Top 10 Trademark Cases for the Month of June 2010

1. Grunley Walsh U.S., LLC v. Raap, No. 09-1613, UNITED STATES COURT OF APPEALS FOR THE FOURTH CIRCUIT, 2010 U.S. App. LEXIS 13427, May 13, 2010, Argued, June 30, 2010, Decided,  PLEASE REFER TO FEDERAL RULES OF APPELLATE PROCEDURE RULE 32.1 GOVERNING THE CITATION TO UNPUBLISHED OPINIONS.

OVERVIEW:  District court did not err in considering release when defendants, former employee and company, failed to plead it as an affirmative defense, under Fed. R. Civ. P. 8(c), because plaintiff was not unfairly surprised or prejudiced by consideration of release defense because, inter alia, employee specifically raised release in summary judgment motion.

CORE TERMS:  affirmative defense, summary judgment, affiliate, releasee, entity, sellers, notice, pled, surprised, parol evidence ...

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2. Close-Up Int'l, Inc. v. Berov, No. 07-5230-cv, UNITED STATES COURT OF APPEALS FOR THE SECOND CIRCUIT, 2010 U.S. App. LEXIS 13208, June 29, 2010, Decided,  PLEASE REFER TO FEDERAL RULES OF APPELLATE PROCEDURE RULE 32.1 GOVERNING THE CITATION TO UNPUBLISHED OPINIONS.

OVERVIEW:  Entry of judgment for plaintiffs in copyright infringement case was upheld as, inter alia, Certificate of Authority was not new contract extending copyright license, as it was issued pursuant to contract between parties; did not address consideration, licensing rate, or obligations of the parties; and did not show mutual assent to terms of license.

CORE TERMS:  summary judgment, certificate, willfulness, license, chain of custody, credibility, licensing, contract law, credibility determinations, essential terms ...

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3. Visa Int'l Serv. Ass'n v. JSL Corp., No. 08-15206, UNITED STATES COURT OF APPEALS FOR THE NINTH CIRCUIT, 2010 U.S. App. LEXIS 13380, January 14, 2010, Argued and Submitted, San Francisco, California, June 28, 2010, Filed

OVERVIEW:  "eVisa" trademark of an online multilingual education and information business was likely to dilute a credit card company's famous "Visa" mark by blurring since the marks were virtually identical, the common "e" prefix did not distinguish the marks, and two products would be competing for association with the word "Visa."

CORE TERMS:  visa, dilution, evisa, trademark, travel, anti-dilution, dilute, summary judgment, dictionary definition, distinctive ...

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4. Emplrs Council on Flexible Comp. v. Feltman, No. 09-2085, UNITED STATES COURT OF APPEALS FOR THE FOURTH CIRCUIT, 2010 U.S. App. LEXIS 12688, May 12, 2010, Argued, June 21, 2010, Decided,  PLEASE REFER TO FEDERAL RULES OF APPELLATE PROCEDURE RULE 32.1 GOVERNING THE CITATION TO UNPUBLISHED OPINIONS.

OVERVIEW:  Attorney fees were warranted as it was not clear error to find defendants acted in bad faith and matter was "exceptional case" under Lanham Act because record supported determination that individuals willfully and deliberately infringed on organization's marks and reserved name in order to prevent organization from reinstating itself under name.

CORE TERMS:  ecfc, attorney fees, statutory damages, flexible, Lanham Act, domain, cybersquatting, exceptional cases, trademark infringement, trademark ...

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5. Penguin Group (USA) Inc. v. Am. Buddha, Docket No. 09-1739-cv, UNITED STATES COURT OF APPEALS FOR THE SECOND CIRCUIT, 2010 U.S. App. LEXIS 12162, January 7, 2010, Argued, June 15, 2010, Question Certified

OVERVIEW:  A New York court's personal jurisdiction, under N.Y. C.P.L.R. 302(a)(3)(ii), over an out-of-state library for uploading a New York publisher's copyrighted material to the internet from out-of-state servers was certified to the New York Court of Appeals because whether the alleged injury occurred in New York was an undecided issue of New York law.

CORE TERMS:  situs, personal jurisdiction, intellectual property, infringement, long-arm, infringing, copyright infringement, certification, tortious act, online ...

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6. Sunlight Saunas, Inc. v. Barghelame, 2010-1016, UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT, 2010 U.S. App. LEXIS 13309, June 15, 2010, Decided, June 15, 2010, Filed,  THIS DECISION WAS ISSUED AS UNPUBLISHED OR NONPRECEDENTIAL AND MAY NOT BE CITED AS PRECEDENT. PLEASE REFER TO FEDERAL RULES OF APPELLATE PROCEDURE RULE 32.1 GOVERNING THE CITATION TO UNPUBLISHED OPINIONS.

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7. Super Duper, Inc. v. Mattel, Inc., No. 09-1397, UNITED STATES COURT OF APPEALS FOR THE FOURTH CIRCUIT, 2010 U.S. App. LEXIS 11853, March 24, 2010, Argued, June 10, 2010, Decided,  PLEASE REFER TO FEDERAL RULES OF APPELLATE PROCEDURE RULE 32.1 GOVERNING THE CITATION TO UNPUBLISHED OPINIONS.

OVERVIEW:  After a jury declared a seller/creator of special needs products liable for diluting seven of its competitor's trademarks for children's toys, the district court did not commit plain error by increasing the jury's damage award for lost profits and attorney fees because the manufacturer's deliberate conduct made the case "exceptional" under 15 U.S.C.S. § 1117(a).

CORE TERMS:  trademark, similarity, quotation, attorneys' fees, trademark infringement, dilution, lost profits, matter of law, infringed, consumer's ...

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8. Analect LLC v. Fifth Third Bancorp, No. 09-4068-cv, UNITED STATES COURT OF APPEALS FOR THE SECOND CIRCUIT, 2010 U.S. App. LEXIS 11492, June 7, 2010, Decided,  PLEASE REFER TO FEDERAL RULES OF APPELLATE PROCEDURE RULE 32.1 GOVERNING THE CITATION TO UNPUBLISHED OPINIONS.

OVERVIEW:  Partial summary judgment was properly granted for subsidiary on plaintiff's breach of contract claim because subsidiary did not breach parties' letter agreement by purchasing product; plain language of agreement evinced concern with subsidiary's distribution or sale of product, not its purchase of product for its own internal use.

CORE TERMS:  summary judgment, internal quotation marks omitted, declaratory judgment, letter agreement, counterclaims, administer, placement, actual controversy, unambiguous, subsidiary ...

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9. United States v. Garrison, No. 09-60382, UNITED STATES COURT OF APPEALS FOR THE FIFTH CIRCUIT, 2010 U.S. App. LEXIS 11553, June 7, 2010, Filed,  PLEASE REFER TO FEDERAL RULES OF APPELLATE PROCEDURE RULE 32.1 GOVERNING THE CITATION TO UNPUBLISHED OPINIONS.

OVERVIEW:  Defendant's conviction for smuggling counterfeit goods under 18 U.S.C.S. § 545 was supported by sufficient evidence to show that he imported counterfeit shirts, that shirts copied a registered trademark under 15 U.S.C.S. § 1124, and that he knew that importation was unlawful in that every shirt seized in both of his stores was in fact counterfeit.

CORE TERMS:  shirt, counterfeit, seizure, trafficking, seized, shipping documents, notice, mistrial, customs, smuggling ...

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10. Mon Cheri Bridals, Inc. v. Wen Wu, Nos. 09-1239 and 09-1321, UNITED STATES COURT OF APPEALS FOR THE THIRD CIRCUIT, 2010 U.S. App. LEXIS 11378; Copy. L. Rep. (CCH) P29,933, April 14, 2010, Argued, June 4, 2010, Filed,  NOT PRECEDENTIAL OPINION UNDER THIRD CIRCUIT INTERNAL OPERATING PROCEDURE RULE 5.7. SUCH OPINIONS ARE NOT REGARDED AS PRECEDENTS WHICH BIND THE COURT. PLEASE REFER TO FEDERAL RULES OF APPELLATE PROCEDURE RULE 32.1 GOVERNING THE CITATION TO UNPUBLISHED OPINIONS.

OVERVIEW:  The trial court properly vacated the punitive damages award for a passing-off claim. Defendants' reprehensible conduct was limited to their dealings with the company that brought suit, and the evidence of their involvement consisted of their agent's attempt to pass of the dresses in question, which was too attenuated to support punitive damages.

CORE TERMS:  dress, embroidery, copyright infringement, new trial, bead, jury instructions, punitive damages, discovery, attorneys' fees, registration ...

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