Posts Tagged: "trademark litigation"

On November 27, briefing concluded at the Supreme Court with the filing of Fossil’s respondent’s brief in Romag Fasteners, Inc., v. Fossil, Inc., et al. The final briefing sets the stage for the Court to hear the case on January 14, 2020. The Court will hopefully resolve a current Circuit split on the availability of disgorgement of profits as damages for trademark infringement. Currently, the First, Second, Eighth, Ninth, Tenth and D.C. Circuits all require willful infringement before allowing disgorgement of an infringer’s profits (the First Circuit requires willfulness if the parties are not direct competitors and there is also some disagreement on where the Eighth Circuit falls on the issue). The Third, Fourth, Fifth, Sixth, Seventh and Eleventh Circuits all allow for disgorgement of profits without willful infringement. There has been a Circuit split for some time on this issue and the Supreme Court previously denied certiorari on similar cases but the Court is now set to resolve the split.

Businesses often resort to placing keywords in the html code of a web page, meta tags, or in contextual advertising templates for promoting their products on the internet. And in many cases, rivals successfully recover compensation from competitors who use someone else’s trademark to promote their products. But the use of other people’s trademarks is not always intentional. Recently, a Russian entity proved that there was no infringement of intellectual property rights when a trademark that was similar to another mark had been included in an advertisement by a web service. In this landmark case, the courts of all instances, including the Supreme Court, reaffirmed that key words that are automatically generated in search systems cannot infringe as defined by Russian intellectual property law. The Arbitration Court of the Stavropol region found no violations because the search results were not dependent on the actions of the defendant, were technical, and were not aimed at signifying the goods on the internet.

This week in Other Barks & Bites: the Federal Circuit issued a precedential decision reversing the PTAB regarding proper primary reference and CBM review findings; USPTO Director Iancu told IPO Annual Meeting attendees that subject matter eligibility guidelines are working; an EPO-EUIPO report shows IP-intensive industries contribute nearly half of EU GDP; the producers of the Broadway musical Hamilton have filed a motion to dismiss copyright claims filed in connection with a museum exhibit; eBay CEO Devin Wenig stepped down; the Ninth Circuit heard oral arguments in the en banc rehearing of the “Stairway to Heaven” copyright case; the U.S. Copyright Office is seeking public comments regarding the blanket licensing structure under the Music Modernization Act; and Sandoz has moved forward with a PTAB challenge on patent claims covering AbbVie’s Imbruvica.

The U.S. District Court for the Eastern District of Michigan, Southern Division, on September 9 granted Motions to Dismiss in favor of all defendants in a federal trademark infringement action brought by R&B band Ready for the World, Inc. (Ready for the World) against Melvin Riley, John Eaton, Daniel Dillman, Renee Atkins, and Jan Mark Land. Ready for the World brought us classic 1980s hits including “Oh, Sheila!” and “Love You Down”. Riley and Eaton are original band members, while Dillman works for a nonprofit that promoted a concert performed by Riley and Atkins and Land were alleged to be employed by Riley. In their Motions to Dismiss, Eaton and Riley argued lack of subject matter jurisdiction because Ready for the World did not plead a claim arising under the Lanham Act. Citing Derminer v. Kramer, they argued that they are co-owners of the Ready for the World trademark and thus cannot infringe upon the mark. The court agreed, and also granted the motions of Dillman, Atkins and Land.

The Court of Justice of the European Union (CJEU) has ruled that an EU trade mark (EUTM) proprietor may bring an infringement action in an EU Member State where advertising or offers for sale are directed or located, in a case concerning alleged infringement of an EUTM in the United Kingdom by a Spanish defendant. The judgment in Case C172/18 AMS Neve Ltd, Barnett Waddingham Trustees, Mark Crabtree v Heritage Audio SL, Pedro Rodríguez Arribas addresses questions concerning jurisdiction, in particular in cases involving Internet sales. This litigation concerned infringement proceedings brought regarding an EUTM for “1073” in the UK Intellectual Property and Enterprise Court.

A few years ago, internet surveys in intellectual property (IP) litigation were novelties—but not anymore. In fact, the internet survey has more than come of age, it has become the preferred methodology for many types of IP litigation-related surveys—especially trademark-related matters. The biggest reason for the rise of the internet survey is the demise of the other more established conventional methodologies. At the same time, the internet continues to add new technological features that enhance its ability to reach populations and probe relevant target markets.

Let’s face it, intellectual property (IP) litigation is a very expensive and risky endeavor. For the accused infringer, the prospect of going to trial means high legal fees and, even worse, a substantial disruption to the business. Even in cases where an accused infringer has viable defenses, leaving a ruling in the hands of the judge or jury is nothing more than a Las Vegas roll-of-the-dice. Whether through informal settlement discussions, mediation, or court-mandated settlement conference, IP defense litigators must arm their clients with a bevy of effective, business-minded settlement strategies. Settling does not have to mean capitulating and paying the other side an arbitrary sum of money to go away. Instead, think of ways to put your client’s available settlement dollars to work. Here are a few practical concepts to set your client on a viable settlement path.

On December 28, 2018, the limited liability company representing famed Seattle-area grunge rock band Nirvana sued clothing designer Marc Jacobs and fashion retailers Neiman Marcus and Saks Fifth Avenue in the U.S. Federal District Court for the Central District of California. At the center of the lawsuit are copyright and trademark infringement allegations regarding the use of Nirvana’s “smiley face” logo on a line of designer clothing made by Marc Jacobs. Nirvana alleges that Marc Jacobs has used the band’s common law trademarks and infringed the band’s copyright in the smiley face logo in a misleading way in order to make it appear that Marc Jacobs’ “Bootleg Redux Grunge” clothing line is endorsed by or somehow associated with Nirvana. Nirvana first licensed the use of the smiley face logo, designed by deceased Nirvana front man Kurt Cobain in 1992, and it has been continuously used to identify Nirvana’s music and licensed merchandise since.

The Girl Scouts of the United States of America have filed suit to force the Boy Scouts of America to put the “Boy” back into “Boy Scout.” The two venerable youth organizations will soon face off in a high-stakes trademark battle in federal court.  The Girl Scouts filed a trademark complaint in November 2018 in the U.S. District Court for the Southern District of New York. In it, the Girl Scouts claim the Boy Scouts’ use of the trademarks SCOUTS, SCOUTING and SCOUTS BSA without the word “boy” for programming for girls has and will continue to create confusion for families seeking to enroll their daughters in Girl Scouts.

On Monday, October 22nd, U.S. District Judge J. Paul Oetken of the Southern District of New York entered an opinion and order in a trademark case brought by Chinese e-commerce giant Alibaba against a group of companies operating in Dubai and Belarus involved in marketing a cryptocurrency known as AlibabaCoin. Judge Oetken’s order granted Alibaba’s motion enjoining the defendants from using Alibaba’s protected marks in the U.S., including in connection with goods and services provided over the Internet to U.S. consumers. Another motion filed by Alibaba to compel documents from the defendants was denied as moot.

In October 2016, the creators of the classic mockumentary film This Is Spinal Tap filed suit against a group of defendants including the French mass media conglomerate Vivendi S.A. alleging that Vivendi engaged in anticompetitive business activities to defraud the Spinal Tap creators of profits earned from the movie. On August 28th of this year, U.S. District Judge Dolly Gee of the Central District of California allowed the case to move forward by denying a motion filed by defendants to dismiss the case based on the economic loss rule, a rule that otherwise operates to require recovery of damages under contract rather than for an action for fraud. Judge Gee also determined that copyright reversion claims presented a sufficiently ripe controversy for consideration by the court. 

British luxury fashion brand Burberry filed a complaint alleging trademark infringement and dilution against American retailer Target Corporation in the Southern District of New York. At issue in the case is the sale of scarves and other fashion items in Target stores which include a pattern closely resembling the iconic Burberry check trademark.

???In Montauk U.S.A. v. 148 South Emerson Associates the Second Circuit vacated-in-part an earlier ruling in a trademark case. In that ruling, the district court denied a motion for preliminary injunction filed by Montauk, which was asserting its trademark rights to marks associated with The Sloppy Tuna restaurant.

On February 20th, Clearwater Beach, FL-based restaurateur Frenchy’s Corporate filed a suit alleging trademark infringement against the owners and operators of Frenchy’s Pizzeria & Tavern, located less than an hour’s drive away from Clearwater in Port Richey, FL. The suit, filed in the Middle District of Florida, aims to protect Frenchy’s Corporate trademark rights to the unregistered trademark “FRENCHY’STM” under…

A resounding en garde was declared by California craft beer brand Stone to MillerCoors, the second largest beer company in the United States, over the alleged taking of their brand recognition. On February 12, 2018 Stone Brewing filed a federal complaint alleging trademark infringement, false designation of origin, trademark dilution, and California unfair competition. The complaint requests preliminary and permanent injunction, declaratory relief, and both actual and treble damages on the basis of willful trademark infringement by MillerCoors… A particularly interesting factor in this case is likelihood of irreparable harm. MillerCoors may find room for defensive maneuvers due to recent shifts in the standard for proving irreparable harm.