2nd Cir 43(a)(1)(B) decision: Weeks Pregnant vs How Far Along

clear blue

Justia summary: Defendant, a marketer of over-the-counter pregnancy test kits, was found liable for false advertising in violation of section 43(a) of the Lanham Act, 15 U.S.C. 1125(a). Plaintiff, a leading competing marketer of over-the-counter pregnancy test kits, claimed that, in informing the user as to how long her pregnancy had been in effect, defendant’s product communicated the false impression that it uses the same metric and gives the same number of weeks of pregnancy as a medical professional would do. The district court found in favor of plaintiff and imposed an injunction on defendant. The court agreed with the district court that plaintiff’s Lanham Act claim is not precluded by the Food, Drug, and Cosmetic Act, 21 U.S.C. 301 et seq., claim; there is no error in the district court’s finding of falsity in defendant’s Launch Package and advertising messages associated with it by reason of their unambiguous implication that defendant’s product measures weeks-pregnant in a manner that is consistent with the measurement used by doctors; agreed with the district court’s finding, based on survey evidence, that the message communicated by the Revised Package was impliedly false; there was no error in the district court’s findings that the falsity was material and injurious to plaintiff; and the court did not abuse its discretion in issuing the injunction. Accordingly, the court affirmed the judgment.


Does an On-Premises Sex Club Affect Interstate Commerce

Plaintiffs are 32 professional models. Defendant is a sex club in Miami. Plaintiffs alleges the sex club used their photographs to promote the club on websites and social media, without consent. The complaint contains Lanham False Advertising and various Florida state causes. Defendant moves to dismiss on various grounds but the court dismisses, sua sponte, for failure to state a claim, because plaintiffs did not establish that ‘the misrepresented product or service,’ which the Court defines as people having sex with each other at the club, ‘affects interstate commerce.’

The discussion of interstate commerce occurs on pages 11 through 18.

Last paragraph on page 19: the court indicates that it is dismissing the state law claims, even if plaintiffs can successfully re-plead the Lanham Act cause.


9th Circuit: Direct Tech v EA – Copyrightability of 3D Derivative Work of 2D Image

plumbbob usb flash drive

Justia summary: EA, creator of The Sims, contracted with a production company called Lithomania to produce a USB flash drive shaped like a “PlumbBob,” a gem-shaped icon from the computer game, to promote a “Collector’s Edition” of The Sims. Lithomania in turn contracted with DT to produce a prototype of the PlumbBob-shaped flash drive. After DT settled breach of contract claims with Lithomania, DT sued EA under the federal Copyright Act, 17 U.S.C. 101 et seq., and the California Uniform Trade Secrets Act (CUTSA), Cal. Civ. Code 3426–3246.11. The district court granted summary judgment to EA. The court held that the district court erred by concluding as a matter of law that the flash drive was not copyrightable, and that there is a genuine issue of material fact as to whether DT’s cut-away design for removing the USB flash drive from the PlumbBob object is sufficiently non-functional and non-trivial to warrant copyright protection. In this case, a reasonable jury could decide these questions in either party’s favor. Therefore, the court reversed as to this claim. The court affirmed the district court’s grant of summary judgment to EA as to the CUTSA claim and held that DT’s design for the flash drive’s removal from the PlumbBob object does not derive independent economic value from not being generally known to the public. The court rejected EA’s cross appeal and held that the district court did not clearly err or otherwise abuse its discretion in denying attorneys’ fees for this claim.

I was initially interested in this case because of the discussion as to what extent 3D models based on 2D images contain copyrightable expression (see discussion beginning on page 10).

However there is another interesting angle here: the fact pattern where a disgruntled contractor wishes to assert rights in a derivative work against the original rights-holder, is quite common. This case is a good starting point in researching the spectrum of relationships between a rights holder and the creator of derivative works (see discussion from page 16 on).


Is the ROYAL CROWN Injunction In The Bag?


If the simultaneous use of different trademarks combine to form an infringing whole, to what extent does an injunction of that combination apply to the individual components (or to, what defendant argues are analogous components)?

Diageo sells CROWN ROYAL whisky in a purple cloth bag. Mexcor began selling TEXAS CROWN CLUB whisky, first without a bag, next in a Texas flag bag, and then a Texas flag bag that had the words TEXAS CROWN CLUB on it. It also branched into ‘local’ brand extensions, such as FLORIDA CROWN CLUB. Diageo sued and prevailed, An injunction issued. Diageo had made a concession that infringement began only when the TEXAS CROWN CLUB bag was used, and thus the two prior stages of use, use without a bag, and use with the ‘unlabeled bag,’ were not infringing.

What are the implications of that concession?

Mexcor now, citing the concession, seeks declaratory relief to peel away from the injunction what it believes are lawful usages inferred by the concession. For example, the concession implies that TEXAS CROWN CLUB in standard characters is non-infringing, therefore FLORIDA CROWN CLUB is non-infringing. Fifth Circuit declines to speculate on such questions that were not directly before the District Court.


Managing the Trademark Asset Lifecycle – NYC – Oct 20, 2016

wtr managing lifecycle 2016

“Ok, but does it makes economic sense?”

Happy are those lawyers who don’t need to concern themselves with the economic ramifications of their advice. For everyone else, World Trademark Review is presenting a conference on “Managing the Trademark Asset Lifecycle” in New York, on Thursday October 20, 2016.

The program covers:

– Brand and trademark audits;
– Brand valuation;
– Collateralization of brands;
– Financial and tax considerations of trademarks;
– Monetization (i.e. licensing);
– ‘Exit strategies’ (i.e. what to do with residual goodwill)

The full program is here.

The speakers are, on the whole, in-house counsel for some of the most valuable properties in the world. The full speaker list is here.

WTR reached out to me and I will be wearing my ‘working-blogger’ hat and attending and live-tweeting the conference, at WTR’s invitation.

Hope to see you there.


Complaint re LOWER EAST SIDE and LES Clothing

Trademark complaint re LES and LOWER EAST SIDE t-shirts.


Hungry Man v Kraft Heinz: SATISFY YOUR CRAVING Complaint re Frozen Foods

hungy man satisfy your craving

Plaintiff owns regs for SATISFY YOUR CRAVING which it places on its frozen meals. Defendant allegedly placed SATISFY YOUR CRAVING on ‘shelf talkers’ – point-of-purchase displays. Plaintiff sued last week, withdrew its complaint yesterday.


Who is the real McAfee?


John McAfee, founder of McAfee anti-virus fame, contributed or sold various assets to McAfee Associates. He alleges that he did not contribute or sell ‘his personal name’ to the company. The company certainly owned registrations that included the MCAFEE element. McAfee Associates was ultimately sold to Intel. Intel allegedly abandoned the MCAFEE trademark in 2014. John McAfee now wishes to work for a company that will be named John McAfee Global Technologies, which will perform services in the cyber-security field. Intel had protested, alleging that it owns the MCAFEE trademark (paragraph 26 of the complaint is puzzling as it seems to allege that Intel has ceased using the MCAFEE trademark, given Intel’s use of the mark at, for example, www.McAfee.com).

The Joseph Abboud case is a good place to start when contemplating to what extent one may use one’s own name (if one allegedly assigned away the trademark rights).


Is JOAN ACTUALLY Actually A Trademark For A Persona?

joan actually

Former spokesperson for Zoosk sues over trademark JOAN actually for her ‘persona.’

Coverage here.


The Answer We Filed On Behalf of Sun Cedar in Car-Freshner v Sun Cedar

Car-Fresher sells Little Trees car fresheners. Sun Cedar is a Kansas not-for-profit founded to provide jobs for the at-risk population. It sells, among other things, cedar tree-shaped cedar wood ornaments.