First Republic Executives Fail in Attempt to Recover Nonqualified Deferred Compensation Plan Assets
Addressing whether a federal district court had jurisdiction over an action for declaratory relief that certain trade secrets and trademarks were invalid and not infringed, the US Court of Appeals for the Eighth Circuit...more
Ninth Circuit holds that custom Ford Mustang called “Eleanor,” which appeared in four films from 1974 to 2000, is not entitled to character copyright protection under Towle test and that licensor of custom car design did not...more
Every month, Erise’s trademark attorneys review the latest developments at the U.S. Patent and Trademark Office, in the courts, and across the corporate world to bring you the stories that you should know about: Taylor...more
In Impossible X LLC v. Impossible Foods Inc., Impossible Foods recently filed an opposition to Impossible X’s petition for certiorari, which asks the Supreme Court to decide (1) whether some disputes should require so-called...more
The US Court of Appeals for the Ninth Circuit reversed a district court’s dismissal of trademark declaratory judgment claims, finding that pre-enforcement commercialization activities can be used to establish personal...more
This week, the Ninth Circuit considers personal jurisdiction in a trademark declaratory judgment action and assesses an agency’s decision to omit an environmental-impact statement in connection with a forest-fire-management...more
Yuga Labs Inc. (Yuga) – the creator and marketer of the well-known "Bored Ape Yacht Club" collection of nonfungible tokens (NFTs), referred to as Yuga Bored Ape images – filed a complaint in July 2022 against conceptual...more
This week, the Court addresses whether a validity challenge to a trademark remains justiciable after a judgment of non-infringement. The Court holds that the district court lacked Article III jurisdiction to determine...more
In 2006, rock band OK Go released a music video for their song “Here It Goes Again,” which featured the band members running back and forth on four treadmills set up side-by-side in what looks like an unfinished basement. The...more
Thank you for reading the January 2023 issue of Sterne Kessler's MarkIt to Market® newsletter. This month, we discuss an ongoing trademark dispute between the band OK Go and cereal company Post, how to stay vigilant about...more
In a matter of first impression, the US Court of Appeals for the Eleventh Circuit found that there may be no prevailing party for purposes of assessing costs and attorneys’ fees under Federal Rule of Civil Procedure 54(d)....more
The US Court of Appeals for the Tenth Circuit dismissed an appeal of a district court order denying a stay of a federal action for lack of jurisdiction under 28 U.S.C. § 1291 and reversed in part the district court’s grant of...more
A foreign business recently failed to prevail in a trademark lawsuit because it could not demonstrate it had immediate plans to commence use of the trademark in the United States. Plaintiff-appellant Abdul Rehman Karim...more
The US Court of Appeals for the Second Circuit affirmed the dismissal of a complaint seeking a declaration of trademark abandonment, finding that the plaintiff (the co-owner of an online business that sells to customers in...more
In a dispute between two fruit product manufacturers concerning whether the phrase “Fruit is Our 1st Ingredient” is protectable as a trademark the parties initially litigated the application of the “first-to-file” rule where...more
On November 6, 2019, I discussed a licensing dispute regarding Ms. Pac-Man between Bandai Namco and AtGames Holdings. At that time, Bandai Namco sought a preliminary injunction against AtGames based on AtGames’ alleged...more
Addressing personal jurisdiction in a declaratory judgment action, the US Court of Appeals for the 10th Circuit reversed the district court’s bench trial verdict, finding that the district court lacked specific personal...more
Two recent decisions from the Western District of North Carolina in Winestore Holdings LLC v. Justin Vineyards & Winery LLC provide a tasting of the requirements for bringing a declaratory judgment action for non-infringement...more
Addressing—for the second time—the ownership of certain trademarks after sale of the relevant business, the US Court of Appeals for the Fifth Circuit concluded that the trademarks and goodwill associated with a single...more
On Tuesday, the Ninth Circuit declined to vacate a district court’s ruling at the request of the parties after they reached a settlement of their trademark dispute. In Reserve Media, Inc. v. Efficient Frontiers, Inc.,...more
What do the manufacturer of a military-grade light tactical wheeled vehicle and a 19th century private-detective agency have in common? Each has recently been involved in litigation with a video game developer for infringing...more
No. Erbaviva, LLC, a California LLC, sent a demand letter to Era Organics, a Florida company. The letter identified a number of Erbaviva federal trademark registrations, and “request[ed]” Era Organics: 1. Request the...more
Trademark licensing disputes can present thorny issues at the intersection of contract and trademark law. And when the dispute involves the Trump brand for residential buildings, the adjudication of rights and obligations...more
Rather than wait around for the hammer to fall, companies under threat of an intellectual property lawsuit sometimes choose to file a declaratory judgment complaint. Such “DJ” complaints usually ask the court to clear the air...more
Alien Tort Statute (ATS)/Torture Victims Protection Act (TVPA)/Anti-Terrorism Act (ATA) - District Court Dismisses ATS Claim Where Alleged Conduct in US Was Not Directly Linked to Injuries Claimed in Other Countries - ...more