Justia Trademark Opinion Summaries

Hugunin first sold fishing tackle in Land O’ Lakes, Wisconsin, in 1997. Hugunin’s manufacturing enterprise now sells fishing tackle to retailers in several states. In 2000 the U.S. Patent and Trademark Office registered LAND O LAKES as the trademark of his fishing tackle. A large agricultural cooperative named Land O’ Lakes is based in Minnesota and sells dairy products throughout the United States. It has used LAND O LAKES trademark since the 1920s. In 1997 the dairy company became the official dairy sponsor of a sport-fishing tournament and began advertising its products in fishing magazines. Three years later, having learned that Hugunin had registered LAND O LAKES as a trademark, the dairy company wrote him that he was infringing its trademark. He refused either to apply for a license or to give up the trademark. The Trademark Trial and Appeal Board proceeding was suspended pending the outcome of litigation. The Seventh Circuit affirmed dismissal of Hugunin’s suit, stating “It’s hard to believe that a giant dairy company wants to destroy or annex Hugunin’s tiny fishing-tackle business, or that Hugunin’s tackle sales are being kept down by Land O’ Lakes’ having an identical trademark.” View "Hugunin v. Land O'Lakes, Inc." on Justia Law

Plaintiffs, twenty-three professional football players, filed a putative class action against the NFL, claiming that films produced by NFL-affiliate NFL Films violated the players’ rights under the right-of-publicity laws of various states as well as their rights under the Lanham Act, 15 U.S.C. 1125. Twenty plaintiffs settled, but appellants elected to opt out of the settlement and pursued individual right-of-publicity and Lanham Act claims. The district court granted summary judgment for the NFL. Applying the three Porous Media Corp. v. Pall Corp., factors, the court agreed with the district court’s conclusion that the films are expressive, rather than commercial, speech and that the Copyright Act, 17 U.S.C. 301(a), therefore preempts appellants’ claims. The court also concluded that appellants' claim of false endorsement under the Lanham Act fails as a matter of law because appellants provide no evidence that the films contain misleading or false statements regarding their current endorsement of the NFL. Accordingly, the court affirmed the judgment. View "Dryer v. National Football League" on Justia Law

In 1969, the Flynt brothers opened “Hustler Club” nightclub, in Cincinnati. Larry later created the Hustler conglomerate, producing sexually explicit magazines. Jimmy opened his retail store, Hustler Cincinnati, in 2000, using the “HUSTLER” trademark (owned by Larry’s corporation) and began paying licensing in 2004. Jimmy and Larry had a falling out. Larry's Hustler fired Jimmy in 2009. Jimmy’s Hustler stopped paying fees, but continued to use the mark. Larry sued. The court enjoined Jimmy from “using in commerce any HUSTLER trademark” and “using any trademark or any variation thereof owned by” Larry or his corporations. Later, Larry complained that Jimmy had opened a new store in Florence, Kentucky, “FLYNT Sexy Gifts.” The court denied the contempt motion because the injunction did not directly prohibit Jimmy’s conduct. but modified the injunction, reasoning that Jimmy’s use of “FLYNT Sexy Gifts” was “likely to cause confusion with the LARRY FLYNT trademark.” The Sixth Circuit affirmed a modification that prohibits Jimmy from “[u]sing the name ‘Flynt’ in connection with the sale, promotion or advertising of adult entertainment products or services unless it is accompanied by the first name ‘Jimmy’ in the same font size, color, and style and on the same background color,” and required Jimmy, when using the name “Flynt” anywhere except on “store signage,” to incorporate “a conspicuous disclaimer stating that the goods or services are not ‘sponsored, endorsed by, or affiliated with Larry Flynt or Hustler, or any business enterprise owned or controlled by Larry Flynt.’” View "LFP IP, LLC v. Hustler Cincinnati, Inc." on Justia Law

This case stemmed from rival claims to the “Stolichnaya” trademarks. FTE and Cristall alleged that defendants unlawfully misappropriated and commercially exploited the Stolichnaya trademarks related to the sale of vodka and other spirits in the United States. Control over the marks in the United States is currently exercised by defendants as successors in interest to a Soviet state enterprise. In a prior suit, FTE brought claims against SPI under section 32(1) of the Lanham Act, 15 U.S.C. 1114, and the court dismissed the claims on the grounds that the Russian Federation itself retained too great an interest in the marks for FTE to qualify as an "assign" with standing to sue. FTE's non-section 32(1) claims were either dismissed or dropped during the course of that litigation. At issue principally in this appeal is whether FTE, an agency of the Russian Federation, has been endowed by that government with rights and powers that give it standing to pursue claims under section 32(1) of the Lanham Act. The court concluded that the district court erred in determining whether FTE’s asserted basis for standing was valid under Russian law. However, the court concluded that the district court correctly dismissed all of FTE's other claims as barred by both res judicata and laches. Accordingly, the court affirmed in part, vacated in part, and remanded for further proceedings. View "Fed. Treasury Enter. Sojuzplodoimport v. Spirits Int’l B.V." on Justia Law

This appeal arose from a copyright dispute between Adobe and defendant and his software company, SSI. The court affirmed the district court's dismissal of both Adobe's copyright and trademark claims. Although a copyright holder enjoys broad privileges protecting the exclusive right to distribute a work, the first sale doctrine serves as an important exception to that right. Under this doctrine, once a copy of a work is lawfully sold or transferred, the new owner has the right “to sell or otherwise dispose of” that copy without the copyright owner’s permission. In this case, the court concluded that the district court correctly held that Adobe established its registered copyrights in the disputed software and that defendant carried his burden of showing that he lawfully acquired genuine copies of Adobe’s software, but that Adobe failed to produce the purported license agreements or other evidence to document that it retained title to the software when the copies were first transferred. The district court did not abuse its discretion in granting defendant’s motion to strike and excluding evidence purporting to document the licenses. Finally, the court concluded that the district court properly analyzed the trademark claim under the nominative fair use defense to a trademark infringement claim instead of under the unfair competition rubric. Accordingly, the court affirmed the judgment. View "Adobe Systems, Inc. v. Christenson" on Justia Law

Tam, the “front man” for Asian-American rock band, The Slants, sought to register the mark THE SLANTS and attached specimens featuring the name set against Asian motifs. The examining attorney found the mark disparaging to people of Asian descent (15 U.S.C. 1052(a)) and denied registration. The Trademark Trial and Appeal Board dismissed for failure to file a brief. Tam filed another application, seeking to register the mark THE SLANTS for identical services and claiming use of the mark since 2006. Attached specimens did not contain Asian motifs. The examining attorney again found the mark disparaging and declined to register it. The Board affirmed. On rehearing, en banc, the Federal Circuit vacated, finding Section 2(a) of the Lanham Act unconstitutional. The government may not penalize private speech merely because it disapproves of the message, even when the government’s message-discriminatory penalty is less than a prohibition. “Courts have been slow to appreciate the expressive power of trademarks. Words—even a single word—can be powerful. With his band name, Tam conveys more about our society than many volumes of undisputedly protected speech.” The regulation at issue amounts to viewpoint discrimination; under strict scrutiny or intermediate scrutiny review, the disparagement proscription is unconstitutional, because the government has offered no legitimate interests to justify it. View "In Re:Tam" on Justia Law

In 1956, Ephrem, a Catholic nun, experienced apparitions of the Virgin Mary. Devotions to Our Lady of America was launched. Ephrem joined a cloistered house, approved by the Pope. Fuller entered the cloister in 1965. In 1979 its three members (including Fuller and Ephrem) formed a new congregation. In 1993 Ephrem founded Our Lady of America Center. Upon her death in 2000, she was succeeded by Fuller and willed her property to Fuller. Most had been created by Ephrem or donated to the cloister or the Center. Fuller registered trademarks for artifacts, including Ephrem’s diary, medallions, and statues. In 2005 McCarthy, a lawyer, and Langsenkamp, “a Papal Knight,” began helping Fuller promote devotions to Our Lady. Fuller gave them a statue and other artifacts. In 2007, the three had a disagreement that resulted in this lawsuit. The men claim to be the authentic promoters of devotions to Our Lady and the lawful owners of the artifacts. Another layman, Hartman, began a campaign to smear McCarthy’s and Langsenkamp’s reputations. Fuller is no longer a nun. A jury returned a verdict in favor of McCarthy and Langsenkamp. The Seventh Circuit affirmed awards: $150,000 in compensatory damages, $200,000 in punitive damages (against Hartman only), plus $295,000 in attorney’s fees and sanctions and $281,000 in costs, to be paid by Fuller, Hartman, and their lawyer. The court vacated an injunction concerning the defamation. View "McCarthy v. Fuller" on Justia Law

Defendant appealed the district court's grant of an injunction requiring defendant to transfer to defendant four domain names he had registered in his own name and grant of plaintiff's motion for summary judgment on defendant's counterclaims. The court concluded that it lacked jurisdiction to entertain defendant's appeal under 28 U.S.C. 1291, because there are still pending claims brought against defendant under sections 43(a) and (c) of the Lanham Act, 15 U.S.C. 1125(a) and (c), and state law. The court concluded, however, that it has jurisdiction to review the district court's injunction under 28 U.S.C. 1292(a)(1). The court held that the re-registration of bydesignfurniture.com constituted a registration under the Anticybersquatting Consumer Protection Act (ACPA), 15 U.S.C. 1125, and that plaintiff is likely to succeed on the merits of its ACPA claim. Accordingly, the court concluded that the issuance of the preliminary injunction did not constitute an abuse of discretion and affirmed the judgment of the district court. View "JYSK Bed'N Linen v. Dutta-Roy" on Justia Law

In 2012 Navajo Nation sued for trademark infringement, alleging that Urban Outfitters “advertised, promoted, and sold goods under the ‘Navaho’ and ‘Navajo’ names and marks” on the Internet and in retail stores “[s]ince at least March 16, 2009.” Urban Outfitters tendered the complaint to its insurers. OneBeacon provided commercial general and umbrella liability coverage to Urban Outfitters until July 7, 2010, with “personal and advertising injury” coverage. On July 7, 2010, Hanover became the responsible insurer under a “fronting policy.” On July 7, 2011 Hanover issued separate commercial general liability and umbrella liability policies to Urban Outfitters. The “fronting policy” and Hanover-issued policies excluded coverage for “personal and advertising injury” liability “arising out of oral or written publication of material whose first publication took place before the beginning of the policy period.” After providing a reservation of rights letter, informing Urban Outfitters of Hanover and OneBeacon’s joint retention of defense counsel, Hanover obtained a judicial a declaration that it was not responsible for defense or indemnification. The Third Circuit affirmed.The “prior publication” exclusion of liability insurance contracts prevents a company from obtaining ongoing insurance coverage for a continuing course of tortious conduct. Urban Outfitters engaged in similar liability-triggering behavior both before and during Hanover’s coverage period. View "Hanover Ins. Co v. Urban Outfitters Inc" on Justia Law

This appeal stems from an intellectual property dispute between two religious organizations. Plaintiff filed suit alleging that defendant is infringing its registered service marks in violation of the Lanham Act, 15 U.S.C. 1114, and Florida law. The district court granted judgment for defendant. In the first appeal, the court reversed in part and remanded for reconsideration of whether the parties' marks are likely to be confused. The court was also critical of disparaging comments that the district judge made about the parties. On remand, the court concluded that the district court misapplied several factors in its analysis of likely confusion, incorrectly assessed the Florida Priory’s defense of prior use, relied on historical testimony that the court previously deemed inadmissible, and misinterpreted the court's instructions about consulting facts outside the record. The court declined to order reassignment after balancing the three factors in United States v. Torkington. Accordingly, the court vacated and remanded. View "Sovereign Military Hospitaller v. The Florida Priory of the Knights Hospitallers" on Justia Law