Round 1 of Bo Jo Bo controversy goes to Saipan Handicraft

In the ongoing litigation relating to the Bo Jo Bo Wishing Doll, Saipan Handicraft won its first victory last Jan. 17 when Chief Judge Alex R. Munson of the United States District Court for the Northern Mariana Islands granted in part Saipan Handicraft’s motion for a preliminary injunction against Micronesia Woodcraft Enterprises, and its president, Tirzo J. Adriatico.

Saipan Handicraft sought the injunction to stop Micronesia Woodcraft from using the trademarks “Bo Jo Bo Wishing Doll” and “Legend of the Bo Jo Bo Wishing Doll,” as well as to prevent Micronesia Woodcraft from copying the trade-dress, or overall appearance, of Saipan Handicraft’s dolls while the litigation is ongoing.

The court stated that Micronesia Woodcraft is “enjoined during the pendency of this case from using the total image and look of [Saipan Handicraft’s] product packaging, i.e. the style and layout of the attached card, and the total image and look of [its] product configuration, i.e. the pistachio nut shell hat. In order to prevail on a motion for a preliminary injunction, a party must show that they are suffering irreparable injury, they are likely to succeed in the case, the balance of equities is in their favor and that the public interest is in having the motion granted. The District Court concluded that Saipan Handicraft satisfied the requirements for a preliminary injunction entitling them to temporary protection of its trade-dress.

The court has saved for trial, however, any decision to stop Micronesia Woodcraft from using the name “Bo Jo Bo Wishing Doll” or “Legend of the Bo Jo Bo Wishing Doll” as long as they are not used on a card or in a style similar to that of Saipan Handicraft.

Micronesia Woodcraft may still make and sell Bo Jo Bo Wishing Dolls, but it must modify its card and the look of the dolls, including eliminating the use of a pistachio nutshell hat, so that their dolls will not be confusingly similar to Saipan Handicraft’s designs.

“This is an important first step in our case,” said F. Matthew Smith, attorney for Saipan Handicraft. “It is a shame that Micronesia Woodcraft found it necessary to copy our doll exactly, instead of coming up with their own name, idea and look; and we intend to continue pursuing all companies that infringe on the unique and distinct look of our dolls.

Although the preliminary injunction only applies to Micronesia Woodcraft, Saipan Handicraft is hopeful that this injunction will serve as a warning to all the other producers of dolls who copy the distinct features and look of Saipan Handicraft’s product. “If manufacturers will just make dolls of their own design, and not copy our creations, we will not have to bring them into this lawsuit,” said Rodrigo Capati, one of the owners of Saipan Handicraft.

Capati also said that Saipan Handicraft, whenever possible, is working with a number of other companies, that also make dolls of bayogo, to settle claims and clarify looks and styles, rather than litigate.

But according to Saipan Handicraft’s attorney, it is highly likely that it will become necessary to bring other companies into the litigation.

“In some ways, things are getting worse and worse. It has recently come to our attention that not only are companies copying my client’s dolls’ look, there are some truly unscrupulous businesses out there that are photocopying and attaching my client’s label (which includes Saipan Handicraft’s company name and phone numbers) to lower quality dolls made by others. This type of conduct is expressly prohibited under CNMI and federal law, and is known as ‘palming-off goods.’ We will not rest until these type of illegal operations are shut down and made to pay for the damage they are causing.” (PR)