Nespresso-Capsules

Nike had an endorsement contract with Boris Berian, a middle-distance track star who is expected to make the US Olympic team. Nike had a right of first refusal with regard to new agreements. Berian presented an offer from rival footwear manufacturer, New Balance. There is a dispute as to whether Nike matched New Balance’s offer, and therefore whether the Nike contract is still in effect.

There is also a dispute as to whether Berian is presently endorsing New Balance. He alleges that he is not under contract with New Balance now, but Berian has been wearing New Balance footwear at recent events. He allegedly has been promoting NEW BALANCE via his social media accounts (for example, using a #nbrunning hashtag).

The U.S. Olympic Team Trials are in July, and the Rio Olympics in August, so Nike is seeking urgent relief.

I’m curious as to the exact relief requested. I can think of three different possible elements of a proposed injunction:

1. That Berian can’t endorse New Balance
2. That Berian can’t wear New Balance
3. That Berian must wear Nike

The attached motion refers to a draft TRO but I couldn’t find one in the docket. The motion states: ‘at a minimum, therefore, defendant is barred from entering an endorsement contract with New Balance.’ In the complaint, Nike requested that Berian be enjoined from ‘competing in or otherwise endorsing any Nike competitor’s product (including but not limited to, footwear and apparel). So Nike is equating an athlete competing in footwear with endorsing that footwear.

Just for the sake of argument – considering the arising from Berian merely competing in New Balance (apart from social media references and the like), how is that harm different from (as in more irreparable than) that caused to Nike by every other athlete who doesn’t wear Nike?

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Sweet People Apparel v Saza Jeans, 14-1143-DMG (CD Cal May 25, 2016). Individual attorneys had been sanctioned under Rule 11/37 for ‘evasive or incomplete discovery’ (discovery docs had been redacted without proper indicia as such). Order of sanctions amended in absence of indication that trial counsel were personally responsible; law firm bears responsibility for ‘making it clear . . . that this is an impermissible practice and to urge care safeguarding against it”

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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, deliberate or willful’ infringement.

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

Ninth Circuit second factor:

second, only so much of the mark or marks may be used as is reasonably necessary to identify the product or service;

Second Circuit second factor:

(2) whether the defendant uses only so much of the plaintiff’s mark as is necessary to identify the product or service;

Ninth Circuit third factor:

third, the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.

Second Circuit third factor:

(3) whether the defendant did anything that would, in conjunction with the mark, suggest sponsorship or endorsement by the plaintiff holder, that is, whether the defendant’s conduct or language reflects the true or accurate relationship between plaintiff’s and defendant’s products or services.

What are the differences and significances thereof? OK, pencils down.

Here’s Prof. Goldman’s sample answer.

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 the product or service; and

3. whether the defendant did anything that would, in conjunction with the mark, suggest sponsorship or endorsement by the plaintiff holder, that is, whether the defendant’s conduct or language reflects the true or accurate relationship between plaintiff’s and defendant’s products or services.

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