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Josh Escovedo is an experienced trial attorney and Shareholder in Weintraub’s Litigation, Intellectual Property, and Real Estate practice groups. In addition to his general litigation practice, Josh assists clients with intellectual property litigation, as well as trademark and copyright clearance, registration, licensing, and enforcement. Josh has extensive experience dealing with the United States Patent and Trademark Office and the United States Copyright Office, and has successfully handled matters before the Trademark Trial and Appeal Board. Josh discusses IP Law topics on the weekly video series The Briefing.

The Supreme Court recently denied petitions for certiorari in two of the most highly watched intellectual property cases before the Court. Those cases were Jack Daniel’s Properties Inc. v. VIP Products LLC and The Moodsters Company v. Walt Disney Company. Both cases were on petition from the Ninth Circuit and are summarized below for your convenience.

I.          Jack Daniel’s Properties, Inc. v. VIP Products LLC

In Jack Daniel’s Properties, Jack Daniel’s sued the maker of a dog toy, known as the Bad Spaniels Silly Squeaker, that was comedically modeled after the Jack Daniel’s Old. No. 7 bottle. The toy was a clear parody, but Jack Daniel’s alleged that the toy infringed its intellectual-property rights. VIP Products argued that their use wasn’t infringement because the toy was an expressive work entitled to First Amendment protection under Rogers v. Grimaldi. The district court rejected the argument and found VIP Products had infringed Jack Daniel’s trademark/trade dress.
Continue Reading Supreme Court Update: SCOTUS Denies Review of Two Highly Watched IP Cases

Jack Daniel’s Properties, Inc. has petitioned the Supreme Court of the United States for certiorari following an unfavorable ruling from the Ninth Circuit in the matter of VIP Products LLC v. Jack Daniel’s Properties, Inc. In that case, VIP Products sued Jack Daniel’s after receiving a cease-and-desist letter concerning its Bad Spaniels Silly Squeaker dog toy. The toy is intentionally similar to the famous Jack Daniel’s Old No. 7 whiskey bottle, but is clearly intended to be a joke.

Instead of saying Jack Daniels, the bottle says Bad Spaniels and includes a cartoonish cocker spaniel. Below that, where the Jack Daniel’s bottle usually says “Old No. 7,” the toy says “The Old No. 2” above “on your Tennessee Carpet” where the real bottle says Tennessee Whiskey. The squeaky toy is clearly intended as joke for dog owners, and I don’t believe it would confuse consumers into believing the product is actually associated with Jack Daniel’s. Jack Daniel’s apparently felt differently.

The district court agreed with Jack Daniel’s. While ruling on a motion for summary judgment, the district court held that the Rogers test, which is used to balance the interests between trademark law and the First Amendment, was inapplicable because the toy is not an expressive work. Later, after a four-day bench trial, the District Court ruled against VIP Products and found it had infringed Jack Daniel’s IP.
Continue Reading Dogs, Whiskey, and Intellectual Property: Need I Say More?

In this episode of The Briefing by the IP Law Blog, Weintraub Tobin attorneys Scott Hervey and Josh Escovedo discuss copyright litigation around the “Jersey Boys” — a musical and movie about The Four Seasons– involving an unpublished biography by one of the band members.

The Intellectual Property Law Blog provides insight in connection

Almost five years ago, I wrote an article published in the Daily Recorder about a ruling in the Tiffany & Co. v. Costco Wholesale Corporation case filed in the United States District Court for the Southern District of New York. Specifically, I wrote about the Court granting Tiffany’s motion for summary judgment on liability, permitting Tiffany to proceed to trial on the issue of damages. Tiffany eventually did exactly that and obtained a $21 million judgment against Costco for selling unbranded engagement rings as “Tiffany” diamond engagement rings. But just over a week ago, the Second Circuit Court of Appeals vacated the judgment of the District Court and remanded the case for trial.

To recap, Tiffany sued Costco for selling other rings and using the word Tiffany on nearby signage to describe those rings, claiming trademark infringement and unfair business practices. Costco responded to the allegations by claiming that “Tiffany” is a word used throughout the industry to refer to a particular style of setting–a diamond solitaire in a six-prong setting. Costco argued that consumers are aware of this use of “Tiffany” and that its use was therefore unlikely to cause consumer confusion. Costco also argued that Tiffany is not a legally protected trademark because the mark is descriptive or generic for that style of setting. For that reason, Costco requested that the Court cancel Tiffany’s trademark.
Continue Reading The Second Circuit Vacates Tiffany & Co.’s $21 Million Judgment for Trademark Infringement and Counterfeiting Against Costco