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?
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
Lehman Brothers is Gone but Not Abandoned
On September 30, 2020, the Trademark Trial and Appeal Board ruled in favor of the assignee of the famous LEHMAN BROTHERS trademark against the registration that mark as a brand name for beer, spirits, and bar and restaurant services, finding that the LEHMAN BROTHERS mark had not been abandoned. Barclays Capital, Inc. v. Tiger Lily
2(b) Prohibition On “Flag Marks” Bars Use of Flag as Part of a Mark
In a recent precedential decision concerning the rarely litigated or cited Section 2(b) of the Lanham Act, the Trademark Trial and Appeal Board affirmed a refusal to register the service mark:
for tourism services on the ground that the mark includes a simulation of the American flag. In re Alabama Tourism Department, Serial No.