Creative Protection

North American Medical Corp. v. Axiom Worldwide

Defendants-Appellants Axiom Worldwide, Inc. (“Axiom”), James Gibson, Jr., and Nicholas Exharhos appeal the district court’s grant of a preliminary injunction in favor of the Plaintiffs-Appellees, North American Medical Corporation (“NAM”) and Adagen Medical International, Inc. (“Adagen”). The district court enjoined the Defendants-Appellants from engaging in certain alleged acts of trademark infringement and false advertising. We now affirm the district court’s order in part and vacate and remand it in part.

Download the decision.

Angel Flight of Georgia, Inc. v. Angel Flight Southwest

We AFFIRM the district court’s ruling in its entirety. The district court did not err in ruling (1) AFSE infringed AFGA’s common law trademark rights by using the mark in a manner that created a substantial risk of confusion; and (2) AFGA had not acquiesced to AFSE’s infringing use and was not estopped by laches from enforcing its common law rights in the mark. Similarly, the injunction entered by the district court, which was tailored to protect AFGA’s rights and ensure the public would not be confused, was properly entered. Finally, the district court did not clearly err by cancelling United States Trademark No. 1,491,541 on the ground the registration had been obtained through fraud.

Download the decision.

Schlotzsky's, Ltd. v. Sterling Purchasing & Nat'l Distrib. Co., Inc

After a jury trial, the district court ruled in favor of a restaurant franchisor on claims brought against a food distributor under the Lanham Act. On appeal, the distributor alleges the Lanham Act was inapplicable, that an award of attorney fees and an injunction should be overturned, and that its counterclaims should be reinstated. We disagree and affirm.

Download the decision.

PRL USA Holdings, Inc. v. US Polo Ass'n

Plaintiff PRL USA Holdings, Inc., holder of the Ralph Lauren trademarks, appeals from the judgment of the United States District Court for the Southern District of New York (Daniels, J.), entered following a jury trial, denying plaintiff’s claims of trademark infringement. The jury found that three of the defendants’ four contested marks did not infringe the plaintiff’s polo player trademark. Plaintiff contends that the district court erred in admitting evidence of discussions at settlement negotiations, excluding a document prepared by an agent of a defendant which arguably reflected intent to use trademarks similar to the Ralph Lauren trademarks to compete unfairly, and in refusing to give a requested jury instruction. Affirmed.

Download the decision.

Counterfeit Drugs: Georgia Tech Researchers Help Identify and Shut Down Makers of Fake Anti-malarial Medications

Georgia Institute of Technology researchers were part of a three-continent, multi-organizational effort known as “Operation Jupiter” that successfully identified and shut down manufacturers who were flooding Southeast Asia with counterfeit – and ineffective – anti-malarial drugs.

With 11 different organizations, including the Centers for Disease Control and Prevention (CDC), the World Health Organization (WHO), the Wellcome Trust – and ultimately the international law enforcement agency INTERPOL – the global effort provided Chinese officials with enough information to shut down the drug makers.

Beyond the human health cost of failing to effectively treat hundreds of thousands of malaria cases, the fake drugs could be fueling development of malarial strains that may become resistant to the most sophisticated drug now available to treat the disease: artesunate. That’s because counterfeiters sometimes include small quantities of the real drug in their fakes, possibly as part of an effort to fool simple quality tests. By not killing the malaria parasites, the small amount could facilitate development of drug resistance.

As their part of the investigation, Georgia Tech researchers used sensitive mass spectrometry techniques to analyze nearly 400 drug samples provided by public health authorities. They also developed methods to speed up analysis, including an ionization process that reduced the time required to test a drug sample from half an hour to just a few seconds.

Full story.

ITC Ltd. v. Punchgini, Inc.

Appeal from an award of summary judgment in favor of defendants on claims of trademark infringement, unfair competition, and false advertising in connection with defendants’ use of a mark for restaurant services that plaintiffs had stopped using in the United States for more than three years but that they assert nevertheless qualifies for protection as a “famous mark” based on continuing international use.

Decision affirmed in part; reserved in part pending the response of the New York Court of Appeals to certified questions of state law.

Download the decision.

Jada Toys, Inc. v. Mattel, Inc.

Defendant-Appellant Mattel, Inc. (“Mattel”) appeals the grant of summary judgment in favor of Jada Toys, Inc. (“Jada”) on Mattel’s federal and state trademark infringement counterclaims. Mattel also challenges the district court’s entry of summary judgment in favor of Jada as to its dilution and copyright claims.

We hold that because the district court erred in its application of the relevant infringement test, the district court’s entry of summary judgment in Jada’s favor as to those claims is reversed. We also hold that genuine issues of material fact exist as to Mattel’s copyright and dilution claims and, therefore, the district court’s entry of summary judgment as to those claims in favor of Jada is also reversed.

Download the decision.

Segal v. Geisha NYC, LLC

This case concerns the national expansion of Japonais, a popular Chicago restaurant located in the River North restaurant district. Japonais founder, Jonathan Segal, appeals from an order dismissing his complaint against Geisha NYC LLC (“Geisha NYC”),and others. Segal’s sole federal claim—a derivative claim he asserts on behalf of Geisha LLC (“Geisha Chicago”) and OSSS Hospitality LLC (“Hospitality Chicago”)—alleges that the defendants misappropriated the Japonais name and design in violation of the Lanham Act, see 15 U.S.C. § 1125(a). The district court dismissed this federal count, and then dismissed the remainder of the complaint under 28 U.S.C. § 1367(c)(3). Because Geisha NYC’s trademark use was authorized, we affirm these dismissals.

Download the decision.

Ty Inc. v. Softbelly's, Inc.

Ty Inc., the manufacturer of “Beanie Babies,” years ago brought this suit for trademark infringement under the Lanham Act against Softbelly’s, Inc., and some other defendants that need not be discussed separately. Softbelly’s manufactures a product that looks and feels very much like “Beanie Babies,” which it calls “Screenie Beanies.” They differ from Ty’s product mainly in having chamois bellies and being sold to the public through computer stores for wiping computer screens: hence the chamois.

. . .

To summarize, the grant of the injunction against Softbelly’s is affirmed, but the case is remanded for the entry of a damages judgment of $713,000 against Softbelly’s minus the attorney’s fees incurred by Softbelly’s in the sanction litigation. Whether the damages judgment should be augmented by prejudgment interest we leave to the district judge to decide in the first instance.

Download the decision.

American Express Co. v. Goetz

Defendants Stephen Goetz and Gardner Design Group, LLC appeal from a judgment entered February 24, 2006 in the United States District Court for the Southern District of New York (Kaplan, J.) granting plaintiff American Express's motion for summary judgment and dismissing Goetz's counterclaims. Goetz had alleged that American Express infringed upon his trademark by using the slogan MY LIFE. MY CARD.

Affirmed.

Download the decision.