Trademark Law Briefs

Two recent Northern District of California cases have applied the new Winter preliminary injunction standard in the trademark context.

Before 2008, the plaintiff in a trademark infringement case was entitled to a presumption of irreparable harm upon a showing of likelihood of success on the merits.   But in Winter v. NRDC, Inc. 129 S. Ct. 365, 374 (2008), a non-trademark case, the Supreme Court held that the 9th Circuit’s standard of the likelihood of irreparable injury in granting preliminary injunctions was too lenient and held that plaintiff must demonstrate that irreparable injury is “likely in the absence of an injunction.”

In CytoSport, Inc. v. Vital Pharmaseuticals, Inc. 2009 U.S. Dist. LEXIS 38343, the court held that because trademarks serve as the identity of their owners and in them resides the reputation and goodwill of their owners, if another person infringes the marks, the owner loses quality control thus creating th epotitntial for damages to its reputation.

This is neither a trademark case nor a California case, but I think the folks at techdirt raise some interesting food for thought…

What What (In the Butt)? What What (Fair Use Doesn’t Need a Trial)?

The Gerson Institute v. Huntington, 2011 U.S.Dist. LEXIS 25403

This opinion is the result of a 12(b)6 motion for failure to state a claim.  Gerson hired Huntington to market its books.  Gerson became dissatisfied with Huntington and fire him, alleging that he set up websites that misdirected funds to his own account using the Gerson trademarks.  The court said this might be a claim for embezzelment, but not for trademark infringement because he was authorized to use the marks to promote sales.  Whether he misdirected the profits of those sales isn’t relevant to an infringement analysis.

However, the court did agree that a claim for trademark infringement was appropriate if Huntington continued to use the marks to obtain misdirected sales after he was fired.  Therefore, that allegation was allowed to stand (though the court was skeptical whether Gerson had any factual backing for this allegation and indicated they should come up with something quickly).

Rebelution, LLC v. Perez, 732 F.Supp.2d 883 (N.D. Cal. 2010)

Plaintiff, a reggae band called Rebelution, sued defendant, a hip hop artist using the moniker Pitbull, for his use of “Rebelution” in an albulm title.  Defendant filed a motion for summary judgment alleging his use of the mark was artistic and protected by the first amendment under the test set forth in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989) and Mattel Inc. v. MCA Records, Inc., 296 F.3d 894 (9th Cir. 2002).

The court denied summary judgment, noting that artistic use requires a reference to plaintiff’s mark, where plaintiff’s mark has entered cultural awareness as more than a reference to the product itself.  “Barbie” has a meaning in the lexicon beyond its source identifying function, as does “Rolls Royce” or “Band-Aid.”  Because defendant admitted his use of “rebelution” referred to his own feelings on the word, and not to plaintiff’s band, it was not an artistic use and was subject to trademark law.

Consumerinfor.com, Inc. v. Money Management International, Inc., 374 Fed.Appx. 696 (9th Cir. 2010)  *unpublished*

The district court granted summary judgment to plaintiff who brought an infringement suit against defendant.  The Court of Appeals agreed that there was no dispute of facts that defendant’s mark was confusingly similar and that plaintiff’s mark was valid and protectable.  However, the Court disagreed with the district court’s finding that there was no triable issue of fact on defendant’s claim of prior use. The district court engaged in weighing the evidence when it discounted evidence presented by the defendant in support of its claim.  Therefore, the Court reversed and remanded the partial grant of summary judgment.