Intellectual Property and Tech Law Reports

Tiffany v. eBay Tossed Out at High Court

by Lee Ross | November 29, 2010

If you're thinking of buying Tiffany jewelry on eBay you might want to know there's a good chance the diamond ring or silver necklace you're looking at is fake. Tiffany knows it. And so does eBay. But that fact apparently didn't sway the Supreme Court which Monday decided against hearing arguments in a dispute over eBay's obligation to stop online auctions of bogus Tiffany jewelry.

The nearly two-century old retailer claims eBay violates federal trademark law by allowing its merchandise to be sold even with the knowledge that many items are illegitimate.

Lower courts have sided with the online marketplace powerhouse concluding that Supreme Court precedents only require eBay to remove listings it specifically knows is auctioning bogus merchandise. Judges have determined that a generalized knowledge of impropriety is insufficient. Monday's high court decision effectively affirms that judgment.

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DSPT INTERNATIONAL INC v. NAHUM

Even if a domain name was put up innocently and used properly for years, a person is liable under 15 U.S.C. § 1125(d) if he subsequently uses the domain name with a bad faith intent to profit from the protected mark by holding the domain name for ransom. The evidence sufficiently supported the jury’s verdict that Nahum did so, causing $152,000 in damages to DSPT.

AFFIRMED.

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Federal Treasury Enterprise Sojuzplodoimport v. Spirits Int'l. N.V.

Plaintiffs-appellants appeals from a final judgment of the United States District Court for the Southern District of New York (Daniels, J.) dismissing claims alleging violations of the Lanham Act and common law. In this opinion, we reject the district court’s conclusion that plaintiff was barred from challenging the validity of the assignment of the trademarks at issue in federal court because those trademarks had become “incontestable” pursuant to 15 U.S.C. § 1065. Accordingly, we vacate and remand with regards to plaintiff’s trademark, misappropriation, and unfair competition claims. In a summary order filed contemporaneously with this opinion, we affirm the district court’s dismissal of plaintiff’s fraud and unjust enrichment claims.

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Beverly Stayart v. Yahoo

Like many, Beverly Stayart was curious about what she would find when she put her name into a search engine. In this case it was Yahoo. To her dismay, the comprehensive search results eventually contained links to websites and advertisements that she found shameful. She then sued Yahoo and the other defendants alleging trademark infringement and a host of state law claims. The district court dismissed her complaint, finding she lacked standing under the Lanham Act to sue for trademark infringement. She appeals, and because we agree that Stayart lacks standing under the Lanham Act, we affirm.

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Bosem v. Musa Holdings, Inc.

Dr. Marc Bosem seeks review of the decision of the Fourth District Court of Appeal in Bosem v. Musa Holdings, Inc., 8 So. 3d 1185 (Fla. 4th DCA 2009), on the ground that it expressly and directly conflicts with a decision of this Court in Argonaut Ins. Co. v. May Plumbing Co., 474 So. 2d 212, 215 (Fla. 1985), on whether a plaintiff is entitled to prejudgment interest on lost profits where the amount of damages was determined by the trial judge in the final judgment. We have jurisdiction. See art. V, § 3(b)(3), Fla. Const. In order to resolve the conflict between these cases, this Court must do nothing more than reassert its established precedent. For the reasons expressed below, we conclude that this Court‟s precedent has remained unchanged for over one century, and that prejudgment interest is a matter of right under the prevailing “loss theory” of recovery for pecuniary damages, i.e., damages for economic or tangible losses. Accordingly, we quash the Fourth District‟s decision in Bosem.

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Georgia-Pacific Consumer Products v. Myers Supply, Inc.

Following a bench trial, the district court1 entered judgment for Myers Supply, Inc. on Georgia-Pacific Consumer Products LP’s claim for contributory trademark infringement. Earlier, the district court granted summary judgment to Myers, on Georgia-Pacific’s claim for tortious interference with contractual relationship. Georgia-Pacific appeals. Having jurisdiction under 28 U.S.C. § 1291, this court affirms.

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Seller Agency Council, Inc. v. Kennedy Ctr. for Real Estate Educ., Inc.

Appellants Joe Kennedy (“Kennedy”) and the Kennedy Center for Real Estate Education, Inc. (“KCREE”) appeal the district court’s order denying them damages, attorneys’ fees, and costs in an action for trademark infringement against Appellees Seller Agency Council, Inc. (“SAC”), RealtyU, Inc. (“RealtyU”), and Stefan Swanepoel (“Swanepoel”). The district court found that Appellants are the owners of the trademarks in question, but it also determined that Appellants consented and acquiesced to the use of the marks by Appellees. Appellants argue that the district court erred in finding consent and acquiescence. We affirm in part, vacate in part, and remand for further proceedings consistent with this opinion.

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Bodum USA, Incorpora v. La Cafetier

From the mid-1950s through 1991, Société des Anciens Etablissements Martin S.A. (“Martin”) distributed a successful French-press coffee maker known as the Chambord. A French-press coffee maker (called a cafetière à piston in France) is a carafe in which hot water is mixed with coffee grounds. When the brewing is complete, a mesh screen attached to a rod drives the grounds to the bottom of the carafe. Clear coffee then can be poured from the top. In 1991 Bodum Holding purchased all of Martin’s stock. Today subsidiaries of Bodum Holding sell throughout the world coffee makers that use the Chambord design and name.

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Fortune Dynamic, Inc. v. Victoria's Secret Stores Brand Mgmt., Inc.

In February 2007, Victoria’s Secret ran a one-month marketing campaign promoting its new line of BEAUTY RUSH product. As part of that promotion, Victoria’s Secret stores sold or gave away a hot pink tank top with the word “Delicious” written across the chest in silver typescript. Fortune Dynamic, Inc. (“Fortune”), the owner of the incontestable trademark DELICIOUS for footwear, sued Victoria’s Secret for trademark infringement. The district court granted summary judgment in favor of Victoria’s Secret. Mindful that “summary judgment is generally disfavored in the trademark arena,” Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1140 (9th Cir. 2002) (quotation marks omitted), we reverse and remand for trial.

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Specialized Seating, Inc. v. Greenwich Indus., LP

Because the district court did not commit clear error in finding Clarin’s design to be functional, it is unnecessary to decide whether Clarin committed fraud on the Patent and Trademark Office. All a finding of fraud does is knock out the mark’s “incontestable” status, and its registration, under §1115(b)(1). It does not affect the mark’s validity, because a trademark need not be registered to be enforceable. See Orient Express Trading Co. v. Federated Department Stores, Inc., 842 F.2d 650, 653–54 (2d Cir. 1988) (a trademark can be enforced under 15 U.S.C. §1125(a) even after its federal registration is cancelled for fraud); Far Out Productions, Inc. v. Oskar, 247 F.3d 986, 996 (9th Cir. 2001) (a trademark can be enforced under state common law even after its federal registration is cancelled for fraud); see also J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition §31:60 (2006 ed.). A finding of fraud therefore would not end the case; a finding of functionality does.

Clarin contends that we should consider this topic even though it does not affect Specialized’s right to sell a copycat chair, because it might matter to attorneys’ fees, but fees have not been awarded. A decision on legal issues just because they might matter to some later dispute would be advisory. Clarin also appears to be concerned that the district judge’s finding of fraud might affect future litigation against a different competitor, but issue preclusion (collateral estoppel) applies only to issues actually and necessarily resolved in the first case. Brown v. Felsen, 442 U.S. 127, 139 n.10 (1979); Restatement (Second) of Judgments §27 (issue preclusion operates only if the earlier resolution was “essential to the judgment”). It was not necessary to address fraud on the PTO, so the district judge’s opinion on this subject does not have preclusive effect. AFFIRMED

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