United States: Copyright and Trademark Case Review: FLANAX, Fishing Tackle, Football Players and More

Trademark Opinions

Owners of Foreign Marks May Sue Under Lanham Act Without Using Marks in the US:  Belmora LLC v. Bayer Consumer Care AG, No. 15-1335 (4th Cir. Mar. 23, 2016)
Agee, J. In a closely watched case involving trademark protection for Bayer's FLANAX mark, the Fourth Circuit held that Bayer could bring false association and false advertising claims under Lanham Act § 43(a), as well as a petition before the TTAB to cancel Belmora's US registration of the FLANAX mark based on deceptive use under § 14(3), notwithstanding Bayer's non-use of the mark in the United States. Bayer had owned and used the FLANAX mark in Mexico since the 1970s, and contended that Belmora was using the mark in the United States deliberately to deceive Mexican-American consumers into thinking they were purchasing Bayer's products.

The court first explained that, under the plain language of § 43(a), the Lanham Act does not require a plaintiff to own or to have used a trademark in US commerce as an element of the cause of action for false association or false advertising, in contrast to § 32 of the Lanham Act providing a cause of action for trademark infringement. The court similarly agreed with Bayer that "the district court erred in overturning the TTAB's § 14(3) decision because it 'read a use requirement into the section that is simply not there.'"

The Fourth Circuit further found that Bayer's claims satisfied the Supreme Court's two-prong test for determining whether a party has a cause of action under the Lanham Act, articulated in Lexmark International, Inc. v. Static Control Components, Inc., 134 S. Ct. 1377 (2014), under which the party's claim must: (1) fall within the "zone of interests" protected by the statute, and (2) identify injuries proximately caused by violations of the statute.

Read the firm's Bloomberg BNA article on Belmora v. Bayer.

Dairy Products and Fishing Tackle too Different to Support Trademark Claims: Hugunin v. Land O' Lakes, Inc., No. 15-2815 (7th Cir. Mar. 1, 2016)
Posner, J. The Seventh Circuit affirmed the district court's summary judgment for defendant on plaintiff's infringement claims and dismissal of defendant's dilution counterclaim as barred by laches, in a trademark dispute surrounding use of the mark LAND O LAKES. Plaintiff had registered the mark for use in the manufacturing and sale of fishing tackle and sued the defendant dairy company for trademark infringement in connection with defendant's sponsorship of a sport-fishing tournament and advertisements of dairy products in fishing magazines. The court focused on the significant differences between the parties' respective products in holding that there was little to no likelihood of consumers' believing that the dairy company was the actual producer of plaintiff's fishing tackle, and that there was no trademark dilution. The Seventh Circuit also emphasized that, with defendant's annual revenue in the billions of dollars and plaintiff's in the tens of thousands of dollars, the size disparity between the parties made it implausible that either would be harmed by the other's use of an identical mark. Finally, the court rejected plaintiff's argument that defendant was liable for contributory infringement, noting that there was no evidence defendant had issued any licenses for or was even aware of alleged use of defendant's trademark by plaintiff's competitors.

Unregistered Trademarks are Covered by Country-of-Origin Marking Requirements Under Tariff Act: JBLU, Inc. v. United States, No. 2015-1509 (Fed. Cir. Mar. 2, 2016)
Moore, J. The Federal Circuit reversed the United States Court of International Trade's dismissal on summary judgment of JBLU's suit involving the country-of-origin marking requirements of § 304 of the Tariff Act of 1930, 19 U.S.C. § 304(a). Prior to filing trademark applications with the USPTO, JBLU had imported jeans made in China that were embroidered with "C'est Toi Jeans USA," "CT Jeans USA" or "C'est Toi Jeans Los Angeles." The Court of International Trade had determined that these jeans were subject to the strict marking requirements of 19 C.F.R. § 134.46 (country of origin markings must be in close proximity to and of at least the same size as "USA") because the terms that included "USA" and "Los Angeles" were not "part of a trademark or trade name," under § 134.47 (which would trigger more lenient marking requirements). The Federal Circuit reversed and remanded, holding that § 134.47's reference to "a trademark or trade name" unambiguously includes unregistered trademarks not subject to pending applications, and thus that the small "Made in China" labels needed to be considered under this section rather than § 134.46.

Copyright Opinions

Football Players' Publicity Rights Preempted by Copyright: Dryer v. National Football League, No. 14-3428 (8th Cir. Feb. 26, 2016)
Gruender, J. In a dispute over the use of former professional football players' images in films produced by the NFL, the Eighth Circuit affirmed the district court's summary judgment ruling (i) that plaintiffs' state law right-of-publicity claims were preempted under the Copyright Act, 17 U.S.C. § 301(a); and (ii) in favor of defendant NFL on plaintiffs' claim of false endorsement under the Lanham Act.

With respect to its preemption ruling, the court rejected plaintiffs' argument that their past performances in football games constituted "part of their identities" rather than copyright-eligible works: "the Copyright Act specifically includes within its purview fixed recordings of [] live performances [of athletic events]." Because a right-of-publicity challenge to the "expressive, non-commercial use of a copyrighted work" would assert rights equivalent to the copyright owner's exclusive rights, such a challenge was held to be preempted. In so holding, the court rejected plaintiffs' contention that the films constituted commercial speech as "advertisements for 'NFL-branded football.'" 

With respect to false endorsement, the court held that, because plaintiffs provided no evidence of the films' containing "misleading [or] false statements" regarding the former players' endorsement of, or association with, the NFL, their Lanham Act claim of false endorsement failed as a matter of law (quoting Am. Italian Pasta Co. v. New World Pasta Co., 371 F.3d 387, 393–94 (8th Cir. 2004)).

Canada not an Adequate Alternative Forum: Halo Creative & Design, Ltd. v. Comptoir Des Indes, Inc., No. 2015-1375 (Fed. Cir. Mar. 14, 2016)
Dyk, J. The Federal Circuit reversed the district court's dismissal on forum non conveniens grounds of an action, brought in Illinois by a Hong Kong company against a Canadian company, including claims of infringement of US design patents, copyrights and common-law trademarks based on sales of allegedly infringing furniture in the United States. Where the record contained no evidence of allegedly infringing acts in Canada and no indication that Canadian law provides any remedy for extraterritorial copyright infringement, the Federal Circuit held that the district court had abused its discretion in finding the Federal Court of Canada to be an adequate alternative forum for the suit.

No Copyright Claim in Trafficking Case: Doe v. Backpage.com, LLC, No. 15-1724 (1st Cir. Mar. 14, 2016)
Selya, J. In an action by victims of underage sex trafficking against an online classified advertisement service provider, the First Circuit affirmed the district court's dismissal of plaintiff's copyright claim, based on failure to adequately plead an entitlement to damages. The court held that plaintiff had failed to present a plausible basis for compensatory damages resulting from the use of her copyrighted photograph in advertisements posted by third parties to defendant's website, where the timing of her registration precluded an award of statutory damages. Moreover, the court noted that plaintiff presented no facts suggesting harm to the market value of her photograph, and rejected as "wholly speculative" plaintiff's argument that use of her photograph would increase defendant's profits by "enhanc[ing] the effectiveness of advertisements" posted by third parties. The court also held that plaintiff was not entitled to injunctive relief, as nothing in the complaint suggested any risk of future infringement.

Supreme Court Denies Review of Two 9th Circuit Cases

Multi Time Machine, Inc. v. Amazon.com, Inc., No. 15-936 (Feb. 29, 2016)
Multi Time Machine sought review of a Ninth Circuit decision affirming the district court's summary judgment for Amazon, based on its conclusion that Amazon's search results page did not create a likelihood of confusion by displaying competitors' military-style watches in response to online shoppers' search queries using Multi Time Machine's trademark. The Supreme Court denied certiorari without comment.

Towle v. DC Comics, No. 15-943 (Mar. 7, 2016)
Petitioner sought review of a Ninth Circuit decision holding that his replica cars infringed DC Comics' copyright in the Batmobile character as it appeared in the Batman comic books, television series and motion picture. The Ninth Circuit's decision articulated a three-part test for determining whether such a character is eligible for copyright protection, under which the character must: (1) "have 'physical as well as conceptual qualities,'" (2) "be 'sufficiently delineated' to be recognizable as the same character whenever it appears," and (3) "be 'especially distinctive' and 'contain some unique elements of expression.'" DC Comics v. Towle, 802 F.3d 1012, 1021 (9th Cir. 2015) (internal citations omitted). The Supreme Court denied certiorari without comment.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
In association with
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

Disclaimer

Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Security

This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.