NuWave Over-Cooks IP Lawsuit vs. Super Wave4 Dec, 2012 By: Gregory J. Sater
A recent United States District Court decision in a lawsuit brought by Hearthware against E. Mishan & Sons (Emson) serves as a good refresher course on the basic legal principles of copyright and trademark infringement in the specific context of infomercial marketing.
Hearthware sued Emson alleging that Emson’s infomercial for the Super Wave oven was too similar to Hearthware’s pre-existing infomercial for the NuWave oven – a claim of copyright infringement. Hearthware also alleged that the name of Emson’s product, Super Wave, was confusingly similar to the name of Hearthware’s preexisting product, the NuWave – a claim of trademark infringement. Both claims were rejected by the court on summary judgment.
No Copyright Infringement
Both infomercials suggested using the products (portable halogen ovens) in an RV, a dorm room, or on a boat. In both, the hosts knocked frozen food against a hard surface to demonstrate how solid the frozen food was. Both featured cooking demonstrations, including demos of salmon being cooked with asparagus. Both used time-lapse photography to show the food cooking. Both said that the ovens could broil, roast, grill, bake, barbecue, steam, dehydrate and air fry, and both offered a free blender. NuWave promised “triple-combo cooking power” while, similarly, Super Wave offered “tri-cooking technology.”
The court agreed with Emson that these things were unprotectable “scenes a faire” –meaning they were images or messages that are standard or stereotypical in the course of advertising an oven in an infomercial.
For instance, years before both the NuWave and Super Wave infomercials came out, prior infomercials for other ovens, such as the Flavor Wave and others, had featured time-lapse photography to show food cooking in an oven. And some of them had even shown salmon and asparagus being cooked together, just like in these two infomercials.
As for the terms “tri-cooking” and “triple-combo cooking,” the Court agreed with Emson that they were merely descriptive phrases to remind viewers that halogen ovens cook food in three different ways.
“Even if the NuWave infomercial did inspire the Super Wave infomercial,” the court explained, “copyright laws preclude appropriation only of the elements that are protected by copyright.”
No Trademark Infringement
Hearthware alleged that there would be a likelihood of confusion as to source or origin, i.e., trademark infringement, between NuWave, which came first, and Super Wave, which came second. Many people don’t realize that, in considering whether two marks are similar, one “not only compares the two marks side by side, but in light of what happens in the marketplace.”
The court of course knew this, and so, in its decision, it considered visual characteristics of the products – such as packaging, coloring, and labeling. The court found that the fonts and colors used were not the same and that, in addition, the infomercial, packaging and website for the Super Wave also featured the mark “The Sharper Image” (which Emson had licensed). All of this, the court found, made it less likely that a consumer would incorrectly believe that the Emson product and the Hearthware product somehow were affiliated.
The court also cited evidence that, in the past, Emson had marketed other cooking products with the word “Wave” – such as Bacon Wave, Sausage Wave, Chip Wave, Stone Wave and Omelet Wave – as well as other housewares with “Super” in their names, such as Super Scissors, Super Hear and Super Sewing Machine. In the court’s view, this indicated an innocent intent on the part of Emson when it had selected the name Super Wave, rather than an intent to “palm off” on the recognition of the NuWave.
“Fierce competition is not the same as unfair competition,” the court concluded. “The battle between Hearthware and Mishan belongs in the marketplace rather than the courthouse.”
Gregory J. Sater is a partner in Venable LLP‘s Advertising, Marketing and New Media Group. He can be reached via E-mail at firstname.lastname@example.org.