for the District of Delaware. Peloton, a maker of fitness equipment, alleges that ICON has infringed upon its patents by stealing and integrating Peloton’s technology into its NordicTrack fitness products and, in addition, has engaged in false advertising and unfair business practices.

In its compliant, Peloton states that since 2012, it has introduced a number of innovations into the fitness industry that has greatly improved the at-home workout experience. Specifically, it states:

“Before Peloton invented and released the Peloton Bike, the fitness industry had struggled with an intractable divide: consumers could either (1) go to in-studio fitness classes to obtain the competitive thrill and engagement of working out with others, or (2) choose to use at home exercise equipment—which had seen virtually zero innovation in over a decade—to gain flexibility and time. They could never do both. Peloton solved that problem, and others, with its revolutionary new product and patented technology.”

More specifically, Peloton’s U.S. Patent No. 10,486,026 (“the ’026 Patent”) and U.S. Patent No. 10,639,521 (“the ’521 Patent”) uses sensors in its fitness products to gauge and track a user’s performance (e.g., how fast a user has run or biked) that it then compares to other users using its fitness equipment to designate a rank on a leader-board. This ranking system allows users of Peloton’s equipment to compete with one another, as they would do in a fitness class, but from their homes via live classes or pre-recorded classes.

In 2015, ICON’s NordicTrack began offering iFit, which allowed users to access pre-recorded fitness classes at home. As per Peloton’s complaint, iFit was not successful as ICON eventually winded up laying off 400 workers later that year. In late 2019, however, NordicTrack introduced "the iFit leaderboard." This leader board, as per Peloton’s complaint, infringes on its patents as it uses the same technology to allow NordicTrack users to compete with one another via rankings received while taking classes. Furthermore, Peloton alleges that NordicTrack has implemented "the iFit leaderboard" across multiple products, e.g., treadmills, bikes, ellipticals, rowers, etc, all of which, are also infringing upon its patents.

Additionally, Peloton has also alleged that ICON has been using deceptive trade practices and false advertising to mislead consumers to conclude that ICON’s products are cheaper and superior to Peloton’s. For instance, “to unfairly increase its market share, ICON employs a practice known as false reference pricing. Pursuant to this practice, ICON represents to consumers a false, inflated ‘original’ price of a product, and then informs consumers that the product is currently on sale for a significantly lower, discount price.” This practice allegedly misleads the consumer into believing they are receiving a more expensive product, and therefore a much higher quality product, when compared to Peloton. This ultimately hurts Peloton’s own sales and business.

Unsurprisingly, this is not the first time Peloton has gone after a competitor in the market for infringing on its patents. In 2018 and 2019, Peloton similarly went after Flywheel, claiming their Fly Anywhere bike used parts of their technology that tracks and compares rider performance.

Flywheel initially denied the allegations, but eventually settled out of court in February 2020. According to Business Insider, Flywheel informed its customers that it will no longer be offering in-home classes and customers would be eligible to trade in their Flywheel bike for a refurbished Peloton bike.

Peloton is seeking injunctive relief, damages, and lost profits from ICON.

Sources:

• BusinessInsider

• Compliant

IP News Roundup Week of May 23, 2020: Comedians in Cars Getting Coffee and its Copyright

The U.S. Court of Appeals for the Second Circuit confirmed a dismissal of a copyright infringement lawsuit against Jerry Seinfeld, famed comedian, due to that fact that Christian Charles's, a director and producer, copyright claims were time barred under copyright law’s three-year statute of limitation.

Specifically, in 2018 Charles sued Seinfeld and other defendants in a copyright infringement action based on his claimed authorship of the Netflix television series Comedians in Cars Getting Coffee, a show that Charles and his production company assisted in developing the pilot episode for in 2011. In February 2012, Charles requested for back-end compensation, which Seinfeld rejected and asserted that his work was limited to a work-for-hire. Then in July 2012 when the show premiered, Charles was not listed as an accredited producer. Charles proceeded to file suit in February 2018 in a copyright infringement action based on his claimed authorship of the television series.

The district court and Second Circuit, both found that Charles’ claims were time barred by copyright law’s three-year statute of limitations. Specifically, back in 2012 when Seinfeld claimed his work was work-for-hire and then again when he was not accredited in the show’s premiere, Charles had notice that his authorship or copyright to the series was being disputed. Charles should have bought his suit within three years of that date, but waited until 2018 to do so.

The Second Circuit, thus, granted a summary order in favor of Seinfeld.

Source:

Christian Charles v. Jerry Seinfeld, et al., Case No. 19-3335 (2d Cir. May 7, 2020)