Posts in Circuit Courts of Appeal

Supreme Court Skips Case on Individual Liability for Willful Trademark Infringement

The U.S. Supreme Court today denied certiorari to Diamond J Wholesale, LLC, who petitioned the Court in December 2023 to clarify how individual liability for willful trademark infringement by a corporation should be assessed. The U.S. Court of Appeals for the Eleventh Circuit in August 2023 backed a Georgia district court’s finding that Diamond and its owner, Raj Solomon, willfully infringed trademarks owned by Top Tobacco, L.P., Republic Technologies (NA), LLC, and Republic Tobacco, L.P. (Top Tobacco) for cigarette rolling papers. The ruling upheld an $11 million verdict in favor of the tobacco companies.

Kroger Asks SCOTUS to Fix Circuit Inconsistencies in Likelihood of Confusion Analysis

Relish Labs LLC and the Kroger Company (who own the “Home Chef” brand and mark) petitioned the U.S. Supreme Court this week, asking the Justices to review a decision by the U.S. Court of Appeals for the Seventh Circuit that held Home Chef had not proven consumers were likely to confuse their marks with Grubhub and Takeaway.com’s logo.

Ninth Circuit Denies Review of Decision that IPR Proceedings Do Not Trigger FCA’s Public Disclosure Bar

On January 5, the U.S. Court of Appeals for the Ninth Circuit published an amended opinion and order denying rehearing and rehearing en banc, thus upholding its August reversal of the Northern District of California’s dismissal of a qui tam whistleblower action under the False Claims Act (FCA). The FCA claim was brought by patent attorney Zachary Silbersher against Valeant Pharmaceuticals, predecessor to Canadian drugmaker Bausch Health. The appellate court’s decision turned on the application of the FCA’s public disclosure bar, finding that inter partes review (IPR) proceedings did not trigger the statutory bar to qui tam actions based on evidence previously disclosed during adversarial agency proceedings “in which the Government or its agent is a party.”

How U.S. Courts Ruled on Trademarks in 2023

This year has seen a bonanza of significant trademark decisions, including several high- profile decisions from the Supreme Court. Courts ruled on issues ranging from First Amendment and parody considerations to the extraterritorial reach of U.S. trademark law, yet in most cases returned to basic principles of trademark law to resolve the open issues. Below is a selection of a few of those significant cases from the previous year.

Second Circuit Upholds Injunction for Vans Based on Jack Daniel’s Ruling

The U.S. Court of Appeals for the Second Circuit today invoked the Supreme Court’s decision in Jack Daniel’s Properties v. VIP Products to affirm a district court’s finding that MSCHF Product Studio, Inc.’s shoe, the Wavy Baby Sneaker, likely infringed Vans, Inc.’s Old Skool shoe. The Second Circuit ultimately affirmed the district court’s grant of a preliminary injunction and temporary restraining order for Vans. The Wavy Baby Sneaker is made by MSCHF, a Brooklyn-based art collective that “has recently focused its artistic expression on ‘sneakerhead culture.,’” according to the Second Circuit opinion. Upon release of the Wavy Baby Sneaker, MSCHF’s co-Chief Creative Officer said in a statement: “’The Wavy Baby concept started with a Vans Old Skool sneaker’ because no other shoe embodies the dichotomies between ‘niche and mass taste, functional and trendy, utilitarian and frivolous’ as perfectly as the Old Skool.”

A New Era of Copyright Litigation in Hollywood: Revisiting Pirates of the Caribbean One Year Later

In 2017, screenwriters Lee Alfred and Ezequiel Martinez Jr. embarked on what would be a five-year journey for their copyright infringement claim against Walt Disney Pictures over the Pirates of the Caribbean franchise. Now, one year after it resolved, their legacy lives on through a new era of copyright litigation in Hollywood. Courts continue to rely on the Ninth Circuit’s decision in the Pirates case to allow screenwriters and other artists to proceed past the pleading stage. With that pendulum swing, litigants in copyright cases over Hollywood films will face a range of undeveloped issues. This article provides a brief recap of the impact from the Pirates case and identifies several open issues that litigants are likely to address in future cases as a result.