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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“BRING IT ON!”: Sixth Circuit OKs Copyright Claims for Cheerleader Uniform’s Design

On August 19, 2015, the Sixth Circuit Court of Appeals issued a “V-I-C-T-O-R-Y” for the world’s largest designer and manufacturer of cheerleader uniforms in its copyright infringement lawsuit against another cheerleading gear company. In a 2-1 decision, in Varsity Brands, Inc. v. Star Athletica, LLC, the appellate court held that the colors, stripes, chevrons, and similar graphic designs of the … Continue Reading

Trademark Specimens: Singular or Plural Matters

The Trademark Trial and Appeal Board recently re-designated as precedential its May 12, 2015 decision that affirmed refusal to register a mark because the applicant’s specimens – showing the proposed mark in plural form, rather than in singular form – did not show the mark’s use in connection with any of the services specified in its application.… Continue Reading

The Ray Charles’s Foundation Doesn’t Have to “Hit the Road Jack”: Ninth Circuit Permits Foundation to Challenge the Validity of Copyright Termination Notices Served by Ray Charles’s Heirs on Third Party Grantees

On July 31, 2015, the Ninth Circuit reversed the Central District of California’s dismissal of an action brought by the Ray Charles Foundation, seeking, among other things, a judicial determination of the validity and effectiveness of termination notices served by some of Ray Charles’s children on Warner/Chappell Music.… Continue Reading

Caveat Opposer: Preclusion Lurks at the TTAB

Recently, the Trademark Trial and Appeal Board (the “TTAB”) held that an unsuccessful opposer was precluded from later pursuing a cancellation against the same trademark owner, even though the opposer assumed a different corporate identity and the marks, goods and services at issue in the opposition proceeding were different from the marks, goods and services at issue in the cancellation … Continue Reading

“California Gurl” Katy Perry Not Subject to Personal Jurisdiction in Missouri

The Eastern District of Missouri recently dismissed copyright infringement claims against pop-star Katy Perry, rapper Juicy J, and other individuals for lack of personal jurisdiction, in Marcus Gray p/k/a Flame v. Katheryn Elizabeth Hudson p/k/a Katy Perry.  The lawsuit alleged that Perry’s song “Dark Horse” infringed the plaintiffs’ copyright in their Christian Gospel hip hop song “Joyful Noise,” which … Continue Reading

Watch Out! Split Ninth Circuit Panel Rules Amazon Search Results May Violate Watchmaker’s Trademarks

The Ninth Circuit recently held that online retailer Amazon.com could be liable for infringing the trademarks of a watch manufacturer based upon Amazon’s product search results when shoppers search for the manufacturer’s trademarked watches that Amazon does not carry.  In a 2-1 decision intersecting trademark law and technology, the Circuit in Multi Time Machine, Inc. v. Amazon.com, Inc. reversed the … Continue Reading

Owners of Celebrity Fan Sites Still in the Spotlight for Copyright Liability Without DMCA Safe Harbor

The Southern District of New York recently stressed the importance for internet service providers (“ISPs”) to comply with “safe harbor” requirements of the Digital Millennium Copyright Act (“DMCA”) in order to be shielded from copyright infringement liability.  The court, in BWP Media USA Inc. v. Hollywood Fan Sites LLC, found that the defendants, who owned and operated more than … Continue Reading

When Theft is not a Federal or State Crime

In the most recent ruling in a lengthy and procedurally complex criminal case, a New York trial court dismissed a computer programmer’s criminal conviction under New York’s Unlawful Use of Secret Scientific Material law for copying his employer’s computer code. In People v. Aleynikov (No. 04447/2012, New York Supreme Court, New York County), Judge Daniel Conviser wrote in his 72-page … Continue Reading

State Law Claims Suffer “Awfully Big Adventure”: New York Court Finds Federal Copyright Preemption in Dispute over Peter Pan Musical

On June 8, 2015, the New York County Supreme Court dismissed with prejudice eight of twelve state law claims brought by a producer seeking damages for the purportedly unauthorized use of his music in a world-wide production of Peter Pan. Craig Barna and Bronsand Music Inc. v. Cathy Rigby, Tom McCoy, McCoy Rigby Entertainment, and Keith Levinson, No. 156405/2013 … Continue Reading

WD-40 Squeaks By On Appeal Of Its Summary Judgment Win On “Long-Term Corrosion Inhibitor”

In Sorensen v. WD-40 Company, the Seventh Circuit affirmed the district court’s finding that the use of the term “inhibitor” for a rust-inhibitor product was not trademark infringement and constituted a descriptive fair use.  In 1997, Jeffrey Sorensen (“Sorensen”) founded a company called Van Patten Industries and began selling rust preventative products under the name “THE INHIBITOR.”  The products … Continue Reading

Heinz Seeks “Smart” De Novo Review In Light Of B&B Hardware

H.J. Heinz Co. (“Heinz”) filed a federal lawsuit recently against Boulder Brands USA (“Boulder”) seeking to vacate and reverse a Trademark Trial and Appeal Board decision finding that Boulder’s SMART BALANCE trademark is not likely to be confused with Heinz’s SMART ONES trademark, and that the SMART ONES trademark is not famous.  H.J. Heinz Co. v. Boulder Brands USA, IncContinue Reading

False Advertising Bombs and Firecrackers

On May 13, 2015, in Conopco, Inc. v. Wells Enterprises, Inc., the Southern District of New York denied a motion to dismiss a claim for false advertising which arose from a claim that an ice-pop product was “original.”  Wells Enterprises, Inc. (“Wells”) is the largest privately held, family owned ice cream and frozen treat manufacturer in the United States. … Continue Reading

Fourth Circuit Finds that First Amendment Trumps Trademarks

The Fourth Circuit recently ruled that a Defendant’s online article entitled “NAACP: National Association for the Abortion of Colored People” did not violate the trademark rights of the NAACP, the National Association for the Advancement of Colored People.  It, therefore, vacated the Eastern District of Virginia’s injunction against the Defendant for its article criticizing the NAACP’s stance on abortion.  The … Continue Reading

Perfect 10 Slammed With $5.5 Million In Fees And Costs Under The Copyright Act Without A Finding Of Frivolous Or Objectively Unreasonable Claims; Patent Trolls Beware

The Central District of California recently awarded over $5 million in attorneys’ fees and over $400,000 in costs, emphasizing the degree of success obtained by Defendants and the improper motivations of Plaintiff.  The court rejected the notion that the fee award was unreasonable simply because it was sizeable.  In Perfect 10, Inc. v. Giganews, Inc., Plaintiff Perfect 10 initially … Continue Reading

Ninth Circuit En Banc Reverses Injunction Against YouTube Display of “Innocence of Muslims”

In Garcia v. Google,  No. 12-57302 (9th Cir. May 18, 2015), the en banc  Ninth Circuit reversed a prior panel decision and held that an actress was not entitled to a preliminary injunction removing all copies of a film from YouTube because she held no copyright in her individual performance. In July 2011, Cindy Lee Garcia (“Garcia”) responded … Continue Reading

US Polo Ass’n Wins Its Latest Polo Match in the Second Circuit

The Second Circuit recently vacated a contempt order entered against the U.S. Polo Association for selling sunglasses with its logo depicting two mounted polo players vying for a ball. The Second Circuit found that the Southern District of New York failed to apply a “market-by-market analysis” to determine whether the U.S. Polo Association’s logo was confusingly similar to Ralph Lauren’s … Continue Reading

The House That Juice Built: TTAB Denies Registration To Parodies

On May 8, 2015, the Trademark Trial and Appeal Board (the “Board”) issued a resounding blow to trademark applicants who seek to register others’ trademarks as parodies.  In New York Yankees Partnership v. IET Products and Services, Inc., Opposition No. 91189692 (May 8, 2015), the Board announced that “parody” or “fair use” can never function as a defense in … Continue Reading

Keeping Up With the Lanham Act: Lanham Act Applies Extraterritorially to Kardashian Vicarious Trademark Infringement

In Kroma Makeup EU Ltd., v. Boldface Licensing & Branding, Inc., the Middle District of Florida held that a foreign licensee of a registered U.S. trademark could sue Kim, Kourtney and Khloe Kardashian for their alleged extraterritorial infringement of the trademark and further sue its licensor for refusing to share in the proceeds of a settlement regarding the same … Continue Reading

The Low Bar For Copyright Protection Shown By Flooring

In Home Legend, LLC v. Mannington Mills, Inc., the Eleventh Circuit recently reversed a grant of summary judgment and held that a two dimensional laminate flooring design was eligible for copyright protection because it reflected sufficient creativity, was severable from the flooring to which it was applied and was directed at a design and not an idea or process. … Continue Reading

Second Circuit Affirms Victory for Pandora On Music Streaming Rights

On May 6, 2015, in Pandora Media, Inc. v. American Society of Composers, Authors, and Publishers, the Second Circuit held that composers and music publishers cannot partially withdraw from the American Society of Composers, Authors and Publishers (“ASCAP”) licensing scheme to attempt to negotiate or coerce direct deals with new media companies and also affirmed the royalty rate found … Continue Reading

False Advertising By Ad Agencies: No Easy Dismissals

On April 20, 2015, in Nestle Purina Petcare Company v. The Blue Buffalo Company, Ltd., the Eastern District of Missouri denied a motion to dismiss claims for false and misleading advertising brought against the advertising agencies that developed and executed the subject ad campaign.  In May 2014, Plaintiff Nestle Purina PetCare Co. (“Purina”) filed a lawsuit alleging that Blue … Continue Reading

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