The latest example of this phenomenon took place in Viacom International Inc. v. IJR Capital Investments, where the Fifth Circuit affirmed a lower court decision granting trademark protection to the Krusty Krab, a fictional restaurant in the television series SpongeBob SquarePants. Viacom sued IJR Capital Investment for unfair competition and trademark infringement because IJR had been trying to open up seafood restaurants in California and Texas under the Krusty Krab name since 2014. IJR Capital claimed that they did not base their name on the fictional restaurant, but rather the crusted glaze applied to cooked seafood. IJR noted that there was no Krusty Krab trademark already registered with the United States Patent and Trademark Office.
The number of US lawsuits filed by visually impaired and other disabled people targeting business websites for violating the Americans with Disabilities Act (ADA) has reached fever pitch. Recent court rulings have emboldened plaintiffs’ attorneys and a significant uptick in litigation is expected in 2018. New York has proven particularly welcoming to these cases, with nearly 300 ADA website lawsuits targeting retail, fashion, and financial institutions filed in New York’s federal courts in the first quarter of 2018.
Despite this explosion of activity, many businesses are still unaware of the legal risk and continue to operate websites that fall short of accepted accessibility standards, courting ADA claims. Although monetary damages are unavailable under the ADA, these cases are not easily dismissed and the defense costs can be significant. To help minimize the lawsuit risk, businesses should consider proactive measures to ensure their websites meet the current accessibility standard.
NEW YORK, March 7, 2018 /PRNewswire/ — Joining HBA as head of the firm’s litigation practice, Adam Michaels brings nearly twenty years of sophisticated litigation experience representing companies and individuals in matters related to consumer products, financial services, food and beverage, fashion and lifestyle, healthcare, and technology. Adam’s practice covers the full range of commercial litigation, with particular focus on representing business clients in complex contract disputes. Adam regularly counsels on litigation avoidance, risk management, marketing strategy, and regulatory compliance. He joins HBA from the New York office of Pepper Hamilton, where he was Of Counsel. Prior to that, Adam practiced at Goodwin Procter. Adam earned his J.D. from Georgetown University and his A.B. from Columbia University.
“We are excited to welcome Adam to our firm,” Managing Partner Alan Baldachin said. Founding Partner Douglas Hand added, “Adam is tenacious litigator with a practical and efficient approach to resolving business disputes. Adam’s experience and talent will complement our other practice areas and will be a great asset for our clients.”
HBA is a corporate and commercial law firm in New York, NY focused on media, technology and fashion & lifestyle, with expertise in venture capital, mergers and acquisitions, litigation, real estate and intellectual property.
Design patents typically do not offer wide protection for fashion products. While relatively cheap to obtain compared to utility patents, design patents typically still cost several thousand dollars to register. Furthermore, design patents can only be obtained if an item has been on sale for less than a year and fashion designers often do not want to commit to a registration until and unless a design demonstrates that it will be a core product line going forward. Trade dress, on the other hand, does not require any formal filing with the United States Patent and Trademark Office (USPTO). However, those seeking trade dress protection must also prove that the design has no functional component, as well as prove that the item conveys a distinctive secondary meaning to consumers that would be jeopardized by the sale of imitations.
Instagram has emerged as a channel to fight back against duplicate for several reasons. As HBA lawyer and NYU fashion law professor Douglas Hand stated in the recent article Designers Take Copyright Infringement Into Their Own Hands in the Business of Fashion, “copyright protection for designs, even post Star Athletica [v. Varsity Brands], is relatively thin when compared to Europe and other jurisdictions.” Therefore, the U.S. legal system may be an insufficient means for designers to successfully protect their designs. Additionally, smaller brands and up-and-coming designers often have neither the financial resources nor the time to litigate. Litigation is also undesirable because these small brands and designers frequently just want the offending designs removed from market and do not want a prolonged court battle.
On June 19, the Supreme Court ruled in Matal v. Tam that the Patent and Trademark Office (PTO) could no longer deny trademark registrations for “marks that disparage the members of a racial or ethnic group.” Before this decision, the PTO used the Lanham Act’s Disparagement Clause as its legal basis for prohibiting protection for offensive names. The Court held, however, that the Disparagement Clause violated the First Amendment, reasoning that “Speech may not be banned on the ground that it expresses ideas that offend.”
The Court’s decision has important ramifications for the NFL’s Washington Redskins and other sports teams with names and mascots that many consider to be offensive. The “Redskins” was considered racially offensive on several occasions by the PTO and was held to be ineligible for federal trademark registration. The Supreme Court’s decision allows for the Redskins name to receive the benefits of federal registration.
On May 22, the Supreme Court reversed a ruling from the Federal Circuit which allowed for patent infringement cases to be brought in any district where the defendant conducts business. Liquid sweetener brand TC Heartland was sued by Kraft Food Brands in Delaware, its state of incorporation, and unsuccessfully moved to transfer venue to the Southern District of Indiana, where it primarily conducts business.
The relevant patent venue statute, 18 U.S.C. § 1400(b), states that any patent infringement case may be brought in the district where the defendant resides or has a regular and established place of business. However, the 1957 Supreme Court decision in Fourco Glass Co. v. Transmirra Products Corp. provided a more narrow definition of “resides,” holding that “resides” refers only to the defendant’s state of incorporation. TC Heartland appealed to the Supreme Court to instead adopt the definition from the 1990 Federal Circuit case VE Holding Corp. v. Johnson Gas Appliance, which more broadly interpreted “resides” to include any venue in which a defendant conducts business.
In the 8-0 majority opinion written by Justice Thomas, the Court concluded that a domestic corporation “resides” only in its state of incorporation and thus a patent holder invoking § 1400(b) is limited to bring suit only in the defendant’s state of incorporation. The Court’s decision is a significant defeat for the many patent holders who hope to file in the Eastern District of Texas, which has become a popular forum for plaintiffs. As the majority of the defendants in these patent cases are not incorporated in the Eastern District of Texas, the VE Holding Corp. decision would likely cause many patent cases to transfer to Delaware, a common state of incorporation for domestic companies.
The majority opinion was written by Justice Thomas and joined by four other justices. Justice Thomas’ opinion held that an element of clothing could be protected if it “can be perceived as a two- or three-dimensional work of art separate from the useful article” and it would qualify for copyright “if it were imagined separately from the useful article into which it is incorporated.” The Court found that the designs represented on the surface of the cheerleading uniform could meet that standard in principle. (The Court demurred on the issue of whether the particular designs in question are actually sufficiently original to be copyrightable and limited its ruling to surface designs in general.)