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The Battle Over The Birkin Continues: Hermes v. Rothchild Update

New York Southern District Judge Jed Rakoff has rejected artist Mason Rothchild’s motion to dismiss Hermes International S.A.’s lawsuit over his sale of non-fungible tokens called “MetaBirkins”. Judge Rakoff said he would lay out his reasoning in a later opinion. In the meantime, the case continues to be observed for its potential to explain trademark law’s applicability to NFTs. The case is Hermes Int’l v. Rothschild, S.D.N.Y., No. 1:22-cv-00384.

Vegadelphia Sues Dunkin Donuts and Beyond Meat Over Slogan for Plant-Based Breakfast Sandwich

A Philadelphia-based vegan food company recently sued Dunkin Donuts and Beyond Meat in the U.S. District Court for the Middle District of Florida.  At issue in the case is Dunkin Donuts’ and Beyond Meat’s alleged used of Vegadelphia’s trademarked slogan: “Where Great Taste is Plant-Based.”  In the lawsuit, Vegadelphia alleges that Dunkin and Beyond Meat promoted their breakfast sausage sandwich using the phrase:  “Great Taste, Plant-Based.”  Vegadelphia further claims that the defendants “knew about this federally registered trademark on information and belief when they adopted the indistinguishable ‘great taste, plant-based’ slogan for a celebrity-laden national advertising campaign supporting their Beyond Sausage meat substitute menu item.”  Vegadelphia is seeking an undisclosed amount of damages as well as injunctive relief preventing any further use of the trademark.

Google Files Application for PIXEL WATCH

For years, buzz has circled around whether Google would enter into the smart watch arena.  It appears the wait is now over, as Google recently filed a trademark application for PIXEL WATCH in connection with smartwatches and smartwatch accessories.  Although dates have not yet been confirmed, news leaks are reporting that the wearable device from Google may be announced as early as May, and be available for purchase in October.

Hanging On by a Thread: Vans Pleads for a Preliminary Injunction

In November 2021, Vans, Inc. and VF Outdoor, LLC (collectively, “Vans”) filed suit in the U.S. District Court for the Central District of California against Walmart, Inc. (“Walmart”) and two other entities associated with Walmart: The Doll Maker, LLC and Trendy Trading, LLC. In its complaint, Vans alleged, inter alia, that Walmart had infringed on Vans’ trademarks and trade dress rights when Walmart began selling and promoting “over twenty blatant knockoff versions of Vans shoes . . . through [its] own in-house labels, including ‘Time and Tru,’ ‘Wonder Nation,’ and ‘No Boundaries’” in 2018. In filing its complaint, Vans sought a preliminary injunction based on the alleged notion that Walmart “flooded the market with cheap, low-quality, and confusingly similar shoes that harm Vans’ goodwill and reputation.”

At a hearing on January 24, 2022, however, Walmart implored U.S. District Judge David O. Carter not to grant the preliminary impeachment on Vans’ behalf, claiming not only that issuing such an order would cost Walmart “tens of millions of dollars,” but also that “Vans is not losing sales, . . . its reputation is not being diminished . . . [and it] is not suffering any irreparable harm.” In response to Walmart’s plea to the judge for relief, at a hearing the following month, Vans claimed it was facing an “existential crisis” and that Walmart’s copycat designs were putting Vans’ bottom line in “mortal peril.”

This case is Vans, Inc. et al. v. Walmart, Inc. et al., Case No. 8:21-cv-01876. The images above are provided in Vans’ complaint filed in the U.S. District Court for the Central District of California. The Complaint can be found at the following link: https://fingfx.thomsonreuters.com/gfx/legaldocs/zdpxonkoyvx/IP%20VANS%20TRADEMARKS%20complaint-min%20(1).pdf

Breaking Bad TV Series Opposes “Baking Bad”

Asserting claims for dilution and a likelihood of confusion, Sony Pictures Television recently filed a trademark opposition proceeding, seeking to protect the BREAKING BAD television series featuring chemist-teacher-turned-druglord Walter White.  The applicant, Thomas Mihill, filed an intent-to-use application in connection with his BAKING BAD brand for use in a cooking show.  While the parties share similarity in terms of televisions shows, a question remains as to whether consumers are likely to confuse a cooking show with one of the most popular Netflix series of all time.

Fashion Company Off-White Secures Trademark Registration for Red Zip Tie

After nearly four years of battle with the U.S. Patent and Trademark Office (USPTO), high-end fashion company Off-White secured a trademark registration for its signature red zip tie in connection with footwear, with color claimed as a feature of the mark. Off-White, which became a well-recognized streetwear brand under the direction of American fashion designer Virgil Abloh, began affixing the zip tie to its products in May 2016 and filed to obtain trademark rights in July 2018.

The USPTO Examining Attorney assigned to the application issued four Office Actions over the years, each time refusing Off-White’s attempt to trademark the zip tie for a slew of reasons. Off-White ultimately overcame these rejections, in large part by submitting arguments and evidence that the zip tie is non-functional and communicates to consumers that the shoe is an Off-White product. For example, the fashion company submitted that “[c]elebrities and other consumers do not wear shoes with Applicant’s Mark attached because of how Applicant’s Mark looks, but because of the message it conveys to others: this is a product produced by Applicant.”

USPTO Registration Certificate for U.S. Trademark No. 6,681,777

The Supreme Court to Decide Whether Andy Warhol’s Artwork is Transformative or Copyright Infringement

This week, the U.S. Supreme Court agreed to hear an appeal filed by the Andy Warhol Foundation to overturn the U.S. Court of Appeals for the Second Circuit’s decision finding that Warhol’s paintings of the musician Prince created in 1984 were not “fair use” of Lynn Goldsmith’s photograph taken in 1981. More specifically, last year the 2nd Circuit held that a “transformative” work must have a “fundamentally different and new artistic purpose and character.” However, Warhol’s paintings were found to be “much closer to presenting the same work in a different form.” Accordingly, the Foundation is now asserting that the Second Circuit‘s ruling “chill[s] artistic expression and undermine[s] First Amendment values” and “casts a cloud of legal uncertainty over an entire genre of visual art” in the hopes that the Supreme Court will recognize that Warhol’s works are fully protected under the law. This impending decision will not only assess what it means to be a transformative work; it will also examine the scope of the fair use defense to copyright infringement.

Russia Authorizes Infringement of Patents Owned by Holders Associated with “Unfriendly” Countries

Earlier this month in Moscow, Russia’s Chairman of Government Mishustin released a decree effectively allowing patent infringement within the country. The decree amends Russia’s method for determining the amount of compensation paid to a patent owner in the case of infringement. Of course, this news comes in the wake of President Vladimir Putin’s invasion of Ukraine in late February, for which the international community has imposed heavy sanctions on Russia.

Specifically, the decree revises Russian intellectual property law so that, if patent holders are “associated with foreign states who commit unfriendly actions against Russian legal entities and individuals” then “the amount of compensation is 0 percent of the actual proceeds” gained by infringers. In the words of the Russian government, an infringer enabled by this amendment is a “person who exercised the right to use an invention, utility model or industrial design without the consent of the patent owner . . . .” Patent holders may fall within this unprotected class if they are a citizen of an “unfriendly” state, or if such a state is their place of registration, primary business activity, or primary profit from business activity. The list of “unfriendly” countries includes the United States, Canada, the United Kingdom, Japan, South Korea, Australia, all European Union member countries, and, of course, Ukraine.

Patent Infringement in the COVID-19 Pandemic: mRNA Vaccines Take Center Stage

On February 28, 2022, Arbutus Biopharma Corporation and Genevant Sciences GmbH (collectively the “Plaintiffs”) sued Moderna, Inc. and ModernaTX, Inc. (collectively “Moderna”) in the U.S. District Court for the District of Delaware, alleging Moderna had infringed upon six of Plaintiffs’ issued patents in the creation of its COVID-19 mRNA vaccine. This suit marks the first major patent infringement action in the now-rapidly developing landscape of mRNA vaccines.

In its complaint, Plaintiffs alleged, inter alia, that Moderna was able to produce its mRNA vaccine for COVID-19 in “record speed” because it unlawfully used the technologies in U.S. Patent Nos. 8,058,069, 8,492,359, 8,822,668,  9,364,435, 9,504,651, and 11,141,378, which are collectively directed to a lipid nanoparticle (“LNP”) delivery platform that aids in the uptake of specific mRNA sequences into human cells (and without which the uptake of such sequences and eventual production of important proteins would be stymied by the human immune system). Furthermore, the complaint alleges that Moderna was “well aware” of Plaintiffs’ issued patents, as it had “licensed them for other product programs . . . but chose not to do so for its COVID-19 vaccine,” and unsuccessfully “attempted to invalidate several of [Plaintiffs’] patents” through inter partes review (IPR) proceedings.

Plaintiffs did not seek a preliminary injunction—as they claimed they did not want to “impede the sale or manufacture of Moderna’s life-saving vaccine”—but rather only requested damages, stating that “[a]ll Plaintiffs seek is the compensation due to them under the patent laws of the United States and as a matter of simple fairness.” If Plaintiffs prove to be successful in their suit, the resulting damages could total in the tens of billions of dollars.

This case is Arbutus Biopharma Corp. et al. v. Moderna, Inc. et al., Case No. 1:22-cv-00252. The complaint can be found at the following link: https://fingfx.thomsonreuters.com/gfx/legaldocs/zgpomzkbzpd/IP%20MODERNA%20PATENTS%20complaint.pdf

Kendall Jenner’s 818 Tequila Brand Sued for Trademark Infringement

“The Kardashian-Jenner family strikes again,” says ClipBandits, LLC, owner of the brand Tequila 512. On February 16, 2022, ClipBandits filed suit in the Central District of California against K & Soda, LLC, known for doing business as 818 Spirits, for trademark infringement, false designation of origin, and unfair competition. Reality television star and fashion supermodel Kendall Jenner debuted 818 Spirits in May 2021 as her own tequila brand, and it quickly skyrocketed in popularity.

ClipBandits has a federal trademark registration for its “512” mark, which it applied for in 2008 and registered in 2013. Following the launch of Jenner’s brand, however, ClipBandits filed another trademark application for “TEQUILA 512” and Design in an effort to protect the elements featured on the Tequila 512 label.

In its Complaint, ClipBandits accuses 818 Spirits of “simply and blatantly” copying the Tequila 512 logo and color scheme, in addition to similarly choosing a “prominent area code” with “a central 1” as its brand name. ClipBandits further argues that there has been actual consumer confusion in the marketplace, which has damaged the Tequila 512 brand. More specifically, ClipBandits submits that 818 Spirits is not entitled to “steal sales . . . through its deception” or transfer to Tequila 512 the “substantial ill-will” associated with 818 Spirits (due to accusations of “cultural insensitivity”). ClipBandits states that 818 Spirits can “shoot itself in the foot with its own positioning and marketing,” but “cannot be allowed to drag [Tequila 512] down with them.”

This case is ClipBandits, LLC v. K & Soda, LLC, Case No. 2:22-cv-01071, in the Central District of California.