One district court in New York doesn’t think so, and, in light of a recent settlement agreement, the Second Circuit will not be afforded the opportunity to weigh in. In North Jersey Media Group Inc. v. Jeanine Pirro and Fox News Network, LLC, Case No. 13-cv-07153 (S.D.N.Y. Feb. 10, 2015), Judge Ramos declined to grant summary judgment in favor of defendants Judge Jeanine Pirro and Fox News Network, LLC on the plaintiff’s claim for copyright infringement. The Court found that, as a matter of law, fair use did not protect the defendants’ publication of an iconic 9/11 photograph on a Facebook page associated with the network’s program Justice with Judge Jeanine.
In Pirro, Fox News posted a photograph that juxtaposed a photograph of three firefighters raising an American flag at the ruins of the World Trade Center site on September 11, 2001, with another iconic photograph taken during World War II of four U.S. Marines raising the flag on Iwo Jima. The Court referred to the posting of the two photos side-by-side as the “Combined Image.” Interestingly, the defendants did not create the Combined Image; rather, a production assistant found the Combined Image on Google. The production assistant posted the Combined Image, unaltered, on a Facebook page that promotes the show Justice with Judge Jeanine, and added the phrase “#neverforget.”
April 16, 2015
Sixth Circuit Orders District Court to “Assess the Applicability of Octane Fitness [in Lanham Act Cases]“
On Monday, the Sixth Circuit hinted that the Supreme Court’s decision in Octane Fitness, LLC v. ICON Health & Fitness, Inc., No. 12-1184, 572 U.S. ___ (2014), which evaluated the Patent Act’s fee shifting provision, may apply to trademark cases brought under the Lanham Act. Slep-Tone Entm’t Corp. v. Karaoke Kandy Store, Inc., et al., No. 14-3117 (6th Cir. Apr. 6, 2015).
In Octane Fitness, the Court found that “an ‘exceptional’ case [for purposes of shifting fees under the Patent Act] is simply one that stands out from others with respect to the substantive strength of a party’s litigating position (considering both the governing law and the facts of the case) or the unreasonable manner in which the case was litigated.” The Court’s decision overturned a prior Federal Circuit decision (Brooks Furniture Mfg., Inc. v. Dutailier Int’l, Inc.), which provided a much more rigid framework for assessing whether to shift fees under §285 of the Patent Act.
April 7, 2015
SCOTUS’ Tale of Two Trademarks: How a Happy Ending to IP Litigation Often Depends on Early Strategy Before USPTO
On March 24, 2015, the U.S. Supreme Court issued two decisions: Omnicare, Inc. v. Laborers Dist. Council Constr. Industry Pension Fund, No. 13-435and, less the media darling, B&B Hardware, Inc. v. Hargis Industries, Inc., No. 13-352. B&B Hardware is the second trademark decision issued by the Court this term (the first being Hanna Financial, Inc. v. Hana Bank, No. 13-1211, which was issued in January and held that whether two trademarks may be tacked for purposes of determining priority is a question of fact for the jury), and is likely to alter the landscape of trademark infringement litigation. In a 7-2 decision in which Justice Alito delivered the majority opinion, the Court reversed and remanded the case to district court, finding that (1) agency decisions, generally, can ground issue preclusion; (2) the Lanham Act does not forbid issue preclusion; and (3) the same likelihood of confusion standard applies to both registration (before the Trademark Trial and Appeal Board) and infringement. The Court’s recognition on the last point, regarding the standard for the likelihood of confusion analysis, is an important one, as it may change the role of the TTAB and the decisions it makes at the registration stage, how courts will weigh those registration analyses, and how litigants may want to strategize enforcement of their marks.
March 27, 2015