Trademark

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On Monday, Judge Rakoff held that a discovery error—uncovered after the parties went to trial—did not merit a redo or sanctions. In June 2021, Adidas brought a trademark action against Thom Browne, alleging that Thom Browne’s four-bar and grosgrain design on its activewear infringed Adidas’s trademarked three-stripe design. The case went to trial in January 2023, where the jury decided that Thom Browne was not liable; the decision was affirmed by the Second Circuit in May 2024.

While the appeal was pending, Adidas learned through a related action in the U.K. that Thom Browne had failed to produce four relevant emails in the course of discovery. Adidas moved for a new trial, and the Court re-opened discovery on this limited issue. The Court determined that the failure stemmed from a miscommunication between the e-discovery vendor and Thom Browne’s paralegals regarding the categorization of certain documents being reviewed for production. In assessing the mistake, Judge Rakoff determined that neither a new trial or sanctions would be appropriate because Adidas “failed to show either that the four emails probably would have changed the outcome of trial . . . or that Thom Brown engaged in ‘misconduct’ in failing to produce the emails.”Continue Reading Judge Rakoff:  Unproduced Emails — Although Relevant — Do Not Warrant New Trial Or Sanctions

In an opinion yesterday, Judge Gardephe dismissed a complaint (see our prior coverage here) brought by Liberty Tax Service against the makers of the TV show “Better Call Saul” for depicting an allegedly similar business, “Sweet Liberty Tax Services,” as a criminal enterprise. In the show, the business is run by Craig Kettleman, who had been convicted of embezzlement in an earlier season but then opened “Sweet Liberty Tax Services” with his wife after being released from prison.

Under Second Circuit law, using a mark in this way is protected so long as it is artistically relevant and not explicitly misleading. Judge Gardephe agreed with the Defendants that the “Sweet Liberty” name was artistically relevant insofar as it was intended to be “richly ironic”:Continue Reading Judge Gardephe: Better Call Saul’s Fictional “Sweet Liberty” Tax Firm Does Not Infringe Rights of Similarly-Named, Real Business

A jury returned a verdict yesterday of approximately $130,000 against Mason Rothschild, the creator of a series of non-fungible tokens, or NFTs, associated with digital images of Hermés’s “Birkin” handbags covered in fake fur (see our prior coverage here).

Rothschild argued that the NFTs were protected artistic expression under the First Amendment.  Judge Rakoff denied both sides summary judgment as to that and other issues, and ultimately instructed the jury that the First Amendment question turned on whether Rothchild was intentionally trying to confuse customers and thereby capitalize on Hermés famous brand, or instead created the project for artistic reasons:Continue Reading Jury: “MetaBirkins” NFTs Violate Trademark Rights of Handbag Maker Hermés

In a trademark infringement complaint filed on Monday, Liberty Tax Service sued the makers of the TV show “Better Caul Saul” for depicting an allegedly similar business, “Sweet Liberty Tax Services,” as essentially a criminal enterprise:
Continue Reading Tax Preparation Firm Sues the Makers of “Better Caul Saul” For Depiction of Similarly-Named, but Crooked, Fictional Firm

In an opinion Wednesday, Judge Rakoff allowed the handbag maker Hermés to proceed with a trademark suit against the individual responsible for a series of non-fungible tokens (“NFTs”) associated with digital images of “faux-fur-covered versions” of Hermés’s “Birkin” handbag. An example of a “MetaBirkin” image is below:

Continue Reading Judge Rakoff: Hermés Can Enforce Its “Birkin” Trademark Against Maker of “MetaBirkin” NFTs

In an opinion yesterday, Judge Hellerstein granted summary judgment to the Boy Scouts, and against the Girl Scouts, in a case arising from the Boy Scouts’ decision to use gender-neutral terms like “scout,” to account for its new policy of allowing girls to participate. The Girl Scouts alleged, in essence, that the Boy Scouts’ use of gender-neutral terms would create public confusion about the two organizations (see our prior coverage here).

Judge Hellerstein found that the Girl Scouts did not have a protectable trademark right to “scouting” because the public associates that term with either both organizations, or with the generic concept of “scouting”:
Continue Reading Judge Hellerstein Dismisses Girls Scouts’ Trademark Case Against Boy Scouts Over Gender-Neutral Term “Scouting”

On Tuesday, Judge Cote granted Google a temporary restraining order against the operators of a blockchain enabled “botnet.”  As the complaint explains, a “botnet” is “a network of internet-connected devices (bots), each of which are infected by malware,” and whose “computing power grows with each new device that is infected.” The complaint describes the particular botnet at issue as a modern version of organized crime:
Continue Reading Judge Cote Grants Google a TRO Against Operators of Malicious “Botnet”

Last week, the maker of White Claw filed a new complaint for trade infringement against the maker of “MIXX,” a forthcoming canned cocktail that will sold in some of the same stores as “MXD,” a line of canned cocktails made by the maker of White Claw.  According to the complaint, consumer confusion is particularly likely given the similar names for these products:
Continue Reading Maker of White Claw Files Trade Infringement Claim to Stop Competitor’s New Canned Cocktail

In an opinion Wednesday, Judge Vyskocil dismissed, on personal jurisdiction grounds, a trademark case against various websites selling counterfeit American Girl products from China. Judge Vyskocil found that American Girl could not meet its burden to show conduct directed at New York. The court was “unconvinced that a Defendant simply owning a website that is ‘accessible’ from New York is enough to find that it transacts business here,” where it appeared that the websites deliberately avoided doing business in the state:
Continue Reading Judge Vyskocil: Online Seller of Knock-Off American Girl Products Cannot Be Sued in New York Because Of Apparent Policy Against U.S. Sales

On the heels of Judge Swain ruling that the NBA 2K video games could depict player tattoos, Judge Daniels has issued an opinion ruling that the popular video game Call of Duty can prominently feature Humvees, without violating the trademark laws.  He concluded that including them in the game is an “integral element” of artistic expression, as opposed merely representing an attempt to piggy-back on the goodwill of Humvees (see our prior coverage here):
Continue Reading Judge Daniels: Video Game “Call of Duty” Is Allowed to Feature Humvees