Category Archives: IP Litigation

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The Supreme Court Limits the Extraterritorial Application of the Lanham Act

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 … Continue Reading

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

On 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 … Continue Reading

Does Transformative Matter? No, At Least Where Use Is Commercial

Art. 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 … Continue Reading

SCOTUS Oral Arguments in Abitron v. Hetronic: Extraterritorial Reach of Lanham Act

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.… Continue Reading

Cert. Granted in Abitron to Clarify Boundaries for Extraterritorial Application of Lanham Act

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 … Continue Reading

Does Anyone Here Have A Sense Of Humor, Redux: Jack Daniel’s v. VIP Oral Argument

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 … Continue Reading

Certiorari Granted to Jack Daniel’s with Respect to Parody Dog Toy: Does Anyone Here Have a Sense of Humor, and Does it Matter?

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 … Continue Reading

If Warhol Isn’t Transformative, Redux, In The 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 … Continue Reading

If Warhol Isn’t Transformative, Who (or What) Is? The Second Circuit Finds Andy Warhol’s Prince Series Not Fair Use

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.… Continue Reading

What’s in a Name: SDNY Grants Preliminary Injunction Enforcing Contractual Bar Against Designer’s Use of Her Own Name

In a fifty-seven-page memorandum opinion and order, the United States District Court for the Southern District of New York granted a fashion brand its motion for a preliminary injunction preventing its lead designer from using her given name commercially and on her social media accounts. JLM Couture, Inc. v. Hayley Paige Gutman, 20-CV-10575-LTS-SLC (S.D.N.Y. 2021), … Continue Reading

The Final Revenge of Queen Anne’s Revenge: State’s Use of Photographs Is Not Piracy

On March 23, 2020, in Allen v. Cooper, the Supreme Court held that Allen, who spent over two decades, photographing the shipwreck of Queen Anne’s Revenge, better known as the flagship for the pirate Blackbeard, cannot sue the State of North Carolina (“State”) for copyright infringement of his photographs. The Court’s decision was based on its … Continue Reading

Cert. Roundup:

ABA (as amicus) Asks the Supreme Court to Adopt a Flexible Rule for Recapture of Profits in Trademark Cases Intellectual Property Owners Association (as amicus) Argues That a Willfulness Requirement Is Consistent with the Statute and Principles of Equity The American Bar Association (“ABA”) filed an amicus brief with the Supreme Court in support of … Continue Reading

Supreme Court Will Decide When Trademark Infringers May Be Ordered to Forfeit Profits

On Friday, June 28, 2019, the U.S. Supreme Court agreed to decide the circumstances necessary to support an award of a trademark infringer’s profits under section 35 of the Lanham Act, 15 U.S.C. § 1117(a). Romag Fasteners Inc. v. Fossil Inc., et al., No. 18-1233. The ruling hopefully will resolve a long-standing circuit split over … Continue Reading

The Skinny on “Thins”

According to the Federal Circuit, the skinny on the term “Thins” is that it may be generic for thinly cut snack crackers. Real Foods Pty Ltd. V. Frito-Lay North America, Inc., (October 4, 2018 Fed. Cir.). In 2012, Real Foods Pty. Ltd. (“Real Foods”) applied to register the trademarks CORN THINS for “crispbread slices predominantly … Continue Reading

Ninth Circuit Extends Tam 1st Amendment Protections to Advertising

The Ninth Circuit extended the First Amendment protections enunciated by the Supreme Court in Matal v. Tam, 137 S.Ct. 1744 (2017)[1] to advertising in American Freedom Defense Initiative, et al. v. King County (9th Cir. Sept. 27, 2018). Plaintiff American Freedom Defense Initiative is an organization co-founded by Pamela Geller and Robert Spencer, whose focus … Continue Reading

Discovery Sanctions Affirmed Despite Dwarfing Potential Value of Entire Case

In Klipsch v. ePRO, the Second Circuit affirmed discovery sanctions commensurate with the costs incurred by the moving party in addressing the sanctionable conduct ($2.68 million), as well as security for the sanctions, potential damages and potential attorneys’ fees; and held that such sanctions are not unduly punitive even if the likely ultimate value of … Continue Reading

Tam Extended: Prohibition of “Immoral and Scandalous” Trademarks Unconstitutional

The Court of Appeals for the Federal Circuit recently extended First Amendment protections for trademark applications in In re Brunetti, No. 15-1109 (Fed. Cir. December 15, 2017), ruling that Section 2(a) of the Lanham Act’s prohibition against registration of “immoral and scandalous” matter violated free speech protections. This ruling comes as no surprise, in light … Continue Reading

B&B Hardware Precludes Defense To Likelihood Of Confusion In District Court

In 2015, the Supreme Court, in its decision in B&B Hardware, Inc. v. Hargis Industries, Inc. (“B&B”), held that sometimes issue preclusion should apply to prior Trademark Trial and Appeal Board (“TTAB”) decisions. 135 S. Ct. 1293 (2015). Under this directive, if the TTAB decides the issue of “likelihood of confusion” when making a determination … Continue Reading

The Yellow Pages Live On

Calling the district court’s action an “abuse of discretion,” the 11th Circuit reversed a decision that cut by more than 90 percent a successful copyright infringement plaintiff’s request for attorney’s fees and costs. Yellow Pages Photos, Inc. v. Ziplocal, L.P., No. 16-11868 (January 24, 2017). This is the latest decision issued in the long-running dispute … Continue Reading

Trade Dress Claim Based on Shoe’s Rectangular Metal Toe Plate Booted by SDNY

The Southern District of New York recently booted shoe manufacturer LVL XIII Brands, Inc.’s trade dress infringement suit against Louis Vuitton Malletier S.A. in LVL XIII Brands, Inc. v. Louis Vuitton Malletier S.A.. At issue in this lawsuit was Plaintiff LVL XIII’s claim to exclusive trade dress rights in a rectangular metal toe plate on … Continue Reading
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