Ninth Circuit Holds County’s Advertising Restriction on “Disparaging Material” Unconstitutional

By Justin K. Powley and David G. Barker The Ninth Circuit held yesterday in American Freedom Defense Initiative v. King County that a county’s advertising program on public buses that rejected advertisements on the basis of disparaging material violates the First Amendment’s free speech clause and therefore is unconstitutional. King County provides public transportation in the Seattle metropolitan area and sells advertising space on the exterior of public buses. The County generally accepts all advertisements that do not contain prohibited content, including: false statements, disparaging material, or content that may disrupt the transit system. American Freedom Defense Initiative submitted a   Read More »

Posted in IP and Technology Litigation, Trademark Litigation | Tagged ,

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Federal Circuit Holds “Scandalous and Immoral” Ban Unconstitutional

By Tyler J. Fortner and David G. Barker Last Friday, in In re Brunetti, the Federal Circuit held that the ban on “scandalous and immoral” trademarks under 15 U.S.C. § 1052(a) is unconstitutional. The decision follows the June 19, 2017, Supreme Court decision, Matal v. Tam (discussed here), which held that the clause prohibiting marks that “disparage” in the same statute is unconstitutional. In Tam, the Court held that the PTO’s refusal to register the Asian-American band name, “THE SLANTS,” violated the First Amendment. Relying on Tam, the Federal Circuit reversed the PTO’s refusal to register “Fuct” as a trademark.   Read More »

Posted in Trademark Litigation | Tagged ,

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Glimmers of Justice Gorsuch’s Prospective IP Jurisprudence

On April 10, 2017, Neil Gorsuch was sworn in as the 113th justice of the Supreme Court, filling the vacancy left by Justice Antonin Scalia.  While on the Tenth Circuit, Justice Gorsuch wrote opinions on complex trade secret, copyright, and trademark issues in a detail-oriented manner that indicates balanced treatment of intellectual property owners and challengers. His intellectual property opinions delve into complicated issues and thoroughly explain his reasoning.  But his criticism of Chevron deference, exemplified in his concurring opinion in Gutierrez-Brizuela v. Lynch (2016), raises questions about how he will approach agency interpretation of intellectual property laws. Click here   Read More »

Posted in Copyright Litigation, IP and Technology Litigation, Patent Litigation, Trade Secrets Litigation, Trademark Litigation | Tagged

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Octane Fitness and Highmark Apply to Ninth Circuit Attorney Fee Awards under the Lanham Act

On October 24, 2016, the Ninth Circuit Court of Appeals, sitting en banc, held that district courts analyzing a request for attorney fees under the Lanham Act should consider the totality of the circumstances, as set forth in Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749 (2014).  Section 35(a) of the Lanham Act provides that “he court in exceptional cases may award reasonable attorney fees to the prevailing party.”  In determining whether a case is “exceptional,” courts in the Ninth Circuit are now required to apply a less “precise rule or formula,” and look to   Read More »

Posted in IP and Technology Litigation, Trademark Litigation | Tagged , ,

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Ninth Circuit Could Reconsider Attorneys’ Fees Standard for Federal Trademark Litigation

In Octane Fitness v. ICON Health & Fitness (2014), the Supreme Court changed the standard for recovering attorneys’ fees in patent litigation.  Rejecting a “rigid and mechanical formulation,” the Court adopted a looser “totality of the circumstances” test.  Earlier this year, a Ninth Circuit panel held that the Octane Fitness standard did not apply in trademark cases.  But now the Ninth Circuit has ordered an en banc rehearing of the panel’s decision. In SunEarth, Inc. v. Sun Earth Solar Power Co., the district court permanently enjoined Sun Earth Solar Power from using “Sun Earth” in the U.S. because that use   Read More »

Posted in Patent Litigation, Trademark Litigation | Tagged , ,

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