The IP Law Blog

DECEMBER 29, 2023

Weintraub Tobin’s Intellectual Property podcast, The Briefing , published nearly 50 episodes this year covering a variety of IP issues relating to trademark, copyright, and entertainment law. 3: What Now for Fair Use After Warhol v. As we look back, we want to share The Briefing’s most popular episodes in 2023.

False Advertising 62

False Advertising Intellectual Property Fair Use Music 62

LexBlog IP

DECEMBER 29, 2023

Weintraub Tobin’s Intellectual Property podcast, The Briefing , published nearly 50 episodes this year covering a variety of IP issues relating to trademark, copyright, and entertainment law. 3: What Now for Fair Use After Warhol v. As we look back, we want to share The Briefing’s most popular episodes in 2023.

False Advertising 52

False Advertising Intellectual Property Fair Use Music 52

43(B)log

MAY 19, 2023

Defendants allegedly marketed the My Avastars dolls with a “code” that could be used in the Roblox platform. The court also found that the alleged use of the Roblox name was not, as a matter of law, nominative fair use. This was enough survive the motion to dismiss.

Copying 94

Copying False Advertising Social Media Advertising 94

43(B)log

FEBRUARY 16, 2024

Panel #2, TM, moderated by Vice Dean Felix Wu Jack Daniels says that use as a trademark is special: like copyright’s bête noire, confusion caused by trademark use is the central concern of trademark law. I’ve left out the parts specific to registered trademarks and the reference to treaties.

Trademark 59

Trademark Fair Use Registration False Advertising 59

43(B)log

NOVEMBER 1, 2022

28, 2022) Defendants allegedly both disparaged Homelight and infringed its trademark, which seems a weird combo, but half of the TM claims aren’t as contradictory as they seem—the other half really are. The court found that trademark infringement was plausibly pled, which is unfortunate. Homelight, Inc. Shkipin, 2022 WL 16528142, No.

False Advertising 59

False Advertising Fair Use Advertising Advertising 59

IPilogue

JUNE 21, 2022

sued StockX LLC for trademark infringement, false designation of origin, trademark dilution, and related causes. This case has the potential to define the scope of trademark rights against unauthorized uses in the world of NFTs. Nike currently has multiple pending trademark applications for their NFTs.

Non-Fungible Tokens 116

Non-Fungible Tokens Ownership False Advertising Fair Use 116

43(B)log

MAY 2, 2022

28, 2022) Chanel sued What Goes Around Comes Around (WGACA), alleging trademark infringement, false advertising, false association/endorsement, and related NY GBL claims for deceptive/unfair trade practices and false advertising. Nominative fair use factors: Also for a factfinder.

False Advertising 59

False Advertising Advertising Advertising Social Media 59

43(B)log

SEPTEMBER 7, 2021

She allegedly falsely represented that she was authorized to deliver Londra’s “recording artist and songwriting services. Big Ligas sued for tortious interference and for false advertising and trademark infringement under the Lanham Act. False advertising: “That Ms.

False Advertising 59

False Advertising Fair Use Advertising Advertising 59

43(B)log

FEBRUARY 3, 2024

Mary Katherine Amerine, Reasonably Careless Consumers in TM & False Advertising How do courts treat consumers in TM and false advertising cases? False advertising uses v different framework: consider the challenged ad as a whole, including disclaimers and qualifying language. Dougies for diapers.

False Advertising 49

False Advertising Contracts Branding Brands 49

43(B)log

AUGUST 26, 2022

24, 2022) This seems like a silly result to me, shifting the burden to comparative advertisers, but it's often much harder to get summary judgment in a trademark case than in comparable cases. And Peninsula cited a prior trademark prosecution by PennEngineering for admissions that the product design is functional.

False Advertising 59

False Advertising Advertising Advertising Trademark 59

The IPKat

MARCH 7, 2024

The Case of Upcycling”, Irene Calboli and Siroos Tanner address the IP dimension of upcycling and explore ways to prevent this environmentally friendly practice from being hindered by claims of potential trademark and copyright infringement. The analysis concludes with a review of recent US cases.

Intellectual Property 57

Intellectual Property False Advertising Editing Settlement 57

43(B)log

FEBRUARY 18, 2022

Lolita Darden, Stopping Zombie Company Trademark Abuse and Consumer Deception in Trademark Abandonment Cases Based on clinic work. b/c standard for proving abandonment is not consistent through US. A: False advertising context: FTC/state AGs. Protectability doctrines take this into account as well as fair use.

Trademark 59

Trademark False Advertising Fair Use Branding 59

SpicyIP

OCTOBER 27, 2023

Interface interference is a tactic that hinders consumers from performing actions like cancelling subscriptions or deleting accounts, such as redirecting them to another page while trying to cancel a pop-up advertisement. This can deceive users and harm the reputation of the original trademark owner.

Intellectual Property 52

Intellectual Property False Advertising Designs Design 52

43(B)log

MAY 22, 2023

May 19, 2023) Whereas the timeshare false advertising cases might be making law largely applicable to other timeshare cases, what’s going on in the strip club advertising cases might have somewhat broader implications. The district court concluded that plaintiffs’ false endorsement claims were foreclosed by Electra v.

Social Media 49

Social Media False Advertising Advertising Advertising 49

DuetsBlog

OCTOBER 5, 2020

Hearty thanks to Colette Durst , Stephen Lee , and Susan Perera , for generously sharing their insights and perspectives about trademark nominative fair use. In case you missed it, here is my Trademark Nominative Fair Use of Another’s Logo post from March, leading up to the 2020 AIPLA Annual Spring Meeting.

Fair Use 59

Fair Use IP Trademark False Advertising 59

IP and Legal Filings

APRIL 28, 2022

Tiffany filed the present application against Costco two months after it stopped using the “Tiffany” mark in the District Court for the Southern District of New York, alleging trademark infringement, counterfeiting false advertising among other things. It rejected Tiffany’s claim of trademark counterfeiting.

Fair Use 52

Fair Use False Advertising Trademark Branding 52

43(B)log

JANUARY 19, 2022

Mark Lemley, Mark McKenna, James Weinstein, and I also filed an amicus brief pointing out that, even if there had been a party (there wasn't), it still wouldn't have infringed ASU's trademarks. Although doctrines like Rogers v.

Fair Use 59

Fair Use Trademark False Advertising Advertising 59

43(B)log

FEBRUARY 24, 2024

Can enshrine things like notice & takedown in © law, but that has effects on the ability to assert fair use. We know that automated systems designed to flag infringements get lots of false positives b/c they can’t recognize fair use; may also be false negatives, though that’s not the focus.

Fair Use 45

Fair Use Branding Brands Branding 45

43(B)log

OCTOBER 11, 2021

Both sides now claim the other is liable for false advertising, among other claims.” Defendants also allegedly infringed RCI’s trademarks by using photographs of Roberto Coin jewelry and RCI’s logo in Kings Stone’s advertising after RCI terminated the relationship. And yes even borsheims has to be held accountable.”

Marketing 59

Marketing Marketing False Advertising Advertising 59

43(B)log

JULY 21, 2023

but also narrows the issues somewhat; the larger infringement, cybersquatting, and false advertising claims can’t be resolved on summary judgment. On websites, emails, and mailers, LHB uses Axon’s Taser character, stylized word, and design marks, often in proximity to its own marks. But is it a nominative fair use?

False Advertising 52

False Advertising Advertising Advertising Social Media 52

SpicyIP

DECEMBER 30, 2023

We’ve tried to represent a diversity of subject matter also in this list, so it’s a mixed bag of cases dealing with patents, trademarks, copyright law etc. Bolt Technology v. First, in Toyota v. Tech Square which was passed against a cancellation petition filed by Toyota against the registration of “Alphard” by Tech Square.

IP 124

IP Copyright Trademark Intellectual Property 124

LexBlog IP

FEBRUARY 1, 2023

Jack Daniel’s argued that the toy infringed on their trademark, as the shape of the whiskey [bottle] is closely associated with their brand. They also argued that the toy could lead to confusion among consumers, as it could be mistaken for an official Jack Daniel’s product. ” Id. Jack Daniels Products , 953 F.3d

Trademark 52

Trademark Intellectual Property Branding Brands 52

43(B)log

FEBRUARY 25, 2023

Changes in Trademark Law and Evidentiary Rules Introduction: Jake Linford Before courts admitted surveys routinely, they were concerned about hearsay. Instead of surveys, can we look at things like Google results or large text databases reflective of use in a particular community? It doesn’t work so well for advertising!

Trademark 72

Trademark Marketing Marketing Advertising 72

43(B)log

NOVEMBER 8, 2023

I’m going to talk briefly about last term’s Jack Daniels case—a trademark infringement and dilution case—as well as Elster, argued last week, in which the Justices appeared inclined to reject a First Amendment challenge to the refusal to register the claimed mark “TRUMP TOO SMALL” for t-shirts. Trademark: In Jack Daniel’s v.

False Advertising 75

False Advertising Advertising Advertising Trademark 75

43(B)log

AUGUST 3, 2023

Matthew Sag, Copyright Safety for Generative AI Not addressing whether training is always fair use in every circumstance; explain how generative AI fits w/in existing law (nonexpressive uses) and identify best practices to make generative AI fairer. Implications: too much memorization undermines arguments in favor of fair use.

Social Media 52

Social Media Fair Use Advertising Advertising 52

43(B)log

OCTOBER 4, 2021

Begin with legislative action: Trademark Modernization Act, Which introduces three of the big themes of the year: (1) trademark use, (2) the harm of infringement, and (3) the role of the First Amendment in limiting the scope of trademark rights. Slides here.

IP 94

IP Trademark Advertising Advertising 94

43(B)log

FEBRUARY 24, 2023

Every time a court uses Rogers, it’s covertly holding that it would be unconstitutional to apply a broader set of rights; we’re tailoring the test with this in mind. But the test doesn’t say 1A every time; you just use the test. Ramsey: do it w/broad fair use/general rules.

Trademark 69

Trademark False Advertising Fair Use Branding 69