One Sale Meets the Lanham Act’s “Use In Commerce” Requirement

On November 14, 2016, the Federal Circuit held that a single sale of two hats is sufficient to meet the Lanham Act’s “use in commerce” requirement for trademark registration, potentially contravening longstanding jurisprudence on “token use.”

Christian Faith Fellowship Church began selling caps and shirts emblazoned with the phrase “Add A Zero” in January 2005.  In February of the same year, the Church made one sale of two ADD A ZERO-marked hats to an out-of-state resident, and in March, the Church applied for federal registration of the ADD A ZERO mark.  Continue reading

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Ninth Circuit Holds Octane Fitness’s Fee-Shifting Standard Applies To The Lanham Act

On October 24, 2016, the Ninth Circuit became the latest federal court of appeals to hold that the Supreme Court’s 2014 decision in Octane Fitness, LLC v. ICON Health & Fitness, Inc., which outlined the standard for finding a case “exceptional” in patent fee-shifting disputes, applies to the Lanham Act.

Both the Lanham Act and the Patent Act provide that “the court in exceptional cases may award reasonable attorney fees to the prevailing party.”  In Octane Fitness, the Supreme Court overturned the Federal Circuit’s existing standard for awarding attorney fees under the Patent Act, holding that a district court should look to the “totality of the circumstances” to determine if a case is exceptional.  The Court explained that an “exceptional” case is one that stands out from others with respect to: (1) “the substantive strength of a party’s litigation positions (considering both the governing law and the facts of the case)”; or (2) “the unreasonable manner in which the case was litigated.”  Factors for courts to consider include frivolousness, motivation, factual or legal unreasonableness, and “the need in particular circumstances to advance considerations of compensation and deterrence.”  Further, the Court lowered the burden of proof, holding a party’s entitlement to fees must be proven by a preponderance of the evidence.  Continue reading

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Copying Another Attorney’s Legal Brief is Not Fair Use

On September 13, 2016, the U.S. District Court for the Central District of California ruled that an intellectual property attorney had failed to show his copying of another’s legal brief was fair use.

Plaintiff Newegg, Inc. had been sued for patent infringement in the Eastern District of Texas, and Defendant Ezra Sutton represented Newegg’s codefendant Sakar International, Inc. in that litigation. Newegg and Sakar prevailed and subsequently moved for attorneys’ fees and costs. The district court denied the motion, and both parties separately appealed to the Federal Circuit. Prior to filing their opening appellate briefs, Newegg and Sutton agreed that Newegg would provide Sutton a draft of its brief only if Sutton agreed in writing that he would not copy any excerpts of Newegg’s draft and would use it only for reference and resource purposes. Then, one day before Newegg filed its brief, Sutton filed a brief on behalf of Sakar that was virtually identical to Newegg’s draft brief. Newegg sued Sutton for copyright infringement.

On Newegg’s motion for partial summary judgment, the issue before the court was whether Sutton’s copying constituted fair use of Newegg’s draft brief. The court analyzed the four statutory fair use factors: (1) the purpose and character of the use; (2) the nature of the copyrighted work; (3) the amount and substantiality of the copyrighted work used; and (4) the degree of harm to the potential market.

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