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 prior decision … Continue Reading
Category Archives: IP Litigation
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ABA (as amicus) Asks the Supreme Court to Adopt a Flexible Rule for Recapture of Profits in Trademark Cases
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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 the petitioner in … Continue Reading
The Third Circuit Goes Bananas
In Silvertop Associates, Inc. v. Kangaroo Manufacturing, Inc., the Third Circuit applied the two-part test set forth in the Supreme Court’s decision in Star Athletica, L.L.C. v. Varsity Brands, Inc., and held that a full-body banana costume qualified for copyright protection.… 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 whether willfulness is a … 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 of corn, namely popped … 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 is to … 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 the case (perhaps as … 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 of the rulings in … 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 of trademark registrability … Continue Reading
Laches Limited To Being An Equitable Defense In Patent Cases
In SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC, the Supreme Court made plain that laches is merely an equitable defense in patent cases, and will not bar a damage claim if brought within the six year statute of limitations of 35 U. S. C. §286, coming to the same conclusions as it had previously with respect … 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 between Yellow Pages Photos, … Continue Reading
Supreme Court Denies Cert To Review 2d Cir. Stoli Decision
The Supreme Court denied review of the 2d Circuit decision on the Stolichnaya trademark. See our prior blog here. Still a tough road for disputed (no longer) trademark holder because of delay.… Continue Reading
Supreme Court Rejects Effort By Redskins to Join Slants
The Supreme Court rejected the effort by the Washington Redskins to skip the 4th Circuit and Join the hearing of the USPTO appeal of the SLANTS case, both of which have been the subjects of blogs here.… 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 its athletic shoe and … Continue Reading
Ninth Circuit Revives Trader Joe’s Federal Trademark Claims Brought In Washington Against “Pirate Joe’s” Operating In Canada
In Trader Joe’s Company v. Michael Norman Hallatt, the Ninth Circuit recently found that Trader Joe’s allegations of infringing conduct occurring within Canada supported a cognizable claim under the Lanham Act.
In particular, Trader Joe’s, a well-known American grocery store chain, filed suit in federal court in Washington State in 2013, alleging trademark and unfair competition claims under the … 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
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
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
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
It Ain’t Over ‘Til It’s Over: 6th Circuit Confirms That Post-Trial Motions Toll The Deadline To File Attorneys’ Fees Motions And Extends Octane Fitness To Trademark Litigations
In Slep-Tone Entertainment Corp. v. Karaoke Kandy Store, et al., No. 14-3117 (6th Cir. April 6, 2015), the Sixth Circuit confirmed that post-trial motions toll the deadline for filing motions for attorneys’ fees under Rule 54. Moreover, the Court held that the Supreme Court’s interpretation of the phrase “exceptional case,” as that phrase is used in the fees provision … Continue Reading
Fourth Circuit Dispenses Comity and Limits Relief in Paper Towel Dispute
The Fourth Circuit recently ruled on several important issues regarding the scope of relief that may be granted for trademark infringement. The backdrop for the decision in Georgia Pacific Consumer Products LP v. Von Drehle Corp. was a 2012 jury verdict that a North Carolina company was liable for contributory trademark infringement for designing and selling paper towels to fit … Continue Reading
