On 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 ActPosted in IP Litigation, Supreme Court, Trademarks
In 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 ArgumentPosted in IP Litigation, Supreme Court, Trademarks
On 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, TTAB
On 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 ServicesPosted in Trademarks, TTAB, USPTO
The 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 ApplicationPosted in Trademarks, TTAB, USPTO
On 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
Municipal Takedown: TTAB Refuses to Register the County of Orange LogosPosted in Trademarks, TTAB, USPTO
The Trademark Trial & Appeal Board (“TTAB”) affirmed the US Patent & Trademark Office’s (“PTO”) refusal to register two different logo marks filed by California’s County of Orange (“County”) on the ground that they constitute insignia of a municipality.
In 2017, the County applied to register two logo marks. The application described one mark as “a circle with the image of three oranges in front of an orange grove and . . . mountains with the words ‘COUNTY OF ORANGE’ . . . and . . . ‘CALIFORNIA’ . . . Continue Reading
If Warhol Isn’t Transformative, Redux, In The Supreme CourtPosted in Copyrights, IP Litigation, Supreme Court
On March 25, 2022, the Supreme Court agreed to consider whether Andy Warhol’s “Prince Series” sufficiently transforms Lynn Goldsmith’s 1981 photograph of Prince (the “Photograph”) to qualify for the Copyright Act’s fair use defense.
As discussed in detail in our prior blog, at issue in this case is a series of silkscreen prints created by Andy Warhol based on Lynn Goldsmith’s Photograph, in which she holds a registered copyright. In 2017, The Andy Warhol Foundation for the Visual Arts, Inc. (“AWF”) sued Goldsmith for a declaratory judgment that the Prince Series works were non-infringing or, in the alternative, that they made fair use of the Photograph. The district court ruled in favor of the AWF on its assertion of fair use. In 2021, the Second Circuit reversed the district court’s ruling and held that the Prince Series was not transformative (and thus not fair use) because the Photograph “remain[ed] the recognizable foundation upon which the Prince Series is built.” The Second Circuit further explained that “the secondary work’s transformative purpose and character must, at a bare minimum, comprise something more than the imposition of another artist’s style on the primary work such that the secondary remains both recognizably deriving from, and retaining the essential elements of, its source material.” Continue Reading
The Third Circuit Limits Preclusive Effect of the TTAB RulingsPosted in Trademarks, TTAB
On September 17, 2021, the Third Circuit held in Beasley v. Howard that trademark cancellation proceedings before the Trademark Trial and Appeal Board (“TTAB”) do not have claim preclusive effect against trademark infringement lawsuits in federal district courts because of the TTAB’s limited jurisdiction.
The case involves two musicians, David Beasley and William Howard, who have been involved in a long-running dispute over the rights to the band name “Ebonys.” The Ebonys were founded by Beasley in 1969 and achieved some commercial success in the 1970s. Howard joined the band in the mid-1990s and performed with it for several years. Continue Reading
If Warhol Isn’t Transformative, Who (or What) Is? The Second Circuit Finds Andy Warhol’s Prince Series Not Fair UsePosted in Copyrights, IP Litigation
On March 26, 2021, the Second Circuit reversed a 2019 district court ruling and held that Andy Warhol’s “Prince Series” did not qualify as fair use of Lynn Goldsmith’s 1981 photograph of Prince (the “Photograph”). The Court further concluded that the Prince Series works are substantially similar to the Goldsmith Photograph as a matter of law.