Trademark Law Briefs

No Doubt v. Activision Publishing, Inc. (2011) 192 Cal.App.4th 1018

No Doubt, a famous band, entered into a licensing agreement with Activision, publisher of the Band Hero video games, to use No Doubt’s likeness with up to three of its songs.  Activision allowed players to “unlock” the No Doubt band members to be used with other songs as well.  No Doubt sued for violation of publichity rights and unfair competition.  Activision filed an anti-slapp motion based on its alleged First Amendment right to use their personas.  (more…)

Toyota Motor Sales, USA, Inc. v. Tabari, 610 F.3d 1171 (9th Cir. 2010)

Defendants are independent auto brokers - the “personal shoppers” of the auto world, who specialize in buying Lexus brand cars for their clients.  They use the domain names “buy-a-lexis.com” and “buyorleaselexus.com”.  The district court granted a permanent injunction against any use of the mark Lexus in their websites.  The 9th Circuit reversed and remanded based on nominative fair use doctrine. (more…)

All One God Faith, Inc. v. Organic and Sustainable Industry Standards, Inc. (2010) 183 Cal.App.4th 1186

Plaintiff, (trade name “Dr. Bonner”) sells organic health and beauty products that comply with the voluntary standards of the USDA National Organic Program (NOP).  Defendant (”OASIS”) is a mutual benefit trade group who is designing its own organic standard to be used as a certification on member products.  Dr. Bonner filed suit seeking an injunction against OASIS based on unfair competition and misleading advertising because Dr. Bonner alleges the OASIS standards do not meet the NOP standards.  OASIS filed a anti-slapp motion claiming the complaint attacks its free speech activitie.  The trial court denied the motion and the Court of Appeal affirmed. (more…)

ProtectMarriage.com - Yes on 8 v. Courage Campaign, 2010 U.S. Dist. 10045 (E.D. Cal., 2010)

Plaintiff sought a preliminary injunction based on trademark infringement.  The court denied the injunction, holding that Plaintiff was “unlikely to overcome the conclusion that defendant’s use of the mark is protected under the first amendment, in that the use is relevant to an expressive parody and the use is not explicitly misleading.” (more…)

Hilton v. Hallmark 580 F.3d 874 (9th Cir. 2009)

Hallmark produced a card depicting a photograph of Paris Hilton’s head on a cartoon figure and using Hilton’s catchphrase “That’s Hot.”  Hilton sued Hallmark under several causes of action including California’s right to publicity law.  Hallmark moved to strike on Anti-SLAPP grounds.  The district court denied the motion and Hallmark appealled.  The Court of Appeals upheld the district court decision. (more…)