January 2012: Trademark and Copyright Litigation Update

In This Issue:

- Ninth Circuit Abandons “Internet Troika” For Assessing Trademark Infringement

In Network Automation v. Advanced Systems Concepts, 638 F.3d 1137 (9th Cir. 2011), the Ninth Circuit clarified that analysis of trademark infringement claims in the Internet context, as with other trademark infringement cases, must be tailored to fit the specific facts of each case. In so doing, the Ninth Circuit rejected the so-called “Internet troika” analysis, which focused on three and only three factors for Internet-related trademark infringement. In place of this abbreviated, plaintiff-friendly standard, Networks Automation requires a “flexible” approach when applying the traditional multi-factor Sleekcraft test for assessing likelihood of confusion – a far more defendant-friendly standard....

- Logos, Emblems, and Characters Given Trademark Protection Reprieve as Ninth Circuit Withdraws and Supersedes Earlier Controversial Aesthetic Functionality Decision

In our July 2011 Newsletter, we reported on an important and controversial trademark decision from the Ninth Circuit, Fleischer Studios, Inc. v. A.V.E.L.A., Inc., 636 F.3d 1115 (9th Cir. 2011), which affirmed the dismissal of copyright and trademark infringement claims related to the defendant’s licensing of the Betty Boop image on various products. As we reported in July, the Ninth Circuit reasoned that the defendant’s use of the Betty Boop image – “never designat[ing] the merchandise as ‘official’ [Fleischer] merchandise or otherwise affirmatively indicat[ing] sponsorship [by Fleischer]” 636 F.3d at 1124 – was not the kind of source-designating use as a trademark forbidden by the Lanham Trademark Act. Rather, the Ninth Circuit reasoned, the defendants merely employed the Betty Boop image as a “functional and aesthetic” characteristic of their licensed products: “Even a cursory examination, let alone a close one, of ‘the articles themselves, the defendant’s merchandising practices, and any evidence that consumers have actually inferred a connection between the defendant’s product and the trademark owner,’ reveal that A.V.E.L.A. is not using Betty Boop as a trademark, but instead as a functional product.” 636 F.3d at 1123...