Orlando International Airport (“OIA”) officials recently filed suit against Orlando Melbourne International Airport (“OMIA”), which is located approximately 70 miles away from Orlando. In the complaint filed in the Middle District of Florida, OIA claims that OMIA’s use of the word “Orlando” in its name and related advertisements “convey[s] the false impression that [OMNI] is the Orlando International Airport, or is located in or is closer to Orlando and Orlando area attractions than it actually is.” In addition to seeking damages, attorneys’ fees, and a permanent injunction prohibiting OMNIA from using the word “Orlando” in its name, promotional materials, and related advertisements, OIA also requests that the Court order OMNIA to display a retraction statement on its website. OMNIA has refuted OIA’s likelihood of confusion arguments, citing how Manchester-Boston Regional Airport uses the word “Boston,” while serving the same market as Boston Logan International Airport.
The case is Greater Orlando Aviation Authority v. Melbourne Airport Authority, Case No. 19-cv-00540 (M.D. Fla. March 19, 2019).
United States District Judge Carter recently held that a seizure of the Mongols Motorcycle Club (“MMC”) mark would violate the organization’s First Amendment rights, as well as the Eighth Amendment’s Excessive Fines Clause. The logo at issue – shown below from the Court’s opinion – features a Genghis Khan caricature on a motorcycle with the words “MONGOLS” and “M.C.” prominently displayed in the logo. Following a December 2018 trial, whereby the jurors found the Defendant Mongol Nation guilty of racketeering and conspiracy to commit racketeering (relative to murder, attempted murder and distribution of methamphetamine), the Government proceeded with the forfeiture phase of the trial requesting seizure of the organization’s ammunition, body armor, and firearms, as well as the trademark rights appurtenant to MMC membership. Denying the Government’s request for seizure of the trademark, the Court first noted that “there is no doubt that the display of word marks or symbols on a body or leather vest is pure speech.” United States of America v. Mongol Nation, Case No. CR-13-0106 (C.D. Cal. Feb. 28, 2019). Further, “collective membership marks act as a symbol that communicates a person's association with the Mongol Nation, and his or her support for their views.” Id. Thus, the Court held that “the forced transfer of the legal rights associated with these symbols to the United States government presents immediate harms and chills the Mongol Nation's and its members' right to display the marks given the Government's threats and seizure attempts,” and therefore denied the seizure request on First Amendment grounds. Id.
Next, the Court also analyzed the Government’s request for seizure of the MMC mark under the Eighth Amendment, which “limits the government's power to extract payments, whether in cash or in kind, as punishment for some offense." Id. Pointing out that the trademark was “legally acquired via first use in 1969 and [was] legally maintained via continuous use,” and that it has “immense intangible, subjective value to the Mongol Nation and its members,” the Court held that a forfeiture of the rights associated with the mark would otherwise be harsh and grossly disapproportionate, and denied the Government’s request as violative of the Eighth Amendment.
The MMC trademark displayed in the Court’s opinion in United States of America v. Mongol Nation, Case No. CR-13-0106 (C.D. Cal. Feb. 28, 2019)
In a case filed by the copyright owner (Solid Oak Sketches LLC) against the NBA2k video game maker (Take Two Interactive), the issue is whether NBA players, including Lebron James, can license the image of their own tattoos. In this digital age, video games such as NBA2K depict lifelike avatars of fans’ favorite professional sports players, complete with mirror image recreations of those players’ physical characteristics, including tattoos. For Lebron James’ NBA2K avatar, this means that tattoos depicting the phrase “Hold My Own” on James’ left bicep, as well as the “330 Area Code” on his right forearm, are clearly visible and used throughout the video game, triggering the infringement claim.
On one side of the coin, Solid Oak claims that because the actual tattoo artists sold it the copyright to the underlying images, only Solid Oaks owns the rights to reproduce and publicly display those tattooed images, which were infringed by the video game maker. On the flip side, Take Two asserts that Lebron James (through the NBA), allowed it to use his image, name, and likeness in the NBA2k video game, which necessarily included the subject tattoos. Take Two also claimed that its depiction of the tattooed images were otherwise protected under the fair use doctrine. Solid Oaks recently survived Take Two’s motion to dismiss, and future rulings in the case could have significant implications on the NBA and its players, video game companies, and tattoo artists who create the underlying images. The lawsuit is proceeding before United States District Judge Laura Swain in the Southern District of New York.
At issue in the case of Levi Strauss & Co. v. Yves Saint Laurent America, Inc., recently filed in the Northern District of California, is whether Levi’s trademark rights preclude jean manufacturers from stitching a label onto the vertical seam of the jean’s back pocket. Levi’s claims that its “Tab Trademark” does in fact prohibit such copying (and seemingly regardless of where the tab is placed). As shown in side-by-side comparison pictures displayed in the complaint, the Levi’s tab is sewn on the left side of the back-right jean pocket, whereas the Yves Saint Laurent (“YSL”) tab is stitched onto the right side of the back-right jean pocket. See p. 5 at https://www.scribd.com/document/393676941/Levi-Strauss-v-Yves-Saint-Laurent. Nevertheless, and despite the generally large disparity in price points between Levi’s and YSL denim, Levi’s alleges that the YSL tab is likely to confuse consumers about the sources of YSL’s products and/or a relationship between YSL and Levi’s.
In a constantly evolving market and with millions of dollars in play, Levi’s is no stranger to enforcing its intellectual property rights through litigation. In fact, Levi’s has consistently bumped heads with jeans manufacturers in the past (approximately 100 lawsuits since 2001), alleging infringement either based on the display of a “tag” stitched to a back pocket, or copying Levi’s signature design (two intersecting arcs stitched into the back pockets). As the denim giant attempts to prove that it owns a monopoly on tabs stitched onto jean back pockets, one of the ultimate questions will be whether the consuming public views the tag as a source identifier, such that it solely relates to Levi’s.
Based upon certain criteria including win rate and the time involved to get to trial, a 2018 study by PricewaterhouseCoopers (“PWC”) suggests that patent owners seeking to enforce their rights should file suit either in the Middle District of Florida (encompassing Jacksonville, Ocala, Orlando, Tampa, and Fort Myers), or the Southern District of Florida (which includes the South Florida metropolitan areas of West Palm Beach, Fort Lauderdale, Miami, and the Florida Keys). Breaking down those factors using case studies and empirical data, PWC found that a patent owner who tried their case in the Middle District of Florida had a remarkable 50% statistical likelihood of prevailing (ranked 2nd in the United States), with the Southern District of Florida not too far behind (ranked 8th in the country). In terms of the amount of time it took to get to trial –a significant factor in terms of the overall costs and expenses involved for the patent holder – cases brought in the Middle District of Florida were tried in 1.9 years (3nd in the United States), whereas lawsuits filed in the Southern District were tried in 2.1 years (6th in the United States). Averaging all of the other underlying criteria involved, the PWC survey found that the Middle District of Florida had an “overall rank” of 6th in the entire United States, with the Southern District of Florida closing the gap at 11th in the country.
Having focused its practice exclusively on patent law and other intellectual property areas since 1959, Malloy & Malloy, P.L. can assist you in filing a patent application or otherwise enforcing your rights, if necessary, through the litigation process. Malloy & Malloy has an office in Jacksonville, Florida overseen by firm partner, Jennie S. Malloy, as well as offices in South Florida. Please click the following for full contact information: https://malloylaw.com/contact
The term “swagger” is generally associated with style, confidence, sophistication, and togetherness. In this regard, SWAGGER® Magazine (which owns a trademark in Canada for the mark “swagger”), brands itself as the premier modern men’s luxury and lifestyle publication, and is the “go to resource for the ambitious, successful and influential gentlemen of today.” When editors at this magazine began noticing a new trend in social media searches for #swagger – apart from the typical results showing fast cars and expensive suits – they soon discovered that politics was a significant factor towards this shift. And at the center of this movement was United States Secretary of State Mike Pompeo.
In his first address to State department employees back in May 2018, Mr. Pompeo conveyed his desire of “getting back our swagger” in terms of the State’s affairs, policy-making decisions, and restoring diplomatic ties. Mr. Pompeo also launched an Instagram account and throughout various posts, used “swagger” hashtags, phrases like the “department of swagger,” and photos of him “fist-bumping” State department employees. In a recent post, Mr. Pompeo displayed four pictures – two of himself, as well as William Shakespeare and General George Patton – with the following message for his followers: “Shakespeare was the first to use ‘swagger.’ Gen. Patton had his swagger stick. At @statedept, we’ve got some #swagger too. It’s our confidence in America’s values.”
As a result of Mr. Pompeo’s attempt to penetrate pop culture by using “#swagger” when speaking in terms of diplomacy efforts advanced by the State, Swagger Magazine appears to be seizing the opportunity to expand its readership base. In referencing some of Mr. Pompeo’s colleagues’ attire at the State department, Swagger editor-in-chief Steven Branco thought that “they all seem to have an oversize suit going on,” and that the magazine would be “working on a story that will provide more direction on what to wear in the office.” In the meantime, Mr. Pompeo and his chief spokesperson, Heather Nauert, appear to be continuing their message of the United States Department of State being a “Department of Swagger [that] has hustle & heart,” as shown on a recent post on Twitter.
The film studio (STX) behind the raunchy comedy, “The Happytime Murders,” successfully fended off a trademark infringement suit by Sesame Workshop. Specifically, Sesame Workshop contended that the R-rated movie depicting puppets joking about drugs, sex, and guns confused the public with “Sesame Street,” tarnished the kid-friendly show’s reputation, and exploited Sesame Street’s mark and related goodwill by implying an affiliation that did not otherwise exist. United States District Judge Vernon Broderick disagreed, however, stating that the comedy’s slogan – “No sesame. All street” – actually proved to distinguish the film from the children’s cartoon, and further noted that the “R” rating automatically served as a differentiating characteristic. The Happytime Murders will begin showing in theatres in August of 2018.
On May 14, 2018, the Supreme Court issued a landmark 6-3 ruling in favor of striking down the Professional and Amateur Sports Protection Act (“PASPA”), which came into effect in 1992. PASPA was a federal law that barred state-authorized sports gambling on baseball, basketball, football and several other sports; a few states, however, and particularly Nevada, were exempted from the law because they had approved some form of sports wagering prior to when the law was enacted.
The decision in Murphy v. Ncaa, Nos. 16-476, 16-477, 2018 U.S. LEXIS 2805 (May 14, 2018) originated in a case from New Jersey, where the state argued that PASPA violated the Tenth Amendment because it was essentially compelling states to prohibit sports wagering. Writing for the majority, Justice Alito held that “[j]ust as Congress lacks the power to order a state legislature not to enact a law authorizing sports gambling, it may not order a state legislature to refrain from enacting a law licensing sports gambling.” Id. at 40-41. With the federal ban on sports gambling lifted, states are now given the green-light to legalize sports betting if they choose. In the months leading up to the high court’s decision – and assuming that PASPA would be struck down – various research firms estimated that at least 30 different states would likely offer sports betting within the next five years.
Grumpy Cat Limited, owner of copyrights and trademarks pertaining to the cat named Tardar Sauce (which gained notoriety for its permanent scowl shown in popular memes), licensed certain limited rights to Grenade Beverage in relation to its "Grumppuccino" iced coffee. After Grenade Beverage allegedly breached and exceeded the scope of the agreement by selling "Grumppuccino" t-shirts and other coffee products, Grumpy Cat Limited filed suit in the United States District Court for the Central District of California.
After three years of litigation, a jury ultimately found in favor of Grumpy Cat Limited -- with Tardar Sauce actually making an appearance at one point during the trial -- and awarded $710,000.00 in damages for trademark and copyright infringement. David Jonelis, lawyer for Grumpy Cat Limited, was quoted saying that it was "the first verdict ever rendered in favor of a viral meme," and that "memes have rights too."
On January 8, 2018, the Federal Circuit ruled en banc that judicial review is available for a patent owner to challenge the Patent Trial and Appeal Board’s determination that a petitioner satisfied the timeliness requirement governing petitions for Inter Partes Review (“IPR”) codified in 35 U.S.C. § 315(b). At its core, the opinion provides that if the Director of the PTO initiates an IPR ruling in contravention of the statute of limitations, an Article III court has the power to review that initiating decision.
By way of background, Broadcom Corp. filed three separate petitions for IPR in 2013 pertaining to certain patents owned by Ericsson. During the pendency of the IPR, Ericsson transferred ownership of the patents to Wi-Fi One, LLC ("Wi-Fi"). In opposition to Broadcom’s petitions, Wi-Fi contended that the Director lacked authority under Section 315(b) and was precluded from initiating review on any of the three petitions because Broadcom was in privity with certain defendants that were found to have infringed the asserted claims in a jury trial in the Eastern District of Texas. Accordingly, Wi-Fi asserted that the petitions were time-barred under 315(b) because Ericsson (the prior patent owner) had already brought infringement claims against defendants that were in privity with Broadcom more than a year prior to its petitions. Ultimately, the Board instituted IPR on the subject claims, and issued final decisions holding that the claims were unpatentable. In those decisions, the Board held that Wi-Fi had not demonstrated privity between Broadcom on the one hand, and the defendants in the Eastern District of Texas litigation on the other hand, and as a result, the petitions were not time-barred under 315(b). Wi-Fi appealed those final decisions, contending that the Federal Circuit should reverse the Board's time-bar determinations. A panel of the Federal Circuit disagreed, holding that Section 315(b)’s time-bar rulings are non-appealable and unreviewable.
On Wi-Fi’s petition for rehearing en banc, the Federal Circuit granted Wi-Fi’s request and considered whether judicial review is available for a patent owner to challenge the Board’s determination that the petitioner satisfied the timeliness requirement of 35 U.S.C. 315(b). Section
35 U.S.C. 315(b) provides that: "an inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.”
After analyzing the Leahy-Smith America Invents Act (which created IPR proceedings), the Administrative Procedures Act (codifying the governing standards applicable to final decisions of the PTO), and the pertinent statutes, the Federal Circuit held that it will “abdicate judicial review only when Congress provides a ‘clear and convincing’ indication that it intends to prohibit review.” In Wi-Fi One, however, the Court held that there was no clear and convincing indication of such congressional intent to overcome the presumption in favor of judicial review of agency actions. Accordingly, the Federal Circuit remanded the case to the merits panel, affording Wi-Fi with an opportunity to have its arguments heard on the merits, to wit, whether Broadcom’s challenge to the subject patents were time-barred.