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Jane Shay Wald
Partner Emeritus
Nike, Inc. v. Already, LLC
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133 S. Ct. 721 (2013)
Trademark registrant Nike’s covenant not to sue, and dismissal of its trademark claims,
divested the federal court of subject matter jurisdiction over defendant’s
counterclaims for a DJ and cancellation of plaintiff’s trademark registrations
2
Secalt S.A. v. Wuxi Shenxi Construction Mach. Co. Ltd
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(9th Cir. 2012)
Ninth Cir. Affirms $836K fee “exceptional case”
award to defendant traction hoist maker. Plaintiff
claimed trade dress but had no evidence of
nonfunctionality and its own engineers testified
that the hoist’s features were utilitarian.
“It is not enough to say that the design portrays a
‘cubist’ feel – so does a square table supported by
four legs…. The whole is nothing other than the
assemblage of functional parts.” Semantic trickery
(Leatherman) to say there is any overall
nonfunctionality.
3
Fleischer Studios v. AVELA
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(remand) 2012 WL 5969649 (CD CA 2012)
Remand from 9th Cir. en banc
decision replacing prior 9th Cir.
decision, latter omitting reference to
aesthetic functionality. On remand,
Court found defendants’ use of the
Betty Boop mark decorative and not
source-identifying; exclusivity would
impose significant non-reputationrelated competitive disadvantage on
defendants. Aesthetic functionality
found.
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Maker’s Mark Distillery, Inc. v. Diageo N. Am., et al.
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679 F. 3d 410 (6 Cir. 2012)
Likelihood of confusion found, but
not dilution. A mark is only famous
“if it is widely recognized by the
general consuming public of the US
as a designation of source of the
goods or services of the mark’s
owner.” No niche fame. Affirmed:
Dripping red wax seal is not
utilitarian, not aesthetically
functional and not generic.
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Apple, Inc. v. Samsung Electronics Co., Ltd.
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WL 412859 (1/29/13)
Court found “substantial
evidence” to support the jury’s
finding that Apple’s
unregistered iPad/iPad2 trade
dress is not protectable on
“any of three independent
grounds.” Utilitarian
functionality; aesthetic
functionality and lack of
secondary meaning. The jury
did not reach the question of
infringement because it found
Apple’s trade dress nonprotectable. “A nonprotectable trade dress cannot
be infringed or diluted.”
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Apple, Inc. v. Samsung Elec. Co., No. 11-CV-01846Click
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LHK, 2013 WL 412861 (ND CA 1/29/13)
Apple’s registered iPhone trade dress
and unregistered iPhone 3G trade
dress were found protectable and
willfully diluted by
Samsung. Samsung did not prove
utilitarian or aesthetic
functionality. Trial record shows
Samsung identifies evidence that few
customers are primarily motivated
by aesthetics, which didn’t help its
case. “Apple’s substantial advertising
and press release prior to release of
Samsung’s phones…with Apple’s
later-collected survey evidence…
supported jury finding Apple’s trade
dresses were famous before
Samsung’s first sale of an accused
phone.”
7
In re Becton, Dickinson and Co.,
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102 USPQ2d 1372 (Fed. Cir. 2012)
A divided Fed. Cir. panel affirmed TTAB’s
decision refusing registration of the
depicted closure cap for blood
collection tubes on the basis of Sec. 2(e)
(5), functionality. The Board had not
committed error by weighing the
functional and nonfunctional features
against each other. The dissent said the
2(e) (5) requires viewing the mark as a
whole, and the Board’s factual findings
were insubstantial.
8
In re Florists' Transworld Delivery, Inc.
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TTAB 3/28/13
The TTAB rejected registration of the color black for “flowers and live cut
floral arrangements” on the basis of aesthetic functionality. The Board
focused on competitive need in determining that floral boxes are important
in the industry, and black is needed to impart the concept of elegance,
condolences, and Halloween, depending on the situation. Judge Bucher, in a
concurring opinion, wrote that aesthetic functionality is a tortured
concept. He prefers “‘first principles,’ drawn from our magnificent
trademark jurisprudence.” Meaning whether it makes public policy sense to
take the design out of the public domain. And here, it does not.
9
Univ. of Ala. Bd. Of Trs. v. New Life Art, Inc.,
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683 F. 3d 1266 (11th Cir. 2012)
Relying on Rogers v. Grimaldi and ETW Corp. v. Jireh Publ’g. Inc. (Tiger Woods’ image in
artwork), the 11th Cir. held that the Lanham Act does not apply to works of art that include
others’ trademarks that are artistically relevant to the underlying work and do not
explicitly mislead consumers into believing that the trademark owner endorsed or
sponsored the use. Artist Daniel Moore’s works feature realistic portrayals of Crimson
Tide uniforms, helmets and jerseys. His use of the trademarks on mugs and products was
remanded to consider his sole defense of acquiescence.
10
Fortres Grand Corp. v. WarnerBros Ent., Inc.
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2013 WL 2156318 (N.D.Ind. 5/16/2013)
The ND Ind. found that
WarnerBros’ handful of
references in The Dark Knight
Rises to a fictional software
program called “clean slate” did
not infringe plaintiff’s trademark
for its real software program of
the same name. Court relied on
Rogers v. Grimaldi and its
progeny, plus Ocean Bio-Chem,
Inc. v. Turner Network Television,
Inc. (Starbrite Batteries) and
Davis v. Walt Disney Co. (Earth
Protector).
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Louis Vuitton Mallatier S.A. v. WarnerBros Entertainment, Inc.
868 F. Supp.2d 172 (S.D.N.Y. 2012)
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Louis Vuitton failed to state a claim that the WarnerBros movie The Hangover: Part II
infringes its trademarks by having a character carrying a counterfeit LV
bag (mispronouncing it as “Lewis Vuitton”) for a few seconds. LV claimed that moviegoers
would think it was a genuine bag and that LV product-placed it when in fact it is a fake bag.
LV alternatively alleged that by depicting a fake LV bag, def tarnished its image -moviegoers would think LV authorized use of a fake. The Court held LV’s positions to be
absurd, finding that even if LV could state
a cognizable claim, WarnerBros’ use of
the fake bag is protected under Rogers v.
Grimaldi because it has some artistic
relevance to the film and is not expressly
misleading.
12
Eastland Music Group, LLC v. Lionsgate Ent. Inc.
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3d 869 (7th Cir. 2013)
The 7th Cir. affirmed the district
court’s grant of defendant’s motion
to dismiss. Registrant is the
proprietor of Pfifty-50, which has
one album and a t-shirt. It alleged
infringement by defendant’s movie
title 50/50 about a man with a 50%
chance of beating cancer. Court
found it unnecessary to consider
Rogers v. Grimaldi or other defenses
because the complaint didn’t allege
likelihood of confusion about the
film’s source “and any such
allegation would be too implausible
to support costly litigation.”
13
v. Winfrey
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2d Cir., No. 12-1207- cv 05/31/13
District Court erred in granting defendant
Oprah Winfrey’s MSJ for use of a
motivational speaker’s trademark phrase
“Own Your Power” for an event, on the
cover of O magazine. The 2d Cir. also found
that Winfrey’s fair use defense should not
have been accepted on MSJ. The 2d Cir.
required “use OF a mark” to state a claim for
infringement. The magazine cover was use
OF a mark. (The Sixth Cir. requires
defendant’s use to be “AS a mark.”) The 2d
Cir. found Winfrey had not used the phrase
to describe the contents of a particular item
in the magazine.
14
The Navajo Nation v. Urban Outfitters, DC 2013 US
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LEXIS 50557 NM
Court denied defendant’s F.R.Civ. P. Rule 12(b)(6) motion, holding Navajo Nation alleged
adequate facts under the Lanham Act that defendant was using the term Navajo as a
trademark, not a generic, and that there was likelihood of confusion. The Tribe’s claim of
dilution by blurring was adequately pleaded. The Court also refused to dismiss the Tribe’s
claim alleging violations of the Indian Arts and Crafts Act. The Court did dismiss the dilution
by tarnishment claim arising from defendant’s use of the term Navajo on panties and flasks.
15
Rearden
LLCedit
v. Rearden
Commerce,
Inc.,
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683 F. 3d 1190 (9th Cir. 2012)
The 9th Cir. overturned the district
court’s MSJ for defendant, which had
found as a matter of law that plaintiff
lacked priority. The court credited
plaintiff’s prerelease publicity as
potential priority -- “nonsale
activities” that had generated “a
significant amount of publicity about
their services” with the marks in
suit. It observed that evidence of
sales or lack of sales isn’t dispositive
in determining whether a party has
established “use in commerce” where
there is substantial prerelease
publicity.
16
New York Yankees Partnership v. Evil Enterprises, Inc.,
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2013 WL 1305332 (TTAB 2/8/13) (non-precedential)
BASEBALLS (sic) EVIL EMPIRE
Opposer NY Yankees had not used the mark EVIL
EMPIRE itself, but successfully opposed an
application for EVIL EMPIRE for apparel. Board held
that “even if a company itself has not made use of a
term, it may have a ‘protectable property right in
the term’ if the public has come to associate the
term with the company or its goods or services.”
The Board rejected the Yankees’ backup position
that EVIL EMPIRE was disparaging, because the
Yankees had used Star Wars music during games,
but sustained the opposition.
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Stark
v. Diageo
Chateau
& Estate
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styleCo.,
2012 WL 5388799 (ND CA 11/1/12)
Though it had an incontestable registration, plaintiff’s STARK mark for wine
was found weak, in this reverse confusion case. The court found likelihood of
confusion by huge company’s STARK RAVING mark for wine, but only enjoined
in Sonoma County, given the plaintiff’s geographic penetration. Though
defendant was aware of plaintiff’s STARK mark before adopting STARK
RAVING: “Awareness of a senior mark-holder’s trademark is not dispositive of
a junior mark-holder’s intent or bad faith in adopting its mark.” The fact that
defendant had conducted a search and found the plaintiff’s mark (but didn’t
perceive a conflict) favored defendant’s good intent.
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H-D Michigan,
LLC.
V.
Hellenic
Duty
Free
Shops,
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694 F. 3d 827 (7th Cir. 2012)
Greek-based defendant breached
international Harley-Davidson trademark
apparel license. Defendant’s successor
licensee was bound by the jurisdiction
clause. District Court granted a TRO that
lasted longer than 28 days without
consent of the defendant; 7th Cir. agreed
it becomes “in effect” a preliminary
injunction as it otherwise comported
with the formal requirements for a
preliminary injunction. Court granted
plaintiff H-D’s motion to enjoin defendant
to withdraw its Greek lawsuit that sought
to relitigate the issues without having
notified either the U.S. or Greek courts of
the other suit.
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T.Click
Marzettin
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v. Roskamtitle
Baking
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680 F. 3d 629 (6th Cir. 2012)
The 6th Cir. upheld the
district court and found
“Texas toast” was generic
for oversized bread and
croutons. The
defendant/counterclaim
plaintiff’s own annual report
referred to Texas toast
croutons as a type of
product, not as a brand, and
it conceded that others in
the industry used the phrase
generically.
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Coach, Inc. and Coach Services, Inc. v. Goodfellow, dba The Southwest Flea
Market, aka 3rd St. Flea Market
6th Cir. No. 12-566 5/31/13
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The 6th Cir. has now joined the 9th and the 7th Circuits in holding a flea
market operator contributorially liable for trademark infringement by
its vendors. It affirmed Coach’s MSJ on liability and upheld judgment
on the jury’s damages verdict of $5M, and attorneys’ fees of
$186K. The Court agreed that there was no evidence of vicarious
liability, but there was substantial evidence of contributory
infringement per Inwood
Laboratories, Inc. v. Ives
Laboratories, Inc., 456 U.S. 844
(1982). “Defendant couldn’t
benefit by its ostrich-like behavior
of what was going on at his flea
market, especially after umpteen
raids.”
21
Arkansas Lottery Commission v. Alpha Marketing, Ark.,
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No. CV-12-510 (5/30/13)
The Arkansas Supreme Court by a four-justice majority reversed an Arkansas state
circuit court’s decision that had determined that the state had waived its sovereign
immunity when, in its original answer to the plaintiff’s DJ complaint, the state raised an
affirmative defense that the plaintiff’s trademark registrations were contrary to
the law and therefore should be cancelled. The Commission
couldn’t raise the defense of sovereign immunity as a moving
party seeking cancellation, being a form of specific relief.
Three justices disagreed in two separate dissenting opinions.
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Louis Vuitton Malletier S.A. v. LY USA Inc., et al.
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Case No. 08-4483 (2d Cir. 3/29/12)
In a case of first impression, the 2d Cir. held that a
trademark registrant who elects statutory damages for defs’
counterfeiting may ALSO recover attorneys’ fees. The defs
also argued that the district court was wrong in refusing to
stay the civil case pending the outcome of the parallel
criminal case. A defendant has no absolute right not to be
forced to choose between testifying in a civil matter and
asserting his Fifth Amendment privilege. The 2d Cir. also
said that despite the district court’s indication that it would
hear alternatives to a stay (such as protective orders,
quashing or modifying subpoenas, or sealing confidential
material) the defendants never sought the court’s help.
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Skydive Arizona, Inc. v. Quattrocchi
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673 F.3d 1105 (9th Cir. 2012)
Famous skydiving school, SKYDIVE, successfully sued
internet and phone-based ad service, SKYRIDE, for making
skydiving arrangements for customers including certificates
that falsely purported to be good at SKYDIVE’s business.
Following partial summary judgment and a trial, the jury
awarded plaintiff $1 million in actual damages for false
advertising, $2.5 million in actual damages for trademark
infringement, $2.5 M in profits resulting from the trademark infringement and
$600K for statutory cybersquatting damages. The district court denied SKYRIDE’s
post-trial motions and instead doubled the actual damages award for false
advertising and doubled the trademark infringement award too. The Lanham Act
permits the district court to enter judgment in its discretion “for any sum above the
amount found as actual damages, not exceeding three times such amount…SUCH
SUM … SHALL CONSTITUTE COMPENSATION AND NOT A PENALTY.” The 9th Circuit
found the District Court had punished defendant with the trebled damages, which
the Lanham Act doesn’t allow.
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Melodrama
Publishing
LLC
v.
Danielle
Santiago
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2013 U.S. Dist. LEXIS 56988 (SDNY)
Author’s pseudonym trademark
is a scam; registration canceled,
Author threatened Amazon,
who therefore wouldn’t sell the
book. Court appointed
Magistrate Judge for an inquest
into damages and to inquire
into the state of mind of author
and the lawyer who filed her
application.
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Sunbeam Products, Inc. v. Chicago American Manufacturing LLC
686 F. 3d 372 (7th Cir. 2012)
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Licensor was forced into involuntary
bankruptcy proceeding three months into a
trademark license. The license gave
licensee the right to sell the entire 2009
run of goods produced under license if
licensor did not buy the goods for
distribution to licensor’s own
customers. While the bankruptcy trustee
rejected the executory portion of the
license, the bankruptcy court held that the
license authorized the continued
production and sale by licensee. The 7th
Cir. affirmed.
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In re Viterra Inc.,
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101 USPQ2d 1905 (Fed. Cir. 2012)
The Federal Cir. upheld the TTAB’s affirmance of a Section 2(d) refusal
to register the word mark XCEED for agricultural seed, on the ground of
likely confusion with the depicted registered design mark X-SEED
& Design [SEED disclaimed]. The Federal Circuit agreed that a word
mark, like applicant’s XCEED mark, is not limited to any particular font,
size, style, or color. Thus the Viterra’s word mark was not distinct from
X-Seed’s logo registration..
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In re Fox
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105 USPQ2d 1247 (Fed. Cir. 2012)
The Fed. Cir. affirmed the TTAB’s decision
holding that the depicted mark for
“chocolate suckers molded in the shape
of a rooster” is scandalous and therefore
unregistrable. A mark that creates a
double entendre falls with the
proscription of 15 U.S.C. Sec. 1052(a)
where one of the meanings is clearly
vulgar. Applicant’s position that the
mark was funny didn’t carry the day.
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Lexmark International Inc. v. Static Control Components
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Inc., U.S., No. 12-873, review granted 6/3/13
On June 3, the U.S. Supreme Court
granted cert in a case over whether a
party must be a direct competitor in
order to have standing to bring a
false advertising claim under the
Lanham Act.
Lexmark argued that Static Control
was not a direct competitor because
it only made parts for refurbishing
printer cartridges. Static Control—
unlike its customers—did not
actually sell goods that directly
competed with Lexmark's goods.
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