Supreme Court Denies Cert in de Havilland Case

In early November, we reported that the U.S. Supreme Court was considering whether to hear Olivia de Havilland’s appeal of the dismissal of her right-of-publicity and false-light privacy claims against the producers of the popular television miniseries Feud, in which de Havilland didn’t care for the way she was depicted. We predicted that, in light of prior cases protecting film producers against such claims under the First Amendment, “the U.S. Supreme Court is likely to deny certiorari in the de Havilland case and allow the dismissal of her claims to stand.”

Today the Supreme Court announced that it has, indeed, denied de Havilland’s petition. There was nothing sufficiently novel about de Havilland’s claims to distinguish them from those of many others who objected to the way in which they were “fictionalized” for purposes of a movie or television series.

The denial passes up an opportunity for the Court to examine the current state of right-of-publicity jurisprudence, which for more than a decade has been skewed by a series of cases denying First Amendment protection to producers of video games who use avatars of real athletes, while continuing to uphold the right of movies, television, and other forms of expression to use and fictionalize real persons. That long overdue examination must wait for another day.

Supreme Court Grants Cert in Brunetti Appeal

The U.S. Supreme Court has agreed to hear arguments in the case of Iancu v. Brunetti. This, as you may recall, is an appeal regarding the constitutionality of the Lanham Trademark Act’s section 2(a) provision precluding registration of “immoral” or “scandalous” trademarks. In the wake of the much-discussed 2017 Supreme Court decision in Matal v. Tam, finding that the “disparaging marks” provision of that same section violates the First Amendment, the U.S. Patent and Trademark Office (USPTO) refused to register the mark FUCT for various articles of clothing.

The Tam case focused only on marks that “disparage” persons or groups or “bring them into contempt or disrepute.” The Brunetti application was refused based on the “immoral” and “scandalous” language of section 2(a). Like Simon Tam had done before him, Erik Brunetti appealed his refusal to the Trademark Trial and Appeal Board and thence to the Court of Appeals for the Federal Circuit (CAFC). The CAFC, as it had done in the Tam case, found the refusal inconsistent with the First Amendment, and the U.S. government asked the Supreme Court to hear the case. Last week, the Court agreed to do so. Continue Reading

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