A California cannabis company can sue in Washington State for infringement of its trademark by a Washington marijuana producer, according to an October 29 opinion issued by Washington’s Court of Appeals, Division One. Headspace International had sued to protect its rights in its trademark THE CLEAR against a Washington marijuana business’s use of the same mark in connection with its own sales of cannabis products. The trial court had dismissed the suit, finding that Headspace had not alleged lawful use of its own mark in Washington commerce, and so had no trademark rights in Washington to enforce against the defendant Podworks. But the Appeals Court reversed and has allowed the suit to proceed. Continue Reading
Federal Circuit’s Converse Ruling Provides Useful Secondary Meaning Guidelines
The Federal Circuit ruled on October 30 that the International Trade Commission had applied the wrong analysis in adjudicating plaintiff Converse’s trademark claims against Skechers and New Balance arising from the design of an athletic shoe. The holding remands the case and keeps Converse’s suit against its competitors alive. But more usefully, the opinion offers a clarification—some might say a revision—in how courts will examine whether an alleged trade dress has acquired the requisite secondary meaning to make it enforceable.
While trade dress consisting of product packaging or service establishment décor may be inherently distinctive, and qualify for protection and registration immediately, trade dress that consists of product design is protectable only upon a showing of secondary meaning—that is, that the product design itself has brand significance and is recognized by a substantial portion of the marketplace as designating a proprietary design emanating for a single source. Continue Reading
Supreme Court Asked to Review De Havilland case
Sometime this month, the United States Supreme Court will announce whether it will grant certiorari to hear an appeal of Olivia de Havilland’s case against the producers of the popular television miniseries Feud. The series dramatized the legendary animosity between old Hollywood superstars Joan Crawford and Bette Davis. De Havilland—portrayed by Catherine Zeta Jones—was a minor character in the series. She didn’t care for the way she was presented and sued the producers, FX Networks, alleging violation of her right of publicity as well violation of her privacy by portraying her in a false light.
In 2010, Army Sergeant Jeffrey Sarver had brought suit against the producers of the Best Picture Oscar-winning film The Hurt Locker, alleging the same claims: that the film had used him as a character without his permission, and had also portrayed him in ways that were inaccurate and personally offensive to him. The U.S. District Court for the Central District of California dismissed all of Sarver’s claims, and in 2016, the Ninth Circuit affirmed. Continue Reading
Changes to NAFTA’s Intellectual Property Provisions in the USMCA
The United States-Mexico-Canada Agreement (USMCA) was announced on October 1, 2018, representing a step forward towards a replacement for the North American Free Trade Agreement (NAFTA), which President Trump sought to begin renegotiating shortly after his election in 2016. Like NAFTA, the USMCA contains a chapter covering intellectual property, with some notable changes, especially as it relates to IP protections under Canadian law. These changes could have a lasting impact on U.S. businesses and individuals seeking IP protection in Canada, and Canadian businesses and individuals who operate in the U.S. Continue Reading
Massachusetts Court Holds DTSA Does Not Apply to the Government
As we’ve discussed here before, there is tension and confusion at the intersection of trade secrets law and public contracting/public disclosure law. Contractors dealing with public entities need to be especially alert to the danger of their confidential and trade secret information entering the public domain. That danger was illustrated again by a recent case out of Massachusetts.
Although Massachusetts recently adopted the Uniform Trade Secrets Act, it did not do so in time to potentially protect the trade secrets of Fast Enterprises, LLC from disclosure. Instead, faced with a public records request from its competitors and the press seeking to have the Massachusetts Department of Transportation release Fast Enterprises’ bid proposal for replacement of a core computer system, Fast Enterprises instead sued in federal court under the Federal Defend Trade Secrets Act. Unfortunately for Fast Enterprises, the DTSA exempts “any otherwise lawful activity conducted by a governmental entity of . . . a State.” 18 U.S.C. s. 1833(a)(1). Although the federal district court initially enjoined the disclosure, the district court eventually reversed course, found it had no jurisdiction and dissolved the injunction. And while the district court was sympathetic to Fast Enterprises’ plight, ultimately its hands were tied: “Although the Court fully sympathizes with FAST and cannot help but wonder why the state would require disclosure of proprietary bid information given the impact that it could have on future bid solicitations, it is constrained by the applicable statutes. Ultimately, the federal statute does not provide for a cause of action in these circumstances, the issue must be resolved by the state courts or the state legislature.”
When dealing with the government, different rules apply, so make sure you know those before you submit your information. And if you don’t know what the rules are, we are here to help!
