Cases & Developments

Memorandum Opinion granting Plaintiff’s Motion for Reconsideration. Plaintiff, a public state institution, brought trademark infringement claims against Vintage Brand LLC (Vintage) over the use of the University’s marks on Vintage’s apparel; a litigation matter that has been ongoing for over three years. In addition to Vintage’s website, the company uses Sportswear, another defendant, as a manufacturer for their products. Following a multi-day jury trial on the matter, Sportswear moved for a judgment as a matter of law regarding a direct trademark infringement claim. The court initially granted the motion, reasoning that at the time, it was understood Sportswear was a manufacturer of the products and thus had no role in designing, marketing, or selling the products. While it may have been liable under a contributory infringement theory, the court previously held it was not liable for direct trademark infringement. The University disputed this conclusion and contended that Sportswear’s distribution of goods infringes its marks and should be held liable for direct trademark infringement, regardless of their manufacturer status. In granting the University’s motion for reconsideration, the court found that regardless of whether a defendant’s manufacture or shipment of goods featuring a protected mark could support direct trademark infringement in isolation, a reasonable juror could find that they can do so together (emphasis added). Specifically, the court determined that contributing to design, or manufacturing and affixing a label displaying the mark, or manufacturing and affixing the label along with shipping the goods, suffices to show a use in commerce that misleads consumers, therefore fulfilling the third prong of trademark infringement. While acknowledging that it is unclear whether or when mere manufacturers or distributors can be liable for direct infringement, the court noted that in this unique circumstances where Sportswear manufactures the goods, affixes the marks, and ships them directly to customers, their commercial use of the mark is in direct connection with its distribution of the infringed goods through shipping them to customers, “Sportswear’s use of the marking manufacturing may be likely to cause consumer confusion such that it can be liable for direct infringement.” 

Memorandum Opinion granting-in-part and denying-in-part the Parties’ cross Motions for Summary Judgment. Plaintiff, The Pennsylvania State University, brought infringement and related claims against Vintage Brand, LLC and its three members, for producing goods featuring historical images that contain Penn State’s trademarks. Vintage Brand counterclaimed to cancel Penn State’s Seal Marks for incorporating the Coat of Arms of the Commonwealth of Pennsylvania and its PENN STATE Marks as merely ornamental. Though the court granted summary judgment to Vintage Brands on the University’s counterfeiting, false advertising, false endorsement, and dilution claims, it permitted the University to proceed on its infringement claims, finding factual disputes for a jury to resolve as to whether Vintage Brand’s use of Penn State’s marks causes a likelihood of confusion. The court also permitted Vintage Brand to proceed in its counterclaims seeking cancellation of certain of the University’s marks.  

Memorandum Opinion and Order denying Defendant’s Partial Motion for Summary Judgment. In 2007, following a change in NCAA policy on the use of imagery deemed hostile to Native American cultures, plaintiff, the Board of Trustees of the University of Illinois, adopted a resolution to end the use of its “Chief Logo” as a symbol of the University and its intercollegiate athletics. The University announced that it would maintain ownership of the trademark and has licensed the mark through the College Vault program, which permits online purchases of merchandise featuring legacy marks that no longer represent university athletic programs. In the present action, the University sued two sportswear manufacturers for trademark infringement for use of the Chief Logo. Defendant Vintage Brands moved for partial summary judgment, asserting the affirmative defense and counterclaim of abandonment. In denying the motion, the court ruled, first, that prior to discovery genuine disputes remain as to whether the Chief Logo is source-identifying in the eyes of consumers and the effect of the University’s disavowal of the logon on whether it is source-identifying. The court similarly found that genuine disputes exist as to whether (1) the College Vault’s trademark maintenance program constitutes bona fide use and (2) sales of merchandise featuring the logo under the program are de minimis.  

Opinion vacating and remanding for further proceedings. VIP Products makes a line of dog toys called “Silly Squeakers” that resemble various well-known beverages. When it made one called “Bad Spaniels” with the phrase “The Old No. 2 On Your Tennessee Carpet” that resembled a bottle of Jack Daniel’s Old No. 7 Tennessee Sour Mash Whiskey, Jack Daniel’s demanded VIP stop selling it. VIP sought a declaratory judgment, and Jack Daniel’s counterclaimed for infringement and dilution by tarnishment. The district court held in favor of Jack Daniel’s, but the Ninth Circuit reversed, holding that because Bad Spaniels is an expressive work (1) the infringement claim may proceed only if the challenged use satisfies a higher threshold test under the First Amendment of either having no artistic relevance to the underlying work or explicitly misleading as to the source or contents of the work, and (2) the dilution claim failed because as a parody, Bad Spaniels was a statutorily exempt noncommercial use of Jack Daniel’s marks. The Supreme Court vacated and remanded. On the infringement issue, the Court held that the threshold question does not apply when a challenged use is a source designation, though its expressive character might still inform whether the use is likely to cause confusion. On the dilution issue, the Court similarly held that the statutory noncommercial exclusion does not shield parody when the challenged use is as a source designation.