Matal v. Tam

The prohibition on trademarking offensive or disparaging marks—here, an Asian dance rock band called “The Slants”—violated the First Amendment, since the prohibition serves no substantial governmental interest and is not narrowly drawn.  The Lanham Act’s anti-disparagement provision which bars registration of trademarks that disparage persons, institutions, beliefs or national symbols violates the First Amendment.  A…

Impression Products, Inc. v. Lexmark Int’l, Inc.

A patentee loses patent rights in a product when it sells the patented product, even if the sale contract restricts the buyer’s use or resale of the product; contract law, not patent law, provides the remedy for any breach of those restrictions. Under the patent exhaustion doctrine, a patentee loses its patent rights in a…

TC Heartland, LLC v. Kraft Foods Group Brands, LLC

For purposes of the venue statute governing patent cases, a corporation “resides” only in its state of incorporation.  The patent venue statute, 28 USC 1400(b) states that a patent infringement suit may be brought in the judicial district where the defendant “resides” or where the defendant has a regular and established place of business and…

Elliott v. Google, Inc.

“Google” remains a valid trademark designating the source of a particular search engine despite the word’s common use as a verb to mean conducting any internet search.  A trademark may be cancelled if the person seeking cancellation shows that the trademark has become generic.  This decision holds that for purposes of determining “genericness,” the trademark…

Maloney v. T3Media, Inc.

The federal Copyright Act preempts plaintiffs’ claims under California’s right to publicity law arising from non-commercial use and publication of copyrighted photographs of plaintiffs taken by third parties.  The Copyright Act preempts California’s right to publicity law (Civ. Code 3344) insofar as it would permit persons to sue for the non-commercial use and publication of…

SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC

A patent infringer cannot avoid liability for damages during the 6-year statutory limitations period by raising an equitable defense of laches.  Following Petrella v. Metro-Goldwin-Mayer, Inc. (2014) 134 S.Ct. 1962 (which restricted the laches defense in a copyright suit), this decision holds that laches may not be raised as a defense to a suit for…

Star Athletica, LLC v. Varsity Brands, Inc.

Designs on cheerleaders’ uniforms were copyright protected because they could both (a) be perceived as two-dimensional artwork separate from the uniform itself, and (b) qualify as a protectable pictorial or graphic artworks in their own right or as applied on another medium.  Sections 101 and 113(a) of the Copyright Act allow a person to claim…

Life Technologies Corp. v. Promega Corp.

While it is illegal to supply from the United States “all or a substantial portion” of the components of a patented invention for assembly or combination abroad, the export of a single component of the patented invention cannot constitute a “substantial portion” of the components and so cannot violate the statute; “substantial” is a quantitative…

Samsung Electronics Co., Ltd. v. Apple, Inc.

When a product sold to a consumer is a multi-component product and the defendant has infringed a design patent on only some of the product’s many components, the damages may be calculated as the profit on those components, rather than the entire multi-component product sold to consumers.  Under 35 USC 289, damages for infringement of…

SunEarth, Inc. v. Sun Earth Solar Power Co., Ltd.

In ruling on a motion for attorney fees under the Lanham Act, the district court is free to exercise its discretion in examining the totality of the circumstances to decide if the case is exceptional, including whether the suit or prelitigation conduct was frivolous, ill-motivated or objectively unreasonable.  Like the Patent Act, the Lanham Act…

Russell Road Food & Beverage, LLC v. Spencer

Trademark assignments and trademark co-existence agreements are generally enforceable; here the assignee of a co-existence agreement had prior rights over the assignee under a later assignment of the trademark.  Both assignments and trademark co-existence agreements are generally enforceable.  Here, the original owner of the “Crazy Horse” trademark entered into a co-existence agreement with Russell Road’s…

JL Beverage Co., LLC v. Jim Beam Brands Co.

In this trademark infringement case, plaintiff raised trial issues of fact sufficient to overcome summary judgment by showing the defendant sold its competing vodka under labels that a reasonable consumer might find confusingly similar to plaintiff’s labels, both featuring puckered lips, colored to match the vodka’s flavoring. The district court erred in applying the preliminary…