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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:

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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:
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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

In a complaint Tuesday, the Girl Scouts sued the Boy Scouts for trademark infringement and unfair competition, arising from the Boy Scouts’ recent decision to include girls, and to use gender-neutral terms like “scout,” that will allegedly confuse the public.  From the complaint’s introduction:…
Continue Reading Girls Scouts: Boy Scouts’ New Inclusion of Girls, and Use of Gender Neutral Term “Scouts,” Violates Trademark Laws

Last week, Judge Daniels granted in large part a summary judgment motion that Characters For Hire, a company that provides costumed characters for children’s events, had filed in response to trademark, unfair competition and and similar claims.  According to the plaintiffs (Disney, Marvel, and Lucasfilm), Characters for Hire’s costumes, including ones named “Frozen Themed,” “Avenging Team,” and “Star Battles,” are strikingly similar to well-known characters from the plaintiffs’ Frozen, Avengers, and Star Wars franchises.

Judge Daniels rejected the plaintiffs’ claims of consumer confusion, noting that whether children believed the generic characters were the same as the more famous Disney versions was irrelevant:…
Continue Reading Judge Daniels Narrows Trademark Case Against Company Offering “Frozen Themed” Costumed Characters for Children’s Parties