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:

moldex v mckeon 9th circuit


Conner Inn Birkens and NFT

Good video explainer:


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


Quinn Emmanuel guide



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




Nifty Gateway


NFT Explainers

Defiant guide to NFTs:

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


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

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

48th Restaurant Associates LLC v. Avra Hospitality LLC et al
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

Panavision Int’l, L.P. v. Toeppen, 141 F.3d 1316, 46 U.S.P.Q.2d (BNA) 1511 (9th Cir. 1998)

This case was brought before there was either ACPA or the UDRP. Toeppen obtained domains reflecting the trademarks of third parties such as and,, and  In the case of Panavision, he displayed an image of Pana, Illinois (a vision of Pana). He argued that he was not making trademark use in a way that would infringe Panavision’s rights.

The Ninth Circuit held that Toeppen’s attempts to sell the domain names constituted use in commerce, which use diluted Panavision’s famous trademarks.

This case may be th of as a stop-gap measure against cybersquatting, as there was no effective federal statute directly on point, at that time. ACPA and the UDRP were approximately one year away. Professor McCarthy noted that dilution is targeted at use of a trademark that dilutes plaintiff’s mark – not activity that prevents plaintiff’s use in a specific mode (e.g. on the internet) or otherwise extorts value from the plaintiff. The dilution domain name cases resulted in several questionable holdings with regard to fame of the plaintiff’s marks.

Text of Panavision v Toeppen, 141 F.3d 1316 (9th Cir 1998)


We continue our Forward into the Past reconnoiter of Internet law with Zippo dot com, a WD of Pennsylvania decision which seemed to authoritatively resolve the question of what is the proper test for evaluating whether a defendant’s contacts with a forum over the internet are sufficient for asserting specific jurisdiction over that defendant.

The three-part active-to-passive Zippo Dot Com sliding scale:

“At one end of the spectrum are situations where a defendant clearly does business over the Internet, an active website.” . .  “If the defendant enters into contracts with residents of a foreign jurisdiction that involve the knowing and repeated transmission of computer files over the Internet, then personal jurisdiction is proper.”

“At the opposite end are situations where a defendant has simply posted information on an Internet website which is accessible to users in foreign jurisdictions.” . . .  “A passive website that does little more than make information available to those who are interested in it is not grounds for the exercise of personal jurisdiction.”

“The middle ground is occupied by interactive websites where a user can exchange information with the host computer.”. . . “In these cases, the exercise of jurisdiction is determined by examining the level of interactivity and commercial nature of the exchange of information that occurs on the website.”

Link to text of decision in Zippo Mfg v Zippo Dot Com

Wikipedia’s Personal Jurisdiction on the Internet Page


Forward into the past – reconnoitering the golden oldies of Internet law:

From the Wikipedia entry on Bensusan v King:

Bensusan Restaurant Corp. v. King,[1] 126 F.3d 25, is a 1997 United States Court of Appeals for the Second Circuit case that helped define the parameters of personal jurisdiction in the Internet context, specifically for passive websites that only advertise local services. The opinion, written by Judge Ellsworth Van Graafeiland, affirmed the United States District Court for the Southern District of New York‘s holding that defendant Richard B. King’s Internet website did not satisfy New York’s long-arm statute requirements for plaintiff Bensusan Restaurant Corporation to bring a trademark infringement suit in New York. The District Court’s decision also likened creating a website to merely placing a product into the stream of commerce, and held that such an act was insufficient to satisfy due process and personal jurisdiction requirements

Link to 2d Circuit decision in Bensusan v King