By: In February 2010, a U.S. District Court judge for the Northern District of California denied the National Collegiate Athletic Association’s motion to dismiss a class-action lawsuit that argues the NCAA and its licensees should compensate former student athletes for the use of their images and likenesses. Subsequent to the judge’s order, eleven former college football and basketball players joined former UCLA basketball star Ed O’Bannon in the litigation. O’Bannon alleges that the NCAA has and continues to enter into agreements that allow the use of his image without compensation paid to him, including a 2007 agreement between the NCAA and Thought Equity Motion, Inc. to offer “classic” college basketball games online. Continue Reading College Licensing Front: Former Star Student-Athletes, Recent Court Order Move NCAA Licensing Suit Forward
Trademark Dilution and Sex: Victor’s Secrets v. Victoria’s Secrets
By: Jeffrey Pietsch
Victor’s Secret, a small store in Kentucky selling adult videos and sex toys, lost another battle in a trademark dilution case brought by Victoria’s Secret. Last month, the U.S. Sixth Circuit Court of Appeals affirmed an injunction granted by the District Court that concluded that the trademark Victor’s Secret or Victor’s Little Secret disparages and reduces the positive associations of the Victoria’s Secret mark. The Sixth Circuit on review sought to determine whether Victoria’s Secret’s case met the standards of “dilution by tarnishment” as set out in the recently enacted Trademark Dilution Revision Act of 2006. Continue Reading Trademark Dilution and Sex: Victor’s Secrets v. Victoria’s Secrets
Supreme Court Strikes Blow to NFL’s Long-Standing Licensing Venture
by On May 24, 2010, the United States Supreme Court issued a unanimous decision that may ultimately change the way pro sports teams and leagues can license team-owned intellectual property for merchandise and apparel items. The Supreme Court’s ruling in American Needle, Inc. v. National Football League et al., case number 08-66, struck a significant blow to the long-standing joint venture between the National Football League (NFL) and its 32 member teams to license and market team-owned trademarks through a single entity. The case stems from a licensing agreement the NFL made with Reebok International Ltd. in 2000 to be the exclusive manufacturer and marketer of hats bearing NFL team trademarks.Continue Reading Supreme Court Strikes Blow to NFL’s Long-Standing Licensing Venture
Auto Gold: Trademark Infringement and the “First Sale” Doctrine
by On May 6, 2010, the Ninth Circuit issued its opinion in the case Au-Tomotive Gold Inc. v. Volkswagen of America, Inc., et al. in which it decided the issue of whether the sale of marquee license plates bearing Volkswagen badges that Au-Tomotive Gold (“Auto Gold”) had purchased from a Volkswagen dealer constituted trademark infringement or whether the sale of the plates was protected by the “first sale” doctrine. Continue Reading Auto Gold: Trademark Infringement and the “First Sale” Doctrine
Patent Minefield Now a Risk for Trademark Owners
by Matt Massari
Patent lawyers have understood the consequences of sending a cease and desist letter to a potential infringer since the Supreme Court’s decision in MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007). After MedImmune, a party contemplating sending such a letter risks that the recipient may file for a declaratory judgment in their own jurisdiction. This may require the sender to appear in a distant court, at their own expense. Thus, the patent owner must be very careful when communicating with possible infringers. Several recent decisions have applied the MedImmune standard for declaratory judgment jurisdiction to trademark controversies, making it difficult for trademark lawyers to avoid exposure to a declaratory judgment action after contacting a potential infringer. Continue Reading Patent Minefield Now a Risk for Trademark Owners