It is a rare occasion when an intellectual property case is tried in the federal district of Rhode Island, but in 1991 Sakonnet Vineyards sued a California winery, Callaway Vineyards, over Callaway's use of the America's Cup Trademark. Sakonnet alleges that it has been using the name since 1978 on up to 40 % of its wines and that the Callaway use causes confusion in the mind of consumers as to the origin of the product.

Callaway argues that the differences in the bottles, labels and prices would prevent any confusion, and further, Callaway purchased a license to use the name, America's Cup, from the owners of the trademark related to the race. It is alleged that Sakonnet never obtained such a license.

Some of the interesting issues will be whether Sakonnet's use of the mark was non-competing with the owners of the race's trademark and therefore permissible; whether confusion between the two products can be proved; and whether Sakonnet's use was an infringement of trademark all along making it liable in damages to Callaway and the original owners.

There are Rhode Island laws which affect one's right to use the name, portrait or picture of another for advertising or trade purposes without permission. RI General Law 9-1-28 states that if someone commits this act without authority, he can be sued in Superior Court to prevent the unauthorized use and he may be liable for damages. In fact, if the use took place knowingly without consent, the liability may be triple damages. This law will not apply to photographers who exhibit their own works in, or about, their establishments, unless such exhibition continues after written objection is made by the person portrayed.

First Published Version 1991 David M. Spatt

WEED EATER v. LEAF EATER

A decision was recently handed down on a 1992 appeal in the U.S. Court of Appeals for Massachusetts, involving the issues of trademark inringement. The plaintiff, who owned the trademark ``Weed Eater,'' sued another company that sold products called, ``Leaf Eater,'' ``Flowtron Leaf Eater'' and ``Vornado Leaf Eater.''

The Court granted the plaintiff's demand for an injunction, preventing the defendant's use of the mark ``Leaf Eater'' when not accompanied by the words, ``Flowtron'' or ``Vornado.'' The ``Leaf Eater'' mark, when used alone, was apparently found to cause confusion in the minds of the general public as to the origin of the products identified with the trademark.

No damages were allowed as the plaintiff failed to establish any actual damages, the products were not found to be in direct competition and the ``Leaf Eater'' logo was a good faith extension of an earlier product of defendant, called the ``Skeeter Eater. The Court felt that the defendant had not intended to take advantage of the plaintiff's reputation and no unjust enrichment took place. Such factors are often considered in cases of infringement during a determination of damages.

First Published Version Copyright 1993 DAVID M. SPATT

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