Gassis v. Corkery

This is the latest installment of unfortunate litigation over control of a charitable corporation created to help the suffering people of Sudan. The Plaintiff is the former Chairman of the Board of Directors, and was removed as a director and member of the corporation effective September 21, 2013. The principal remaining issues involve allegations that the corporation used the Plaintiff’s trademarked property—his name and likeness—to raise funds for its charitable purposes, after the Plaintiff was removed as Chairman and member of the corporation. According to the Plaintiff, that removal terminated the corporation’s license to use his name and likeness. The Plaintiff, however, has not sued the corporation, but only certain board members as individuals. There are no allegations in the Amended Complaint which, if true, could sustain a claim that these individuals expropriated property of the Plaintiff for their own purposes, or that they took actions to cause the corporation to improperly exploit the Plaintiff’s name and likeness. For that reason, the Plaintiff’s various claims based on use of his trademarks must be dismissed.

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StonCor Grp, Inc. v. Specialty Coatings, Inc.

This is a trademark case. The appellant, StonCor Group, Inc., owns the registered trademark “STONSHIELD.” When a different company, Specialty Coatings, Inc., sought registration of a competing mark, “ARMORSTONE,” StonCor opposed the registration, asserting a likelihood of confusion between ARMORSTONE and STONSHIELD and that ARMORSTONE is merely descriptive of Specialty Coatings’ products. The Board dismissed StonCor’s opposition, finding no likelihood of confusion and that ARMORSTONE was not merely descriptive. StonCor appeals. Although the Board erred in part of its analysis, namely its conclusion that STONSHIELD would not be pronounced as “STONE SHIELD,” the error is harmless because the Board’s dismissal is supported by substantial evidence and in accordance with the law. Thus, we affirm.

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In re: Nordic Naturals, Inc.

This case is on appeal from the Trademark Trial and Appeal Board (“Board”) at the United States Patent and Trademark Office. Appellant Nordic Naturals, Inc. (“Nordic”) sought to register CHILDREN’S DHA, in standard characters, for “nutritional supplements containing DHA.” “DHA” is the abbreviation for docosahexaenoic acid, an omega-3 fatty acid that assists in brain development. The Board affirmed the examining attorney’s rejection of the mark as generic or, in the alternative, as merely descriptive and lacking acquired distinctiveness. Because the Board’s conclusion that the mark is generic is supported by substantial evidence, we affirm.

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McAirlaids, Inc. v. Kimberly-Clark Corp.

McAirlaids, Inc. filed suit against Kimberly-Clark Corp. for trade-dress infringement and unfair competition under §§ 32(1)(a) and 43(a) of the Trademark Act of 1946 (“Lanham Act”), 15 U.S.C. §§ 1114(1)(a) and 1125(a), and Virginia common law. The district court granted summary judgment in favor of Kimberly-Clark, and McAirlaids appeals. Because questions of fact preclude summary judgment, we vacate and remand.

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Airs Aromatics v. Victoria's Secret

The panel affirmed the district court’s dismissal of a trademark cancellation claim under § 37 of the Lanham Act. The panel held that the trademark cancellation claim would not provide an independent basis for subject matter jurisdiction standing alone. The panel also held that the plaintiff failed to state a claim for trademark infringement because it failed sufficiently to allege continuous usage of the mark.

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Experience Hendrix v. HendrixLicensing.com

The panel affirmed in part, reversed in part and vacated in part the district court’s decision in trademark litigation concerning a dispute over the commercial use of a deceased celebrity’s image, likeness, and name.

Experience Hendrix, LLC, which owns trademarks that it uses to sell and license products related to deceased rock legend Jimi Hendrix, alleged that defendants were licensing merchandise that infringed Experience Hendrix’s trademarks. The panel reversed the district court’s determination that Washington’s Personality Rights Act is unconstitutional, and remanded defendant’s declaratory judgment claims pertaining to the Act with instructions to enter summary judgment on those claims in favor of Experience Hendrix.

The panel affirmed the district court’s decision granting Experience Hendrix partial summary judgment on its claim that defendant’s use of “Hendrix” in its domain names infringed Experience Hendrix’s mark “Hendrix.” The panel vacated the permanent injunction and remanded so that the district court could revise language in the injunction to clarify what conduct is and is not enjoined. The panel reversed in its entirety the district court’s Fed. R. Civ. P. 50(b)(3) decision to strike most of the jury’s award of damages under both the federal Lanham Act and Washington’s Consumer Protection Act. The panel affirmed the district court’s order granting a new trial on damages under both of these statutes and remanded for a new trial on such damages. The panel vacated the district court’s award of attorney’s fees under Washington’s Consumer Protection Act and remanded the fee request for further proceedings. Judge Rawlinson concurred in part, and dissented in part.

Judge Rawlinson concurred in much of the majority’s opinion, but dissented from the majority’s holding that a new trial is warranted on the issue of damages. Judge Rawlinson would remand for reinstatement of the damages awarded by the jury, and for an award of attorney’s fees to Experience Hendrix as the prevailing party.

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Hokto Kinoko Co. v. Concord Farms, Inc.

The panel affirmed the district court’s summary judgment and permanent injunction against the defendant in a trademark infringement action brought by a marketer of organic mushrooms.

The plaintiff alleged that the defendant wrongly imported and marketed mushrooms under the plaintiff’s marks for Certified Organic Mushrooms even though the imported mushrooms were cultivated in Japan under nonorganic standards by the plaintiff’s parent company. The defendant counterclaimed against the plaintiff and its Japanese parent, challenging the validity of the marks.

The panel applied principles of law governing “graymarket goods,” or goods legitimately produced and sold abroad under a particular trademark, and then imported and sold in the United States in competition with the U.S. trademark holder’s products. The panel held that trademark law extended to the imported mushrooms because they materially differed from the plaintiff’s product both in their production and in their packaging and thus were not “genuine goods” of the plaintiff. The panel affirmed the district court’s conclusion that there was no genuine dispute of material fact as to whether the defendant’s marketing in the United States of foreign-produced nonorganic mushrooms under the plaintiff’s marks created a likelihood of consumer confusion.

The panel affirmed the district court’s grant of summary judgment in favor of the plaintiff on the defendant’s claim that the plaintiff’s trademark registration should be cancelled for fraud. The panel also held that Japanese parent company did not abandon its right to the exclusive use of the marks by engaging in “naked licensing,” or licensing the marks to the plaintiff without providing for a mechanism to oversee the quality of the mushrooms the plaintiff sold under them.

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Louis Vuitton Malletier, S.A. v. Mosseri

In this federal trademark infringement case, appellant Joseph Mosseri appeals the district court’s denial of his motion under Federal Rule of Civil Procedure 60(b)(4) to vacate a default judgment entered against him. Appellant Mosseri does not contest that he was personally served with the lawsuit, that he received the motion for default judgment, and that he did not respond at all. Rather, over six months after service, Mosseri filed a Rule 60(b)(4) motion contending that the judgment is void because the district court in Florida lacked jurisdiction over his person. After careful review, and with the benefit of oral argument, we conclude that the district court did not commit reversible error in denying Mosseri’s motion, and we affirm.

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Apple, Inv. v. Samsung Elecs. Co.

Apple Inc. appeals from an order of the U.S. District Court for the Northern District of California denying Apple’s request for a permanent injunction against Samsung Electronics Company, Ltd., Samsung Electronics America, Inc., and Samsung Telecommunications America, LLC (collectively, “Samsung”). See Apple Inc. v. Samsung Elecs. Co., 909 F. Supp. 2d 1147 (N.D. Cal. 2012) (“Injunction Order”). Apple sought to enjoin Samsung’s infringement of several of Apple’s design and utility patents, as well as Samsung’s dilution of Apple’s iPhone trade dress. We affirm the denial of injunctive relief with respect to Apple’s design patents and trade dress. However, we vacate the denial of injunctive relief with respect to Apple’s utility patents and remand for further proceedings.

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1-800 Contacts v. Lens.com, et al

The Lanham Act, 15 U.S.C. §§ 1051–1127, prohibits the infringement of trademarks (used to identify products) and service marks (used to identify services). It was enacted in 1946, but because it speaks in general terms it can be applied to technologies unimagined at the time of enactment. One such technology, the Internet, has created a number of challenging issues. The case before us concerns Internet search engines, which present advertisers with new means of targeting prospective customers and therefore new possibilities for claims under the Lanham Act. The dispute arises out of advertising through AdWords, a program offered by the Internet search engine Google. An advertiser using AdWords pays Google to feature one of its ads onscreen whenever a designated term, known as a keyword, is used in a Google search. We must resolve whether the Lanham Act was violated by an advertiser’s use of keywords that resembled a competitor’s service mark. For the most part, we hold that there was no violation. Plaintiff 1-800 Contacts, Inc. (1-800) dominates the retail market for replacement contact lenses. It owns the federally registered service mark 1800CONTACTS. Defendant Lens.com, Inc. is one of 1-800’s competitors. To police the use of its mark, 1-800 enters different variations of the mark into Google searches and monitors what search results are displayed. When 1-800 found that several searches generated paid ads for Lens.com’s websites, it concluded that Lens.com had reserved the mark as a keyword. After attempting to resolve the situation informally, 1-800 sued Lens.com for service-mark infringement. Its primary claim was that Lens.com itself had infringed the 1800CONTACTS mark by purchasing keywords resembling the mark. According to 1-800, this conduct had directed potential customers for 1-800 to Lens.com by creating what is known as “initial-interest confusion,” which can be actionable under the Lanham Act. As the case progressed, 1-800 supplemented its claim of direct infringement by alleging that certain third-party marketers hired by Lens.com, known as affiliates, had also purchased keywords resembling the mark and that at least one affiliate was using the mark in the text of its online ads. 1- 800 sought to hold Lens.com secondarily liable for its affiliates’ conduct. The theories of secondary liability, which will be discussed more fully below, were common-law agency and contributory infringement. The district court awarded summary judgment to Lens.com on all claims. On the direct-liability claim and most of the secondary-liability claims, the court ruled that 1-800 had raised no genuine issue of fact regarding the likelihood of initial-interest confusion. On the remaining secondary-liability claims—which concerned the use of 1-800’s mark in the content of ads displayed on Google’ssite—the court ruled that 1-800’s evidence was insufficient to hold Lens.com liable for any misconduct of its affiliates. 1-800 appeals the summary judgment. To the extent that the court based summary judgment on the ground that no likelihood of confusion existed, we affirm. Traditional analysis and actual marketplace data reveal that the keyword use by Lens.com and its affiliates was highly unlikely to divert consumers. As for the remaining secondary-liability claims, we affirm the denial of liability under agency law because the affiliates, even if agents (or more precisely, subagents) of Lens.com, lacked authority to include 1-800’s mark in ads for Lens.com. But we reverse the denial of liability for contributory infringement because the evidence could support a reasonable finding that Lens.com did not take reasonable steps to halt the display of 1-800’s marks in affiliate ads once it learned of such display. Also, we affirm the discovery sanction challenged by Lens.com on crossappeal (but decline to award 1-800 its attorney fees for defending the sanction in this court), and we affirm the denial of Lens.com’s district-court motion for attorney fees.

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