Written by Bryse K. Thornwell In Yuga Labs, Inc. v. Ripps, et al, No. 2:22-CV-04355 (C. D. Cal. Apr. 21, 2023), Judge John F. Walter explored the use of trademarks in the world of non-fungible tokens (“NFTs”), which are tokenized assets that have been recorded on a blockchain. As intellectual property disputes continue to arise in the world of NFTs, the key issues that the … Continue reading Are Virtual Goods Still Goods for Trademark Purposes?
Written by Lindsay R. Edelstein and Marissa B. Lewis The Eleventh Circuit recently affirmed the Northern District of Florida’s summary judgment decision in MGFB Props., Inc., et al. v. Viacom, Inc., holding that use of the name MTV Floribama Shore for a reality show spin-off of Jersey Shore is protected by the First Amendment and does not infringe the trademark of a well-known bar called Flora-Bama Lounge. … Continue reading The Eleventh Circuit Rules in Favor of Floribama Shore Creators and Opines on the Future of the “Title-Versus-Title Exception” to the Rogers v. Grimaldi Defense
Written by Chloe N. George This week, the Ninth Circuit affirmed the Central District of California’s summary judgment in favor of AJ Press, LLC, owner of Punchbowl News, against Punchbowl, Inc. in a trademark infringement action under the Lanham Act. The Ninth Circuit applied the Rogers test, established by Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989) and adopted by the Ninth Circuit in … Continue reading 9th Circuit Applies Rogers Test to “Punchbowl” Case
Written by Brandon E. Hughes The U.S. Supreme Court is poised to review the extraterritorial reach of the Lanham Act in a case that may significantly impact the manner in which trademark owners police and protect their marks abroad. In Abitron Austria GmbH, et al. v. Hetronic International, Inc., No. 21-1043, 2022 WL 16703748 (U.S. Nov. 4, 2022), the Court will consider whether the Tenth … Continue reading SCOTUS to Weigh In on Extraterritorial Reach of the Lanham Act
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”
Written by Alesha M. Dominique and Caen A. Dennis On November 17, 2021, the United States Patent and Trademark Office (USPTO) issued its highly anticipated final rule, which amends the rules of practice in trademark cases to implement provisions of the Trademark Modernization Act of 2020 (TMA). Many parts of the final rule will go into effect on December 18, 2021, with other portions effective on December 1, 2022. … Continue reading The Dawn of a New Day: USPTO Implements the TMA
Written by Lillian Lee On August 6, 2021, the United States District Court for the Central District of California held that a trademark owner could proceed on a claim of direct trademark infringement against a blogger and social media “influencer.” The court’s ruling highlights the possibility that brand influencers may be held liable for trademark infringement in connection with the products they promote. Petunia Products, … Continue reading Trademark Liability for Social Media Influencers? C.D. Cal. Court Says It’s Possible.
Written by Alesha M. Dominique and Lindsay R. Edelstein The U.S. Patent and Trademark Office (USPTO) tribal insignia trademark program allows Native American tribes to include tribal insignias in the USPTO’s database at no charge. The USPTO’s waiver of application fees is intended to foster adequate protections for Native American tribes’ intellectual property and cultural heritage. The tribal insignia database has been a component of … Continue reading No “Fees or Forms” Required for Inclusion of Native American Tribal Insignias in USPTO Database
Written by Lillian Lee On January 28, 2021, the U.S. District Court for the Northern District of California addressed an online retailer’s liability for copyright and trademark infringement arising out of its users’ submissions. Atari Interactive, Inc. v. Redbubble, Inc., Case No. 4:18-cv-03451. The court on cross-motions for summary judgment deferred on most issues, holding that Plaintiff Atari Interactive, Inc. (“Atari”) could proceed on some … Continue reading Bursting the [Red]Bubble? Northern District of California Considers Online Retailer’s Scope of Liability for Copyright and Trademark Infringement
Written by Marissa B. Lewis Yesterday, Congress’s omnibus spending and COVID-19 relief bill, H.R. 133, was signed into law. Buried in the legislation are two new acts that potentially have sweeping implications for intellectual property owners. The Trademark Modernization (“TM”) Act and the Copyright Alternative in Small-Claims Enforcement (“CASE”) Act introduce measures that are poised to significantly impact the way that trademark and copyright owners … Continue reading Another COVID-19 Surprise: Important New Trademark and Copyright Legislation Buried In Spending and Relief Package