WASHINGTON, D.C. — A fastener manufacturer in a June 4 reply brief asks the U.S. Supreme Court to grant its second petition for certiorari in a long-running trademark dispute, arguing that a deep split exists among the circuit courts over whether the finding of willfulness is a prerequisite to an award of profits after a finding of trademark infringement (Romag Fasteners Inc. v. Fossil Inc., et al., No. 18-1233, U.S. Sup.).
OAKLAND, Calif. — A California federal judge on June 7 granted a motion for discovery sanctions to the widow of a photographer embroiled in a lawsuit over her husband’s works’ intellectual property rights, with the judge mostly adopting a magistrate’s report and recommendation related to the defendants’ ongoing failure to comply with their discovery obligations (Rita C. Ho v. Mark Pinsukanjana, et al., No. 4:17-cv-06520, N.D. Calif., 2019 U.S. Dist. LEXIS 96274).
BROOKLYN, N.Y. — In a June 4 ruling, a New York federal judge endorsed a magistrate judge’s earlier recommendation that a former Subway franchisee should be barred from any further use of the “Subway” trademarks and a related, copyrighted mural (Doctor’s Associates LLC, et al. v. Abdul Hai, No. 19-1968, E.D. N.Y., 2019 U.S. Dist. LEXIS 95417).
WASHINGTON, D.C. — Affirming a lower court’s dismissal of antitrust and Lanham Act claims brought by a coalition of locksmiths, a District of Columbia U.S. Court of Appeals panel on June 7 found that Google LLC, Microsoft Corp. and Yahoo Inc. were immune from liability under the Communications Decency Act (CDA) for the online publication on their respective search engines of listings for purported scam locksmith companies (Marshall’s Locksmith Service Inc., et al. v. Google LLC, et al., No. 18-7018, D.C. Cir., 2019 U.S. App. LEXIS 17123).
SAN FRANCISCO — In a June 7 unpublished decision, the Ninth Circuit U.S. Court of Appeals found no error in a Washington federal judge’s denial of a renewed motion for judgment as a matter of law (JMOL) of no willful trade dress infringement (National Products Inc. v. Arkon Resources Inc., Nos. 18-35220 and 18-35221, 9th Cir., 2019 U.S. App. LEXIS 17170).
NASHVILLE, Tenn. — In a June 5 decision, a federal judge in Tennessee found that failure by a trademark and copyright infringement plaintiff to establish that a foreign company is the parent company of a domestic co-defendant compels dismissal of the foreign company from the action (TailGate Beer LLC v. Boulevard Brewing Company, et al., No. 18-563, M.D. Tenn., 2019 U.S. Dist. LEXIS 94271).
ALEXANDRIA, Va. — The maker of “JUUL”-brand nicotine extract pods on June 4 filed a trademark infringement lawsuit against various alleged counterfeiters in Virginia federal court; the same day, Juul Labs Inc. (JLI) moved to seal its related request for a temporary restraining order (TRO), citing a “strong interest in preventing Defendants from discovering the existence of the suit” (Juul Labs Inc. v. Unincorporated Associations, No. 19-715, E.D. Va.).
WASHINGTON, D.C. — In a nearly 20-year-old dispute over the “Get Lucky” clothing trademark, the defendant in the latest litigation argues in a June 4 reply brief to the U.S. Supreme Court that its defense over the effect of a release in a prior suit was never litigated or resolved and, thus, it was wrongly concluded from raising it below (Lucky Brand Dungarees Inc., et al v. Marcel Fashion Group Inc., No. 18-1086, U.S. Sup.).
DETROIT — Efforts by a patent owner to obtain dismissal of an action seeking a declaration of noninfringement were unsuccessful on June 3, when a federal judge in Michigan instead ruled that the case will proceed (Myco Industries Inc. v. Blephex LLC, No. 19-10645, E.D. Mich., 2019 U.S. Dist. LEXIS 92204).
MIAMI — Allegations of copyright infringement by a journalist who authored a memoir of her relationship with the drug lord Pablo Escobar were largely dismissed without prejudice on May 24 by a Florida federal judge (Virginia Vallejo v. Narcos Productions LLC, et al., No. 18-23462, S.D. Fla., 2019 U.S. Dist. LEXIS 89008).
NASHVILLE, Tenn. — A Tennessee federal judge on May 28 found that allegations by Vanderbilt University that a professor at the school, along with Scholastic Inc., infringed the “Vanderbilt” trademark may proceed (Vanderbilt University v. Scholastic Inc., et al., No. 18-46, M.D. Tenn., 2019 U.S. Dist. LEXIS 89065).
BOSTON — In a May 29 ruling, the First Circuit U.S. Court of Appeals upheld a grant of summary judgment in favor of San Juan Mayor Carmen Yulín Cruz Soto and the municipality of San Juan on allegations of trademark infringement in connection with the 2015 Fiestas de la Calle San Sebastián celebration (The Comité Fiestas de la Calle San Sebastián, Inc. v. Carmen Yulín Cruz Soto, et al., No. 17-1723, 1st Cir., 2019 U.S. App. LEXIS 15918).
WASHINGTON, D.C. — In a May 16 respondent brief, the U.S. Patent and Trademark Office (PTO) asks the U.S. Supreme Court to hold a petition for certiorari filed by an online travel website operator, stating that a pending high court case over parallel attorney fee issues, but in the patent context, will likely resolve the trademark-related fees issues in the present case (Booking.com B.V. v. Andrei Iancu, No. 18-1309, U.S. Sup.).
NEW YORK — Allegations that the British Broadcasting Corp. (BBC) and three of its employees violated a pro se plaintiff’s copyrights and trademarks when it used his music in a documentary and then credited him by his stage name were rejected May 23 by a New York federal judge (Juan Pablo Chavez v. British Broadcasting Corporation, et al., No. 17-9572, S.D. N.Y., 2019 U.S. Dist. LEXIS 87926).
ST. LOUIS — In a May 22 holding, the Eighth Circuit U.S. Court of Appeals dismissed an appeal of an order staying trademark litigation for lack of appellate jurisdiction and affirmed a Missouri federal judge’s denial of preliminary injunctive relief, in a dispute over the copyrights and trademarks associated with the conservative activist Phyllis Schlafly (Phyllis Schlafly Revocable Trust, et al. v. Anne Cori, et al., No. 17-2115, 8th Cir., 2019 U.S. App. LEXIS 15123).
ATLANTA — Although finding no error in a Georgia federal judge’s determination, following a bench trial, that a defendant infringed a plaintiff’s trademark, the 11th Circuit U.S. Court of Appeals on May 21 disagreed that the infringement was willful (PlayNation Play Systems Inc. v. Velex Corporation, No. 17-15226, 11th Cir., 2019 U.S. App. LEXIS 14956).
MIAMI — A federal magistrate judge in Florida on May 21 recommended that a defendant who was accused by Hard Rock Café International USA Inc. of trademark and trade dress infringement be denied its request for $438,390 in attorney fees (Hard Rock Café International USA, Inc. v. RockStar Hotels Inc., No. 17-62013, S.D. Fla., 2019 U.S. Dist. LEXIS 85437).
SAN FRANCISCO — A California federal magistrate judge’s denial of post-trial motions for judgment as a matter of law and a permanent injunction was not erroneous, the Ninth Circuit U.S. Court of Appeals ruled May 17, because although a plaintiff’s trademark was willfully infringed, the plaintiff filed suit outside the relevant statute of limitations (A.C.T. 898 Products Inc. v. W.S. Industries Inc., No. 17-56046, 9th Cir., 2019 U.S. App. LEXIS 14689).
WASHINGTON, D.C. — The U.S. Supreme Court on May 20 found that rejection by a debtor of an executory contract under Section 365 of the Bankruptcy Code, 11 U.S.C. § 365, has “the same effect as a breach outside bankruptcy” and that such a rejection cannot rescind trademark rights that were previously granted (Mission Product Holdings Inc. v. Tempnology LLC, No. 17-1657, U.S. Sup.).
ALBUQUERQUE, N.M. — A New Mexico Taxation and Revenue Department decision that assessed a franchisor with an unpaid gross receipts tax of $344,672 was affirmed May 7 by the New Mexico Court of Appeals, which rejected claims by the taxpayer that it was acting as a disclosed agent for its franchisee (ATC Healthcare Services Inc. v. New Mexico Taxation and Revenue Department, No. A-1-CA-36081, N.M. App.).