In a fractured decision, the U.S. Supreme Court held on June 28, 2023 that two key provisions of the Lanham Act that prohibit trademark infringement do not extend to conduct that occurs outside the United States. Although all nine justices agreed that the Lanham Act does not apply extraterritorially, the Justices split five-to-four on the proper extraterritoriality framework. Writing for the majority, Justice Samuel Alito stated that extending the Lanham Act to conduct that occurs outside the United States is “wrong,” even if the conduct creates a likelihood of confusion in the United States, and that the contrary rule “would give the Lanham Act an untenably broad reach that undermines our extraterritoriality framework.” In contrast, Justice Sonia Sotomayor argued in an opinion concurring in the judgment that the majority decision “significantly waters down protections for U.S. trademark owners”, and called for “Congress to correct the Court’s limited reading of the Act.” Abitron Austria GmbH v. Hetronic Int’l, Inc., 600 U.S. _ (2023).Read More
The U.S. Supreme Court confirmed that brand owners are not required to prove willful intent before obtaining a defendant’s lost profits. On April 23, 2020, the Supreme Court resolved a longstanding circuit split and unanimously held that trademark infringers may have to hand over their profits even if they did not willfully infringe.
In Romag Fasteners, Inc. v. Fossil Group, Inc., the Supreme Court was tasked with determining whether the rule that a plaintiff can win a profit remedy only after showing a defendant willfully infringed its trademark can be reconciled with the statute’s plain language. Ultimately, the Supreme Court sided with the plaintiffs, Romag Fasteners (Romag), holding that:
“[a] plaintiff in a trademark infringement suit is not required to show that a defendant willfully infringed the plaintiff’s trademark as a precondition to a profits award.”
On April 27, 2020, the U.S. Supreme Court ruled in a 5-4 decision authored by Chief Justice Roberts that copyright protection does not extend to the annotations in Georgia’s official annotated code. In the case, Georgia v. Public.Resource.Org, Inc. (No. 18-1150), the majority held that because “Georgia’s annotations are authored by an arm of the legislature in the course of its legislative duties, the government edicts doctrine puts them outside the reach of copyright protection” even though the annotations themselves do not have the force of law.Read More
A nearly 20-year dispute between two competitors in the apparel industry will be heard by the Supreme Court Monday January 13, 2020, on the legal issue of claim preclusion – highlighting the practical pitfalls of releasing trademark infringement claims in settlement agreement between parties that continue to use the marks at issue. The case is Lucky Brands Dungarees, Inc. v. Marcel Fashion Group, Inc., Case No. 18-1086.
The practical lessons to draw from this dispute are numerous:
- the importance of initially clearing marks and implementing a plan to handle potential third party objections
- strategic enforcement as to when, and against whom, to enforce trademark rights – and squarely on point with this nearly 20 year battle now before the Supreme Court
- careful drafting of what claims are released in the context of future use of the same or similar trademarks.
On June 24, 2019, the U.S. Supreme Court held in Iancu v. Brunetti that the Lanham Act’s prohibition on registration of “immoral” or “scandalous” trademarks violates the First Amendment. The holding was in favor of Respondent Erik Brunetti, who had been denied a trademark registration for “FUCT” in connection with various clothing items.Read More
On April 15, 2019, the Supreme Court of the United States denied the petition for certiorari filed by the St. Regis Mohawk Tribe.Read More
In a big day for inter partes review (IPR) at the U.S. Supreme Court, the Court issued two opinions, Oil States Energy Services, LLC v. Greene’s Energy Group, LLC et al. and SAS Institute Inc. v. Iancu et al.