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Last updated - March 13, 2011

Hemingway has, for now, dropped the copyright infringement claims in favor of state and federal claims of trade dress infringement, dilution, tarnishment and unfair competition. While the Amended Complaint is better written than the original complaint, it still lacks any solid legal basis. D Scott Hemingway may have acquired some adult supervision but that supervision cannot alter the facts. Starting with paragraph 13 of the Amended Complaint:

13. The bottlecap necklace jewelry made, used, sold and marketed by M3Girl Designs, LLC includes one or more of the following one or more of the following trade dress features: (1) a slim choker necklace, colored or white, fabric (2) an attachment having a metallic sheen tied in a knot at the front of the chocker necklace, (3) a conventional soft-drink bottlecap with crowned ridges around the edge, (4) the crowned ridges of the bottlecap positioned outwardly on the chocker necklace with the internal surface of the bottlecap exposed, and/or (5) a raised projection having a geometric shape on the top surface of the bottlecap.

The party asserting a trade dress claim has the obligation to prove to the court that the trade dress has acquired secondary meaning and that the claimed trade dress is non-functional. Functionality negates any trademark claim. Secondary meaning is a showing that the public identifies the product with the manufacturer because of the look of the product, such as the Coca Cola bottle shape. ¶ 13 is claiming that (1) a slim fabric choker necklace is non-functional and is identified with m3girl designs but gives no indication of why. In fact, the Amended Complaint only references the choker one more time in the filing, in ¶ 19, where the Amended Complaint states that Blue Brownies, the Defendant, markets the same item. (2) an attachment, with apparently no features other than a metallic sheen, is trade dress? Really? With no exhibits or examples to support the claim? (3) a conventional soft-drink bottlecap is associated in the mind of the public with m3girl designs and no one else? (4) the bottlecap positioning is trade dress? (5) and a cheap bit of costume jewelry attached to the bottlecap is trade dress? We suggest Hemingway and m3girl designs make a settlement offer real quick. ¶ 13 is a real loser. While the Amended Complaint does not make any copyright infringement claims it does allude to copyright infringement in ¶ ¶ 25-26 where the complaint states:

25. Plaintiff produces bottlecaps that have the following designs shown in the interior (inside) of the bottlecap: "Letters on Tye Dye," "Letters on Cheetah Spots"" "Letters on Blue Polka Dots" "Crosses (7 versions)," "Cheer," "Peace Sign," "Peace," "Peace Fingers," "Ballerina Shoes," "Guitar," "I Love Gymnastics," "Soccer Ball," "Basketball," "Volleyball," "Football," "BFF (best friends forever)," "Cupcakes (3 versions)," "Ice Cream Cone," "Butterfly (4 versions)," "Horses," "Drama Queen," "Flowers (4 versions). 26. The Defendants have made, used and sold bottlecap jewelry with the following designs on the interior (inside) of the bottle cap: "Letters on Tye Dye," "Letters on Cheetah Spots"" "Letters on Blue Polka Dots" "Crosses (4 versions)," "Cheer," "Peace Sign," "Peace," "Peace Fingers," "Ballerina Shoes," "Guitar," "Gymnastics," "Soccer Ball," "Basketball," "Volleyball," "Football," "BFF (best friends forever)," "Cupcakes (3 versions)," "Ice Cream Cone (3 versions)," "Butterfly (2 versions)," "Horses (2 versions)," "Drama Queen," "Flowers (4 versions)."

What the Amended Complaint does not state is (1) that the artwork is not the same, (2) that Blue Brownies markets many designs that m3girl designs does not market, (3) that m3girl designs markets many designs that Blue brownies does not market, (4) that the design groups mentioned are generic and are favorites of the teenage girl customers who purchase these designs, (5) and that Maddie Bradshaw stole many of these designs from outside sources. We think the inclusion of these designs are an effort to keep the copyright claims alive but on the sidelines. These designs are not mentioned again in the Amended Complaint.

36. The Plaintiff's trade dress, as identified above, is non-functional and acquired distinctiveness in the minds of consumers.

A slim fabric choker necklace is non-functional? Every slim fabric choker necklace in the world is associated with m3girl designs? Hardly. Conventional soft-drink bottlecaps are only associated with m3girl designs? Prove that to the court. Costume jewelry glued to the bottlecaps make it distinctive? No way. The burden of proof lies with m3girl designs to prove secondary meaning. m3girl designs will fail that test. Courts have previously found that dilution can occur as a result of either "blurring" or "tarnishment". "Blurring" typically refers to the "whittling away" of distinctiveness caused by the unauthorized use of a mark on dissimilar products; while "tarnishment" involves an unauthorized use of a mark which links it to products that are of poor quality or which is portrayed in an unwholesome or unsavory context that is likely to reflect adversely upon the owner's product. The legislative history suggests that both of these concepts are encompassed within the new law. In addition, the legislative history cites, as examples of the uses which would fall within the new law, the mark DUPONT for shoes, BUICK for aspirin and KODAK for pianos. You could be liable for using another company's trademark if you are blurring or tarnishing their mark under the state and/or federal dilution laws. Fortunately, dilution law only applies to "famous" or "well known" trademarks. m3girl designs does not qualify as a famous trademark. The federal trademark infringement claims are so flimsy that m3girl designs should demand a rebate from Hemingway. We are not sure if it is the fact that Hemingway is inept or that m3girl designs is insisting on the charges going forward when there is no case. Either way, the real problem that innocent sellers are being attacked, personally and professionally, while the real criminals, m3girl designs and Hemingway, go unpunished.