Get Lucky: U.S. Supreme Court Overturns ‘Defense Preclusion’ Ruling in Trademark Lawsuit

Written by Albina Gasanbekova
Edited by Robert H. Rotstein

Last week, the U.S. Supreme Court decided Lucky Brand Dungarees Inc. v. Marcel Fashions Group Inc., No. 18-1086, 2020 WL 2477020 (U.S. May 14, 2020), a trademark case involving the scope of claim preclusion as the doctrine applies to defenses.  Although recognizing that claim preclusion can apply to bar defenses, the Court explained that the so-called “defense preclusion” is an invalid application of res judicata when the earlier suit involved different trademarks, different legal theories, and different conduct occurring at different times.

Three Lawsuits and Nearly Twenty Years of Litigation

Lucky Brand and Marcel Fashions Group are competitors in the apparel industry who have been battling each other for decades.  The first lawsuit began in 2001, when Marcel, the owner of the trademark “Get Lucky,” accused Lucky Brand of violating trademark law by using the phrase “Get Lucky” in advertisements.  That litigation resulted in settlement, in which Lucky Brand agreed to stop using the words “Get Lucky” in their branding in return for Marcel Fashion’s release of certain claims against Lucky Brand.  The second lawsuit between the parties began in 2005, when Lucky Brand accused Marcel Fashions of copying its designs and logos for a new clothing line.  Marcel Fashions responded with counterclaims, alleging that Lucky Brand had continued to use Marcel’s “Get Lucky” mark in violation of the settlement agreement.  Notably, Marcel had not claimed that Lucky Brand’s use of its own marks alone—that is, independently of any use of “Get Lucky”—infringed on Marcel’s “Get Lucky” mark.  Marcel ultimately prevailed in the 2005 lawsuit, permanently enjoining Lucky Brand from using a catchphrase “Get Lucky.”

Continue reading “Get Lucky: U.S. Supreme Court Overturns ‘Defense Preclusion’ Ruling in Trademark Lawsuit”

Attorney Fees Are Recoverable in Declaratory Relief Action for Copyright Abandonment, Ninth Circuit Holds

Written by Tiana A. Bey

On May 13, 2020, the Ninth Circuit opened the door for courts to award attorney’s fees to parties seeking or defending against equitable relief actions that may implicate the Copyright Act.  In Doc’s Dream v. Dolores Press, Inc., No. 18-56073 (9th Cir. May 13, 2020), the Circuit held broadly that “any action that turns on the existence of a valid copyright and whether that copyright has been infringed” is properly within the scope of attorney’s fees recoverable pursuant to the fee-shifting provision of the Copyright Act.  And it applied that holding to the particular claim for declaratory relief before it, namely whether a party had abandoned a copyright.

Section 505 of the Copyright Act, 17 U.S.C. § 505, provides a court with discretion to “award a reasonable attorney’s fee to the prevailing party” as a part of the recoverable cost incurred “in any civil action under” the Copyright Act.  Doc’s Dream presented a “first impression” issue: whether a declaratory relief claim concerning the judicially-created “copyright abandonment” doctrine qualifies as an action under the Copyright Act.  To address this question, the Circuit had to decide whether a determination of copyright abandonment required a “construction” of the Copyright Act, and it answered in the affirmative. Continue reading “Attorney Fees Are Recoverable in Declaratory Relief Action for Copyright Abandonment, Ninth Circuit Holds”

Judging a Book by Little More than Its Cover: TTAB Finds that Single Book May Meet Trademark-Use Test

Written by Eleanor M. Lackman and Adé Jackson

A recent precedential opinion from the U.S. Patent & Trademark Office Trademark Trial and Appeal Board (TTAB), Shannon DeVivo v. Celeste OrtizOpposition No. 91242863 (TTAB Mar. 11, 2020), challenges the well-established concept that a single title of a book cannot be a trademark, leaving a wide opening for those who seek to register terms previously considered non-registerable.

In the DeVivo proceeding, Celeste Ortiz sought to register the term ENGIRLNEER for cups and mugs, lanyards, and shirts and sweatshirts.  Shannon DeVivo, the owner of two pending trademark applications for the term for children’s books, notebooks, and a website offering information to young women and girls seeking careers in stem cell research opposed the application, citing likely confusion.  On an accelerated case procedure, the TTAB sustained the opposition, partly relying on the fact that DeVivo had used ENGIRLNEER on the cover of a single book, which the TTAB surprisingly found to be a trademark use. Continue reading “Judging a Book by Little More than Its Cover: TTAB Finds that Single Book May Meet Trademark-Use Test”

Board Limits Employer-Friendly Unilateral Change Rule’s Application Following Expiration of CBA

Written by Jonathan Turner and Grant Goeckner 

Spoiler Alert – unless you regularly deal with collective bargaining agreements you may find this a tad wonky.

As we have seen over the time of the current administration, the National Labor Relations Board (“Board”) has applied a more business-friendly approach when deciding cases arising under the National Labor Relations Act (“NLRA”).  While many of those cases have re-examined prior Board precedents set during the Obama administration, the current Board’s willingness to reverse course is not without limit, as we recently saw in Nexstar Broadcasting, Inc. d/b/a KOIN-TV, 369 NLRB No. 61.  In Nexstar, the employer asked the Board to extend the reach of the “contract coverage” rule adopted by the Board in late 2019 in M.V. Transportation, Inc., 368 NLRB No. 66.  That rule set forth a new standard for determining when an employer’s action taken in reliance on contractual provisions under a collective bargaining agreement (“CBA”) constitutes a “unilateral change” in violation of the NLRA.  Under the new standard, which we discussed in a prior client alert, the Board held that if an employer makes a change to working conditions without bargaining with the union, the Board will first look to whether the plain language of the CBA grants the employer the right to make the change.  If the CBA permits the action, there is no violation of the NLRA.  If the CBA does not, further analysis is needed.  [Full Alert Available Here]. Continue reading “Board Limits Employer-Friendly Unilateral Change Rule’s Application Following Expiration of CBA”

COVID-19 Client Communication, Vol. 16

Below please find our latest alerts regarding COVID-19’s effect on various policies and laws. Feel free to read and share, and contact us if there is anything we can do to help you or your business maintain compliance in this ever-evolving situation. How Can Grocery Stores Protect Themselves? As citizens lose patience with the stay-at-home orders, we can expect a surge in protests. Grocery stores … Continue reading COVID-19 Client Communication, Vol. 16

How Can Grocery Stores Protect Themselves?

Preparing for Grocery Store Protests

Written by Emily F. Evitt

As Californians lose patience with the stay-at-home orders, we can expect more protests across the state.  And as customers face shortages and stores enforce limits on their purchases, protests at grocery stores may be particularly likely.  How can grocery stores protect themselves?

California’s Constitution grants broader free speech rights than the First Amendment.  Indeed, under certain circumstances – namely cases involving shopping malls – courts have held that California’s free speech right extends to private property where that property is the functional equivalent of a traditional public forum.  See Robbins v. Pruneyard Shopping Center, 23 Cal. 3d 899 (1979). Continue reading “How Can Grocery Stores Protect Themselves?”

Protecting At-Risk Employees

Employers Cannot Exclude At-Risk Employees, Says EEOC in New Return-to-Work Guidance 

Written by Jeremy Mittman and Carly Epstein

The EEOC recently answered the question whether employers can bar from the workplace employees who, according to the CDC, are at a “higher risk for severe illness” if they get COVID-19.

In the words of the EEOC in its press release: “It is important that employers understand that the ADA does not allow them to act against employees solely because the employee has a CDC-listed underlying medical condition.”

An employer cannot exclude — or take any other adverse action against — an employee solely because he/she falls within the CDC identified high risk category.  Instead, the employer must determine whether the “employee’s disability poses a ‘direct threat’ to his health that cannot be eliminated or reduced by reasonable accommodation.” Continue reading “Protecting At-Risk Employees”