Tag: First Amendment

Intellectual Property

MSK Obtains Win for Activision in Battle Over Use of the Title “Warzone”

Written by Lindsay R. Edelstein On August 15, 2022, in Activision Publishing, Inc. v. Warzone.com, LLC, Judge Fernando L. Aenlle-Rocha of the Central District of California granted Activision’s motion to dismiss Defendant Warzone.com, LLC’s counterclaim alleging trademark infringement, unfair competition, and false advertising under the Lanham Act and California law.  The Court also granted Activision’s motion for judgment on the pleadings, finding that Activision’s use of the … Continue reading MSK Obtains Win for Activision in Battle Over Use of the Title “Warzone”

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Intellectual Property

Deepfakes and Rights for the Dead: New York Adds a Post Mortem Publicity Right and Penalizes Sexually Explicit Deepfakes

Written by Timothy M. Carter On Monday, November 30, 2020, New York Governor Andrew Cuomo signed into law legislation (S5959D / A.5605-C, which we’ll refer to as the “Statute”) establishing, among other things, a new post-mortem “right of publicity.”  We explain here the key points to know about the new law. New York’s new post-mortem right is similar to the existing right of publicity protections … Continue reading Deepfakes and Rights for the Dead: New York Adds a Post Mortem Publicity Right and Penalizes Sexually Explicit Deepfakes

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Intellectual Property

The Privilege to Speak One’s Mind: New York Broadens Its Anti-SLAPP Statute

Written by Timothy M. Carter The broad speech protections provided by the First Amendment are emblematic of a “profound national commitment to the principle that debate on public issues should be uninhibited, robust, and wide-open[.]”  New York Times v. Sullivan, 376 U.S. 254, 269–70 (1964).  While this unfettered commitment to free speech may shield a speaker from the chill of liability, practically speaking, it often … Continue reading The Privilege to Speak One’s Mind: New York Broadens Its Anti-SLAPP Statute

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Intellectual Property

District Court of Colorado Departs From the Rogers Test in Documentary Trademark Suit

Written by Eleanor M. Lackman and Lillian Lee On May 8, 2020, the U.S. District Court for the District of Colorado granted National Geographic’s motion to dismiss an amended complaint for trademark infringement, unfair competition, and deceptive trade practices.  Stouffer v. National Geographic Partners, LLC, No. 18-cv-3127 (May 8, 2020). In doing so, the court addressed “the question of what protections the First Amendment provides … Continue reading District Court of Colorado Departs From the Rogers Test in Documentary Trademark Suit

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Intellectual Property

Freedom of Squeak: The Ninth Circuit Finds First Amendment Protection For Parody Dog Toy

Written by Marc E. Mayer and Theresa B. Bowman

In VIP Products v. Jack Daniel’s Properties, Inc., No. 18-16012 (9th Cir. March 31, 2020), the Court of Appeals for the Ninth Circuit held this week that a rubber dog toy designed to resemble a bottle of Jack Daniel’s Black Label Tennessee Whiskey — the “Bad Spaniels Silly Squeaker” — is an “expressive work” and therefore entitled to interpose a First Amendment defense against the whiskey company’s trademark infringement claims.

The lawsuit began in 2014 when Jack Daniel’s demanded that VIP Products stop selling the Bad Spaniels on trademark infringement grounds.  The manufacturer filed suit asking an Arizona District Court to weigh in and determine whether the whiskey bottle was entitled to trademark protection at all.  Jack Daniel’s responded with trademark infringement and trademark dilution claims, arguing that the dog toy diluted the commercial power, meaning and value of its brand by tarnishing what the image of the iconic whiskey bottle represents.  The District Judge agreed with Jack Daniel’s that there was a high likelihood of consumer confusion between the products and ordered VIP Products to stop making and selling the Bad Spaniels toy. Continue reading “Freedom of Squeak: The Ninth Circuit Finds First Amendment Protection For Parody Dog Toy”

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Intellectual Property

MSK Scores a Win for Activision in “Call of Duty” Trademark Litigation

Written by Lillian Lee and Timothy M. Carter

On March 31, 2020, District Judge George B. Daniels of the Southern District of New York granted MSK’s motion for summary judgment filed by Video Game Practice Co-Chairs Karin Pagnanelli and Marc E. Mayer on behalf of Activision Blizzard, Inc., Activision Publishing, Inc., and Major League Gaming Corp. (“Defendants”), dismissing all of Plaintiff AM General’s claims for trademark and trade dress infringement, unfair competition, false designation of origin, false advertising, and dilution under the Lanham Act and New York law.  AM General, the manufacturer of the High Mobility Multipurpose Wheeled Vehicle (colloquially known as the Humvee), filed its suit in November 2017, alleging that some of Activision’s popular Call of Duty games and associated strategy guides and toys depicted the Humvee without AM General’s authorization. Continue reading “MSK Scores a Win for Activision in “Call of Duty” Trademark Litigation”

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Intellectual Property

YouTube May Be An Enormous Town Square, But It’s Still Not Subject to The First Amendment

Photo Credit: istock.com/Mack15

Written by Theresa B. Bowman

In Prager University v. Google LLC, et al., Case No. 18-15712 (9th Cir. Feb. 26, 2020), the Court of Appeals for the Ninth Circuit dismissed a First Amendment lawsuit against YouTube late last week, holding that the video hosting giant is a private forum that is free to foster particular viewpoints – and need not be content-neutral.  The victory is a significant message to other online content hosts, aggregators and service providers that they need not feel threatened by censorship claims for selecting and curating content on their systems.

The lawsuit began in 2017, when conservative media company PragerU sued YouTube for imposing restrictions on some of PragerU’s short animated educational videos.  YouTube tagged several dozen videos for age-restrictions and disabled third party advertisements on others.  PragerU claimed the restrictions constituted censorship because they muted conservative political viewpoints. Continue reading “YouTube May Be An Enormous Town Square, But It’s Still Not Subject to The First Amendment”

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Intellectual Property, MSK Blog

The Federal Circuit Strikes Ban on Registering “Immoral” or “Scandalous” Trademarks

Trademark sign
Photo credit: iStock.com/devke

By Alesha Dominique

The U.S. Court of Appeals for the Federal Circuit (“Federal Circuit”) has struck down the Lanham Act’s ban on the registration of “immoral” or “scandalous” trademarks as an unconstitutional restriction of free speech under the First Amendment.  See In re: Erik Brunetti, No. 2015-1109 (Fed. Cir. Dec. 15, 2017).  The ruling comes less than six months after the U.S. Supreme Court’s decision in Matal v. Tam, 137 S. Ct. 1744 (2017), in which it similarly struck down the Lanham Act’s ban on “disparaging” marks as unconstitutional under the First Amendment.

Continue reading “The Federal Circuit Strikes Ban on Registering “Immoral” or “Scandalous” Trademarks”

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