On June 29, 2023, the Supreme Court in Abitron Austria GmbH v. Hetronic International, Inc., limited the extraterritorial reach of the Lanham Act. The majority opinion was written by Justice Alito and joined by Justices Thomas, Gorsuch, Jackson, and Kavanaugh. Justice Jackson wrote a separate concurring opinion. Four Justices – Sotomayor, Roberts, Kagan, and Barrett
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Not Funny! Unanimous SCOTUS in Jack Daniel’s v. VIP Holds That Parody Does Not Implicate First Amendment Concerns, But Only Implicates Likelihood of Confusion
On June 8, 2023, the Supreme Court unanimously decided the trademark parody case captioned Jack Daniel’s Properties, Inc. v. VIP Products LLC in favor of Jack Daniel’s, and against the dog toy manufacturer and serial parodist VIP Products. 599 U. S. ____ (2023) (hereinafter “Slip Op.”). The Court made plain that using a senior user’s…
SCOTUS: Social Media Companies Not Liable For Aiding And Abetting ISIS
In Twitter, Inc. v. Taamneh, the Supreme Court unanimously held that social media companies are not liable for aiding and abetting the Islamic State of Iraq and Syria (ISIS) in its terrorist acts that victims claimed resulted from promoting terrorist content on social media platforms absent proof of “knowing and substantial assistance.”
In Taamneh, the…
Does Transformative Matter? No, At Least Where Use Is Commercial
Art. Money. Copyright. Fair use. Andy Warhol. And Prince, the Purple One. (Or in this case, Orange.)
These were the hot topics in the recently decided Supreme Court case of Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith et al., 598 U.S. ____ (2023) (Citations are to the Slip Opinion (“Slip Op.”)).
Money…
SCOTUS Oral Arguments in Abitron v. Hetronic: Extraterritorial Reach of Lanham Act
On March 31, 2023, the Supreme Court heard arguments in Abitron Austria GmbH v. Hetronic International, Inc., where at issue is whether the Tenth Circuit erred in applying the Lanham Act extraterritorially to Abitron’s foreign sales, including purely foreign sales that never reached the United States, as more fully described in our previous blog.…
Cert. Granted in Abitron to Clarify Boundaries for Extraterritorial Application of Lanham Act
In Abitron Austria GmbH v. Hetronic International, Inc., Oklahoma-based Hetronic, maker of radio remote controls for heavy-duty construction equipment, sued its former distributor Abitron (from Austria) for selling copycat products, as illustrated below.
The district court found that Abitron had willfully infringed the Hetronic mark. Despite the fact that 97% of the infringing sales were…
Does Anyone Here Have A Sense Of Humor, Redux: Jack Daniel’s v. VIP Oral Argument
On March 22, 2023, the Supreme Court heard oral argument in the trademark parody case captioned Jack Daniel’s Properties, Inc. v. VIP Products LLC. As we previously blogged, the issues presented in the care are:
1. Whether humorous use of another’s trademark as one’s own on a commercial product is subject to the Lanham…
Certiorari Granted to Jack Daniel’s with Respect to Parody Dog Toy: Does Anyone Here Have a Sense of Humor, and Does it Matter?
By Ira S. Sacks
On November 21, 2022, the Supreme Court granted certiorari on the following questions described in Jack Daniel’s petition:
Respondent VIP Products LLC markets and sells dog toys that trade on the brand recognition of famous companies such as petitioner Jack Daniel’s Properties, Inc. The district court found that VIP’s use of Jack Daniel’s trademarks to…
TTAB Sustains WIRED Magazine’s § 2(d) Objection to Application to Register “WIRED” As A Mark for Clothing, But Not for Fitness Services
The Trademark Trial and Appeal Board (“TTAB”) sustained the objection of the publisher of the tech magazine WIRED (“Opposer”) to an Applicant’s (“Applicant”) bid to register the term “WIRED” for clothing but rejected its objection for fitness-related services.
The Applicant sought registration for “WIRED” marks for fitness-related services and athletic clothing. The Opposer opposed the…
TTAB Rains on ‘Purple Rain’ Energy Drink Trademark Application
On August 23, 2022, the Trademark Trial and Appeal Board (“TTAB”) rejected on summary judgment JHO Intellectual Property Holdings’ (“Applicant”) application to register the mark “PURPLE RAIN” for a variety of nutritional supplements, dietary drinks, and energy bars (collectively, “Applicant’s Goods”). The TTAB found that the proposed mark falsely suggested a connection with the famous…