Text of order in Hermes v Rothschild denying motion to dismiss (opinion to issue in due course): hermes v rothschild order denying prelim
CIPLA CLE: NFTs, the Metaverse, and Handbags
CIPLA – New Haven, Connecticut: March 30, 2022
Slides:
ARTISTIC RELEVANCE DECISIONS
Trademark Reporter surveying artistic relevance/ Rogers decisions
TrademarkBlog links to Rogers test decisions
INTA Amicus brief in Bad Spaniels Bad Spaniels -Amicus-Curiae-Brief-of-the-International-Trademark-Association-in-Support-of-Petitioner Bad Spaniels -Amicus-Curiae-Brief-of-the-International-Trademark-Association-in-Support-of-Petitioner
Law Professors amicus brief in Bad Spaniels Prof Tushnet amicus bad spaniels cert
SDNY case on Artistic Relevance: AM General v Activision (call of duty): am general v activision sdny call of duty
Article discussing Bad Spaniels
Discussion of Wild America case – D Colorado modifies the Rogers Test
NFT LEGAL EXPLAINER
NFT LAWSUITS
Hermes v Rothschild re METABIRKENS
Defendant Rothschild’s memo of law in support of motion to dismiss hermes def memo of law iso mtd
Sotheby’s Guide to the top 10 Birkins
Nike v StockX complaint: nike v stockx nft complaint sdny
NFT OPEN MARKETPLACES
NFT Explainers
Text of complaint in McKimmy v OpenSea (theft of NFTs)
adidas America, Inc. v. Skechers USA, Inc., No. 16-35204 (9th Cir. 2018) – Irreparable Harm standard for preliminary injunctions – trade dress in sneakers
Aidadas v Skechers
Skechers challenged the district court’s issuance of a preliminary injunction prohibiting it from selling shoes that allegedly infringe and dilute adidas America, Inc.’s Stan Smith trade dress and Three-Stripe trademark. The panel affirmed in part, holding that the district court did not abuse its discretion in issuing the preliminary injunction as to adidas’s claim that Skechers’s Onix shoe infringes on adidas’s unregistered trade dress of its Stan Smith shoe. However, the panel reversed in part, holding that the district court erred in issuing a preliminary injunction as to adidas’s claim that Skechers’s Cross Court shoe infringes and dilutes its Three-Stripe mark.
Court Description: Lanham Act / Preliminary Injunction. The panel affirmed in part and reversed in part the district court’s preliminary injunction prohibiting Skechers USA, Inc., from selling shoes that allegedly infringe and dilute adidas America, Inc.’s Stan Smith trade dress and Three-Stripe mark. Affirming in part, the panel held that the district court did not abuse its discretion in issuing the preliminary injunction as to adidas’s claim the Skechers’s Onix shoe infringed on adidas’s unregistered trade dress of its Stan Smith shoe. The panel concluded that adidas was likely to succeed on the merits of this claim because the trade dress was nonfunctional, the trade dress had acquired secondary meaning, and there was a substantial likelihood of confusion between the parties’ products. In addition, the district court did not clearly err in finding a likelihood of irreparable harm to the Stan Smith. Reversing in part, the panel held that the district court erred in issuing a preliminary injunction as to adidas’s claim that Skechers’s Cross Court shoe infringed and diluted its Three-Stripe mark. The panel held that the district court did not err in finding that adidas showed a likelihood of success on its trademark infringement and trademark dilution claims. Nonetheless, the district court abused its discretion in issuing
Text of adidas v Skechers: adidas v skechers stan smith 9th cir
Moldex-Metric, Inc. v. McKeon Products, Inc., No. 16-55548 (9th Cir. 2018) – Functionality of color of ear plugs
Moldex-Metric, Inc. v. McKeon Products, Inc., No. 16-55548 (9th Cir. 2018)
Link to ad for Moldex earplugs
Justia: The Ninth Circuit reversed the district court’s grant of summary judgment for McKeon in a trademark infringement action alleging that McKeon’s green ear plugs infringed Moldex’s green earplugs. The panel held that the existence or nonexistence of alternative designs was probative of functionality or nonfunctionality, and thus evidence of alternative colors must be considered in deciding the functionality of Moldex’s mark. The panel held that there was a material dispute of material facts as to whether Moldex’s bright green color earplugs was functional. Therefore, the panel remanded for the district court to consider McKeon’s arguments both that Moldex’s green color lacked secondary meaning and that there was no likelihood of confusion, and then if necessary go to trial.
Text of decision in Moldex-Metric v McKeon:
NFTs – SDNY – Hermes v Rothschild: Defendant’s Memo of Law in support of Motion to Dismiss
Defendant Rothschild’s memo of law in support of motion to dismiss hermes def memo of law iso mtd
NFTs, Trademarks, and Artistic Relevance – slides and links
SLIDES FOR THE PRESENTATION:
Good video explainer:
ARTISTIC RELEVANCE DECISIONS
Trademark Reporter surveying artistic relevance/ Rogers decisions
TrademarkBlog links to Rogers test decisions
INTA Amicus brief in Bad Spaniels Bad Spaniels -Amicus-Curiae-Brief-of-the-International-Trademark-Association-in-Support-of-Petitioner Bad Spaniels -Amicus-Curiae-Brief-of-the-International-Trademark-Association-in-Support-of-Petitioner
Law Professors amicus brief in Bad Spaniels Prof Tushnet amicus bad spaniels cert
SDNY case on Artistic Relevance: AM General v Activision (call of duty): am general v activision sdny call of duty
Article discussing Bad Spaniels
Discussion of Wild America case – D Colorado modifies the Rogers Test
NFT LEGAL EXPLAINER
NFT LAWSUITS
Hermes v Rothschild re METABIRKENS
Defendant Rothschild’s memo of law in support of motion to dismiss hermes def memo of law iso mtd
Sotheby’s Guide to the top 10 Birkins
Nike v StockX complaint: nike v stockx nft complaint sdny
NFT OPEN MARKETPLACES
NFT Explainers
Beginner’s guide to minting NFTs
Text of the Satoshi White Paper: satoshi white paper
What Critics Don’t Understand About NFTs
NFTs Weren’t Supposed to End Like This
2d Circuit – JLM v Hailey Paige Gutman – Who owns a social media account? We don’t know yet
JLM Couture v Hailey Paige Gutman:
Second Circuit decision involving an intellectual property dispute between a high-profile influencer and her business partner.
Hayley Paige is a bridal gown designer. She sold her business several years ago to JLM and in so doing assigned rights in her name – she allowed the business to register her name as a trademark (meaning that the transaction was more than a mere license).
The relationship went sour and Paige resigned. The parties are now fighting over control and ownership of certain social media accounts created during the pendency of Ms. Paige’s relationship with JLM. From the decision:
“These Disputed Accounts, especially the Instagram account, are valuable assets. As of January 2022, the Instagram account had over a million followers (@misshayleypaige). Control over the account comes with direct access to those followers and opportunities to monetize it. By one expert’s appraisal, a single post on the account, on average, is worth nearly $30,000.”
In this instance, the contracts between the parties seemed pretty clear that Ms. Paige, once she resigned, would not be able to use her name in connection with promoting goods and services for the duration of the contracts – and Ms. Paige may not use the social media accounts to do so. However the court seemed to struggle with how it would ultimately decide ownership of the accounts in question, and reversed an order that Ms. Paige hand over control of the accounts to JLM for the duration of the dispute. She can now, in theory, use the disputed accounts for personal purposes
This case presents the (not original) questions that arise when an individual ‘sells their name’ to a business. A while back the designer Joseph Abboud was sued when he started a business under his name when he had sold his original line (he wound up calling his new business JA Apparel). However, here, the court signaled this new sort of asset – the social media account – raises new questions when the account is in a sense shared between an individual and a business.
This case suggests that when an influencer enters into a contractual relationship with a partner, an employer, or even with their own business, there needs to be very precise drafting as to who owns what, and who will own what if the relationship fails – and who will retain trademark rights at that time.
Text of JLM v Hailey Paige Gutman: jlm v hailey paige 2d circuit
SDNY: Klausner v Annies: non-functional slack-fill packaging class action dismissed
Class action targeting non-functional slack-fill, also known as empty space, in Annie’s Fruit Snacks, dismissed. There were no allegations that the packaging was deceptive with regard to the weight of the snacks – and thus the slack-fill was not materially misleading.
Media coverage of original complaint in Klausner v Annies here.
Background on slack-fill here.
Truth in advertising class-action tracker.
Text of Klausner v Annie’s: sdny kausner v annies slack fill gbl 349
SDNY: 48th v Avra: No personal jurisdiction in NY over Connecticut resort w/ NY customers
48th Restaurant Associates LLC v. Avra Hospitality LLC et al
Date: January 24, 2022
Docket Number: 1:2019cv07708
Date: January 24, 2022
Docket Number: 1:2019cv07708
Defendant is headquartered in Minnesota. It operates restaurants and resorts. One resort is in Connecticut. Defendant’s website is accessible in NY.
“However, as the Second Circuit has explained, “[w]hile analyzing a defendant’s conduct under the Zippo sliding scale of interactivity may help frame the jurisdictional inquiry in some cases, . . . traditional statutory and constitutional principles remain the touchstone of the inquiry.” Best Van Lines, 490 F.3d at 252 . . . In other words, a court need not embark on a Zippo-like interactivity analysis if it can understand the basis for personal jurisdiction through traditional statutory and constitutional principles alone. . . .
The CT Inn may “regularly attract[] visitors from New York,” (Compl. ¶ 50), but merely doing business with New Yorkers cannot lead to personal jurisdiction under Walden.”
Text of 48th Restaurant Associates v Avra Hospitality: sdny 48 v avra personal jurisdiction