In a case involving the labeling of olive oil the plaintiff sought a preliminary injunction on false advertising claims under the Lanham Act. The Southern District of New York: (1) refused to extend its previously entered injunction (enjoining the sale of oil labeled as “100% Pure Olive Oil” that contained Pomace, an industrially processed oil produced from olive pits, skins and pulp) to prohibit the sale of 100% refined olive oil labeled as “100% Pure Olive Oil” due to the plaintiff’s failure to introduce any extrinsic evidence of consumer confusion; (2) ordered the defendant to distribute stickers to be affixed to unsold tins of oil containing Pomace (subsequently modified to allow the defendant to affix stickers or recall the product); (3) denied plaintiff’s request that defendant provide notice of its past mislabeling via its website because it would not remedy the harm that had already occurred when the mislabeled product was purchased; and (4) ordered the posting of a $10,000 bond rather than the requested $10,000,000 bond. N. Am. Olive Oil Ass’n v. Kangadis Food Inc., Case No. 13 Civ. 868 (JSR), 2013 WL 1777774 (S.D.N.Y. April 25, 2013). Continue Reading
Finding of Likelihood of Confusion by Trademark Trial and Appeal Board Not Entitled to Preclusive Effect in District Court Trademark Infringement Action
Posted in TrademarkWhen determining a party’s right to use a given trademark, the outcome of a likelihood of confusion analysis is a central inquiry. The Eighth Circuit has held, however, that a determination of likelihood of confusion by an administrative agency will not necessarily have a preclusive effect in a trademark infringement matter in district court. B&B Hardware, Inc. v Hargis Indus., Inc., Nos. 10-3137, 11-1247, 2013 WL 1810614 (8th Cir. May 1, 2013). Continue Reading
Second Circuit Holds Appropriation Art Constitutes Fair Use
Posted in CopyrightThe Second Circuit held that 25 works of appropriation art that incorporated original copyrighted photographs constituted fair use under the Copyright Act, 17 U.S.C. § 107. Cariou v. Prince, __ F.3d __, No. 11-1197-CV, 2013 WL 1760521 (2d Cir. Apr. 25, 2013). Continue Reading
Fendi Receives Revised Trademark Infringement Damages of Almost $30 Million
Posted in Counterfeiting, Remedies/Damages, TrademarkOn remand from the Second Circuit, the Southern District of New York revised an award to Fendi for defendant Ashley Reed Trading, Inc.’s (“Ashley”) willful infringement of Fendi’s trademarks from $12.3 million to $29.9 million. Fendi Adele S.r.l. v. Ashley Reed Trading, Inc., No. 06 Civ. 00243 (RMB) (MHD), Corrected Order (S.D.N.Y. Apr. 22, 2013). Continue Reading
Blogger’s DMCA Take-down Request of Her Own Obscene Photo on Rival’s Blog Was Not an Abuse of DMCA
Posted in Copyright, DMCA, ProcedureEven if the offending poster has a “plausible, and even dispositive” affirmative defense to a claim of copyright infringement, the poster cannot make a claim that the offended person abused the DMCA by sending a take-down request of the copyrighted material. So ruled the District of Massachusetts in a case involving dueling bloggers. Tuteur v. Crosley-Corcoran, No. 13-10159-RGS, 2013 WL 1450930 (D. Mass. Apr. 10, 2013). Continue Reading
Ninth Circuit Holds That Use of Ed Sullivan Clip in Jersey Boys is Fair Use
Posted in Copyright, Remedies/DamagesThe Ninth Circuit upheld a district court’s holding that use of a seven-second clip from The Ed Sullivan Show in the musical Jersey Boys constituted fair use. SOFA Entm’t, Inc. v. Dodger Prods., Inc., 709 F.3d 1273 (9th Cir. 2013). Continue Reading
No First Sale Doctrine for Digital Distribution
Posted in CopyrightThe Southern District of New York granted summary judgment for the plaintiff in a case involving a secondary marketplace for used digital music. Capitol Records, LLC v. ReDigi, Inc., __ F. Supp. 2d __, No. 12 Civ. 95(RJS), 2013 WL 1286134 (S.D.N.Y. Mar. 30, 2013). Continue Reading
Ninth Circuit Revives Trademark Infringement Claims Regarding “Red Gold”
Posted in Procedure, TrademarkThe Ninth Circuit reversed the district court’s dismissal of Solid 21, Inc.’s (“Solid’s”) trademark infringement claims regarding its “Red Gold” trademark, holding that, in dismissing the claims, the district court had inappropriately considered evidence challenging the complaint’s allegations. Solid 21, Inc. v. Breitling USA, Inc., No. 11-56439, 2013 WL 1116539 (9th Cir. Mar. 19, 2013) (unpublished opinion).
Supreme Court Holds That International First Sale Rights Apply to Copyrighted Works Lawfully Made Overseas
Posted in CopyrightThe Supreme Court of the United States in Kirtsaeng v. John Wiley & Sons, Inc. reversed the Second Circuit and held that the “first sale” doctrine applies to copies of a copyrighted work lawfully made abroad. The Court’s decision resolves a conflict between two seemingly contrary provisions of the Copyright Act: a first that codified the first sale doctrine for copyrighted works, 17 U.S.C. § 106(3), and a second that provided that importing a copy of a copyrighted work without permission violates the owner’s exclusive distribution right, 17 U.S.C. § 602(a)(1). Kirtsaeng v. John Wiley & Sons, Inc., __ U.S. __ No. 11-697, 2013 WL 1104736 (Mar. 19, 2013). Continue Reading
Entering into Trademark Licensing Agreement Shuts Door on “Naked Licensing” Defense
Posted in Licensing, TrademarkEntering into a trademark licensing agreement eliminated a former business partner’s ability to challenge the validity of a trademark owner’s mark under a “naked licensing” defense, ruled the Eleventh Circuit. Nguyen v. Biondo, No. 12-13776, 2013 WL 530840 (11th Cir. Feb. 13, 2013) (unpublished). Continue Reading