Trademark

From Northern California to the Entire IP Landscape: Orrick’s New Blog

We’re excited to announce the recent transition of Orrick’s former NorCal IP blog into its new iteration – IP Landscape (Today’s News, Tomorrow’s Strategy)!  Our new blog is more comprehensive in scope and will focus on a variety of intellectual property issues and events, both national and international, that are likely to affect the bottom line for many technology-driven enterprises. Through our blog, you’ll find information and updates to help drive business strategies.

We hope this new blog will be an entertaining and useful resource for those interested in the latest case law, happenings and events that affect the entire landscape of intellectual property. We’ll be covering patent, trademark and copyright rulings in what might be described as the most “popular” venues, such as the Northern and Central Districts of California, the Eastern District of Texas, the District of Delaware, the International Trade Commission (ITC), and the Patent Trial and Appeal Board (PTAB). We will also be reporting on other IP-related and newsworthy events, such as significant developments in copyright, trademark, antitrust, entertainment and trade secret litigation, not to mention legislative changes, local networking events, IP licensing issues and other hot topics of interest. READ MORE

Sneaker Wars: Adidas Defeats Summary-Judgment Motion That Claimed Stan Smith Shoe Design Lacks Distinctiveness

Order Granting in Part and Denying in Part Motion for Summary Judgment,  Adidas America Inc. et al. v. Skechers USA Inc., D. Or. (August 3, 2017) (Judge Marco Hernández)

The ever-increasing popularity (and collectability) of athletic shoes seems to have brought along with it an increase in the amount of litigation involving trade dress protection for the look of some of the more popular shoe designs. Last year, the International Trade Commission found that Converse’s trademark rights in the design of the Chuck Taylor sneaker were invalid due to widespread use of similar designs by competitors.  That decision is now the subject of a closely watched appeal at the Federal Circuit.  More recently, in a dispute between adidas and Skechers, a court found that factual issues prevented entry of summary judgment regarding whether the look of adidas’ Stan Smith shoe design is generic and whether it has acquired secondary meaning. READ MORE

Fictional, but Protectable: Court Nixes “The Krusty Krab” Restaurant on Trademark Grounds

Summary Judgment Order, Viacom International Inc. v. IJR Capital Investments, LLC, S.D. Tex. (January 11, 2017) (Judge Gray Miller) 

The Emmy nominations have been announced, and the fall television season is just weeks away. Accordingly, we thought it would be fun to revisit an interesting trademark ruling from earlier this year that still seems timely given these events.

With the rise of social media, mobile phone applications and viral marketing, cross-overs between the real world and the fictional world of T.V. shows, movies and video games, are becoming increasingly commonplace. To promote the upcoming season of its popular T.V. show Better Call Saul, for example, AMC created actual Los Pollos Hermanos fast-food restaurants in cities across the U.S.  Similarly, in the summer of 2006, ABC and the creators of Lost created an alternative reality game called The Lost Experience that included such disparate activities as advertisements of fictional companies on a variety of ABC programs and advertising sponsor websites, the publication under a pseudonym of a best-selling mystery novel called “Bad Twin,” a live disruption at San Diego’s Comic-Con by a fictional protagonist named Rachel Blake trying to unravel some of Lost’s mysteries, and the world-wide sale at special locations of fictional “Apollo” candy bars that had been featured in the show.  As these examples reflect, the names and likeliness of fictional locations, objects, and characters can represent significant and valuable components of a company’s intellectual property rights. READ MORE

Inadequate Disclosures Preclude Monetary Damages Recovery in Trademark Infringement Suit

Order Granting in Part and Denying in Part Defendant’s Motion for Summary Judgment, Sazerac Co., Inc., et al. v. Fetzer Vineyards, Inc., Case No. 3:15-cv-04618-WHO (Judge William H. Orrick)

As any practitioner who has sought to establish trademark infringement already knows, likelihood of confusion is difficult to prove at trial. Nonetheless, a recent Order in Sazerac Co., Inc., et al. v. Fetzer Vineyards, Inc. demonstrates that plaintiffs still retain certain inherent advantages at the summary judgment stage in proving that there exists a likelihood of confusion, given the high hurdle for defendants to convince a court that no genuine issues of fact exist and that summary judgment is warranted.  But as this case also demonstrates, that does not mean that plaintiffs can “sleep at the wheel,” so to speak, when disclosing infringement or damages theories during discovery. READ MORE

The 4-Hour Plaintiff: Author/Speaker/Podcaster Tim Ferriss Secures Default Judgment

Order Granting In Part And Denying In Part Plaintiffs’ Motion For Default Judgment, Timothy Ferriss, et al. v. Alliance Publishing, Inc., et al., Case No. 15-cv-05675 (Judge Edward M. Chen)

Tim Ferriss is known for authoring The 4-Hour Workweek and other self-help books on the “4-Hour” theme. He may now become known as the “4-Hour Plaintiff” after he and a company he owns, Krisa Performance, obtained a default judgment against defendants alleged to have improperly used his name and likeness in connection with a fraudulent scheme.

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A Day Late And A Dollar Short – Court Grants Summary Judgment On Laches Defense

Order Granting Summary Judgment On Dropbox Laches Claims, Dropbox, Inc. v. Thru Inc., Case No. 15-cv-01741-EMC (Judge Edward M. Chen)

The proverb “[e]quity aids the vigilant, not the sleeping ones” aptly describes the rationale behind the defense of laches-i.e., the legal doctrine which states that a plaintiff who unjustifiably delays pursuing a claim may forfeit it. Intended to encourage the timely resolution of disputes and to avoid prejudice to defendants, laches can have dire consequences for plaintiffs who unreasonably delay bringing their claims. READ MORE

“Use in Commerce”: Look Before You Leap

Order Granting Motion to Dismiss, With Leave to Amend, Stag’s Leap Wine Cellars, LLC, et al. v. Treasury Wine Estates Americas Co., 16-cv-04922-RS (Judge Richard Seeborg)

Plaintiffs in trademark cases may be tempted to file suit as early as possible to head off any potential consumer confusion. But as a recent order explains, plaintiffs need to keep in mind that the Lanham Act requires a “use in commerce” to maintain a complaint. Plaintiffs who fail to plead an adequate “use in commerce” could find themselves fighting (and losing) a motion to dismiss. READ MORE

Piracy Pays (The IP Owner) – Judge Whyte Grants Motion for Default Judgment After Awarding Sanctions in Unauthorized Software Distribution Case

Order Granting Motion for Default Judgment, Adobe Systems Inc. v. Software Tech, et al., Case No. 5:14-cv-02140-RMW (Judge Ronald M. Whyte)

Everyone in the software field (and probably every computer user) is familiar with Adobe and at least one of its products, including Acrobat and Photoshop. Popular software vendors like Adobe are often the victims of piracy and the unauthorized distribution of their products. As such, many have adopted policing measures like employing investigators to purchase products from third-party distributors to verify authenticity and proper licensing.  READ MORE

Don’t Touch! A Cautionary Tale in Which Court Awards Damages, Fees, and Injunction for Trade Secret Misappropriation by Ex-Employees

Findings of Fact and Conclusions of Law, PQ Labs, Inc. et al. v. Yang Qi et al., Case No. 12-0450 (Judge Claudia Wilken)

It is not uncommon for Silicon Valley employees to switch companies, and the temptation of bringing along materials such as customer lists, pricing information and technical documents to jumpstart their new employment can be strong. It is also not uncommon for such employees to get their new companies in hot water when they act on such temptation and use the materials. Judge Wilken reminded us all that when an employee’s switch in jobs includes misappropriation of his or her former employer’s confidential intellectual property, the consequences can be severe.

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Personal Jurisdiction Over Foreign Defendant Where Trademark Owner Advertised Its ND Cal Presence

d.light design, Inc. v. Boxin Solar Co., Case No. 13-5988 (Judge Chen)

Suing a foreign defendant in the district can be a tricky thing.  Personal jurisdiction is obviously a prerequisite to obtaining any relief on an IP claim.  Recent orders by Judge Chen in the d.light case suggest that a trademark plaintiff may have a better chance if it makes clear to the world that it is located in ND Cal and that it owns the trademarked goods and services at issue. READ MORE