Spot The Shopped Specimen Before You’re Booted From Amazon

Home It v. Wupin Wen, et. al., 19-cv-7070 (MK) (EDNY December 26, 2019)

Plaintiff Home It alleges it has made common law use of the mark SAGANIZER for various home organizing products since 2015. It has not filed a trademark application. Defendant WuPin Wen of Guangdong, filed a U.S. application for SAGANIZER for various housewares in August 2016. Its specimen looks like this:

I’m going to zoom in on the mark affixed to the goods:

OK, I’m going to make two assertions, and it’s up to you to draw conclusions. The first: PTO believes that there is a problem with fraudulent specimens. Second: we’re looking at lettering affixed to a round metal object. The surface is curved – the lettering is razor straight. Plaintiff doesn’t mince words: it recognizes its product in the photo and says this photo is ‘shopped.

So there are problems with defendant’s registration.

It gets worse for plaintiff. Around December 13, plaintiff learns that the registrant approached Amazon, and proffered its registration for SAGANIZER, booting Home It off Amazon.

Plaintiff then applies for a TRO, citing, for example, its ruined Christimas season. As an aside, plaintiff seems to run afoul of the Court by not precisely following instructions as to service on opposing parties [practice pointer – don’t run afoul of courts’ instructions]. At the hearing, plaintiff notes testimony before Congress that there is a pattern of Chinese companies filing trademarks and booting the ‘real’ trademark owners off of Amazon. Coverage here.

Held: TRO denied for failure to show irreparable harm (brief discussion of irreparable harm case-law in the decision pages 4 to 6).

N.B. In a separate filing, a defendant was enjoined from additional contact with third-parties asserting infringement.

BTW, the moral of this, and of every story, is to file for trademark protection early and often.

INTA Amicus Brief in Ohio State University v RedBubble Inc. (Interpretation of Use in Commerce by ‘Intermediary’)

INTA Position: The Court should remand the case to the district court for fact finding on whether the defendant is advertising, distributing, and/or offering goods that are potentially infringing or counterfeit and clarify the use in commerce, pursuant to 15 U.S.C. § 1114, includes more than the act of selling goods. 

Text of Preliminary Injunction Motion Brief in Trust Your Journey v Disney (Frozen 2)

Coverage here: Disney Gets Sued For Using Breast Cancer Charity’s Trademark In ‘Frozen 2’

Leason Ellis Wins $992k Fee Award

woot woot. Congratulations to my colleagues Rob Isackson, Matt Kaufman, Henry Gabathuler, Hoda Rifai-Bashjawish, Leana Lorenzana, and Natania Buchbinder. After prevailing at summary judgement that it had not infringed plaintiff’s patent claims, our client Repro-Med Systems Inc. was awarded $992k in fees. We now have legal holdings that Rob is a ‘seasoned patent litigator’ and that our firm’s fees are reasonable.

Berners-Lee’s Original Proposal to CERN That Led To the World Wide Web

CAFC Rules That We Are Living In Incorrect Computer Simulation, Doesn’t Articulate Remedy

Well, maybe I’ve overstating it. In a turn of events suspected by some, but nevertheless surprising, the CAFC has ruled that the judges of the PTAB are not appointed properly under the Appointments Clause of Article 2. As ‘principal officers,’ PTAB judges should be appointed by the President, and confirmed by the Senate. Presently, PTAB judges are appointed by the Secretary of Commerce. Two intrusive thoughts occur – how does this affect prior acts by the PTAB, and does this analysis apply to the TTAB as well.

Complaint in Finco v Facebook re CALIBRA logo

Plaintiff alleges use of the logo on the left for mobile banking services, defendant Facebook is allegedly using the logo on the right to promote its upcoming CALIBRA digital wallet. Both parties used the same design firm.

Complaint in Mossack Fonseca v Netflix (re LAUNDROMAT – the Panama Papers movie)

Well, now we know there’s a movie named The Laundromat coming up on Netflix.

Mossack Fonseca is the Panamanian law firm implicated in the ‘Panama Papers’ incident.

The Laundromat is a Netflix movie based on a book about the firm. Gary Oldham plays Mossack, Antonio Banderas playes Fonseca, and Meryl Streep, the General Mattis of actors, plays someone allegedly victimized by one of the law firm’s activities.

Not intimidated by the Streisand Effect, or the First Amendment, Mossack Fonseca has sued Netflix for libel, false light, trademark dilution (eyes roll emoji), and federal false advertising. Scanning the complaint very quickly, I see a “Fred and Ginger” artistic relevance issue for the trademark clause, and many issues with the false advertising cause – a Lexmark problem for starters.

note – this case has been transferred from the District of Connecticut, to the Central District of California.

2d Circuit: Palin v. NY Times – Could we use a dispositive motion between Rule 12b6 and Rule 56?

This defamation suit involves a gun-control editorial published by the NY Times, which argued that a “link to political incitement was clear” between an ad circulated by Sarah Palin’s PAC depicting a map of congressional districts with a crosshair over certain ‘targeted’ districts, and the shooting of Congresswoman Gabby Giffords’, whose district had been depicted. No link between the ad and the shooting has been demonstrated.

Palin sued for defamation. The Times moved to dismiss under 12b6. The district court held an evidentiary hearing, in which the sole witness was the author of the editorial, for the purpose of gauging the plausibility of the allegation that the Times acted with actual malice (which element would be necessary for a defamation claim, as Palin is a public figure). The disctrict court dismissed the complaint.

The district court did not convert the 12b6 motion into one for summary judgment, pursuant to Rule 56. However it did appear to rely on the hearing in denying the 12b6. Thus, it improperly relied on evidence outside the complaint. Denial of the cause reversed.

As the Second Circuit noted, Rule 12(d) provides the district court with a choice between Rules 12b6 and 56. There is no middle ground (although I think there should be – which is a discussion for another day). Key holding here:

11th Circuit: Defendant Did Some, But It Didn’t Do All Things It Could Have Done To Comply With Injunction

Plaintiff uses the GORILLA PLAYSETS mark for outdoor play-sets. Defendant sold GORILLA GYM indoor exercise equipment, such as a pull-up bar, however it included accessories for children (such as ‘trapezes’). Plaintiff sues and defendant was enjoined from selling infringing play-sets. The injunction did not set out time-frames for compliance. Defendant, alleging that it was sitting on three months of inventory, moved for a phase-out period for existing stock, but the motion was denied (defendant also argued that it couldn’t satisfy the monetary award unless it moved this merch).

Several weeks later, a few infringing products were shipped, probably to trap-buyers, and plaintiff moved for contempt.

Defendant argued that it had made a good faith effort at compliance. District Court disagreed and this appeal followed.

11th Circuit: Because defendant itself was responsible for the problematic sales (and couldn’t blame the sales on agents), it would had to show that it had made ‘in good faith all reasonable efforts to comply.’ The court noted that defendant:

“…attempted – mostly successfully – to remove the words “Gorilla Gym” from its Amazon page and its web presence more broadly, built a new website, directed [its fulfillment entity] to repackage the goods it possessed, and rebranded the products under [other marks].”

However:

“[Defendant] took over two weeks to direct [its fulfillment and shipping entity] to remove the products from the infringing packaging and place the products into plain boxes and [defendant] did not make any efforts to verify compliance with ‘a new system’ until after [defendant] was notified that [infringing products] were still be shipped…It took [defendant] seven weeks after the injunction to direct [its shipper] to stop shipping orders’

Accordingly, the court determined that a reasonable person could find a clear and convincing violation and that defendant did not meet its burden to show an inability to comply – Defendant had made some efforts to comply but not all reasonable efforts to comply.

Ed. note: The court notes that defendant certainly didn’t ignore the injunction. This is a pretty harsh result, all things considered.