Justia Trademark Opinion Summaries

Articles Posted in US Court of Appeals for the Second Circuit
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The Second Circuit affirmed the district court's dismissal of plaintiff's third amended complaint for failure to state a claim under Federal Rule of Civil Procedure 12(b)(6), alleging that defendants violated the Copyright Act by copying creative aspects from his unreleased science fiction videogame, including his use of a tardigrade -- a microscopic animal -- traveling in space, in their television series Star Trek: Discovery.Even assuming that actual copying occurred, the court agreed with the district court that plaintiff failed to plausibly allege substantial similarity between protectible elements of his videogame and elements from Discovery. The court explained that, overall, the presence of Ripper the tardigrade in Discovery is minimal, as it only appears in three episodes. Therefore, after extracting the unprotectible elements from plaintiff's videogame -- the scientific facts, general ideas, science fiction themes constituting scènes à faire, and generalized character traits -- the court held that the videogame and Discovery are not substantially similar because the protectible elements are markedly different. View "Anas Osama Ibrahim Abdin v. CBS Broadcasting Inc." on Justia Law

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Tiffany filed suit against Costco under the Lanham Act and New York law, alleging that Costco was liable for, inter alia, trademark infringement and counterfeiting in connection with its sale of diamond engagement rings identified by point-of-sale signs containing the word "Tiffany." The district court granted summary judgment for Tiffany and awarded Tiffany Costco's trebled profits along with punitive damages and prejudgment interest, for a total of $21,010,438.35.The Second Circuit vacated, holding that the district court's determination was inappropriate at the summary judgment stage. The court held that Costco has raised a question of material fact as to its liability for trademark infringement and counterfeiting and, relatedly, its entitlement to present its fair use defense to a jury. In this case, Costco argued that it was using the word in a different, widely recognized sense to refer to a particular style of pronged diamond setting not exclusive to rings affiliated with Tiffany. Costco claimed that its use of the term was not likely to confuse consumers—the essence of a claim for infringement—and that even if some degree of confusion was likely, it was entitled under the Lanham Act to the descriptive fair use of an otherwise protected mark. Accordingly, the court remanded for trial. View "Tiffany & Co. v. Costco Wholesale Corp." on Justia Law

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SM Kids filed suit against Google and related entities, seeking to enforce a 2008 agreement settling a trademark dispute over the Googles trademark. The agreement prohibited Google from intentionally making material modifications to its then-current offering of products and services in a manner that is likely to create confusion in connection with Googles. The district court concluded that the trademark assignment was invalid, and dismissed for lack of subject-matter jurisdiction.The Second Circuit vacated the district court's judgment and held that the validity of the trademark was not a jurisdictional matter related to Article III standing but was instead a merits question properly addressed on a motion under Federal Rule of Civil Procedure 12(b)(6), a motion for summary judgment, or at trial. In this case, the district court erroneously resolved Google's motion as a fact-based motion under Rule 12(b)(1) and considered evidence beyond the complaint, as well as placed on SM Kids the burden of proving subject-matter jurisdiction. Accordingly, the court remanded for further proceedings. View "SM Kids, LLC v. Google LLC" on Justia Law

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The Second Circuit affirmed the district court's dismissal of plaintiff's action seeking a declaratory judgment adjudicating the validity of defendants' trademark registrations relating to the "SULKA" mark.The court held that, before a court may entertain an action for declaratory relief in the context of trademarks, the plaintiff must allege that he has taken some action showing that he has both the "definite intent and apparent ability to commence use of the marks on the product." In this case, the court held that defendant's allegations are too vague to support the exercise of federal jurisdiction. The court explained that the only allegation that does relate to the U.S. market is plaintiff's application to register the mark in the United States. However, while his allegation is certainly relevant to the matter of intent, it has little bearing on plaintiff's ability to transition his business to the United States and there were significant reasons for the district court to be skeptical that he was, in fact, prepared to enter the U.S. market. View "Saleh v. Sulka Trading Ltd." on Justia Law

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This appeal stemmed from the parties' dispute over plaintiffs' "Velocity" trademark for clothing and activewear. The Second Circuit held that the district court did not err by determining that defendants' infringement was willful and by awarding plaintiffs the gross profits derived by defendants' infringement; the district court did not err by amending the judgment to remove the trebled portion of the profits award; and the court clarified that, under its precedent in George Basch Co. v. Blue Coral, Inc., 968 F.2d 1532 (2d Cir. 1992), a plaintiff prosecuting a trademark infringement claim need not in every case demonstrate actual consumer confusion to be entitled to an award of an infringer's profits.However, the court vacated the district court's award of attorney's fees and prejudgment interest to plaintiffs and its determination that this was an "exceptional" case under the Lanham Act. While this appeal was pending, the court held that the standard for determining an "exceptional" case under the Patent Act applies also to cases brought under the Lanham Act. Therefore, the court remanded for the district court to apply Octane Fitness, LLC v. ICON Health & Fitness, Inc., 572 U.S. 545 (2014). View "4 Pillar Dynasty LLC v. New York & Co., Inc." on Justia Law

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The Second Circuit affirmed the district court's confirmation of an arbitration award under 9 U.S.C. 9 for petitioners and other individuals. This case involved a dispute between two groups of the Bobov Hasidic Jewish community in Brooklyn that agreed to arbitration before a rabbinical tribunal. The tribunal ruled that petitioners owned the "Bobov" trademark, and the district court confirmed the ruling.The court held that district courts should "look through" a 9 U.S.C. 4 petition to the underlying controversy to determine whether subject matter jurisdiction exists to confirm the arbitration award pursuant to 9 U.S.C. 9. The court held that the district court properly looked through the arbitration petition here to the underlying controversy to determine that it had subject matter jurisdiction. In this case, the district court properly turned aside respondent's non-jurisdictional arguments, found the petition "effectively" unopposed and that no issue of material fact precluded confirmation, and did not err in confirming the award. View "Landau v. Rheinold" on Justia Law

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The Second Circuit affirmed the district court's judgment granting attorneys' fees and costs to defendants under section 505 of the Copyright Act and section 35(a) of the Lanham Act. These provisions authorized the district court to award fees to the prevailing party in a lawsuit. The court held that defendants met the definition of "prevailing party" under both fee-shifting provisions. Although defendants did not obtain a dismissal on the the Copyright and Lanham Acts claims, defendants have fulfilled their primary objective by obtaining dismissal of the complaint on collateral estoppel grounds. View "Manhattan Review, LLC v. Yun" on Justia Law

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Marcel filed suit against Lucky Brand under the Lanham Act for infringing on Marcel's "Get Lucky" trademark through its use of "Lucky" on its merchandise. Marcel also alleged that Lucky Brand did so in violation of an injunction entered in an earlier action between the parties. The district court dismissed the complaint, concluding that Marcel released its claims through a 2003 settlement agreement that resolved an earlier substantially similar litigation between the parties. The Second Circuit vacated the judgment, holding that res judicata precluded Lucky Brand from raising its release defense in this case. The court held that under certain conditions parties may be barred by claim preclusion from litigating defenses that they could have asserted in an earlier action, and that the conditions here warranted application of that defense preclusion principle. Accordingly, the court remanded for further proceedings. View "Marcel Fashions Group, Inc. v. Lucky Brand Dungarees, Inc." on Justia Law

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OBC appealed the district court's grant of summary judgment for Excelled in a trademark dispute over use of the brand-name ROGUE on t-shirts. The Second Circuit held that Excelled failed to show entitlement to summary judgment dismissing OBC's trademark infringement counterclaims. In this case, Excelled failed to meet its burden of proving that OBC's delay in bringing suit was unreasonable and caused prejudice to Excelled. Therefore, the court vacated the district court's grant of summary judgment to Excelled, dismissing OBC's counterclaims, alleging trademark infringement, false designation, and unfair competition.The court reversed the district court's grant of summary judgment to Excelled on its infringement claims and the district court's denial of OBC's motion for summary judgment dismissing these claims. The court also reversed the award of injunctive relief and damages and fees against OBC. Finally, the court vacated the district court's grant of summary judgment to Excelled on OBC's trademark cancellation counterclaim because the district court erroneously relied on determinations of disputed facts about the continuity of Excelled's sales that usurped the province of the jury. View "Excelled Sheepskin & Leather Coat Corp. v. Oregon Brewing" on Justia Law

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This case stemmed from the parties' dispute over adjudicating rights associated with The Sloppy Tuna, a restaurant in Montauk, NY. On appeal, Montauk challenged the district court's dismissal of its Lanham Act claims and motion for preliminary injunction under the first-filed rule. Montauk also challenged the district court's order to pay costs, including attorneys' fees, that Associates incurred in responding to a previous action Montauk brought against Associates in Georgia state court that Montauk voluntarily dismissed. The Second Circuit held that, because New York law allowed for derivative representation on the facts presented, the district court correctly rejected Montauk's request to hold Associates in default. Nonetheless, the court vacated the district court's dismissal of the complaint and preliminary injunction motion in favor of a first-filed federal Georgia action because the Georgia suit was transferred to the Eastern District of New York, so the reasoning behind the first-filed ruling no longer applied. Finally, the court affirmed the district court's award of costs under Federal Rule of Civil Procedure 41(d), including attorneys' fees, incurred by Associates in the Georgia state action. View "Montauk U.S.A., LLC v. 148 South Emerson Associates LLC" on Justia Law