On June 29, 2023, the Supreme Court in Abitron Austria GmbH v. Hetronic International, Inc., limited the extraterritorial reach of the Lanham Act. The majority opinion was written by Justice Alito and joined by Justices Thomas, Gorsuch, Jackson, and Kavanaugh. Justice Jackson wrote a separate concurring opinion. Four Justices – Sotomayor, Roberts, Kagan, and Barrett – concurred in the judgment but disagreed with the scope of the limits on extraterritoriality.
Not Funny! Unanimous SCOTUS in Jack Daniel’s v. VIP Holds That Parody Does Not Implicate First Amendment Concerns, But Only Implicates Likelihood of Confusion
Posted in IP Litigation, Supreme Court, TrademarksOn June 8, 2023, the Supreme Court unanimously decided the trademark parody case captioned Jack Daniel’s Properties, Inc. v. VIP Products LLC in favor of Jack Daniel’s, and against the dog toy manufacturer and serial parodist VIP Products. 599 U. S. ____ (2023) (hereinafter “Slip Op.”). The Court made plain that using a senior user’s trademark as a trademark in a parody does not implicate First Amendment concerns. Rather, parody comes into play only if the parody causes consumers not to be likely confused as to sponsorship or source of the parody product.
As we previously blogged, the issues presented in the care were:
- Whether humorous use of another’s trademark as one’s own on a commercial product is subject to the Lanham Act’s traditional likelihood-of-confusion analysis, or instead receives heightened First Amendment protection from trademark infringement claims.
- Whether humorous use of another’s mark as one’s own on a commercial product is “noncommercial” under 15 U.S.C. § 1125(c)(3)(C), thus barring as a matter of law a claim of dilution by tarnishment under the Trademark Dilution Revision Act (“TDRA”).
Likelihood of confusion analysis prevailed in Question 1; and the Court delivered a resounding “no” in response Question 2.
SCOTUS: Social Media Companies Not Liable For Aiding And Abetting ISIS
Posted in Supreme CourtIn Twitter, Inc. v. Taamneh, the Supreme Court unanimously held that social media companies are not liable for aiding and abetting the Islamic State of Iraq and Syria (ISIS) in its terrorist acts that victims claimed resulted from promoting terrorist content on social media platforms absent proof of “knowing and substantial assistance.”
In Taamneh, the family of Nawras Alassaf, who was killed at the Reina nightclub in Turkey in a terrorist attack carried out on behalf of ISIS, brought a suit under 18 U.S.C. §2333, that permits U.S. nationals who have been “injured. . . by reason of an act of international terrorism” to file a civil suit for damages. Instead of suing ISIS directly under §2333(a), plaintiffs invoked §2333(d)(2) to sue the three largest social media companies: Facebook, Twitter, and Google, for “aiding and abetting by knowingly providing substantial assistance” to ISIS by allowing it and its supporters to use their platforms and benefit from their “recommendation” algorithms, enabling ISIS to connect with the broader public, fundraise, and radicalize new recruits. The District Court dismissed plaintiffs’ complaint for failure to state a claim, but the Ninth Circuit reversed.
Does Transformative Matter? No, At Least Where Use Is Commercial
Posted in Copyrights, IP Litigation, Supreme CourtArt. Money. Copyright. Fair use. Andy Warhol. And Prince, the Purple One. (Or in this case, Orange.)
These were the hot topics in the recently decided Supreme Court case of Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith et al., 598 U.S. ____ (2023) (Citations are to the Slip Opinion (“Slip Op.”)).
Money and copyright won by a 7-2 majority. Warhol and his Foundation’s claim of fair use lost. Prince was unaffected, may he rest in purple peace.
SCOTUS Oral Arguments in Abitron v. Hetronic: Extraterritorial Reach of Lanham Act
Posted in IP Litigation, Supreme Court, TrademarksOn March 31, 2023, the Supreme Court heard arguments in Abitron Austria GmbH v. Hetronic International, Inc., where at issue is whether the Tenth Circuit erred in applying the Lanham Act extraterritorially to Abitron’s foreign sales, including purely foreign sales that never reached the United States, as more fully described in our previous blog.
Cert. Granted in Abitron to Clarify Boundaries for Extraterritorial Application of Lanham Act
Posted in IP Litigation, Supreme Court, TrademarksIn Abitron Austria GmbH v. Hetronic International, Inc., Oklahoma-based Hetronic, maker of radio remote controls for heavy-duty construction equipment, sued its former distributor Abitron (from Austria) for selling copycat products, as illustrated below.
The district court found that Abitron had willfully infringed the Hetronic mark. Despite the fact that 97% of the infringing sales were made in Europe, the court awarded Hetronic $90 million in damages. Abitron appealed to the Tenth Circuit. While the Tenth Circuit recognized that there were as many as six tests for extraterritorial application of U.S. statutes in other circuits, it held that the Lanham Act could be applied to foreign defendants’ foreign sales and upheld, in part, the district court’s decision.
Does Anyone Here Have A Sense Of Humor, Redux: Jack Daniel’s v. VIP Oral Argument
Posted in IP Litigation, Supreme Court, TrademarksOn March 22, 2023, the Supreme Court heard oral argument in the trademark parody case captioned Jack Daniel’s Properties, Inc. v. VIP Products LLC. As we previously blogged, the issues presented in the care are:
1. Whether humorous use of another’s trademark as one’s own on a commercial product is subject to the Lanham Act’s traditional likelihood-of-confusion analysis, or instead receives heightened First Amendment protection from trademark infringement claims.
2. Whether humorous use of another’s mark as one’s own on a commercial product is “noncommercial” under 15 U.S.C. § 1125(c)(3)(C), thus barring as a matter of law a claim of dilution by tarnishment under the Trademark Dilution Revision Act (TDRA).
Putting aside the weighty legal issues and the record below in this matter, one must pause to ask, “Does anyone who buys a Bad Spaniel or StarBark dog toy think it comes from or is sponsored by Jack Daniel’s or Starbucks?” If so, you should not have a dog.
Certiorari Granted to Jack Daniel’s with Respect to Parody Dog Toy: Does Anyone Here Have a Sense of Humor, and Does it Matter?
Posted in IP Litigation, Supreme Court, Trademarks, TTABOn November 21, 2022, the Supreme Court granted certiorari on the following questions described in Jack Daniel’s petition:
Respondent VIP Products LLC markets and sells dog toys that trade on the brand recognition of famous companies such as petitioner Jack Daniel’s Properties, Inc. The district court found that VIP’s use of Jack Daniel’s trademarks to sell poop-themed dog toys was likely to confuse consumers, infringed Jack Daniel’s marks, and tarnished Jack Daniel’s reputation. The Ninth Circuit, however, held that VIP’s First Amendment interest in using Jack Daniel’s trademarks as its own marks on funny dog toys conferred special protection from infringement claims and rendered VIP’s commercial dog toys “noncommercial” and thus exempt from dilution-by-tarnishment claims.
The questions presented are:
1. Whether humorous use of another’s trademark as one’s own on a commercial product is subject to the Lanham Act’s traditional likelihood-of-confusion analysis, or instead receives heightened First Amendment protection from trademark-infringement claims.
2. Whether humorous use of another’s mark as one’s own on a commercial product is “noncommercial” under 15 U.S.C. § 1125(c)(3)(C), thus barring as a matter of law a claim of dilution by tarnishment under the Trademark Dilution Revision Act (“TDRA”).
TTAB Sustains WIRED Magazine’s § 2(d) Objection to Application to Register “WIRED” As A Mark for Clothing, But Not for Fitness Services
Posted in Trademarks, TTAB, USPTOThe Trademark Trial and Appeal Board (“TTAB”) sustained the objection of the publisher of the tech magazine WIRED (“Opposer”) to an Applicant’s (“Applicant”) bid to register the term “WIRED” for clothing but rejected its objection for fitness-related services.
The Applicant sought registration for “WIRED” marks for fitness-related services and athletic clothing. The Opposer opposed the registration under § 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s marks resembled Opposer’s WIRED marks for magazines and, thus, are likely to cause confusion. The Opposer relied on its 17 registrations for WIRED and WIRED-formative marks for magazines relating to the digital revolution, information services, and retail store services.
TTAB Rains on ‘Purple Rain’ Energy Drink Trademark Application
Posted in Trademarks, TTAB, USPTOOn August 23, 2022, the Trademark Trial and Appeal Board (“TTAB”) rejected on summary judgment JHO Intellectual Property Holdings’ (“Applicant”) application to register the mark “PURPLE RAIN” for a variety of nutritional supplements, dietary drinks, and energy bars (collectively, “Applicant’s Goods”). The TTAB found that the proposed mark falsely suggested a connection with the famous musician Prince. Continue Reading
