A unanimous U.S. Supreme Court held on June 8, 2023, that a dog toy company’s “parody” chew toy that mimics Jack Daniel’s widely recognized whiskey bottle does not escape trademark liability merely because the toy has “expressive content” or because it parodies Jack Daniel’s. Justice Kagan delivered the narrow opinion, writing that because the dog toy company, VIP Products LLC (“VIP”), used Jack Daniel’s trademarks as a designation of source for VIP’s own goods – i.e. using another’s trademark as a trademark – there is no special threshold First Amendment inquiry. The Supreme Court vacated the prior Ninth Circuit opinion that VIP’s use was protected under the First Amendment and the so-called Rogers test for “expressive” works, and remanded for consideration of whether VIP’s use is likely to cause consumer confusion. The Supreme Court expressly did not evaluate whether or how the well-known Rogers test may or may not apply in other contexts. Jack Daniel’s Properties, Inc. v. VIP Products LLC, 599 U.S. ___ (2023).Read More
The U.S. Supreme Court will consider if the U.S. Patent and Trademark Office’s (USPTO) refusal to register the trademark “Trump too small” violates the Free Speech Clause of the First Amendment.Read More
In a decision closely watched by the visual arts community and content creators alike, the U.S. Supreme Court held on May 19, 2023, that pop artist Andy Warhol’s orange silkscreen portrait of the musician Prince (“Orange Prince”), adapted from photographer Lynn Goldsmith’s original photograph of Prince, was not “fair use” under copyright law. Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, 598 U.S. _ (2023).Read More
The Full Court of the Federal Court of Australia handed down its appeal decision on 10 May 2023 in New Aim Pty Ltd v Leung  FCAFC 67 (Appeal). A five judge panel presided over the Appeal and ultimately found in favour of the Appellant, New Aim Pty Ltd, including in relation to appeal ground 12 which contended that the primary judge erred in rejecting the entirety of the written and oral evidence of New Aim’s expert at trial, Ms Chen.Read More
The High Court has clarified the test for trade mark infringement, with a unanimous rejection of Allergan Australia’s claims against Self Care IP Holdings Pty Ltd (Self Care) for the use of “PROTOX” branding on anti-wrinkle skin care products in Self Care IP Holdings Pty Ltd & Anor v Allergan Australia Pty Ltd & Anor  HCA 8.
Self Care was successful on all matters on appeal, with the Court finding that Self Care did not use “instant Botox alternative” as a trade mark, “PROTOX” was not deceptively similar to “BOTOX”, and the phrase “instant BOTOX alternative” was not used in breach of the Australian Consumer Law (ACL).Read More
We are used to decisions about non-traditional trade marks not deserving protection in the European Union, leading to the inevitable conclusion that non-traditional trade marks can be difficult to register and keep on the register.
The recent McCain decision of the EU General Court seems to go into the opposite direction, providing some guidance on which proof of use will be sufficient for a non-traditional trade mark to stay on the EU register (see here).Read More
Some of the largest false advertising jury verdicts were recorded in 2022. This, coupled with increased inflationary pressures will likely lead to an uptick in false advertising suits given that such pressures will impact consumer spending habits, leading to increased scrutiny of competitor advertising practices—particularly in the social media space.Read More
Hamburg, Germany – Not only known for its famous seafood and the third largest European seaport for goods and cargo handling1, but also a considerable and noteworthy jurisdiction when it comes to the protection and enforcement of trade mark rights in preliminary proceedings.
The Higher Regional Court of Hamburg found in a recent trade mark dispute in preliminary injunction proceedings (Decision of 29 September 2022 – 5 U 91/21) between the “Deutsche Telekom” (“Claimant”) and the Spanish telecommunication company “Telefónica” and its German subsidiary (together “Defendants”), that the application and use of a “T” consisting of five dots in combination with various Telefónica company symbols (e.g. shown below left and middle) (“Contested Signs”) constitute an infringement of the well-known “T-brand” (shown below right) (EUTM 215194 ; DE 39529531) of Deutsche Telekom (“T-Trade Mark”).
The Court found that there was a likelihood of confusion between the opposing signs, confirmed that the “T”-brand has a reputation within the meaning of Art. 9 (2) lit. c) of the EU Trade Mark Regulation (Regulation (EU) 2017/1001), and therefore concluded that the defendant’s trade mark infringes the claimant’s trade mark rights resulting in the grant of a preliminary injunction (“PI”).Read More
Italian transposition of the Copyright Directive (as defined below) introduces some interesting additions within the free uses regulation, but it might not represent the relevant breakthrough for the press industry that its minor players, as well as the EU legislator, wished for.
On 26 March 2019, the European Parliament approved EU Directive 2019/790 of the European Parliament and of the Council of 17 April 2019, on copyright and related rights in the Digital Single Market (the Copyright Directive), which member states were expected to transpose by June 2021 at the latest. Whilst some member states complied with the deadline, Italy only issued its transposition through Legislative Decree 177/2021 on 12 December 2021 (the Legislative Decree) and amended the existing Law No. 633/1941 on copyright and related rights (the Italian Copyright Law).Read More
On June 28, 2021, the Attorneys General from New York and Colorado co-authored a letter to congressional leaders supporting the restoration of the Federal Trade Commission’s right to seek equitable relief, an affirmation urgently sought by the pending Consumer Protection and Recovery Act (H.R. 2668). Twenty-eight attorneys general joined en masse to support the passage of H.R. 2668, which was introduced in April 2021 by Representative Tony Cárdenas (D-CA) to “to affirmatively confirm the authority of the Federal Trade Commission to seek permanent injunctions and other equitable relief for violations of any provision of law enforced by the Commission.”Read More