Ira S. Sacks

Ira S. Sacks

Ira Sacks practices in the area of litigation with an emphasis on trademark and branding matters. He handles complex and high-profile cases involving trademark, copyright, and patent infringement issues, distribution disputes, false advertising, price fixing, dealer termination, monopolization and unfair competition, unfair trade practices, and trade secrets. Ira’s clients include fragrance and fashion companies as well as national scientific laboratories, real estate developers, and financial institutions.

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The Importance of Being Earnest and Objectively Reasonable

Kirtsaeng v. John Wiley & Sons, Inc. continues to make controlling copyright law, visiting the U.S. Supreme Court for the second time on an issue of great importance to copyright owners and litigants. This time, the issued raised for consideration was whether the lower court properly exercised its discretion in denying a $2 million fee application by Kirtsaeng who had … Continue Reading

Ninth Circuit “Strikes A Pose” For Madonna And Music Sampling In “Vogue” Copyright Dispute

In a copyright decision that rocks the music industry and splits from the Sixth Circuit, the Ninth Circuit recently held that Madonna’s mega-hit “Vogue” did not violate copyright rights by sampling a 0.23-second horns segment of the 1980’s song  “Love Break.” In VMG Salsoul v. Ciccone, the divided appellate court affirmed the Central District of California’s ruling that “de … Continue Reading

The FTC’s Analysis of Lord & Taylor’s Social Media Marketing Campaign

New ways of monetizing digital media has brought challenges in regulating advertising. The FTC has recently issued guidelines to provide businesses and advertisers with insights as to how to comply with the FTC Act. Despite the new context, the governing legal standard remains fact specific and quite familiar.

In December 2015, the FTC issued its “Enforcement Policy Statement on Deceptively … Continue Reading

The 2015 FTC Policy Statement: An Advertisement Can Be Deceptive Based On Formatting

Starting a few years ago, the FTC began increasing its efforts to address online disclosures in new media. For example, in 2013, the FTC issued .com Disclosures: How To Make Effective Disclosures in Digital Advertising, which provided new guidance for mobile and other online advertisers on how to make online disclosures clear and conspicuous to avoid deception.  In 2014, … Continue Reading

Nominative Fair Use: The Second Circuit Joins Neither The Third Nor Ninth Circuits In Its Approach

In an important decision delineating the boundaries of fair use of another person’s trademark, the Second Circuit announced a standard by which nominative fair use of a trademark will be evaluated in that Circuit in International Information Systems Security Certification Consortium, Inc. v. Security University, LLC. Because the Court ruled that the district court made several legal errors in … Continue Reading

Generic Churrascos at the Federal Circuit

The Federal Circuit recently provided additional guidance concerning whether an applied-for mark is generic in In re Cordua Restaurants, Inc., (May 13, 2016).  This case stemmed from the United States Patent and Trademark Office’s refusal to register the trademark CHURRASCOS (Stylized) in connection with “bar and restaurant services; catering.”  Applicant Cordua Restaurants, LP (“Cordua”) has long owned and operated … Continue Reading

En Banc Reconsideration Sought in FLANAX Case

Belmora LLC filed a petition for reconsideration en banc of the Fourth Circuit’s FLANAX decision in Belmora LLC v Bayer Consumer Care AG, Appeal No. 15-1335 (4th Cir. March 23, 2016). As we previously have blogged [here], the 4th Circuit reversed the Eastern District of Virginia’s dismissal for lack of standing, and found that use of the mark … Continue Reading

USPTO Drops 11th Circuit Appeal of ND Alabama Order In Houndstooth Case

We previously blogged ([here]) on Judge Proctor’s (ND Ala.) order directing the United States Patent and Trademark Office (the “Board”) to comply with the Court’s prior order, approving a settlement agreement between the University of Alabama and trademark applicant Mafia Enterprises LLC, which included vacating a prior Board decision that had been appealed to the District Court.  Although … Continue Reading

In re Tam Redux Redux: Redskins Petition for Certiorari, Trying to Skip 4th Cir.

In response to the United States Patent and Trademark Office’s (“USPTO”) petition for writ of certiorari in to the U.S. Supreme Court In re Tam (“THE SLANTS” case), the owners of the Washington Redskins filed their own petition for certiorari, asking the justices to hear their trademark case before the Fourth Circuit Court of Appeals weighs in. Pro-Football Inc. Continue Reading

In re Tam Redux: The PTO seeks Certiorari

On April 20, 2016, the United States Patent and Trademark Office (“PTO”) filed a petition for a writ of certiorari to the Federal Circuit seeking Supreme Court review of that Court’s decision in In re Tam, 117 USPQ2d 1001 (Fed. Cir. 2016), holding the disparagement provision of Section 2(a) of the Lanham Act, 15 USC §1052(a), to be facially … Continue Reading

FLANAX: Protecting Foreign Marks from US Unfair Competition Under Section 43(a)

In today’s increasingly global economy, trademark owners are more frequently butting up against the territorial limitations of trademark law. It has long been a matter of black letter law that trademark rights are territorial, subsisting only within the borders of the country where they are obtained.  This general rule can present serious obstacles to foreign brand owners who seek to … Continue Reading

TTAB Finds That Coexistence Agreement Does Not Support Coexistence

In a decision bound to impact trademark prosecution practice in the future, the United States Patent and Trademark Office, Trademark Trial and Appeal Board (the “Board”) recently found that a consent agreement between a trademark applicant and the registrant of a similar prior-registered mark – that is, a coexistence agreement – was insufficient evidence that the parties’ respective use of … Continue Reading

The Hound’s-Tooth Bites Back: The Ghost of Paul “Bear” Bryant

Recently, a District Court judge issued a scathing rebuke to the United States Patent and Trademark Office in Board of Trustees of the University of Alabama et al. v. Houndstooth Mafia Enterprises LLC, (N.D. Alabama February 23, 2016).  Judge Proctor’s memorandum opinion upbraided the USPTO’s Trademark Trial and Appeal Board (“Board”) for ignoring his earlier-issued order to vacate the … Continue Reading

First Sale Defense Blocks “Slam Dunk” Copyright Violation

The Ninth Circuit recently addressed the burden of proof applicable to the first sale defense to a copyright infringement claim. That defense provides that, once a copy of a work is lawfully sold or transferred, the new owner has the right to sell or otherwise dispose of that copy without the copyright owner’s permission. In Adobe Systems, Inc. v. ChristensonContinue Reading

Stolichnaya: Comity or Confiscation; and Is That For US Courts to Decide?

The Second Circuit recently issued its latest ruling in a long-running legal battle over the trademark rights to the STOLICHNAYA trademark. In this latest decision in the 12-year dispute, the Court ruled that an agency of the Russian Federation has standing to sue the record owners of the U.S. trademark registration and its distributors in federal court under § 32(1) … Continue Reading

In re Tam: Section 2(a) Unconstitutional Under The First Amendment

In a landmark First Amendment decision relating to the Lanham (Trademark) Act, the Federal Circuit, en banc, struck down § 2(a) of the Lanham Act, 15 U.S.C.  § 1052(a), the statutory provision barring registration of “disparaging” marks.  By a 9-3 vote, the Court held that § 2(a) violates a trademark applicant’s free speech rights.  In re Tam, No. … Continue Reading

Santa Claus Will Leave The Building In 2016 — Author’s Heirs Prevail Over EMI

In Baldwin, et al. v. EMI Feist Catalog, Inc., the Second Circuit Court of Appeals was tasked with determining when and how the rights to the song “Santa Claus is Comin’ to Town” (the “Song”) would properly terminate.  The heirs to one of the Song’s co-authors challenged the assertions of the copyright holder, EMI Feist Catalog, Inc. (“EMI”).  Relying … Continue Reading

TTAB Makes Double Brown Ale Open to Nut Sack Mark

In a ruling bound to please 15 year-old boys everywhere, the USPTO Trademark Trial and Appeal Board (“TTAB”) reversed the Examining Attorney’s refusal to register the trademark NUT SACK DOUBLE BROWN ALE (in standard character format) for “beer” on the ground that it was immoral and scandalous under Section 2(a) of the Trademark Act. In re Engine 15 Brewing Co., Continue Reading

Parody Writers Take Note: Fair Use Parody + New Elements = Copyright Protection

On October 30, 2015 the Second Circuit held that an unauthorized parody that makes “fair use” of its source material is eligible for copyright protection and that copyright protection may extend to a work that exhibits the sufficient minimal degree of originality in selecting, coordinating, and arranging otherwise un-protectable underlying elements.… Continue Reading

The North Face Scales Sanyang Applications For Clothing and Services

In The North Face Apparel Corp. v. Sanyang Industry Co., Ltd., Opp. No. 91187593 (September 18, 2015), the Trademark Trial and Appeal Board (“TTAB”) handed The North Face Apparel Corp. (“The North Face”) significant victories its battle against Sanyang Industry Co. Ltd.’s (“Sangyang”) registration of its trademark.  … Continue Reading

Original Policeman in the Village People Gets His Copyrights Back, and $500,000 in Attorneys’ Fees

On September 15, 2015, the Southern District of California awarded over $500,000 in attorney’s fees to a songwriter who successfully prevailed on his right to terminate grants of copyright under 17 U.S.C. § 203 because awarding fees would encourage authors to assert their rights to regain their copyright interests.  Victor Willis (“Willis”) is a songwriter and an original member of … Continue Reading

A Wolf in Swiss Clothing: TTAB Finds No Bona Fide Intent to Use

The number of successful oppositions against trademark applications based on a claim that the applicant had “no bona fide intent to use” has been increasing in recent years. On September 10, 2015, in Swiss Grill Ltd. v. Wolf Steel Ltd., the United States Patent and Trademark Office Trademark Trial and Appeal Board (“TTAB”) maintained this trend by sustaining an … Continue Reading

Ninth Circuit Says “Let’s Goes Crazy” On Fair Use of Prince Song In YouTube Video

In Lenz v. Universal Music Corp. et al, the Ninth Circuit held that the Digital Millennium Copyright Act (the “DMCA”) requires copyright holders to consider fair use before sending a takedown notice and that the failure to do so raises a triable issue as to whether the copyright holder formed a subjective good faith belief that the use was … Continue Reading

Copyright Fair Use: 1 Win, 1 Maybe and Two Losses for TVEyes

On August 25, 2015, the Southern District of New York held that the archiving function of a media monitoring service was protected by fair use and that the e-mailing feature could qualify for fair use if certain protective measures were implemented, but that the downloading and “date-time” search functions were not.  Defendant TVEyes, Inc. (“TVEyes”) is a media-monitoring service that … Continue Reading

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