Header graphic for print

IP Litigation Update

A Review of Recent Developments in Copyright, Trademark, and Trade Secrets

Trademark Applicant Ordered to Pay PTO’s Attorneys’ Fees in District Court Appeal

Posted in Trademark

In a matter of first impression, the Eastern District of Virginia ordered a trademark applicant to pay over $35,000 in costs, reflecting the legal fees of the United States Patent and Trademark Office (“PTO”), for appealing an adverse ruling by the Trademark Trial and Appeal Board (“TTAB”) in an ex parte appeal of the PTO’s refusal of the plaintiff’s trademark application. Shammas v. Focarino, __F. Supp. 2d__, No. 1:12-cv-1462, 2014 WL 31282 (E.D. Va. Jan. 3, 2014). Continue Reading

Ninth Circuit Holds that Copyright Infringement Claim Is Doomed by the Plaintiff’s Untimely Assertion of Copyright Ownership

Posted in Copyright, Procedure

The Ninth Circuit affirmed a district court’s holding that a plaintiff could not assert a copyright infringement claim when the plaintiff’s underlying assertion of copyright ownership was untimely. In so holding, the Ninth Circuit joined the Second and Sixth Circuits in ruling that a three-year delay in asserting ownership, when ownership is disputed, bars a later infringement claim. Seven Arts Filmed Entm’t Ltd. v. Content Media Corp. PLC, __ F.3d __, No. 11-56759, 2013 WL 5928356 (9th Cir. Nov. 6, 2013). Continue Reading

Titanic Exhibition May Be Entitled to Trade Dress Protection

Posted in Trademark

A company dedicated to preserving the legacy of the Titanic survived a motion to dismiss its trade dress infringement claim by sufficiently alleging distinctiveness, non-functionality and confusion. Further, the district court concluded that extraterritorial application of the Lanham Act was appropriate over the domestic defendants, but not over the related foreign defendants. RMS Titanic, Inc. v. Exhibitions, Inc., _F. Supp. 2d _, No. 1:13-cv-0625-WSD, 2013 WL 5675523 (N.D. Ga. Oct. 17, 2013). Continue Reading

Western District of Washington affirms TTAB Refusal to Register Marks in Dispute Between Business Associates

Posted in Trademark

The U.S. District Court for the Western District of Washington affirmed a ruling by the U.S. Patent and Trademark Office Trademark Trial and Appeal Board (“TTAB”) rejecting trademark registrations where nearly identical marks were owned by a former business associate of the rejected registrant. Vosk Int’l Co. v. Zao Gruppa Predpriyatij Ost, No. 11-1488RSL, 2013 WL 5588296 (W.D. Wash. Oct. 9, 2013). Continue Reading

Ninth Circuit Holds Rock Band’s Unauthorized Use of Artist’s Illustration in Video Backdrop to Be a Fair Use Under the Copyright Act

Posted in Copyright, Remedies/Damages

The Ninth Circuit held that a rock band’s use of a photograph of an artist’s work in a video backdrop was fair use because the use was transformative, the use of the entire work was necessary to achieve a “new expression, meaning or message,” the video backdrop did not perform the same market function as the original and the value of the work was unchanged after Defendants’ use. However, the court reversed the district court’s award of fees to Defendants, noting that the case was “close and difficult” and that there was no reason to believe that Plaintiff should have known from the outset that his chances of success were “slim to none.” Seltzer v. Green Day, Inc., 725 F.3d 1170 (9th Cir. 2013). Continue Reading

Ninth Circuit Affirms Denial of Fox Broadcasting’s Motion for a Preliminary Injunction Regarding Dish Network’s “Hopper” Set-Top Box

Posted in Copyright

The Ninth Circuit affirmed a district court ruling holding that a television broadcaster could not demonstrate a likelihood of success on the merits of its copyright infringement claim, and thus was not entitled to a preliminary injunction, where the defendant television provider was not a direct infringer and had a meritorious fair use defense to secondary infringement. Fox Broad. Co. v. Dish Network L.L.C., 723 F.3d 1067(9th Cir. 2013). Continue Reading

Ninth Circuit Rejects Jim Brown’s False Endorsement Claim Against Provider of Madden NFL Video Game Series

Posted in False Advertising, Procedure, Trademark

The Ninth Circuit rejected NFL great James “Jim” Brown’s claim that the use of his likeness in Electronic Arts, Inc.’s Madden NFL football video games violated section 43(a) of the Lanham Act. Brown v. Elec. Arts, Inc., __F. 3d __, No. 09-56675, 2013 WL 3927736 (9th Cir. July 31, 2013). Continue Reading

Eleventh Circuit Holds that It Has Jurisdiction to Reform Judgment to Remove Adverse Finding Against Otherwise-Successful Defendant in Trademark Infringement Suit

Posted in Procedure, Trademark

The Eleventh Circuit held that a party may appeal on the merits from a decision in its favor where the district court found against it as to an issue that was not dispositive of the case. Unique Sports Prods, Inc. v. Ferrari Importing Co., __ F.3d __, No. 11-15586, 2013 WL 3369153 (11th Cir. July 8, 2013). Continue Reading

Southern District of Florida Denies Trademark Infringement and False Advertising Claims Against Abercrombie & Fitch Brought by Jersey Shore’s Michael “The Situation” Sorrentino

Posted in Trademark

The Southern District of Florida granted summary judgment to the retail chain Abercrombie & Fitch on claims of trademark infringement and false advertising involving the mark “The Situation,” owned by television personality Michael Sorrentino. MPS Entm’t, LLC v. Abercrombie & Fitch Stores, Inc., No. 11-24110-CIV, 2013 WL 3288039 (S.D.Fla. June 28, 2013). Continue Reading

Sixth Circuit Upholds Finding that Flea Market Vendor Is Contributorily Liable for Infringement by Vendors

Posted in Trademark

The Sixth Circuit upheld a district court’s finding that a flea market vendor was contributorily liable for trademark infringement by vendors where he received actual notice of the infringement and failed to take remedial measures. It also upheld the district court’s finding that this was an exceptional case warranting the award of attorneys’ fees. Coach, Inc. v. Goodfellow, 717 F.3d 498 (6th Cir. 2013). Continue Reading