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Articles by Ira Sacks
The Supreme Court Limits the Extraterritorial Application of the Lanham Act | JD Supra
On June 29, 2023, the Supreme Court in Abitron Austria GmbH v. Hetronic International, Inc., limited the extraterritorial reach of the Lanham Act. The majority opinion was written by Justice Alito and joined by Justices Thomas, Gorsuch, Jackson, and Kavanaugh. Justice Jackson wrote a separate concurring opinion. Four Justices – Sotomayor, Roberts, Kagan, and Barrett – concurred in the judgment but disagreed with the scope of the limits on extraterritoriality.
The Supreme Court Limits the Extraterritorial Application of the Lanham Act
On June 29, 2023, the Supreme Court in Abitron Austria GmbH v. Hetronic International, Inc., limited the extraterritorial reach of the Lanham Act. The majority opinion was written by Justice Alito and joined by Justices Thomas, Gorsuch, Jackson, and Kavanaugh. Justice Jackson wrote a separate concurring opinion. Four Justices – Sotomayor, Roberts, Kagan, and Barrett – concurred in the judgment but disagreed with the scope of the limits on extraterritoriality.
The Supreme Court Limits the Extraterritorial Application of the Lanham Act
On June 29, 2023, the Supreme Court in Abitron Austria GmbH v. Hetronic International, Inc., limited the extraterritorial reach of the Lanham Act. The majority opinion was written by Justice Alito and joined by Justices Thomas, Gorsuch, Jackson, and Kavanaugh. Justice Jackson wrote a separate concurring opinion. Four Justices – Sotomayor, Roberts, Kagan, and Barrett – concurred in the judgment but disagreed with the scope of the limits on extraterritoriality.
Not Funny! Unanimous SCOTUS in Jack Daniel’s v. VIP Holds That Parody Does Not Implicate First Amendment Concerns, But Only Implicates Likelihood of Confusion | Akerman LLP - Marks, Works & Secrets - JDSupra
On June 8, 2023, the Supreme Court unanimously decided the trademark parody case captioned Jack Daniel’s Properties, Inc. v. VIP Products LLC in favor of Jack Daniel’s, and against the dog toy manufacturer and serial parodist VIP Products. 599 U. S. ____ (2023) (hereinafter “Slip Op.”). The Court made plain that using a senior user’s trademark as a trademark in a parody does not implicate First Amendment concerns.
Not Funny! Unanimous SCOTUS in Jack Daniel’s v. VIP Holds That Parody Does Not Implicate First Amendment Concerns, But Only Implicates Likelihood of Confusion
On June 8, 2023, the Supreme Court unanimously decided the trademark parody case captioned Jack Daniel’s Properties, Inc. v. VIP Products LLC in favor of Jack Daniel’s, and against the dog toy manufacturer and serial parodist VIP Products. 599 U. S. ____ (2023) (hereinafter “Slip Op.”). The Court made plain that using a senior user’s trademark as a trademark in a parody does not implicate First Amendment concerns.
Not Funny! Unanimous SCOTUS in Jack Daniel’s v. VIP Holds That Parody Does Not Implicate First Amendment Concerns, But Only Implicates Likelihood of Confusion
On June 8, 2023, the Supreme Court unanimously decided the trademark parody case captioned Jack Daniel’s Properties, Inc. v. VIP Products LLC in favor of Jack Daniel’s, and against the dog toy manufacturer and serial parodist VIP Products. 599 U. S. ____ (2023) (hereinafter “Slip Op.”). The Court made plain that using a senior user’s trademark as a trademark in a parody does not implicate First Amendment concerns.
SCOTUS: Social Media Companies Not Liable For Aiding And Abetting ISIS | JD Supra
In Twitter, Inc. v.
SCOTUS: Social Media Companies Not Liable For Aiding And Abetting ISIS
In Twitter, Inc. v.
SCOTUS: Social Media Companies Not Liable For Aiding And Abetting ISIS
In Twitter, Inc. v.
Does Transformative Matter? No, At Least Where Use Is Commercial | JD Supra
Art. Money. Copyright. Fair use. Andy Warhol. And Prince, the Purple One. (Or in this case, Orange.) These were the hot topics in the recently decided Supreme Court case of Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith et al., 598 U.S. ____ (2023) (Citations are to the Slip Opinion (“Slip Op.”)). Money and copyright won by a 7-2 majority. Warhol and his Foundation’s claim of fair use lost. Prince was unaffected, may he rest in purple peace.
Does Transformative Matter? No, At Least Where Use Is Commercial
Art. Money. Copyright. Fair use. Andy Warhol. And Prince, the Purple One. (Or in this case, Orange.) These were the hot topics in the recently decided Supreme Court case of Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith et al., 598 U.S. ____ (2023) (Citations are to the Slip Opinion (“Slip Op.”)). Money and copyright won by a 7-2 majority. Warhol and his Foundation’s claim of fair use lost. Prince was unaffected, may he rest in purple peace.
Does Transformative Matter? No, At Least Where Use Is Commercial
Art. Money. Copyright. Fair use. Andy Warhol. And Prince, the Purple One. (Or in this case, Orange.) These were the hot topics in the recently decided Supreme Court case of Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith et al., 598 U.S. ____ (2023) (Citations are to the Slip Opinion (“Slip Op.”)). Money and copyright won by a 7-2 majority. Warhol and his Foundation’s claim of fair use lost. Prince was unaffected, may he rest in purple peace.
Does Transformative Matter? No, At Least Where Use Is Commercial
Art. Money. Copyright. Fair use. Andy Warhol. And Prince, the Purple One. (Or in this case, Orange.) These were the hot topics in the recently decided Supreme Court case of Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith et al., 598 U.S. ____ (2023) (Citations are to the Slip Opinion (“Slip Op.”)). Money and copyright won by a 7-2 majority. Warhol and his Foundation’s claim of fair use lost. Prince was unaffected, may he rest in purple peace.
SCOTUS Oral Arguments in Abitron v. Hetronic: Extraterritorial Reach of Lanham Act | JD Supra
On March 31, 2023, the Supreme Court heard arguments in Abitron Austria GmbH v. Hetronic International, Inc., where at issue is whether the Tenth Circuit erred in applying the Lanham Act extraterritorially to Abitron’s foreign sales, including purely foreign sales that never reached the United States, as more fully described in our previous blog. Abitron argued that the Lanham Act does not apply to trademark infringement outside the United States, especially to foreign defendants like Abitron.
SCOTUS Oral Arguments in Abitron v. Hetronic: Extraterritorial Reach of Lanham Act
On March 31, 2023, the Supreme Court heard arguments in Abitron Austria GmbH v. Hetronic International, Inc., where at issue is whether the Tenth Circuit erred in applying the Lanham Act extraterritorially to Abitron’s foreign sales, including purely foreign sales that never reached the United States, as more fully described in our previous blog. Abitron argued that the Lanham Act does not apply to trademark infringement outside the United States, especially to foreign defendants like Abitron.
SCOTUS Oral Arguments in Abitron v. Hetronic: Extraterritorial Reach of Lanham Act
On March 31, 2023, the Supreme Court heard arguments in Abitron Austria GmbH v. Hetronic International, Inc.,where at issueis whether the Tenth Circuit erred in applying the Lanham Act extraterritorially to Abitron’s foreign sales, including purely foreign sales that never reached the United States, as more fully described in our previous blog. Abitron argued that the Lanham Act does not apply to trademark infringement outside the United States, especially to foreign defendants like Abitron.
Cert. Granted in Abitron to Clarify Boundaries for Extraterritorial Application of Lanham Act | JD Supra
In Abitron Austria GmbH v. Hetronic International, Inc., Oklahoma-based Hetronic, maker of radio remote controls for heavy-duty construction equipment, sued its former distributor Abitron (from Austria) for selling copycat products, as illustrated below. The district court found that Abitron had willfully infringed the Hetronic mark. Despite the fact that 97% of the infringing sales were made in Europe, the court awarded Hetronic $90 million in damages. Abitron appealed to the Tenth Circuit.
Cert. Granted in Abitron to Clarify Boundaries for Extraterritorial Application of Lanham Act
In Abitron Austria GmbH v. Hetronic International, Inc., Oklahoma-based Hetronic, maker of radio remote controls for heavy-duty construction equipment, sued its former distributor Abitron (from Austria) for selling copycat products, as illustrated below. The district court found that Abitron had willfully infringed the Hetronic mark. Despite the fact that 97% of the infringing sales were made in Europe, the court awarded Hetronic $90 million in damages. Abitron appealed to the Tenth Circuit.
Cert. Granted in Abitron to Clarify Boundaries for Extraterritorial Application of Lanham Act
In Abitron Austria GmbH v. Hetronic International, Inc., Oklahoma-based Hetronic, maker of radio remote controls for heavy-duty construction equipment, sued its former distributor Abitron (from Austria) for selling copycat products, as illustrated below. The district court found that Abitron had willfully infringed the Hetronic mark. Despite the fact that 97% of the infringing sales were made in Europe, the court awarded Hetronic $90 million in damages. Abitron appealed to the Tenth Circuit.
Does Anyone Here Have A Sense Of Humor, Redux: Jack Daniel’s v. VIP Oral Argument | JD Supra
On March 22, 2023, the Supreme Court heard oral argument in the trademark parody case captioned Jack Daniel’s Properties, Inc. v. VIP Products LLC. As we previously blogged, the issues presented in the care are: 1. Whether humorous use of another’s trademark as one’s own on a commercial product is subject to the Lanham Act’s traditional likelihood-of-confusion analysis, or instead receives heightened First Amendment protection from trademark infringement claims. 2.
Does Anyone Here Have A Sense Of Humor, Redux: Jack Daniel’s v. VIP Oral Argument
On March 22, 2023, the Supreme Court heard oral argument in the trademark parody case captioned Jack Daniel’s Properties, Inc. v. VIP Products LLC. As we previously blogged, the issues presented in the care are: 1. Whether humorous use of another’s trademark as one’s own on a commercial product is subject to the Lanham Act’s traditional likelihood-of-confusion analysis, or instead receives heightened First Amendment protection from trademark infringement claims. 2.
Does Anyone Here Have A Sense Of Humor, Redux: Jack Daniel’s v. VIP Oral Argument
On March 22, 2023, the Supreme Court heard oral argument in the trademark parody case captioned Jack Daniel’s Properties, Inc. v. VIP Products LLC. As we previously blogged, the issues presented in the care are: 1. Whether humorous use of another’s trademark as one’s own on a commercial product is subject to the Lanham Act’s traditional likelihood-of-confusion analysis, or instead receives heightened First Amendment protection from trademark infringement claims. 2.
Certiorari Granted to Jack Daniel’s with Respect to Parody Dog Toy: Does Anyone Here Have a Sense of Humor, and Does it Matter? | JD Supra
On November 21, 2022, the Supreme Court granted certiorari on the following questions described in Jack Daniel’s petition: The questions presented are: 1. Whether humorous use of another’s trademark as one’s own on a commercial product is subject to the Lanham Act’s traditional likelihood-of-confusion analysis, or instead receives heightened First Amendment protection from trademark-infringement claims. 2.
IP: Certiorari Granted to Jack Daniel’s with Respect to Parody Dog Toy: Does Anyone Here Have a Sense of Humor, and Does it Matter?
January 20, 2023 By Ira S. Sacks On November 21, 2022, the Supreme Court granted certiorari on the following questions described in Jack Daniel’s petition: "Respondent VIP Products LLC markets and sells dog toys that trade on the brand recognition of famous companies such as petitioner Jack Daniel’s Properties, Inc.
TTAB Sustains WIRED Magazine’s § 2(d) Objection to Application to Register “WIRED” As A Mark for Clothing, But Not for Fitness Services | JD Supra
The Trademark Trial and Appeal Board (“TTAB”) sustained the objection of the publisher of the tech magazine WIRED (“Opposer”) to an Applicant’s (“Applicant”) bid to register the term “WIRED” for clothing but rejected its objection for fitness-related services. The Applicant sought registration for WIRED marks for fitness-related services and athletic clothing.
TTAB Rains on ‘Purple Rain’ Energy Drink Trademark Application | JD Supra
On August 23, 2022, the Trademark Trial and Appeal Board (“TTAB”) rejected on summary judgment JHO Intellectual Property Holdings’ (“Applicant”) application to register the mark “PURPLE RAIN” for a variety of nutritional supplements, dietary drinks, and energy bars (collectively, “Applicant’s Goods”). The TTAB found that the proposed mark falsely suggested a connection with the famous musician Prince.
Municipal Takedown: TTAB Refuses to Register the County of Orange Logos | JD Supra
The Trademark Trial & Appeal Board (“TTAB”) affirmed the US Patent & Trademark Office’s (“PTO”) refusal to register two different logo marks filed by California’s County of Orange (“County”) on the ground that they constitute insignia of a municipality. In 2017, the County applied to register two logo marks. The application described one mark as “a circle with the image of three oranges in front of an orange grove and . . . mountains with the words ‘COUNTY OF ORANGE’ . . . and . . . ‘CALIFORNIA’ . . .
Municipal Takedown: TTAB Refuses to Register the County of Orange Logos
The Trademark Trial & Appeal Board (“TTAB”) affirmed the US Patent & Trademark Office’s (“PTO”) refusal to register two different logo marks filed by California’s County of Orange (“County”) on the ground that they constitute insignia of a municipality. In 2017, the County applied to register two logo marks. The application described one mark as “a circle with the image of three oranges in front of an orange grove and . . . mountains with the words ‘COUNTY OF ORANGE’ . . . and . . . ‘CALIFORNIA’ . . .
If Warhol Isn't Transformative, Redux, In The Supreme Court
United States: If Warhol Isn't Transformative, Redux, In The Supreme Court 08 April 2022 by Ira S. Sacks and Evelina Gentry Akerman LLP On March 25, 2022, the Supreme Court agreed to consider whether Andy Warhol's "Prince Series" sufficiently transforms Lynn Goldsmith's 1981 photograph of Prince (the Photograph) to qualify for the Copyright Act's fair use defense.
If Warhol Isn’t Transformative, Redux, In The Supreme Court | JD Supra
On March 25, 2022, the Supreme Court agreed to consider whether Andy Warhol’s “Prince Series” sufficiently transforms Lynn Goldsmith’s 1981 photograph of Prince (the “Photograph”) to qualify for the Copyright Act’s fair use defense. As discussed in detail in our prior blog, at issue in this case is a series of silkscreen prints created by Andy Warhol based on Lynn Goldsmith’s Photograph, in which she holds a registered copyright. In 2017, The Andy Warhol Foundation for the Visual Arts, Inc.
If Warhol Isn’t Transformative, Redux, In The Supreme Court
On March 25, 2022, the Supreme Court agreed to consider whether Andy Warhol’s “Prince Series” sufficiently transforms Lynn Goldsmith’s 1981 photograph of Prince (the “Photograph”) to qualify for the Copyright Act’s fair use defense. As discussed in detail in our prior blog, at issue in this case is a series of silkscreen prints created by Andy Warhol based on Lynn Goldsmith’s Photograph, in which she holds a registered copyright. In 2017, The Andy Warhol Foundation for the Visual Arts, Inc.
The Third Circuit Limits Preclusive Effect of the TTAB Rulings | JD Supra
On September 17, 2021, the Third Circuit held in Beasley v. Howard that trademark cancellation proceedings before the Trademark Trial and Appeal Board (“TTAB”) do not have claim preclusive effect against trademark infringement lawsuits in federal district courts because of the TTAB’s limited jurisdiction.
If Warhol Isn’t Transformative, Who (or What) Is? The Second Circuit Finds Andy Warhol’s Prince Series Not Fair Use | JD Supra
On March 26, 2021, the Second Circuit reversed a 2019 district court ruling and held that Andy Warhol’s “Prince Series” did not qualify as fair use of Lynn Goldsmith’s 1981 photograph of Prince (the “Photograph”). The Court further concluded that the Prince Series works are substantially similar to the Goldsmith Photograph as a matter of law. At issue in this case is a series of prints created by Andy Warhol based on Lynn Goldsmith’s Photograph, below, in which she holds a registered copyright.
What’s in a Name: SDNY Grants Preliminary Injunction Enforcing Contractual Bar Against Designer’s Use of Her Own Name | JD Supra
In a fifty-seven-page memorandum opinion and order, the United States District Court for the Southern District of New York granted a fashion brand its motion for a preliminary injunction preventing its lead designer from using her given name commercially and on her social media accounts. JLM Couture, Inc. v. Hayley Paige Gutman, 20-CV-10575-LTS-SLC (S.D.N.Y. 2021), enforcing the terms of an employment agreement.
What’s in a Name: SDNY Grants Preliminary Injunction Enforcing Contractual Bar Against Designer’s Use of Her Own Name
In a fifty-seven-page memorandum opinion and order, the United States District Court for the Southern District of New York granted a fashion brand its motion for a preliminary injunction preventing its lead designer from using her given name commercially and on her social media accounts. JLM Couture, Inc. v. Hayley Paige Gutman, 20-CV-10575-LTS-SLC (S.D.N.Y. 2021), enforcing the terms of an employment agreement.
Not All Domain Names Are Registrable, Even After Booking.com | JD Supra
The question of whether a generic term combined with the .com gTLD extension could serve as a trademark was settled last July, when the U.S. Supreme Court ruled that the proposed trademark could not automatically be deemed to be generic, but could be registrable if consumers perceived the mark as a source identifier. USPTO v. Booking.com B.V., ___ US ___, 141 S. Ct. 187, 207 L. Ed. 2d 1113 (2020)) (blogged here).
Not All Domain Names Are Registrable, Even After Booking.com
The question of whether a generic term combined with the .com gTLD extension could serve as a trademark was settled last July, when the U.S. Supreme Court ruled that the proposed trademark <booking.com> could not automatically be deemed to be generic, but could be registrable if consumers perceived the mark as a source identifier. USPTO v. Booking.com B.V., ___ US ___, 141 S. Ct. 187, 207 L. Ed. 2d 1113 (2020)) (blogged here).
Proud to Be an American God Bless The USA, But Not Functioning as A Trademark | JD Supra
In a precedential decision, the United States Patent and Trademark Office, Trademark Trial and Appeal Board (the “Board”) affirmed the refusal to register the trademark GOD BLESS THE USA for home decor items on the ground that it failed to function as a trademark.[1] Additionally, the Board affirmed the Trademark Examining Attorney’s refusal to accept the Applicant’s request to amend its trademark to THE LEE GREENWOOD COLLECTION GOD BLESS THE USA on the ground that it was a material...
Slogans As Marks: When Does a Slogan Function as a Mark | JD Supra
Slogans can, but do not always, function as trademarks. To be sure, the United States Patent and Trademark Office (“USPTO”) frequently allows slogans such as JUST DO IT! or QUALITY THROUGH CRAFTSMANSHIP, among many others, to be registered as trademarks. However, the USPTO’s recent trend has been to deny registration to slogans on the ground they fail to function as a mark, because they are informational.
Lehman Brothers is Gone but Not Abandoned | JD Supra
On September 30, 2020, the Trademark Trial and Appeal Board ruled in favor of the assignee of the famous LEHMAN BROTHERS trademark against the registration that mark as a brand name for beer, spirits, and bar and restaurant services, finding that the LEHMAN BROTHERS mark had not been abandoned. Barclays Capital, Inc. v. Tiger Lily Ventures, Ltd. (TTAB, September 30, 2020, non-precedential).
Genericness is in the Eye of the Beholder, i.e., the Public: BOOKING.COM is a Protectable Trademark | JD Supra
On June 30, 2020, the U.S. Supreme Court (the “Court”), in an 8-1 decision, affirmed the Fourth Circuit’s holding that “BOOKING.COM” is a protectable trademark, thereby rejecting a sweeping rule that a protectable trademark cannot be created by adding “.com” to an otherwise generic term.
Genericness is in the Eye of the Beholder, i.e., the Public: BOOKING.COM is a Protectable Trademark
On June 30, 2020, the U.S. Supreme Court (the “Court”), in an 8-1 decision, affirmed the Fourth Circuit’s holding that “BOOKING.COM” is a protectable trademark, thereby rejecting a sweeping rule that a protectable trademark cannot be created by adding “.com” to an otherwise generic term.
After Almost 20 Years of Litigation, “Lucky” Finally Gets Lucky | JD Supra
On May 14, 2020, the United States Supreme Court held in Lucky Brand Dungarees Inc., et al. v. Marcel Fashion Group Inc., that a party is not precluded from raising new defenses, when a subsequent lawsuit between the same parties challenges different conduct and raises different claims. As explained in our previous posts, Lucky Brand Dungarees Inc. and related companies (collectively, “Lucky”) and Marcel Fashion Group Inc.
After Almost 20 Years of Litigation, “Lucky” Finally Gets Lucky
On May 14, 2020, the United States Supreme Court held in Lucky Brand Dungarees Inc., et al. v. Marcel Fashion Group Inc., that a party is not precluded from raising new defenses, when a subsequent lawsuit between the same parties challenges different conduct and raises different claims. As explained in our previous posts, Lucky Brand Dungarees Inc. and related companies (collectively, “Lucky”) and Marcel Fashion Group Inc.
The Parameters of Generic Marks: Booking.com before the Supreme Court | JD Supra
The Lanham Act (“Act”) makes it clear that generic terms cannot be registered as trademarks. But can an online business create a protectable trademark by adding a generic top-level domain (e.g., “.com”) to an otherwise generic term? The Supreme Court will answer this question in USPTO v. Booking.com, No. 19-46. The legal battle between Booking.com and the U.S. Patent and Trademark Office (“USPTO”) began almost a decade ago.
2(b) Prohibition On “Flag Marks” Bars Use of Flag as Part of a Mark | JD Supra
Updated: May 25, 2018: JD Supra is a legal publishing service that connects experts and their content with broader audiences of professionals, journalists and associations.
The Parameters of Generic Marks: Booking.com before the Supreme Court
The Lanham Act (“Act”) makes it clear that generic terms cannot be registered as trademarks. But can an online business create a protectable trademark by adding a generic top-level domain (e.g., “.com”) to an otherwise generic term? The Supreme Court will answer this question in USPTO v. Booking.com, No. 19-46. The legal battle between Booking.com and the U.S. Patent and Trademark Office (“USPTO”) began almost a decade ago.
2(b) Prohibition On “Flag Marks” Bars Use of Flag as Part of a Mark
In a recent precedential decision concerning the rarely litigated or cited Section 2(b) of the Lanham Act, the Trademark Trial and Appeal Board affirmed a refusal to register the service mark: for tourism services on the ground that the mark includes a simulation of the American flag. In re Alabama Tourism Department, Serial No. 87599292 (TTAB, May 6, 2020).
States Cannot Copyright Annotated Versions of Legal Codes | JD Supra
Updated: May 25, 2018: JD Supra is a legal publishing service that connects experts and their content with broader audiences of professionals, journalists and associations.
States Cannot Copyright Annotated Versions of Legal Codes
On April 27, 2020, the United States Supreme Court held, in Georgia et al. v. Public.Resource.Org., Inc., in a 5-4 decision, that copyright law does not protect annotations contained in the official annotated compilation of Georgia statutes. As explained in our prior blog, Georgia, like many states, offers a free version of its official statute, but charges a fee for the annotated version, Official Code of Georgia Annotated (“OCGA”).
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