Justia Trademark Opinion Summaries

Plaintiff filed suit against Green Day and others, alleging violations of the Copyright Act, 17 U.S.C. 101 et seq., and the Lanham Act, 15 U.S.C. 1051 et seq., because Green Day used plaintiff's illustration, "Scream Icon," in the video backdrop of its stage show. On appeal, plaintiff challenged the district court's grant of summary judgment in favor of Green Day on all claims and the grant of attorney's fees to Green Day under the Copyright Act. The court concluded that Green Day's use of the illustration was fair use under the Copyright Act where the purpose and character of the use was transformative and not overly commercial; the nature of the work included its status as a widely disseminated work of street art; Green Day's use of the work was not excessive in light of its transformative purpose; and Green Day's use did not affect the value of the piece or of plaintiff's artwork in general. In regards to plaintiff's claims under the Lanham Act, the court concluded that plaintiff failed to establish any trademark rights. The court concluded, however, that the district court clearly erred in finding that plaintiff's claims were objectively unreasonable. Accordingly, the court affirmed the district court's grant of summary judgment but vacated the award of attorneys fees. View "Seltzer v. Green Day, Inc., et al." on Justia Law

Plaintiffs filed suit under the Lanham Act, 15 U.S.C. 1051 et seq., against defendants, alleging trademark infringement based on a theory that defendants misappropriated and have unauthorized commercial use in the United States of certain United States-registered trademarks related to "Stolichnaya" - brand vodka (the "Marks"). At issue on appeal was whether plaintiffs have sufficient claim to the Marks to sue for infringement under the Act. The court concluded that FTE was neither (1) the Russian Federation's "assign" of the marks nor (2) its "legal representative." The court also concluded that Cristall could not sue, since its rights as a plaintiff were purely derivative of those held by FTE, and FTE could not grant rights greater than its own; the court rejected plaintiffs' joint argument that they were entitled to proceed because the Russian Federation had "ratified" their suit; and, therefore, neither plaintiff was entitled to sue for infringement under section 1114(1). Accordingly, the court affirmed the district court's dismissal of the Third Amended Complaint with prejudice. View "Fed. Treasury Enter. v. SPI Spirits Ltd." on Justia Law

Former starting quarterback for Arizona State University, Samuel Keller, filed a putative class action suit against EA, alleging that EA violated his right of publicity under California Civil Code 3344 and California common law by using Keller's likeness as part of the "NCAA Football" video game series. EA moved to strike the complaint as a strategic lawsuit against public participation (SLAPP) under California's anti-SLAPP statute, Cal. Civ. Proc. Code 425.16. The court concluded that EA could not prevail as a matter of law based on the transformative use defense where EA's use did not qualify for First Amendment protection because it literally recreated Keller in the very setting in which he had achieved renown. The court also concluded that, although there was some overlap between the transformative use test and the Rogers v. Grimaldi test, the Rogers test should not be imported wholesale to the right-of-publicity claims. Finally, the court concluded that state law defenses for reporting of information did not protect EA's use. Accordingly, the court affirmed the district court's denial of the motion to strike the complaint. View "In re: NCAA Licensing Litig." on Justia Law

Retired Hall of Fame football player, James "Jim" Brown, filed suit against EA, alleging that EA violated section 43(a) of the Lanham Act, 15 U.S.C. 1125(a), through the use of Brown's likeness in EA's "Madden NFL" series of football video games. The court rejected the "likelihood of confusion" test and the "alternative means" test, concluding that the only relevant legal framework for balancing the public's right to be free from consumer confusion about Brown's affiliation with "Madden NFL" and EA's First Amendment rights in the context of Brown's section 43(a) claim was the Rogers v. Grimaldi test. Applying the Rogers test, the court concluded that the use of Brown's likeness was artistically relevant to the "Madden NFL" games and that there were no alleged facts to support the claim that EA explicitly mislead consumers as to Brown's involvement with the games. In this case, the public interest in free expression outweighed the public interest in avoiding consumer confusion. Accordingly, the court affirmed the district court's grant of EA's motion to dismiss. View "Brown v. Electronic Arts, Inc." on Justia Law

A dispute arose among the parties in this case over internet advertising through "AdWords," a Google program whereby companies pay the search engine to feature its ads whenever a user uses certain keywords. At issue was whether the Lanham Act was violated by one of the parties' use of keywords that resembled a competitior-party's service mark. Upon review of the keywords and service marks in question here, the Tenth Circuit found no violation of the Act. View "1-800 Contacts v. Lens.com, et al" on Justia Law

Plaintiffs, entities with rights or licenses to registered trademarks bearing the "Guggenheim" name, filed suit alleging trademark infringement and other federal and state law claims after defendant solicited investors to buy various financial products while presenting himself as "David B. Guggenheim." On appeal, defendant challenged the district court's entry of default judgment against him. The court concluded that the district court did not abuse its discretion by entering a default judgment against defendant where the district court was presented with a plethora of evidence to support its finding that he willfully defaulted. Moreover, defendant's asserted defense failed on the merits because his conduct plainly failed to satisfy the elements of a legitimate fair use defense, even if the district court erred by not specifically addressing this defense. View "Guggenheim Capital, LLC v. Birnbaum" on Justia Law

Unique filed a complaint against Ferrari for trademark infringement and false designation of origin under federal law; for deceptive trade practices under state law; and for violation of a final judgment. The district court held that Unique's light blue trademark was valid and enforceable but that Ferrari's blue gauze had not infringed upon that trademark. The clerk entered judgment for Unique on Ferrari's affirmative defense but for Ferrari on Unique's original charge of infringement. Ferrari appealed. At issue was whether a party could appeal on the merits from a decision in its favor, where a district court found against him as to one issue, nondispositive of the case. The court concluded that, although he may not challenge the district court's findings on the merits, he was entitled to vacatur of the portion of the district court's order adverse to him. Accordingly, on the facts of this case, the Supreme Court in Electrical Fittings Corp. v. Thomas & Betts Co. clearly prescribed vacatur of the district court's judgment on the question of validity as the legal consequence of an appeal by an otherwise-successful defendant in an infringement suit on the merits of that question. View "Unique Sports Products, Inc. v. Ferrari Importing Co." on Justia Law

Levi Strauss has stitched the back pocket of its jeans with the “Arcuate” design since 1873 and holds multiple trademarks on the design. In 2005, Abercrombie sought to register a “mirror image stitching design” for use on clothing, stating no limitations on the goods’ nature, type, channels of trade, or class of purchasers. Levi Strauss initiated an opposition to the parent application (concerning jackets and seeking Principal Registration). Levi Strauss petitioned to cancel Supplemental Registration of the child application covering other clothing. Abercrombie began selling “Ruehl jeans” with the design. Levi Strauss sued. The PTO stayed proceedings. Abercrombie claimed that its products were sold in different channels, at different prices. A jury found no infringement; the court rejected a claim of dilution by blurring. Levi Strauss did not appeal concerning infringement. The Ninth Circuit remanded, holding that dilution by blurring does not require identity or near identity of marks. Meanwhile, Abercrombie shut down the Ruehl brand, but sought to register its mirror-image design on “clothing, namely bottoms,” disclosing use of the design on denim shorts sold as “Gilley Hicks,” at different prices, and through different channels. Levi Strauss sought to amend to include the Gilley Hicks products. The district court declined and dismissed the dilution claim. The PTO opposition and cancellation proceedings were dismissed on the ground of issue preclusion. The Federal Circuit reversed, reasoning that the registrations at issue in the PTO cover a broader range of uses than were the subject of the litigation. View "Levi Strauss & Co. v. Abercrombie & Fitch Trading Co." on Justia Law

Plaintiff sued Marvel, contending that he conceived the comic book character "Ghost Rider," the related characters, and the origin story. Plaintiff also claimed that he owned the renewal term copyrights in those works. On appeal, plaintiff challenged the district court's grant of summary judgment in favor of Marvel, holding that plaintiff had assigned any rights he had in the renewal term copyrights to Marvel when he executed a form work-for-hire agreement (the Agreement), six years after the initial publication of the issue in question. The court, by applying the "strong presumption against the conveyance of renewal rights," concluded that the district court erred in holding as a matter of law that plaintiff had assigned his renewal rights to Marvel by signing the Agreement; plaintiff's claim was not untimely as a matter of law because there were genuine disputes regarding whether plaintiff should have known about Marvel's repudiation of his claim of ownership; and there were genuine disputes of material fact that precluded granting summary judgment on the issue of authorship. Accordingly, the court vacated and remanded for trial. View "Gary Friedrich Enters., LLC v. Marvel Characters, Inc." on Justia Law

Charter appealed the district court's holding that it was liable to CGS for its expenses in defending and settling a trademark infringement suit. The court concluded that the relevant insurance policy did not cover the liability alleged in the trademark action and Charter was not liable for the settlement amount; however, there was sufficient legal uncertainty about the coverage issue to oblige Charter to defend the action; and, therefore, the district court's ruling was affirmed insofar as it held that Charter was liable for defense costs, but reversed insofar as it held that Charter was liable for the settlement. Accordingly, the court vacated and remanded for further proceedings. View "CGS Indus., Inc. v. Charter Oak Fire Ins. Co." on Justia Law