Top 10 Trademark Cases for the Month of August 2010

1. Advanced BodyCare Solutions, LLC v. Thione Int'l, Inc., No. 09-13151, UNITED STATES COURT OF APPEALS FOR THE ELEVENTH CIRCUIT, 2010 U.S. App. LEXIS 17742, August 25, 2010, Decided, August 25, 2010, Filed

OVERVIEW:  Jury could reasonably have found that a supplier did not breach an installment contract under O.G.C.A. § 11-2-612(3), as less than 20% of the goods a purchaser received in one order were allegedly defective. Lost profits damages for the purchaser's breach were not barred by O.C.G.A. § 11-2-719(1); the contract's stated remedies were not exclusive.

CORE TERMS:  ampoule, counterclaim, lost profits, new trial, notice, breach of contract, matter of law, assurance, kit, post-trial ...

Lexis.com subscribers can view the enhanced version of Advanced BodyCare Solutions, LLC v. Thione Int'l, Inc.

Non-subscribers can use lexisOne's Free Case Law search to view the free, un-enhanced version of Advanced BodyCare Solutions, LLC v. Thione Int'l, Inc.

2. United States v. Hudson, No. 09-3518, UNITED STATES COURT OF APPEALS FOR THE SEVENTH CIRCUIT, 2010 U.S. App. LEXIS 17679, April 2, 2010, Argued, August 24, 2010, Decided

OVERVIEW:  Defendant's sentence for possession of a firearm as a felon and possession of a stolen firearm, 18 U.S.C.S. § 922(g)(1) & (j), was properly enhanced pursuant to U.S. Sentencing Guidelines Manual § 2K2.1(a)(4)(A) because his prior "look-alike" drug offense, Ind. Code § 35-48-4-4.5(a), qualified as a controlled-substance offense.

CORE TERMS:  counterfeit, controlled substance, guideline, look-alike, controlled-substance, sentencing, sentence, convicted, marijuana, firearm ...

Lexis.com subscribers can view the enhanced version of United States v. Hudson

Non-subscribers can use lexisOne's Free Case Law search to view the free, un-enhanced version of United States v. Hudson

3. Universal Furniture Int'l, Inc. v. Collezione Europa USA, Inc., No. 07-2180, No. 09-1437, UNITED STATES COURT OF APPEALS FOR THE FOURTH CIRCUIT, 2010 U.S. App. LEXIS 17421, December 2, 2009, Argued, August 20, 2010, Decided

OVERVIEW:  Because a furniture designer modified and arranged decorative elements in unique ways and the highly ornate elements were conceptually separable from and unnecessary to function under 17 U.S.C.S. § 101, the compilations entitled to copyright protection under 17 U.S.C.S. § 102(a)(5); judgment against competitor was affirmed.

CORE TERMS:  furniture, collection, utilitarian, decorative, separability, conceptual, similarity, registration, deductible expenses, Lanham Act ...

Lexis.com subscribers can view the enhanced version of Universal Furniture Int'l, Inc. v. Collezione Europa USA, Inc

Non-subscribers can use lexisOne's Free Case Law search to view the free, un-enhanced version of Universal Furniture Int'l, Inc. v. Collezione Europa USA, Inc

4. Fortune Dynamic, Inc. v. Victoria's Secret Stores Brand Mgmt., No. 08-56291, UNITED STATES COURT OF APPEALS FOR THE NINTH CIRCUIT, 2010 U.S. App. LEXIS 17269, November 2, 2009, Argued and Submitted, Pasadena, California, August 19, 2010, Filed,  As Amended August 24, 2010.

OVERVIEW:  Whether consumers were likely to be confused as to the source of an intimate apparel designer's promotional tank top, which was branded with a shoe manufacturer's incontestable trademark should be answered by a jury not by a court. The same was true of the apparel designer's reliance on the Lanham Act's fair use defense.

CORE TERMS:  delicious, trademark, tank top, descriptive, fair use, consumer, suggestive, shoe, footwear, beauty ...

Lexis.com subscribers can view the enhanced version of Fortune Dynamic, Inc. v. Victoria's Secret Stores Brand Mgmt

Non-subscribers can use lexisOne's Free Case Law search to view the free, un-enhanced version of Fortune Dynamic, Inc. v. Victoria's Secret Stores Brand Mgmt

5. Virgin Health Corp. v. Virgin Enters. Ltd., No. 09-11438, Non-Argument Calendar, UNITED STATES COURT OF APPEALS FOR THE ELEVENTH CIRCUIT, 2010 U.S. App. LEXIS 17286, August 19, 2010, Decided, August 19, 2010, Filed,  PLEASE REFER TO FEDERAL RULES OF APPELLATE PROCEDURE RULE 32.1 GOVERNING THE CITATION TO UNPUBLISHED OPINIONS.

OVERVIEW:  In a Florida corporation's declaratory judgment action regarding trademark infringement, personal jurisdiction did not exist over an English Corporation under the Florida long-arm statute because, inter alia, the act of sending a cease-and-desist letter, by itself, did not mean that the English corporation was doing business in Florida.

CORE TERMS:  personal jurisdiction, long-arm, citation omitted, licensee, trademark, general jurisdiction, infringement, notice of appeal, exercise of jurisdiction, prima facie case ...

Lexis.com subscribers can view the enhanced version of Virgin Health Corp. v. Virgin Enters. Ltd.

Non-subscribers can use lexisOne's Free Case Law search to view the free, un-enhanced version of Virgin Health Corp. v. Virgin Enters. Ltd.

6. Jules Jordan Video, Inc. v. 144942 Canada Inc., No. 08-55075, No. 08-55126, UNITED STATES COURT OF APPEALS FOR THE NINTH CIRCUIT, 2010 U.S. App. LEXIS 17081, March 2, 2010, Argued and Submitted, Pasadena, California, August 16, 2010, Filed

OVERVIEW:  An actor's right of publicity claim under Cal. Civ. Code § 3344 fell within the subject matter of copyright, and the rights he asserted were equivalent to the rights within the scope of 17 U.S.C.S. § 106, because the essence of his claim was that defendants reproduced and distributed the DVDs in which he appeared without authorization.

CORE TERMS:  publicity, preempted, default, Copyright Act, film, copyright infringement, recording, copyrighted, ownership, law claims ...

Lexis.com subscribers can view the enhanced version of Jules Jordan Video, Inc. v. 144942 Canada Inc

Non-subscribers can use lexisOne's Free Case Law search to view the free, un-enhanced version of Jules Jordan Video, Inc. v. 144942 Canada Inc

7. HydraMedia Corp. v. Hydra Media Group, Inc., Nos. 09-55237, Nos. 09-56047 & 09-56050, UNITED STATES COURT OF APPEALS FOR THE NINTH CIRCUIT, 2010 U.S. App. LEXIS 16977, August 4, 2010, Argued and Submitted, Pasadena, California, August 12, 2010, Filed,  PLEASE REFER TO FEDERAL RULES OF APPELLATE PROCEDURE RULE 32.1 GOVERNING THE CITATION TO UNPUBLISHED OPINIONS.

CORE TERMS:  injunction, attorney fees, infringement, willful, summary judgment, willfulness, accounting, abused, hydra

Lexis.com subscribers can view the enhanced version of HydraMedia Corp. v. Hydra Media Group, Inc

Non-subscribers can use lexisOne's Free Case Law search to view the free, un-enhanced version of HydraMedia Corp. v. Hydra Media Group, Inc

8. Laukus v. Rio Brands, Inc., Nos. 09-3402 and 09-3403, UNITED STATES COURT OF APPEALS FOR THE SIXTH CIRCUIT,  10a0492n.06;, 2010 U.S. App. LEXIS 16842; 2010 FED App. 0492N (6th Cir.), August 11, 2010, Filed ,  NOT RECOMMENDED FOR FULL-TEXT PUBLICATION. SIXTH CIRCUIT RULE 28 LIMITS CITATION TO SPECIFIC SITUATIONS. PLEASE SEE RULE 28 BEFORE CITING IN A PROCEEDING IN A COURT IN THE SIXTH CIRCUIT. IF CITED, A COPY MUST BE SERVED ON OTHER PARTIES AND THE COURT. THIS NOTICE IS TO BE PROMINENTLY DISPLAYED IF THIS DECISION IS REPRODUCED.

OVERVIEW:  Presumption of laches applied to trademark infringement action filed five months after limitations period had run; but district court improperly weighed evidence in finding that mark owner failed to rebut presumption, as it neglected to view evidence and reasonable inferences in light most favorable to mark owner.

CORE TERMS:  flag, laches, trademark, trademark infringement, retail store, registered, infringement, counterfeiting, counterfeit, unfair competition ...

Lexis.com subscribers can view the enhanced version of Laukus v. Rio Brands, Inc

Non-subscribers can use lexisOne's Free Case Law search to view the free, un-enhanced version of Laukus v. Rio Brands, Inc

9. Specialized Seating, Inc. v. Greenwich Indus., L.P., Nos. 07-1435 & 10-2670, UNITED STATES COURT OF APPEALS FOR THE SEVENTH CIRCUIT, 2010 U.S. App. LEXIS 17015, May 24, 2010, Argued, August 11, 2010, Decided

OVERVIEW:  Competitor did not infringe on an owner's incontestable trademark under Lanham Act because owner's registration was invalid based on functionality under 15 U.S.C.S. § 1115(b)(8) in that the trademark design of a folding chair was functional as a unit and every important aspect was independently functional with no features added for distinctiveness.

CORE TERMS:  chair, trademark, functional, patent, x-frame, registration, incontestable, b-back, folding chairs, functionality ...

Lexis.com subscribers can view the enhanced version of Specialized Seating, Inc. v. Greenwich Indus., L.P.

Non-subscribers can use lexisOne's Free Case Law search to view the free, un-enhanced version of Specialized Seating, Inc. v. Greenwich Indus., L.P.

10. Jay Franco & Sons, Inc. v. Franek, No. 09-2155, UNITED STATES COURT OF APPEALS FOR THE SEVENTH CIRCUIT, 2010 U.S. App. LEXIS 17019, May 24, 2010, Argued, August 11, 2010, Decided

OVERVIEW:  A trademark for a circular beach towel was properly declared invalid because the design was functional, within the meaning of 11 U.S.C.S. § 1115(b)(8). The towel's circularity affected the quality of the device because, compared to other shapes that allowed full rotations, the round towel required less material, making it easier to fold and carry.

CORE TERMS:  towel, patent, trademark, round, beach, functional, functionality, color, circular, consumer ...

Lexis.com subscribers can view the enhanced version of Jay Franco & Sons, Inc. v. Franek

Non-subscribers can use lexisOne's Free Case Law search to view the free, un-enhanced version of Jay Franco & Sons, Inc. v. Franek