Update: Give Me Liberty, or Give Me Death? Supreme Court May Resolve Circuit Split on Effect of Rejection of Trademark Licenses in Bankruptcy

In my September 11 blog post, Give Me Liberty, or Give Me Death?, I noted that the First Circuit’s decision in Tempnology—that rejection of a trademark license in bankruptcy divested the nondebtor licensee of its right to use the trademark—was subject to the licensee’s pending petition for certiorari. On October 26, 2018, the United States Supreme Court granted that petition and is expected in 2019 to resolve the circuit split on the effect of rejection of a trademark license. The question before the Supreme Court will be as follows: “Whether, under §365 of the Bankruptcy Code, a debtor-licensor’s ‘rejection’ of a license agreement— which ‘constitutes a breach of such contract,’ 11 U.S.C. §365(g)—terminates rights of the licensee that would survive the licensor’s breach under applicable nonbankruptcy law.”

We will continue to update this blog as the case unfolds.

Washington Court Allows California Cannabis Business to Sue for Trademark Infringement

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

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