Trademark Law Briefs

Sixuvus, Ltd. v. Willis (2010) Cal.App.Unpub. LEXIS 3067.

In an unpublished opinion, the Fourth District upheld the trial court’s denial of defendant’s anti-slapp motion because plaintiff alleged actions other than defendant’s cease & desist letter as the basis of their complaint. (more…)

Mac’s Shell Service, Inc., et al. v. Shell Oil Products Co. LLC, et al.,  2010 U.S. LEXIS 2203

While this is not a trademark case per se, it touches on some trademark issues.  Several Shell franchises sued the Shell franchisor from changing terms in its agreement that signficantly increased the franchisees rent.  The franchisees renewed under the new terms and sued under the Petroleum Marketing Practices Act (PMPA) for constructive termination/nonrenewal.  The Court held that in order to be a constructive termination or constructive nonrenewal, the franchisees have to actually terminate the relationship.  “Thus, when given its ordinary meaning, the Act is violated only if an agreement for the use of a trademark, purchase or motor fuel, or lease of a premises is ‘put [to] an end’ or ‘annul[ed] or destroy[ed].’  Conduct that does not force an ende to the franchise, in contrast, is not prohibited by the Act’s plaine terms.” (pp. 14-15).

Milne et al. v. Stephen Slesinger, Inc, 2009 U.S. Dist. LEXIS 94925 (C.D. Cal. 2009)

The court granted Disney’s motion for summary judgment and denied Stephen Slesinger, Inc.’s (SSI) motion for summary judgment related to SSI’s claims that Disney had infringed its trademark and copyrights in the Winnie the Pooh works.

At issue was whether SSI had assigned all of its rights in the Pooh works to Disney.  The terms of a contract are a matter of law which the court can interpret in response to a motion for summary judgment.  Therefore, competing interpretations by the parties do not create a dispute of a material fact.  After considering the assignment contract between SSI and Disney, the court determined that SSI had assigned all of its rights to Disney and therefore could not have a trademark infringement claim.  This was further supported by the fact that SSI never filed for trademarks itself nor objected when Disney filed at least 14 trademarks in the Pooh works.  Furthermore, prior state court proceedings in which SSI stated it had assigned all of its rights to Disney and supported Disney’s judicial estoppel claim.

Comedy Club, Inc.  v. Improv West Associates, 2009 US App. LEXIS 1634

Ruling: An in-term non-competition clause in a trademark licensing agreement can only bind parties to the contract and those persons in active concert or participation with them and can only be enforced in the geographical area where the licensee operates under the licensor’s name.  (more…)