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From our continuing series of trademark cases involving garnishes, here is a memo of law from the owner of the SCALA mark for giardiniera, a pepper-based sauce for meatball and sausage sandwiches. Plaintiff believes that it terminated defendant as licensee. Defendant states on its website that it purchased the giardiniera business from plaintiff.
Memo Tro Scala License Termination

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Aurora, seller of YOOHOO AND FRIENDS plush dolls sues Ty, maker of BEANIE BOOS plush dolls for copyright and trade dress infringement, regardnig dolls that have crossed eyes, big pupils and colored irises.
The photograph of the Beanie Boos was taken by Sondra Schlossberg.
Memo Yoohoo v Beanie Boo Copyright Trade Dress

This is a complaint Philip Morris brought against six grocery stores and ten John Does, for selling counterfeit cigarettes. What’s interesting is how the Court will handle the joinder of these defendants – I did not see allegations in the complaint of any sort of connection between them (apart from the allegation that they all sell counterfeit cigarettes).
Complaint Philip Morris Counterfeit

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The US Polo Association and Ralph Lauren have been fighting since 1984 over logos using the word POLO and depicting horses. The background of the this dispute is set out below in the Polo Association’s complaint in a new declaratory judgement action.
Noting the success of the Polo Association’s licensing program, I will be reaching out to the governing body of water polo, in the hopes of securing a license. I would like to update the logo, perhaps to include ponies (yes, that’s a Billy Wilder reference).
Complaint DJ Polo v Polo

I think this is an unusual decision, so if you know of similar ones, please send them along. A Southern District of New York court last week denied reconsideration of its refusal to dismiss a 43(a) false advertising claim arising from activities in Germany. In so doing it adopted an expansive view of the reach of the false advertising provisions of the Lanham Act and of what constitutes ‘commerce’ under the Act (matched by, in my view, few other cases, most notably the Casino du Monte Carlo decision from the Fourth Circuit).
The three prong Vanity Fair test is the well-settled test in this circuit determining whether the Lanham Act can be applied to activities abroad (234 F.2d 633 (2d Cir 1956).
1. Is there a substantial affect on US commerce;
2. Is there a US defendant;
3. Is there no conflict with the substantive law of the non-US jursidiction affected.
So, for example, a US company sold PENNSYLVANIA cream cheese in Bolivia, and Kraft (owner of the PHILADELPHIA cream cheese mark) sued the US company here (necessitating an evaluation by the US court as to how Bolivian law would handle the matter).
AFAIK, the doctrine tends to be applied, for the most part, to trademark infringement cases relating to goods, but that’s only as far as I know. There was a 43(a) case a while back involving basketballs, but I think the non-US portion was trimmed from the case.
Now, the doctrine has been applied, to services, under a 43(a) false advertising case. In NewMarkets v Oppenheim, decision below, Plaintiff contracted with Defendant to form an investment fund. Defendant allegedly circulated the prospectus of a competing fund in Germany falsely stating that plaintiff would manage that fund. Plaintiff sued here, alleging, among other causes, 43(a) false advertising. Court applies Vanity Fair test and determines it will exercise subject matter jurisdiction. Defendant moves for reconsideration saying that use in Germany is not use in commerce, and court denies motion (see text of decision at bottom), holding that the Vanity Fair test determines what is and what is not commerce regulated by Congress.
Some background here and here.
Decision Extra-territorial Jurisdiction Lanham Act
Decision Reconsideration Extra-territorial

Plaintiff, movie distributor (The Weinstein Company), attempts to obtain exclusive license to distribute movie. It emails producer “We confirm that we accept your offer.” Producer immediately emails back “we’re going over the terms, we’ll get back to you.” (my paraphrase). Then producer does the deal with a different distributor. Distributor attempts to argue either (1) exclusive license created by oral communications, or (2) emails constitute written contract.
Held: The oral communications can’t create a binding transfer of an exclusive copyright license as there has to be a signed writing, as per the statute of frauds in the Copyright Act. The emails don’t create a transfer as defendant clearly and immediately indicated that it was not yet willing to enter into the contract.
Bonus footnote 4: Defendant argued that plaintiff couldn’t make the ‘oral transfer’ argument as it had taken a contrary legal position in another lawsuit. Held: ‘Judicial Estoppel’ exists not when a party argues a certain position in another proceeding but when a tribunal adopts that position.
Decision Twc Oral Copyright