I was reading a business article from the Jan. 6 New York Times that described an ongoing legal battle between the shoe manufacturers Vans and Skechers. Vans is famous for its black and white checkerboard-pattern slip-ons. Apparently Skechers marketed a similar shoe.
Quoting from the article:
" … Anticipating a fight, Skechers beat Vans into court. The company filed suit last March in Federal District Court in Los Angeles, seeking a ruling that its shoe does not infringe the Vans trademark on the pattern. Skechers submitted evidence that a dozen other manufacturers had used the checkerboard pattern. Then, when Vans filed a claim to block Skechers from selling its version, the judge denied the request. Vans is now appealing. … "
You can do that, that is get a “preemptive” (my term) ruling in your favor before the other guy even takes his shot? Why would the court system even allow such a thing? Shouldn’t the court say something like, “Why are you taking up the court’s time over a dispute that does not, and may never, exist? And besides, if your opponent decides to sue you, we want to hear his side of the story from him, not from you.”
Can someone explain how this works? Is there some crucial piece of the picture that’s missing from the article?
It’s a declaratory ruling (a/k/a declaratory judgment), common in patent and intellectual property cases. If it’s truly a case where a dispute does not and may never exist, a declaratory ruling won’t be available; the dispute still has to meet the case or controversy requirement of Article III of the Constitution. Wikipedia has an excellent explanation of the rationale behind declaratory rulings:
This is called a declaratory judgment action. More can be read about it in this Wikipedia article Wikipedia . Declaratory judgment (“DJ”) actions are fairly common in intellectual property cases, as this one appears to be. DJ actions are permitted under federal law 28 USC 2201 and are used to “quiet title”. In order to file a DJ action you must have some reasonable apprehension of litigation, usually in response to a threat of a lawsuit.
Even after reading the cite I still don’t quite get it. Does this mean I can plan on marketing a “Nathan’s Beef Stick” and file for a declaratory judgment that my name is Nathan and I am selling the Beef Stick and since there is no other “Nathan’s Beef Stick” on the market I can have it ruled in my favor pre-emptive of any legal action by Nathan’s Famous Hot Dogs?
Wouldn’t I have to notify the hot dog people as part of the declaratory judgment?
Would this still be valid if I intended to use a similar but not identical font and color scheme?
No. You need to show that the issue is contested in order to satisfy the actual controversy requirement. If Nathan’s had threatened to sue you, you might be able to sue Nathan’s (which is what happened in your example) seeking a ruling that your proposed use didn’t infringe Nathan’s mark.
Gfactor has covered the issue. I’d just like to clarify that declaratory judgments are not limited to intellectual property cases, but, just to emphasize what has been said before, a declatory judgment plaintiff has to show a real likelihood of litigation, most commonly a threat of lawsuit.
As Gfactor said, these arguments would be addressed by the court in the action. But, just speaking off the top of my head and assuming you actually made it to court with a valid declaratory judgment action, these are not winning arguments. Nathan’s Famous would likely win and you would have wasted a lot of money.
