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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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

“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

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