Sun Sentinel: Class-action status OK’d in claim BJ’s collects excessive sales tax

By: Ron Hurtibise
S
un Sentinel

May 30, 2017

A lawsuit alleging that B.J.’s Wholesale Club is charging excessive sales tax can proceed as a class action, meaning it could benefit all members paying the tax, a judge has ruled.

The suit was filed in 2015 by a Miami-Dade County woman, Laura Bugliaro, who said she noticed she was being charged state sales tax on the full retail price of discounted items at the club’s Cutler Bay store after buying two Samsung televisions in November 2014.

The suit says Bugliaro paid $769.99 and $329.99 but was charged sales tax on the full retail prices of $1,399.99 and $529.99.

The suit is seeking a two-pronged remedy: a permanent injunction to stop the practice and a separate ruling ordering the wholesale club to return sales taxes it contends were improperly collected since 2011.

Thursday’s ruling by Judge John W. Thornton of the 11th Judicial Circuit in Miami establishes a class of future victims who would be protected by a permanent injunction stopping the practice, two of the plaintiffs attorneys, Steve Silverman of Miami-based law firm Kluger, Kaplan, Silverman, Katzen & Levine and Victor Diaz of V.M. Diaz & Partners, based in Miami Beach, said in an interview Tuesday.

Click to read more at Sun-Sentinel.com.

Google: A Victim of Its Own Success?

ELLIOT V. GOOGLE, 2017 WL 2112311 (9TH CIR. MAY 17, 2017)

“Google it.”  Of course, we all know what this means. Indeed, the word “Google” has earned such widespread recognition that in 2006 it was added to the dictionary.  While this might be considered the epitome of success, it can be a nightmare in terms of trademark protection.

Google Lawsuit

Background

“Google” is what trademark law refers to as a fanciful mark.  Fanciful marks are made up, and similar to arbitrary marks, have no association to a particular type of goods or services.  For example, “Apple” has no apparent relation to computers just as the names Uber, Twitter, and Amazon give no indication of the particular product or service it provides.  For that reason, fanciful and arbitrary marks generally garner the highest level of trademark protection because it usually takes the trademark owner significant effort marketing its business to reach the point that the public associates its product or service with the mark.

However, when a fanciful term receives such unimaginable success that it transforms itself into a concept or in Google’s case, an entry in the dictionary, it may be in danger of losing its trademark protection and becoming a dreaded “generic” term.  Both “aspirin” and “escalator” were victims of “genericide.”

To determine if a mark has become generic, the Ninth Circuit Court established the “who are you/what are you” test.[1]  Applying this test, a finder of fact would analyze if a term points to the source (who you are), or if a type of good (what you are).[2]  An example is that the trademark “Coke” indicates a soft drink made by “Coca Cola” and the generic term “soda” indicates any carbonated soft drink. Once a term is found to be generic, it has no trademark protection, and can be fairly used by anyone in connection with describing goods or services.

Case

Aware of this risk, Google has vigilantly sought to protect its name.  In 2012 Google discovered that Chris Gillespie (“Gillespie”) acquired 763 domain names that included the term “Google.”  David Elliot (“Elliot”) purchased and registered the domain names using Gillespie’s GoDaddy.com account. Each of the domain names paired the term “Google” with a person, brand or product, such as “googledisney.com” and “googlebarackobama.com.” Google promptly objected to the registration of the domain names and filed a complaint with the National Arbitration Forum (“NAF”) using its dispute resolution procedure. Google argued that the domain names were confusingly similar to the “Google” trademark, were registered in bad faith and constituted cybersquatting.  Google prevailed and NAF transferred the domain names to Google.

Elliot then filed an action in the Arizona District Court (Gillespie later joined in the suit) for cancellation of the Google trademark on the grounds that the word “google” had become a generic term to describe the act of internet searching.

Ruling

After cross-motions for summary judgment, the district court found that Elliot and Gillespie failed to present sufficient evidence to support a jury finding that the public primarily understands the word “google” as a generic name for internet search engines[3].  Elliot and Gillespie appealed to the Ninth Circuit claiming that (1) they had presented sufficient evidence to create a triable issue of fact and (2) that the district court misapplied the primary significance test and failed to recognize the importance of the use of google as a verb.

On May 17, 2017, the Ninth Circuit affirmed the finding that a claim of genericide must always relate to a particular type of good or service, and that use of ‘Google’ as a verb is not synonymous with a finding of genericide[4].

Impact

Like Google, trademark owners must always be vigilant, monitor the public’s use of its mark and take affirmative steps to correct any public misuse to protect against potential claims of genericide.

 

Terri Meyers

Terri Meyers is a Partner at the Miami firm of Kluger Kaplan Silverman Katzen & Levine, P.L. and leads the firm’s Intellectual Property department.

 

 

 

Mayda_Nahhas

Mayda Nahhas is a law clerk at Kluger Kaplan Silverman Katzen & Levine, P.L., a rising third-year law student at Nova Southeastern University – Shepard Broad College of Law, the Goodwin Alumni Editor for Nova Law Review Vol. 42, and the Founding President of Nova Southeastern University Fashion Law Association.

 

[1] Official Airline Guides, Inc. v. Goss, 6 F. 3d 1385 (9th Cir. 1993).

[2] Yellow Cab Co. of Sacramento v. Yellow Cab of Elk Grove, Inc., 419 F.3d 925, 929 (9th Cir. 2005); Filipino Yellow Pages, Inc. v. Asian Journal Publication, Inc., 198 F.3d 1143, at 1147 (9th Cir. 1999).

[3] Elliot v. Google, 2017 WL 2112311 at 2 (9th Cir. 2017).

[4] Id. at 3.

Daily Business Review: Litigation Department of the Year

Daily Business Review

Kluger Kaplan Litigation Department of Year

Alan Kluger, Marko Cerenko, Todd Levine, Steve Silverman and Abbey Kaplan, of Kluger, Kaplan, Silverman, Katzen & Levine. Photo via DBR.

Litigation Department of the Year

General Litigation – Midsize

Kluger Kaplan

The 31-attorney litigation boutique is known nationally for taking on complex, high-stakes disputes across a range of disciplines and industries.

Kluger Kaplan’s trial lawyers have earned national recognition as determined and effective client advocates. Their expertise is in business and corporate litigation, real estate litigation, securities and financial fraud, corporate governance, probate and estate, bankruptcy litigation and debtor and creditor’s rights, federal and state appeals, professional liability, intellectual property, class actions and complex matrimonial litigation.

The firm is called upon by general counsel from companies across the country to litigate big matters.

Its cases include litigation against Donald Trump’s company, Alex “A-Rod” Rodriguez’s divorce, the Fontainebleau Las Vegas director and officer liability case, litigation against developer Art Falcone and his Miami Worldcenter project, the Victor Posner estate battle, Claudio Osorio’s investment fraud litigation and the Dollar Tree restrictive covenant cases.

Click to read more at DailyBusinessReview.com.

Supreme Court’s First Ruling on Fashion Copyright

Broadening Intellectual Property Rights for the Fashion Industry

Fashion Copyright

Case:

In a first ever fashion copyright decision, the U.S. Supreme Court analyzed whether design elements on a cheerleading uniform could be copyright protected.

At issue were two competitor manufacturers of cheerleading uniforms, Star Athletica, LLC (“Star Athletica”) and Varsity Brands, Inc., Varsity Spirit Corporation and Varsity Fashions & Supplies, Inc. (collectively “Varsity”).

Varsity had successfully acquired approximately 200 copyright registrations for two and three dimensional designs that appear on its cheerleading uniforms. Varsity sued Star Athletica for infringing five of Varsity’s copyright registered designs. In 2014, the District Court held that fashion related patterns for apparel were non-copyrightable if the work of art was not identified separately from its garment. It reasoned that the cheerleading uniform’s designs served a useful function of identifying a cheerleading uniform as such.

Background:

Under the Copyright Act of 1976[1], uniforms and other clothing are generally considered useful articles and therefore such items cannot be copyright protected. The fashion industry has customarily relied on other areas of intellectual property law such as trademark, trade dress or design patents to protect their fashion designs and brand. This is because although some elements of fashion can be protected by copyright law such as drawings, photographs, editorial content and software embedded in wearable tech, before this ruling, fashion designs were not copyright protectable.

Ruling:

The Supreme Court, in a majority 6-2 decision, reversed the District Court’s decision and ruled in favor of Varsity Brand, finding that individual design elements incorporated into such useful articles are eligible for copyright protection.

The Sixth Circuit’s decision held that the designs were “separately identifiable” because a blank cheerleading uniform can appear side-by-side a designed cheerleading uniform and both would still be identified as a cheerleading uniform. It further reasoned that the designs could stand-alone because the designs could be incorporated onto other tangible mediums.

Impact:

This decision marks an important milestone for the fashion industry and will no doubt spawn further litigation as designers press newfound copyright protection and copycats wonder what is safe. A designer wishing to obtain protection for a design must still prove ownership of an original “pictorial, graphic, or sculptural work which include two-dimensional and three-dimensional works of fine, graphic and applied art[2],” and obtain a registration from the U.S. Copyright Office. Although registration is not required to prove ownership of an original work of art, registration is a requirement in order to maintain a copyright infringement action in federal court.

Finally, Justice Ginsburg found the analysis of separability of the design from the useful article unnecessary because the designs at issue are not designs of useful articles, rather, the designs are themselves copyrightable pictorial or graphic works reproduced on useful articles[3].” Given that the design is copyrightable, Justice Ginsburg points out that the right “includes the right to reproduce the work in or on any kind of article, whether useful or otherwise[4].” This common-sense approach may send a clear message to the U.S. Copyright Office as they review the inevitable influx of copyright registrations which will follow this opinion.

 

Terri MeyersTerri Meyers is a Partner at the Miami firm of Kluger Kaplan Silverman Katzen & Levine, P.L. and leads the firm’s Intellectual Property department.

 

 

 

Mayda_NahhasMayda Nahhas is a law clerk at Kluger Kaplan Silverman Katzen & Levine, P.L., a second-year law student at NSU Shephard Broad College of Law and Founding President of NSU Fashion Law.

 

 

 

[1] 17 U.S.C. § 101 (2010).

[2] 17 U.S.C. § 101.

[3] Star Athletica, Inc., 2017 WL 1066261, *14.

[4] 17 U.S.C. § 113(a) (2010).

Kluger Kaplan Announces Midwest Expansion Plan, Opens Minneapolis Office

Dan Rosen

Miami-based litigation firm Kluger, Kaplan, Silverman, Katzen & Levine announces its plans to expand into the Midwest market, with prominent litigator Daniel Rosen joining the firm on May 1 and serving as partner-in-charge of its new Minneapolis office.  The move marks the firm’s first physical footprint outside of the South Florida market and is designed to support the litigation powerhouse’s existing national practice, while creating a deeper platform across the Midwest.

With more than 30 attorneys in South Florida, Kluger Kaplan has built a national reputation for handling high-stakes business and commercial litigation disputes, including securities and financial fraud, probate, class actions, complex matrimonial, probate and trust litigation.   The firm’s attorneys serve as lead counsel in trials in federal and state courts across the country, and are consistently recognized by Chambers USA, Super Lawyers and Best Lawyers in America.  The firm was recently named a Top Litigation Firm by the Daily Business Review, an ALM-affiliate and sister publication to the American Lawyer, Corporate Counsel and National Law Journal. 

“Minneapolis is one of the fastest growing metropolitan cities in the country, with roughly 3.5 million people, major corporate headquarters, and a diverse economic base,” said Alan Kluger.  “This move will allow us to tap into the region’s unlimited growth potential, while better aligning our geographic footprint with our clients’ interests.”

According to the Bureau of Economic Analysis, in 2015, Minnesota’s gross domestic product (GDP) was $328.3 billion, ranking 17th in the U.S.  Additionally, 17 of the Fortune 500 companies are based in Minnesota, including General Mills, Target, Land O’Lakes, Hormel Foods, Best Buy and 3M. Yet despite the city’s robust economy, Mr. Kluger says that most law firms have traditionally eschewed the market in favor of major ‘power’ centers such as New York, Boston and Washington, D.C.

“Minneapolis is well-regarded for its sophisticated court system, highly experienced bench and bevy of major national corporations – but continues to be overlooked by the big litigation firms,” said Abbey Kaplan, founding partner of Kluger Kaplan. “Dan’s esteemed reputation, coupled with our resources, will bring immediate value to our existing clients and fill a need in this underserved market.”

Mr. Rosen previously served as partner of Parker Rosen, where he established his reputation as a veteran trial lawyer and advocate for some of Minnesota’s largest businesses and national corporations.  With 23 years of courtroom experience, Mr. Rosen focuses his practice on complex commercial and real estate litigation.  Prior to becoming a lawyer, he was an officer in the U.S. Navy.

As the leading Minnesota lawyer representing property owners in eminent domain takings, he successfully represented international developer, Hines Interests, in the largest eminent domain case in the state’s history.  Additionally, he has garnered a reputation for representing major national corporations with interests in the Midwest, including Exxon Mobil, Walgreens, Sears Holdings and Kmart.

“Coming to Kluger Kaplan is a natural fit and aligns seamlessly with my clients’ needs and interests,” said Mr. Rosen. “By combining forces, we can deliver exceptional legal counsel while creating a platform for additional growth across the Midwest.”

Mr. Rosen is a recognized force in the Minnesota business and civic communities.  He currently serves as Chairman of the Minnesota Campaign Finance and Public Disclosure Board, which is a governor-appointed position tasked with regulating campaign finance and lobbyist activities in state campaign. Additionally, he is the past chairman of the Minnesota Council of the American-Israel Public Affairs Committee (AIPAC) and is a member of the organization’s National Council.

Kluger Kaplan’s Minneapolis office will be temporarily located at 80 South 8th Street, before moving to a permanent location in the city’s downtown district. The firm also anticipates opening subsequent locations across the Midwest, such as Chicago and St. Louis.