‘Objective Baselessness’ Standard For Sham Exception For Noerr Pennington Doctrine As Applied To Trademark Demand Letter
Silverhorse Racing makes aftermarket parts for the Ford Mustang GT, including a bezel shifter, which is a bezel that goes around the shifter. It is not licensed by Ford. Ford sent a demand letter to Silverhorse’s dealer. In the resulting trademark suit, Silverhorse brings a counterclaim alleging tortious interference resulting from the demand letter. Ford alleges that its demand letter is immunized under the Noerr-Pennington doctrine, which protects litigants when ‘petitioning’ the government. Silverhorse acknowledges that Noerr-Pennington has been extended from antitrust law, to trademark law, and has been extended to cover pre-litigation behavior such as demand letters. However, Silverhorse argues that because it has, in its opinion, four good defenses to trademark infringement, the demand letter falls under the sham exception to the doctrine.
Held: Silverhorse’s assertions of its defenses did not establish that the demand letter was objectively baseless, which would have been required to establish that the demand letter was a ‘sham.’ Tortious interference claim dismissed.
Here is the topic outline for my “trademarks in review” talk tomorrow night for the IP Committee of the Federal Bar Council. Watch this space for links to reference materials.
I. Failure to function as a mark (I BELIEVE THAT WE WILL WIN)
II. Use in Interstate Commerce (ADD A ZERO)
III. Irreparable Harm/Delay (AT&T THANK YOU)
IV. Nominative Fair Use (CISSP)
V. Scandalous! (SLANTS)
VI. Intermediate Liability (various)
VII. Parody (MY OTHER BAG)
VIII. Damages (OCTANE)
IX. Extraterritoriality/Reputation Without Use (BELMORA)
Judge Richard J. Daronco was our trial advocacy professor in law school (he had been elevated to the District Court the year before and was continuing to teach as an adjunct). We were lucky. Once, one of us was flailing about trying to argue something, and he couldn’t control himself. He jumped from behind the lectern. “Let me show you how to do it!” He was a pretty reserved guy but now, a switch was flown, and he became the real thing. He’s jabbing the air, he’s raising his voice, he’s banging the desk. And pulling it off. Someone persuading you with their voice and their command.
After some more crescendos and some more majestic arm movements, he realized that we were staring at him in slack-jawed amazement. He came out of it, and he sheepishly said “I’m like the retired Dalmation barking when he hears the fire alarm.” He went back to his lectern.
On May 22, 1988, the father of a pro se litigant whom Judge Daronco had ruled against the previous day, broke into the Judge’s house and shot him to death. Judge Daronco is one of the four federal judges killed in office.
There are news reports that Judge Robart, the Federal Judge who handled the Travel Ban case in the District of Washington, has received death threats. One ‘pundit’ blithely dismissed this: ‘Judges always receive death threats.’ In fact, Judge Robart, before this case, joked that by becoming a judge, he took a pay cut so that he could receive death threats.
It’s true – judges routinely receive death threats. There are many disturbed people out there. There is no reason to add to the number. The President can use the bully pulpit to vigorously criticize decisions with which he disagrees. Or maybe ask your attorney general to review the decision and have him lambast it. Or take the time to write an EO that won’t be stayed 3-0.
But for the president to suggest to the public that they imagine a causal link between a judicial decision and a terror attack – the word ‘irresponsible’ doesn’t seem to cover it. ‘Criminal’ might.
The Westchester County Courthouse was re-named after Judge Daronco. It’s three blocks from our offices in White Plains. I can see it from my office.
Various producers of GRUYERE cheese are opposing an application for GRUYERE as a certification mark by Switzerland’s Interprofession du Gruyère and France’s Syndicat Interprofessionnel du Gruyère.
The term “certification mark” means any word, name, symbol, or device, or any combination thereof–
(1) used by a person other than its owner, or
(2) which its owner has a bona fide intention to permit a person other than the owner to use in commerce and files an application to register on the principal register established by this [Act],
to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of such person’s goods or services or that the work or labor on the goods or services was performed by members of a union or other organization.
Embedded below is one of many oppositions filed last week.
The Lubavitcher Youth Organization is a social services organization associated with Chabad, a Jewish Hasidic movement. Since 1977, it has organized the lighting of the World’s Largest Menorah ™ in Manhattan at 59th and Fifth. The menorah is 20 cubits tall. A cubit, as we all know, is a biblical unit of measure based on the length from the tip of the middle finger to the elbow. I’m not sure what the going rate is for cubits these days but this menorah is approximately 33.5 feet tall. Dignitaries such as mayors and senators tend to assist the lighting of the menorah on the first night of Chanukah.
A different organization, also associated with the Chabad movement, began organizing lighting ceremonies of a similarly tall menorah in the New York borough of Brooklyn. A rivalry ensued, along with news coverage using the unfortunate but inevitable ‘size matters‘ pun.
This year, the two organizations appeared before a Chabad rabbinical tribunal to resolve the dispute as to who could use the phrase ‘World’s Largest Menorah’ Such a tribunal may consider secular civil law and that’s where I come in. I drafted papers on behalf of LYO, discussing its U.S. common law trademark claim (the phrase and logo is used throughout the year in connection with LYO activities).
LYO prevailed, and as a token of its appreciation, it asked that I helped light the menorah. So, on New Year’s Eve, the last night of Chanukah, I got into the Con Edison cherry picker.
The Con Ed guys fitted me out with a safety harness like this one.
The view of Fifth Avenue 33.5 feet up from the top of the menorah was nice, marred only by that dark tower on 56th Street.
. . . and one shouldn’t look down at the crowd.
I was handed a lit gas torch. (note to self at the time: does our insurance cover?)
And the shamash (the one used to light the other candles) was lit!
A belated Happy Holidays to you all!