Trademark Infringement

5/14/2015

TRADEMARK TM Basics

PI Simulations

Trade Dress

TM Case Management

Digital TM

These Ronald McDonalds are not affiliated with McDonald’s Corporation and were individually selected as paid endorsers of Taco Bell Breakfast but man, they sure did love it.

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McDonald’s Response: Imitation Is the Sincerest Form of Flattery

TRADEMARK BASICS

What is a Trademark?

Establishing TM Protection

Infringement

Dilution

Defenses & Remedies

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Trademarks: New Frontiers

High impact, fresh, floral fragrance reminiscent of plumeria blossoms

.com

Clarke’s Osewez® 1964 1971 1977 1987 1991 1997+

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Guiding Principle Customer Perception

as a test of:

· VALIDITY

· INFRINGEMENT

What Is a Trademark?

§ 45. The term “trademark” includes any word, name, symbol, or device, or any combination thereof – (1) used by a person, or (2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this Act, to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.

Anything that identifies and distinguishes a source

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Distinctiveness Spectrum Inherently Distinctive Secondary Meaning Required ™ Descriptive Arbitrary Suggestive Laudatory & Geographic Name Generic Fanciful Personal Name

Composite Marks: Anti-Dissection Rule

California Cooler

• viewing mark as a whole: geographically descriptive term + generic term could become a distinguishing mark.

California Cooler, Inc. v. Loretto Winery, Ltd., 774 F.2d 1451 (9th Cir. 1985) (finding that composite mark had sufficient secondary meaning to support a PI)

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What Is “Secondary” or “Acquired” Meaning?

Descriptive Secondary/Acquired Meaning

Best Buy!

ASSESSING DISTINCTIVENESS SECONDARY MEANING SURVEY

• Do you associate GATORADE with beverages from one company or more than one company, or do you not know?

• Do you associate VITAMINWATER with beverages from one company or more than one company, or do you not know?

• Do you associate ICED TEA with beverages from one company or more than one company, or do you not know?

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ASSESSING GENERICISM TEFLON SURVEY “Is ____ a brand name or a common name?”

NAME BRAND/% COMMON/% DON’T KNOW/% STP 90 5 5 THERMOS 51 46 3 MARGARINE 9 91 1 TEFLON 68 31 2 JELLO 75 25 1 REFRIGERATOR 6 94 - ASPIRIN 13 86 - COKE 76 25 -

Pop Soda Soda Coke

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ESTABLISHING TM PROTECTION FEDERAL LAW • Federal Registration • False Designations of Origin and False Descriptions §43(a)

STATE LAW • Statutory Protection • Common Law

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PRIORITY OF USE

ACTUAL USE • priority of use, not priority of invention, controls • even small amount of usage sufficient if followed by continuous commercial utilization

CONSTRUCTIVE = APPLICATION USE TO REGISTER

Tacking: Evolution of the Quaker Oats Logo

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Advantages of Registration on Principal Register

1. Enhanced Remedies (especially for counterfeiting) in Federal Court

2. Prima Facie Evidence of Validity and Ownership

3. Opportunity to Achieve “Incontestability” of Mark

4. Nationwide Constructive Notice of Ownership and Use

5. Right to Bring Federal Cause of Action

6. U.S. Customs Recordation and Opportunity to Stop Importation of Articles Bearing Infringing Mark

Federal TM Registration

Types: • Use-Based Applications §1(a) Note: Federal registration does • Intent to Use Applications §1(b) not create a trademark. It merely records a valid trademark. • Foreign Applications §44 Registers:

PRINCIPAL REGISTER SUPPLEMENTAL REGISTER • Trademark • Service Mark Words, shapes, and symbols capable of • Certification Mark becoming valid • Collective Mark trademarks

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Federal Registration Process: Bars to Registration §2

(a) immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection . . . (b) Consists of or comprises the flag . . . or other insignia of the United States, or any State or municipality, or of any foreign nation, or any simulation thereof (c) Consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent, or [of a deceased US President during the life of his widow without her consent] (d) Likely to cause confusion with a non-abandoned mark: unless the Director approves concurrent registration, subject to appropriate conditions and limitations (e) (1) merely descriptive or deceptively misdescriptive; (2) primarily geographically descriptive, except as indications of regional origin [registrable under §4(collective and certification marks)]; (3) primarily geographically deceptively descriptive; (4) primarily merely a surname; (5) comprises any matter that, as a whole, is functional

Bars to Registrations: §2(a) Immoral, Deceptive, Scandalous, Disparaging Marks

™

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Bars to Registrations: §2(a) Immoral, Deceptive, Scandalous, Disparaging Marks

March 17, 2014 Given that ‘REDSKIN’ in the mark is a derogatory slang term that refers to, and is considered offensive by, American Indians, registration of the applied-for mark must be refused. REFUSAL TO REGISTER “Washington Redskin Potatoes” June 18, 2014 TTAB cancelled the six Washington Redskin trademarks held by the team as disparaging to a “substantial composite of Native Americans.”

CANCELLATION ™ “Washington Redskins”

Bars to Registrations: §2(a) Immoral, Deceptive, Scandalous, Disparaging Marks

Sept. 23, 2013 “The Slants” is disparaging to Asians. REFUSAL TO REGISTER -- TTAB

Apr. 27, 2015 En Banc Review granted Does the bar on registration of disparaging marks in 15 U.S.C. § 1052(a) violate the First Amendment?

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Federal Registration Process: Bars to Registration §2

Personal Name Marks Not registrable on Primary Register if “primarily merely a surname” §2(e)(4)

§2(f) Except as expressly excluded in paragraphs (a), (b), (c), (d), (e)(3), and (e)(5), nothing in this chapter shall prevent the registration of a mark which has become distinctive of the applicant’s goods in commerce. General Rule: proof of secondary meaning required for protection and registration on Principal Register (registrable under §2(f)) • Marks capable of achieving secondary meaning can be registered on SR Fair Use Defense: • Early cases: Absolute right to use one’s own name • Modern Rule: balance in using one’s own name with protection of senior user and the consumer against likelihood of confusion • Qualified/Limited Injunctive Relief: allowing use, subject to disclaimer, the addition of a prefix, suffix, or middle initial, or change in the style, size, or color of the mark

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Geographic Designation

Not registrable if §2(e)(2) primarily geographically descriptive, except as indications of regional origin [registrable under §4(collective and certification marks)] §2(f) Except as expressly excluded in paragraphs (a), (b), (c), (d), (e)(3), and (e)(5), nothing in this chapter shall prevent the registration of a mark which has become distinctive of the applicant’s goods in commerce.

Geographic Designation

Not registrable if (e) (2) primarily geographically descriptive, except as indications of regional origin [registrable under §4(collective and certification marks)]; (3) primarily geographically deceptively misdescriptive

Descriptive Misdescriptive

Secondary No Secondary Deceptive Non-deceptive Meaning Meaning “Cuban Cigars” (from North Carolina) “New Jersey Bread” Consumers do not Arbitrary “Waltham Watch Co” (from New Jersey) (ineligible for SR) associate product with place (registrable under §2(f)) (eligible for SR) Atlantic (from New York) Fair Use Defense: Nantucket Shirts (from North Carolina) • early cases: an absolute right to use one’s location; • modern cases: balance this interest against protection Philadelphia of senior user and the consumer against likelihood of Cream Cheese confusion through qualified injunctions (e.g., requiring disclaimers, prefixes, suffixes)

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Not registrable if (3) primarily geographically deceptively misdescriptive

Nantucket

Nantucket Island

Not deceptive if public does not associate goods with the place

Not registrable if (3) primarily geographically deceptively misdescriptive

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Federal Registration: Incontestability

§§8,15 Notice Contestability of Continuous Window Use Incontestability §33(b)

• challenger may not contest that mark is: • merely descriptive (lacking secondary meaning) registration constitutes prima • lacking priority facie evidence of validity • other challenges to validity remain §33(b) OFFICIAL GAZETTE • challenger may (including fraud, abandonment, raise any legal or functionality, genericness) TRADEMARK PRINCIPAL REGISTER equitable ground for invalidity §9 Renewal Affidavit

0 5 6 10

Trademark Infringement

1. Passing Off • Counterfeiting • Parallel Imports/ Gray Market Goods

2. Dilution

3. Contributory Infringement

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Guiding Principle Customer Perception

as a test of:

· VALIDITY

· INFRINGEMENT

Test of Trademark Infringement ? “Likelihood of Confusion”

Likelihood Confusion • “probable”; not merely possible Confusion as to: • actual confusion not required • source (including reverse) • appreciable # of “reasonably • sponsorship prudent purchasers” • affiliation • expected to exercise appropriate degree of care, caution, and power Extent and Timing of perception in view of market • 15% = “strong evidence” LOC choice • initial interest confusion • includes potential customers and • post-sale confusion investors • “call to mind” is not confusion

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Proof of Actual Confusion Not Necessary

just

“Likelihood of Confusion”

Multi-Factor Test non-exclusive list relevant to determining “Likelihood of Confusion” Strength 1. Strength of the mark thermometer 2. Proximity of the goods sight 3. Similarity of the marks sound 4. Evidence of actual confusion meaning 5. Marketing channels used 6. Type of goods; degree of care likely to exercised by purchaser 7. Defendant’s intent in selecting the mark 8. Likelihood of expansion of the product line AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979)

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Determining “Likelihood of Confusion”

Sleekcraft Factors

Suggestive 1. Strength of the mark • weak Non-competing, but close 2. Proximity of the goods in use and functions 3. Similarity of the marks

4. Actual confusion negligible

5. Marketing channels similar

High quality; 6. Goods; Purchaser care Careful evaluation No evidence of 7. Defendant’s intent intent to confuse Strong 8. Likelihood of expansion possibility

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Methods to Prove “Likelihood of Confusion”

1. Survey Evidence

2. Evidence of Actual Confusion 3. Argument Based on Clear Inference Arising From Comparison of Marks and the Context of Their Use

• sight

• sound meaning

• sight

Freight Services

Consolidated Freightways v. Central Transport, 201 USPQ 524 (ED Mich 1978) (prelim injunction granted based on LOC)

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• sound

Cygon vs. Phygon Dramamine vs. Bonamine (insecticides) (anti-nausea medications)

meaning

Cyclone vs. Tornado Pledge vs. Promise (link fencing) (furniture polish)

Chicken of the Sea vs. Tuna O’ the Farm (canned tuna fish) (canned chicken)

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meaning • sight • sound

Tubular Metal Products

Chemetron Corp. v. Morris Coupling & Clamp Co., 203 USPQ 537 (TTAB 1979) (LOC)

Test of Trademark Infringement ? “Likelihood of Confusion”

Confusion Gallo Cheese Confusion as to: • source (including reverse) • sponsorship • affiliation

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Non-Competitive Goods

Vitamins

Non-Competitive Goods

“There is indeed a limit; the goods on which the supposed infringer puts the mark may be too remote from any that the owner would be likely to make or sell. It would be hard, for example, for the seller of a steam shovel to find ground for complain in the use of his trademark on a lipstick.” L.E. Waterman Co. v. Gordon, 72 F.2d 272 (2d Cir. 1934 )

Caterpillar

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Promotional Goods

Infringement Test: Do consumers perceive sponsorship?

Consumer perception Scope of TM Protection

feedback loop

Trademark Infringement: Parallel Imports

“territorial protection kicks in under the Lanham Act where two merchants sell physically different products in the same market and under the same name, for it is this prototype that impinges on a trademark holder’s goodwill and threatens to deceive consumers.” “gray market products” violate the Lanham Act if the products: (1) were not intended to be sold in the United States; and (2) are materially different from goods authorized for U.S. sale

• Different product lines Different Different • Different quality control Colors quality control, composition, • Different warranties configuration, different ingredients, packaging, instructions (metric price system weights), poison control Serial number/TM scratched off numbers Societe Des Produits Nestle, S.A. v. Casa Helvetia, Inc., 982 F.2d 633 (1st Cir. 1992)

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Trademark Infringement: Contributory Liability

“defendant (1) intentionally induces another to infringe on a trademark or (2) continues to supply a product knowing that the recipient is using the product to engage in trademark infringement.”

Fonovisa, Inc. v. Cherry Auction, Inc., 76 F.3d 259 (9th Cir. 1996) ((citing Inwood Laboratories v. Ives Laboratories, 456 U.S. 844, 854-55 (1982))

Contributory Infringement for Counterfeit Goods

® ) ) v. ) ) ) Contributory TM infringement for hosting online sales bazaar

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Contributory Infringement for Counterfeit Goods

® ) Inwood’s “knows or has reason to know” ) standard requires knowledge of specific v. ) counterfeits being offered for sale on the site. ) ) • but “willful blindness” by the ISP could violate Inwood test Contributory TM infringement for hosting online sales bazaar

Tiffany v. eBay, 600 F.3d 93 (2d. Cir. 2010)

™

Dilution

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EXPANDING RATIONALE FOR TM ? TORT Avoiding Consumer Confusion and Reducing Consumers’ Search Costs

Encouraging Investment in Advertising and Good Will

Property Interests in Image: Image as a Marketable Commodity PROPERTY

DILUTION

An association arising from the similarity between an accused mark and the famous mark that either: • impairs the distinctiveness of the famous mark ( BlurringBlurring Blurring ) • harms the reputation of the famous mark (Tarnishment)

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BLURRINGBLURRING

ROLEX SHOVELS ROLEX ROLEX ROLEX

ROLEX ROLEX ROLEX ROLEX

ROLEX CANDIES

Lexis™ offers products and services for legal, business, academic, and government professionals.

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Nothing Runs Like A Deere®

Model D604G 17 HP/42" L100 Lawn Tractor AutoDrive™ Lawn Tractor with Cruise Control Features: Features: • • • • • •

List Price: $1,499.00 List Price: $1,200.00

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TM Dilution (§43(c)): Elements forBlurring Blurring Plaintiff must prove: 1. Ownership of a “famous” mark as measured by the totality of the four factors listed in §43(c)(2)(A) 2. Defendant is making use of the challenged designation as a mark or trade name 3. in interstate commerce (or, in U.S. import or export trade that can be regulated by Congress) 4. Defendant’s use began after the mark became famous. 5. Considering the six factors listed in §43(c)(2)(B), defendant's use is likely to cause dilution by blurring by creating 6. a likelihood of association arising from the similarity of the marks from the standpoint of the ordinary consuming public of the U.S. 7. that is likely to impair the distinctiveness of plaintiff’s mark

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Mark Strength Fame: §43(c)(2)(A) FAME Thermometer

(A) . . . a mark is famous if it is widely recognized by the general consuming public of the United States as a 212o Famous designation of source of the goods or services of the mark mark's owner. In determining whether a mark possesses the requisite degree of recognition, the court may consider all relevant factors, including the following: Trademark (i) The duration, extent, and geographic reach of advertising and publicity of the mark, whether Secondary advertised or publicized by the owner or third parties. meaning (ii) The amount, volume, and geographic extent of o 32 sales of goods or services offered under the mark. (iii) The extent of actual recognition of the mark. (iv) Whether the mark was registered under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register.

BlurringBlurring: §43(c)(2)(B) (B) . . . "dilution by blurring" is association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark. In determining whether a mark or trade name is likely to cause dilution by blurring, the court may consider all relevant factors, including the following: (i) The degree of similarity between the mark or trade name and the famous mark. (ii) The degree of inherent or acquired distinctiveness of the famous mark. (iii) The extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark. (iv) The degree of recognition of the famous mark. (v) Whether the user of the mark or trade name intended to create an association with the famous mark. (vi) Any actual association between the mark or trade name and the famous mark.

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Must a mark be inherently distinctive to protected against dilution?

§43(c)(1) Subject to the principles of equity, the owner of a famous mark that is distinctive, inherently or through acquired distinctiveness, shall be entitled . . .

But – important safety valve:

Blurring definition -- Factor iii: “the extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark.

Likelihood of Association

Coined, Fanciful Marks Non-Coined Fanciful Terms AMAZON on-line seller, POLO “Kodak Pianos” wearing apparel, SATURN autos, Identical use of a coined, fanciful TIDE detergent, TIME magazine mark (such as Kodak, Rolex) is It cannot be presumed that the evidence that the ordinary ordinary consumer, when consumer, when confronted with the confronted with these kind of identical mark on far removed marks used on nonconfusing, far goods or services will make an removed goods or services, will “association” with the famous mark inevitably and necessarily think of because there is no other the famous mark. Therefore, significance to the word other than “association” must be proved. as the famous trademark

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What is “association”?

Call to mind

“Call to Mind” = Confusion

Harvey Cartoons v. Columbia Pictures, 645 F.Supp. 1564 (SDNY 1986) (no likelihood of confusion)

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“Call“Call to to Mind” Mind” = = “Association” Confusion

But no dilution because they are not similar enough; Fame? Harvey Cartoons v. Columbia Pictures, 645 F.Supp. 1564 (SDNY 1986) (no likelihood of confusion)

Likelihood of Association: Amazon

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Amazon Garden Service Amazon Hiking and Survival Training

Amazon Amazon Women’s Restaurant Health Spa

Likelihood of Association ≠ Likelihood of Blurring

Blurring is a kind of injury or damage to a mark, defined by the statute as an impairment of the distinctiveness of a mark that is caused by “association.” The two elements of “association” and “blurring” are separate and distinct.

“[T]he mere fact that consumers mentally associate the junior user's mark with a famous mark is not sufficient to establish actionable dilution. . . . [S]uch mental association will not necessarily reduce the capacity of the famous mark to identify the goods of its owner, the statutory requirement for dilution under the FTDA.”

Moseley v. V Secret Catalogue, Inc., 537 U.S. 418, 433 (2003)

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Proving Causation

If one bee sting of a non-confusing use is only very rarely followed by a damaging number of others, then why should the courts always assume without proof that others will inevitably follow?

Relevant evidence: • multiple unpermitted uses of other famous marks in similar markets • other uses of plaintiff’s mark which have been challenged • at a minimum, a plausible argument that this kind of famous mark in this mark will be likely to attract multiple uses

Defenses Safety Valves

43(c)(3) Exclusions: The following shall not be actionable as dilution . . .: (A) Any fair use . . . (i) advertising or promotion that permits consumers to compare goods or services; or (ii) identifying and parodying, criticizing, or commenting upon the famous mark owner or the goods or services of the famous mark owner. (B) All forms of news reporting and news commentary. (C) Any noncommercial use of a mark.

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$885 $12.99

CHEWY VUITTON

Cherry Chewy Vuitton Bag Toy The handbag every woman wants is now the toy every dog needs. Plush exterior with a squeaky that drives dogs crazy. Every Pampered Pup should have one. 6" x 8".

Louis Vuitton v. Haute Diggity Dog, 507 F.3d 252 (4th Cir. 2007)

Trademark Defenses

1. Genericness

2. Functionality

3. Abandonment

• Unsupervised Licenses

• Assignments in Gross

4. Fair Use

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ASSIGNMENT

• NO ASSIGNMENTS IN GROSS ™

LICENSING

• NO NAKED LICENSES

• QUALITY CONTROL OVER LICENSEE

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TM’s Fair Use Doctrines

Classic Nominative • descriptive marks • comparative advertising • accurate usage to • other referential usage describe product •can be some LOC

KP Permanent Make-Up v. Lasting Impression I, 543 U.S. 111 (2004)

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“PEPSI TASTES BETTER THAN COKE”

Non-Trademark Use Only if the defendant uses the word as a trademark could the unique and strong link between the designation and plaintiff's goods be weakened when the public sees the designation used to identify and distinguish different goods. Thus, a non- trademark use does cannot dilute.

Brands n the “The drug dealer known as Escalade Man smirked as he leaned against the Hood Coca-Cola sign, smoking a Marlboro and swigging his favorite beverage: Skyy Vodka and Tropicana orange juice.”

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Who’s the best on the block?

New Kids on the Block are pop’s hottest group. Which of the five is your fave? Or are they a turn-off? Call 900 USA POLL Each call costs 50 cents. Results in Friday’s Life Section.

Any USA Today profits from this phone line will go to charity.

New Kids on the Block v. News America Pub., Inc., 971 F.2d 302 (9th Cir. 1992)

9th Circuit Nominative Fair Use Requirements Burden of Proof: on Plaintiff (modified LOC)

1. Is the product or service of the trademark owner one which is readily identifiable without use of the trademark?

2. Has the mark been used by the defendant more than is reasonably necessary to identify the plaintiff?

3. Has the defendant done acts that would falsely suggest sponsorship or endorsement by the trademark holder?

New Kids on the Block v. News America Pub., Inc., 971 F.2d 302 (9th Cir. 1992)

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3rd Circuit Nominative Fair Use Test

Defense LendingTree will give you Shield access to a network of brokers, 9thincludingCircuit Three-Step Coldwell Test Banker, rd 3 Circuit Two-Step Approach Burden ofERA, Proof on and Plaintiff Century (modified 21 . LOC). . (1) Plaintiff must prove LOC (1) Is the product or service of the TM owner then burden shifts and one which is readily identifiable without use of the trademark? (2) Defendant must show that (2) Has the mark been used by the defendant its use is fair more than is reasonably necessary to identify the plaintiff? (3) Has the defendant done acts that would falsely suggest sponsorship or endorsement by the trademark holder?

Century 21 Real Estate Corp. v. LendingTree, Inc., 425 F.3d 211 (3rd Cir. 2006)

Parody

designer blue jeans for larger women

Jordache Enterprises, Inc. v. Hogg Wyld, Ltd., 828 F.2d 1482 (10th Cir. 1987)

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Despite the title, the film was not about Ginger Rogers and Fred Astaire; instead, it was a Frederico Fellini film about two Italian cabaret performers who imitated the famous dancing duo and become known in Italy as “Ginger and Fred.”

Ginger Rogers “Relatedness” Balancing Test

Ginger Rogers and Fred Astaire

Because overextension of Lanham Act restrictions in the area of titles might intrude on First Amendment values, we must construe the [Lanham] Act narrowly to avoid such a conflict.

In the context of allegedly misleading titles using a celebrity’s name, that balance will normally not support application of the [Lanham] Act unless [1] the title has no artistic relevance to the underlying work whatsoever, or, [2] if it has some artistic relevance, unless the title explicitly misleads as to the source or the content of the work.

Public Interest in Public interest in Avoiding Consumer Free Expression Confusion

Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989)

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Barbie Girl

I'm a Barbie girl, in the Barbie world. Life in plastic, it's fantastic. You can brush my hair, undress me everywhere. Imagination, Life is your creation.

Come on Barbie, let's go party Come on Barbie, let's go party

I'm a blonde, single girl in a fantasy world Dress me up, make it tight, I'm your dolly! You're my doll, Rock 'n Roll Feel the glamour in Pink Kiss me here, touch me there hanky panky.

You can touch, you can play if you say I'm always yours

“We agree with the Second Circuit’s analysis and adopt the Rogers standard as our own.” “If this were a sci-fi melodrama, it might be called Speech-Zilla meets Trademark Kong.”

Judge Alex Kozinski Trademark Kong lost

Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894 (9th Cir. 2002)

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Brown ) v. ) ) )

TM Infringement

(1) Rogers test governed former player’s false endorsement claim under Lanham Act; (2) use of former player’s likeness was artistically relevant to football video games; (3) use of former player’s likeness, coupled with consumer survey, did not show explicit misleading conduct; Granting of motion to dismiss affirmed Brown v. Electronic Arts, 724 F.3d 1235 (9th Cir. 2013)

Keller ) v. ) ) ) Right of Publicity

Samuel Michael Keller

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Under the “transformative use” test developed by the California Supreme Court, EA’s use does not qualify for First Amendment protection as a matter of law because it literally recreates Keller in the very setting in which he has achieved renown.

Samuel Michael Keller

In re NCAA Student-Athlete Name & Likeness Licensing Litigation, 724 F.3d 1268 (9th Cir. 2013)

Hart ) v. ) ) ) Right of Publicity

Ryan Hart

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Hart ) v. ) ) ) (1) transformative use test wasRight proper of analytical framework in this case; Publicity (2) manner in which player’s identity was incorporated and transformed in game provided little support for developer’s argument; (3) extentRyan toHart which game players could alter digital avatars did not satisfy transformative use test in favor of developer; and (4) photograph of player in game’s montage is “but a fleeting component part of the montage” and therefore does not render the entire work nontransformative; thus, this use was shielded by First Amendment.

Hart v. Electronic Arts, Inc., 717 F.3d 141 (3rd Cir. 2013) (applying NJ law)

Jonah Hex: Riders of the Worm and Such features two albino, villainous, nocturnal, half-worm, half-human characters named Johnny and Edgar Autumn engage in sexual depravity, murder, cowardice, and self- proclaimed stupidity.

Artistic expression trumps right of publicity.

Winter v. D.C. Comics, 30 Cal.4th 881, 134 Cal.Rptr.2d 634, 69 P.3d 473 (Cal. S.Ct. 2003)

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The analysis “simply requires the court to examine and compare the allegedly expressive work with the images of the plaintiff to discern if the defendant’s work contributes significantly distinctive and expressive content. If distinctions exist, the First Amendment bars claims based on appropriation of the plaintiff's identity or likeness; if not, the claims are not barred.”

Kirby v. Sega of Am., Inc., 144 Cal.App.4th 47 (2006)

Noriega v. Activision: California State Law

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Noriega v. Activision: California State Law

“Contemporary events, symbols, and people are regularly used in fictional works. Fiction writers maybe able to more persuasively, or more accurately, express themselves by weaving into the take persons or events familiar to their readers. The choice is theirs. No author should be forced into creating mythological worlds or characters divorced from reality. The right of publicity does not confer a shield to ward off caricature, parody or satire. Rather, prominence invites creative comment. Surely, the range of free expression would be meaningfully reduced if prominent persons in the present and recent past were forbidden topics for the imaginations of authors of fiction.”

Noriega v. Activision, Cal. Sup. Ct. (Oct. 27, 2014) (quoting Guglielmi v. Spelling-Goldberg Productions, 25 Cal. 3d 860, 869 (Cal. S. Ct. 1979)

Noriega v. Activision: California State Law

“Noriega’s right of publicity is outweighed by defendants’ First Amendment right to free expression.”

Plaintiff places great reliance [on] Keller v. Elec. Arts Inc., 724 F.3d 268 (9th Cir. 2013). First, that case is not binding on this Court. Further, to the extent that Keller suggests that the entirety of the disputed work should not be considered under the second prong of the anti-SLAPP analysis, such reasoning is in conflict with the controlling California authorities . . .

Noriega v. Activision, Cal. Sup. Ct. (Oct. 27, 2014)

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) Michael Jordan ) v. ) Jewel Food Stores )

TM Infringement 1st A Right of Publicity Defense Shield

Ad is commercial speech and hence entitled to a lesser degree of Constitutional immunity. Jordan’s trademark and right of publicity claims may proceed.

Jordan v. Jewel Food Stores, 743 F.3d 509 (7th Cir. 2014)

Injunctive Relief §34 Injunctive Relief • Preliminary and Permanent Injunctions Four-Factor Test eBay v. MercExchange 1. irreparable harm 2. adequacy of 3. balance of equities 4. public interest

• Prior to eBay, courts routinely presumed irreparable harm upon a showing of likelihood of success • Courts have shifted away from the presumption of irreparable harm Herb Reed Enterprises v. Florida Entertainment Management, 736 F.3d 1239, 1248-51 (9th Cir. 2013); N. Am. Med. Corp. v. Axiom Worldwide, Inc., 522 F.3d 1211, 1228–29 (11th Cir. 2008); Audi AG v. D’Amato, 469 F.3d 534, 550 (6th Cir. 2006) (permanent injunction)

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Injunctive Relief §34 Injunctive Relief • Preliminary and Permanent Injunctions Four-Factor Test eBay v. MercExchange 1. irreparable harm 2. adequacy of 3. balance of equities 4. public interest

• No presumption of irreparable harm • Qualified Injunctions – disclaimers, prefixes, suffixes, altered logos, geographic limitations • Corrective Advertising §36 Destruction of Infringing Articles §37 Cancellation of Registration

* * * Several considerations * * * convince us that a limited injunction will suffice. Both parties have used their trademarks for over a decade. * * * There is little doubt both parties honestly desire to avoid confusion of their products. Nescher adopted the Sleekcraft name in good faith and has subsequently taken steps to avoid confusion. Use of the Nescher logo in all facets of the business would ensure that confusion would not occur. * * * Thus, in “balancing the conflicting interests both parties have in the unimpaired continuation of their trade-mark use”, and the interest the public and the trade have in avoiding confusion, we conclude that a limited mandatory injunction is warranted. Upon remand the district court should consider the above interests in structuring appropriate relief. At minimum, the logo should appear in all advertisements, signs, and promotional materials prepared either by appellee or by his retail dealers, and on all appellee's business forms except those intended for strictly internal use. A specific disclaimer of any association with AMF or the Slickcraft line seems unnecessary, nor do we think it necessary to enjoin Nescher from expanding his product line. In its discretion the district judge may allow appellee sufficient time to consume supplies at hand and to add the logo to more permanent assets, such as business signs. AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979)

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Reverse Confusion

200 Dealers leading national manufacturer BIG FOOT AT-Dual Groove and dealer THE ULTIMATE ALL-TERRAIN LIGHT TRUCK TIRE Goodyear Bigfoot

$6 million Advertising Budget

Spring 1974 Fall 1974

Damages §35

(a) Profits, Money Damages, attorney fees: • Notice required - either: (1) §29 Notice: ® Registered in U.S. Patent and Trademark Office Reg. U.S. Pat. & T. Off. (2) Actual Notice – e.g., cease and desist letter

(b) Treble Damages for willful use of a counterfeit mark

(d) Election of Statutory Damages (domain names)

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Damages §35: Attorney Fees §35(a) “The court in exceptional cases may award reasonable attorney fees to the prevailing party.”

• same boats, teaching curriculum, itineraries, and procedures for student feedback • website uses identical marketing, including FW boat • “student testimonials” from students who took classes with VISS founder while he worked at FW

Consistent with Octane Fitness, a district court may find a case “exceptional,” and therefore award attorney fees to the prevailing party, if “(a) there is an unusual discrepancy in the merits of the positions taken by the parties or (b) the losing party has litigated the case in an ‘unreasonable manner.’” • while culpability may play a role in determining whether a case is “exceptional, ” it is not required. Fair Wind Sailing, Inc. v. Dempster, 764 F.3d 303 (3d Cir. 2014)

Trademark Counterfeiting Remedies

Criminal Sanctions: 18 U.S.C. §2320 – felony to knowingly use a counterfeit mark in connection with the sale of goods or services • fines • imprisonment Seizure of Counterfeit Goods and Records of Sale on an Ex Parte Application: §34(b) Destruction of Infringing Articles §36