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Category Archives: Litigation

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Don’t Even Think About Advertising a SUPER BOWL Party!

Posted in Dilution, Famous Marks, Lanham Act, Litigation, Trademark

Written by: Susan Neuberger Weller As we all know, Super Bowl XLIX will be played this Sunday in Phoenix, Arizona between the defending Champion Seattle Seahawks and the New England Patriots. There will be events of all kinds organized all around the country focused on this football game. If you are planning something, just remember:… Continue Reading

U.S. Supreme Court Allows Pom Wonderful to Pursue Lanham Act Claims against Coca-Cola

Posted in Lanham Act, Litigation, Section 43(a), Trademark

Written By: Susan Neuberger Weller Further to our April 23 post on the Pom Wonderful-Coca-Cola U.S. Supreme Court case, the  Court on Thursday June 12 issued an unanimous decision (with Justice Breyer taking no part in the consideration or decision of the case) reversing the Ninth Circuit  and holding that competitors may bring Lanham Act… Continue Reading

An Ivy League Brand: Trademark Infringement in Academia

Posted in Litigation, Trademark

Written by Jamison Arterton As any recent college graduate knows, upon graduation you join an alumni network that carries with it a certain perception.   While your GPA, field of study and extracurricular are key in obtaining that all-important first job, your tuition payments during your college stint have also bought you access to a brand…. Continue Reading

Copyright Infringement Damages Upheld in File Sharing Case

Posted in Copyright, Copyright Infringement, Damages, Litigation, Music, Statutory Damages

Written by: Susan Neuberger Weller  The Tenebaum copyright infringement file sharing case, about which we first reported in an earlier blog, reached another milestone this week when the First Circuit upheld the jury’s $675, 000 damages award. Tenenbaum had been found liable for illegally downloading 30 songs and a jury awarded statutory damages of $22,… Continue Reading

Contributory Infringement and Copyrights:

Posted in Contributory Infringement, Copyright, Copyright Infringement, Litigation, Vicarious Infringement

If It Involves Your Customer, It Could be Your Problem Too Written by: Susan Neuberger Weller Right on the heels of our blog on trademarks and contributory infringement, comes a case in which the court refused to dismiss a claim against Amazon for sales by third parties of allegedly infringing photographs on its site. The… Continue Reading

Louboutin Sees Red Again: Protecting Color as a Trademark

Posted in Color, Fashion, Litigation, Trademark, Trademark Infringement

Written by: Susan Neuberger Weller  Christian Louboutin filed suit last week in Federal District Court in New York against Charles Jourdan Fashion Footwear and unnamed companies and John and Jane Does for trademark counterfeiting and infringement and other related claims based upon the Defendants’ sales of women’s shoes bearing red soles. As we previously reported,… Continue Reading

Ninth Circuit Expands Personal Jurisdiction over Willful Copyright Infringers

Posted in Copyright, Copyright Infringement, Fashion, Litigation

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… Continue Reading

Further to the “Copying from the Internet” Issue…..

Posted in Copyright, Copyright Infringement, Damages, Fair Use, Litigation

Written by Susan Neuberger Weller In our August 14th blog, we explained why just because you can copy something from the Internet, doesn’t mean you should copy from the Internet. A case on this very issue that has been around for several years involved the well-known “Hope” poster of President Obama’s face made during the… Continue Reading

Louboutin Wins Round Two Against Yves Saint Laurent in Fight Over Red Soles

Posted in Color, Fashion, Litigation, Trademark, Trademark Infringement

Written by Joseph DiCioccio The Second Circuit recently issued an opinion in the Louboutin v. Yves Saint Laurent trademark case.  To refresh your memory, Louboutin, the high-end women’s shoe designer, had secured a U.S. trademark registration for the color red as used on the outsoles of women’s shoes.  Yves Saint Laurent had been selling shoes… Continue Reading

The U.S. Supreme Court Grants Cert to Decide Scope of First Sale Doctrine

Posted in Copyright, Copyright Infringement, First Sale, Litigation

Written by Susan Neuberger Weller The U.S. Supreme Court has granted cert in order to decide an issue of great importance to all businesses involved in manufacturing and distributing products throughout the world, particularly those  involved in retailing and importation, namely, whether foreign made works intended for sale outside the U.S., in which the copyright… Continue Reading

Avoid a “Heart Attack”: Promptly Register Your Trademarks

Posted in Intent-To-Use Applications, Litigation, Trademark, Trademark Infringement, Trademark Prosecution

Written by Susan Neuberger Weller On July 6, 2012, in Lebewohl v. Heart Attack Grill, LLC , a New York Judge made it possible, in the words of the Wall Street Journal, for people to continue to “Order Up a Heart Attack” in, at least, Las Vegas and Manhattan.  Since 2004, the Second Avenue Deli, a… Continue Reading

Is It Proper To Say You Google On GOOGLE®?

Posted in Domain Name, Genericide, Litigation, Trademark, Uniform Domain Name Dispute Resolution Policy

Written by Susan Weller Do you “google?” That is the essence of the question before the Federal District Court in Arizona in a Complaint filed on May 21, 2012 by David Elliott against Internet search engine giant Google, Inc. In Elliot v Google, Inc., CV-12-1072-PHX-MHB, Elliot claims that Google’s once distinctive mark GOOGLE® has become… Continue Reading

Fourth Circuit Resurrects Rosetta Stone’s Challenge to Google’s AdWords Program

Posted in Dilution, Google Adwords, Litigation, Trademark Infringement

On Monday, the Court of Appeals for the Fourth Circuit reversed the district court’s decision ending Rosetta Stone’s trademark infringement case against Google.  Rosetta Stone’s complaint, filed in 2009, alleged that Google infringed Rosetta Stone’s trademark rights by selling its trademarks as keywords to third-party competitors without Rosetta Stone’s permission.  Under Google’s AdWords program, Google offers advertisers the ability… Continue Reading

Viacom Lives to Fight Another Day in YouTube DMCA Suit

Posted in Copyright, Copyright Infringement, Digital Millenium Copyright Act, Litigation, Red Flag Knowledge, Safe Harbor, Willful Blindness

Written By Joseph M. DiCioccio The Second Circuit has vacated District Court (S.D.N.Y.) Judge Louis L. Stanton’s June 2010 dismissal of Viacom’s $1 billion copyright infringement suit against YouTube.  In a thorough opinion, the Second Circuit remanded the case to the district court for further consideration of several key aspects of the case, including whether executives… Continue Reading

Who Owns a Company’s Twitter Account (and Musings on Social Media and Trademarks)?

Posted in Litigation, Social Media, Trademark

Our colleagues at Mintz Levin’s Employment Matters blog recently posted an interesting piece about a dispute regarding ownership of a Twitter account.  The dispute arose from an employer/employee relationship, but serves as an important reminder about protecting your brand on social media sites. As alleged in the complaint (PhoneDog LLC v. Kravitz), PhoneDog operates a website that offers cellphone news and reviews and it hired… Continue Reading

Yahoo! Wins $610 Million Trademark Infringement and CAN-SPAM Award Over Nigerian Advance Fee Fraud Suit

Posted in Litigation, Trademark, Trademark Infringement

Written by Joseph M. DiCioccio This week, Yahoo! won a $610 million default judgment in the United States District Court for the Southern District of New York in a case involving the infamous Nigerian Advance Fee Fraud perpetrated through the Defendants’ infringing use of Yahoo!’s trademarks and spam. Online scams and hoaxes are just a fact of life in the Internet… Continue Reading

Righthaven Loses Another Battle Over Attorney’s Fees

Posted in 17 USC sec. 505, Attorney's Fees, Copyright Infringement, Litigation

Written By Joseph DiCioccio Righthaven, LLC is having a bad week.  You’ll remember from our previous advisory that Righthaven is a copyright holding company that, until recently, has filed hundreds of copyright infringement lawsuits.  The lawsuits generally allege copyright infringement against websites that have posted all or portions of newspaper articles and photographs Righthaven claimed it… Continue Reading

17 U.S.C. Sec. 505 Means What It Says: Attorney’s Fees Award to Prevailing Party Discretionary

Posted in 17 USC sec. 505, Attorney's Fees, Copyright Infringement, Damages, Litigation

Section 505 of the Copyright Act provides that, in a copyright infringement action, the court may “in its discretion” award costs to a prevailing party.  In addition, the provision provides that the court “may” award a prevailing party its reasonable attorney’s fees as part of the award of costs.  Despite this language, many litigants have taken the position that… Continue Reading

Google AdWords Litigation Update – Trademark Holders Denied Class Certification in U.S. Lawsuits

Posted in Google Adwords, Litigation, Remedies, Trademark, Trademark Infringement

Written by Jamison Arterton In the latest Google AdWords decision, a U.S. Federal District Court judge in Texas refused to certify two classes of advertisers who filed separate infringement suits against Google Inc.  The complaints, filed in 2009, each claim that Google sold search terms that included registered trademarks to advertisers who were not affiliated… Continue Reading

Google Adwords Decision in Europe: Trademark Owners May Prevent Competitors From Using Trademarks As Keywords

Posted in Google Adwords, Litigation, Trademark, Trademark Infringement

Written by Geri Haight Remember last year when the European Union’s Court of Justice ruled that Google did not violate European Union law by selling trademarks as keywords and thereby permitting advertisers to purchase and use keywords corresponding to their competitor’s trademarks in Google ads?  The decision let Google, as an intermediary, off the hook for trademark… Continue Reading

Remedies for Cybersquatting: Comparison of the UDRP and ACPA

Posted in Anticybersquatting, Domain Name, Litigation, Remedies, Trademark Infringement, Uniform Domain Name Dispute Resolution Policy

Written by Jamison Arterton Last month, the kitchen and bath giant, Kohler Co., filed an anti-cybersquatting suit in federal court in California against several cybersquatters.  In its complaint, Kohler alleges that it previously paid the named defendants $500 to transfer a domain name incorporating the KOHLER trademark in exchange for their agreement that they would not register any… Continue Reading