My colleagues in our Litigation practice, Harvey Saferstein and Nada I. Shamonki, recently authored an alert “Another Shoe Drops in Washington: Ninth Circuit Expands Personal Jurisdiction over Willful Copyright Infringers”.

On December 17, in Washington Shoe Co. v. A-Z Sporting Goods, Inc., the Ninth Circuit expanded the exercise by Federal District Courts of personal jurisdiction over out-of-jurisdiction defendants in federal copyright cases. Building on the Supreme Court’s seminal 1945 decision in Int’l Shoe Co. v. Washington, the court explained how an Arkansas shoe retailer that had never done business in the state of Washington could nonetheless be subject to personal jurisdiction in that state.

To read the full alert please click here.

By: Susan Neuberger Weller

On November 2, 2012, a federal jury in the Central District of California awarded Mixed Chicks LLC, a beauty supply company for mixed-race women, $839,535 in actual damages and $7,275,000 in punitive damages for willfully infringing the MIXED CHICKS® trademark and trade dress with its MIXED SILK line of products. Mixed Chicks LLC, v. Sally Beauty Supply LLC, et al., SACV11-00452 AG (FMOx) (C.D.C.A. 2012). On November 29, the infringer Sally Beauty Supply LLC agreed to a settlement of $8.5 million, which is larger than the actual jury award. It did so in order to avoid further hearings on and awards to Mixed Chick of its’ attorneys’ fees and of Sally Beauty’s profits as a result of its infringing activity.

Mixed Chicks LLC, a relatively small company founded in 2004 with approximately $5 million in annual revenue and approximately 15 full-time staff members, filed suit in March 2011 against Sally Beauty Supply LLC and related companies for federal and state trademark infringement, trade dress infringement, false designation of origin, and unfair competition claiming that Sally Beauty’s line of MIXED SILK hair care products infringed both the MIXED CHICKS ® trademark as well as the overall appearance of that line of products. The Complaint also claimed that Sally had “programmed or caused the search engine on the Sally Beauty website to operate in [a] manner to cause confusion or mistake, or to deceive as to the origin of the Mixed Silk hair care products with the intent to benefit from Mixed Chicks’ reputation and goodwill,” Apparently, when consumers searched “mixed chicks” on the Sally Beauty website only MIXED SILK products results would appear. Mixed Chicks claimed that the wrongful activity was willful and with the intent to benefit from the goodwill and reputation in the mixed race hair care product market that Mixed Chicks had developed through their specialized high-quality hair care products.  Continue Reading David Can Beat Goliath in the Trademark World… Just Ask Mixed Chicks!

By: Susan Neuberger Weller

Ever since the US Supreme Court in MedImmune, Inc. v. Genetech, Inc., 549 U.S. 118, 127 S, Ct, 764, 166 L. Ed.604 (2007)  threw out the “reasonable apprehension” test as defining the grounds for bringing a declaratory judgment action, courts have considered a wide variety of factual circumstances in deciding which meet the Court’s redefinition of “controversy.”

The Declaratory Judgment act provides that “[i]n a case of actual controversy within its jurisdiction…any court of the United States…may declare the rights and other legal relations of any interested party seeking such a declaration, whether or not further relief is or could be sought.” [28 U.S.C. 2201(a)] In MedImmune, the Court noted that it had explained in prior opinions that the “case of actual controversy” language in the Act refers to the US Constitution’s Article III’s case-or-controversy requirement,  and that a “controversy” under the Declaratory Judgment Act did not require any greater showing than that required under Article III. The Court clarified that declaratory judgment jurisdiction required disputes to be ‘“definite and concrete, touching the legal relations of the parties having adverse legal interests’; and that it be ‘real and substantial’ and ‘admit of specific relief through a decree of a conclusive character, as distinguished from an opinion advising what the law would be upon a hypothetical state of facts.’” 127 S. Ct. at 771. Or, as put another way, “[t]he question in each case is whether the facts alleged, under all circumstances, show that there is a substantial controversy, between parties having adverse legal interests, of sufficient immediacy and reality to warrant the issuance of a declaratory judgment.” Id. Although this standard test may sound relatively straightforward, it is not always easy in its application, as the floral delivery company Inc. recently discovered.

Continue Reading How Do You or Don’t You State a Case for A Declaratory Judgment in a Trademark Dispute?

Written by Susan Neuberger Weller

As we reported  previously, Lululemon, an exercise apparel company, filed suit against Calvin Klein and its supplier G-III Apparel Group for infringement of three Lululemon design patents for yoga pants. On November 20, 2012, Lululemon filed a notice of voluntary dismissal in the Delaware proceeding based upon a settlement that would dismiss the suit with prejudice. The terms of the settlement are confidential, according to a Lululemon, which released a statement asserting that “Lululemon values its products and related IP rights and takes the necessary steps to protect its assets when we see attempts to mirror our products.” The lawsuit was somewhat unique in that it involved a designer seeking to assert IP protection in articles of clothing through patent rights.


Written by Geri Haight

Six months after the U.S. Court of Appeals for the Fourth Circuit reversed the district court’s dismissal of Rosetta Stone’s trademark infringement lawsuit against Google, the parties issued a joint statement today announcing that they have settled their legal dispute. The parties stated:  “Rosetta Stone Inc. and Google have agreed to dismiss the three-year-old trademark infringement lawsuit between them and to meaningfully collaborate to combat online ads for counterfeit goods and prevent the misuse and abuse of trademarks on the Internet.” 

Continue Reading Google and Rosetta Stone Settle AdWords Trademark Infringement Suit

Written by Susan Neuberger Weller

Despite Hurricane Sandy, the US Supreme Court heard arguments on Monday, October 29, 2012 on whether the “first-sale doctrine” of US copyright law applies to goods made outside the US. The substance of the case, as we reported to you previously, is the specific language in the first-zero rule which applies to goods “lawfully made under this title,” referring to the caps US Copyright Act.

During oral arguments, several of the justices indicated that the statutory language could be interpreted several ways, leaving the possibility that policy considerations might motivate the final decision in the case.

 We will report back as soon as the Court’s decision issues, which is not expected for many months.

Written by Susan Neuberger Weller

A recent TTAB case addresses the issue of functionality and protection of design.  In the case In re Navy Exchange Service Command, (“NEXCOM”), the TTAB issued a non-precedential decision on September 29, 2012 in which it reversed the Examining Attorney’s refusal to register four irregular block-shaped, multi-colored pixilated pattern design marks that the US Navy used on clothing and fabric. The grounds for the Examining Attorney’s refusals were that the pattern designs were functional.  The functionality finding rested not on the conclusion that the patterns served any camouflage function, but that the patterns masked stains and wear-and-tear, thereby making them essential to NEXCOM’s requirements for a neat and clean Navy uniform. Continue Reading Pattern Designs on US Navy Uniforms and Fabric Are Non-Functional Protected Trademarks

Written by Susan Neuberger Weller

The bill to extend intellectual property protection to the fashion industry, S. 3523, the substance of which we reported recently, has passed the US Senate Judiciary Committee without amendment. By voice vote on September 20, the bill passed with Senators Lee (R-Utah), Kyl (R-Ariz), Cornyn (R-Texas) and Coburn (R-Okla.) voting against the bill. Lee had offered an amendment to the bill proposing a loser-pays provision to prevent lawsuit abuse, but the amendment was defeated. As previously reported, bills have been introduced since, at least, 2006 trying to extend IP protection to the fashion industry without success. A bill similar to S. 3523 in the House of Representatives, H.R. 2511, awaits action. Participants in an American Bar Association panel discussion on March 29, 2012 expressed positions that IP protection of this type is unnecessary and undesirable, and others have expressed some doubt about whether protection of this type will ever be approved by Congress.