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Ninth Circuit reminds us that it already has decided that it is not bound to apply Octane Fitness’ (134 S. Ct. 1749) definition of “exceptional” in the context of the Lanham Act’s fee-shifting provision. Rather than evaluate ‘exceptional’ under a ‘totality of circumstances’ test, the Ninth Circuit will look to whether there was ‘malicious, fraudulent,…

Here is the first factor from the Ninth Circuit nominative fair use test, courtesy of the New Kids on the Block case:

First, the product or service in question must be one not readily identifiable without use of the trademark;

Here’s the first factor from yesterday’s Second Circuit decision:

(1) whether the use of the…

Introducing the 2d Circuit Nominative Fair Use Test:

1. Whether plaintiff’s mark is necessary to describe both the plaintiff’s and defendant’s products, “that is, whether the product or service is not readily identifiable without use of the mark;

2. whether the defendant uses only so much of the plaintiff’s mark as is necessary to identify…

Defendant allegedly ran photos of plaintiff models, to promote defendant’s resorts. Discussion of what tort this might be (false advertisement, unjust enrichment), and what it might not be (negligence per se).

Also, complaint was a few hundred pages too long.

[embeddoc url=”https://www.schwimmerlegal.com/wp-content/uploads/sites/833/2016/05/caliente-motion-to-dismiss-1.pdf”]

Noting the similarity between the language of Section 285 of the Patent Act, the Fifth Circuit extends Octane Fitness to cover Section 1117(a) of the Lanham Act as to what constittutes an exceptional case for purposes of awarding attorney’s fees. Departing from the standard that ‘exceptional’ means a case that is brought in bad faith,…