On April 23, 2019, the U.S. Court of Appeals for the Eleventh Circuit affirmed the District Court’s finding that Anastasia, Beverly Hills, Inc., a cosmetics company, established a fair use defense in an infringement action brought by competitor Hard Candy, LLC. Hard Candy originally sued, alleging that Anastasia’s “Gleam Glow Kit” makeup product infringed the Hard Candy trademark. Anastasia’s Gleam Glow Kit is a flip-open makeup palette containing four different shades of facial highlighter, one of which was named “Hard Candy.” The Court of Appeals affirmed the District Court’s finding that (1) there was no likelihood of confusion between Anastasia’s highlighter makeup shade called “hard candy” and the branded makeup of the Hard Candy company; and (2) Anastasia established a descriptive fair use defense against the trademark infringement alleged by Hard Candy.

To prevail on its trademark infringement claim, a plaintiff must establish that a defendant’s use of a mark creates a likelihood of confusion with its trademark. The District Court applied a seven-factor test to determine whether Anastasia’s Gleam Glow Kit created a likelihood of consumer confusion. The Court of Appeals agreed that the “similarity of mark” factor weighed in favor of Anastasia, because while Anastasia uses the same words, all in capital letters (HARD CANDY), the Court must consider the “overall impression created by the use of the mark as a whole, rather than comparing the individual features.”

Continue Reading Eleventh Circuit Affirms Finding of Fair Use in “Hard Candy” Makeup Case Based on Manner of Use Analysis

Georgia insurance adjuster and consultant Bruce Fredrics’ filed a lawsuit against a reporter relating to a proposed television exposé on Mr. Fredrics and his business.  In Frederics v. Hon. Brad Raffensperger, Georgia Secretary of State, et al., Case No. 2019CV317438 (Aug. 2, 2019), Mr. Fredrics sought effectively to stop Harry Samler, the host of the local news’ station’s pro-consumer investigative show “Better Call Harry,” from publishing any news stories about his dealings with a homeowner who claimed he defrauded her, and who had subsequently turned to Mr. Samler to publicize her alleged negative experience.  Notably, Mr. Samler’s investigation dealt not only with Mr. Frederics’ dealings with this homeowner, but also the consumer complaint filed by that homeowner and resulting investigation against Mr. Frederics by a Georgia regulatory agency.

But Mr. Samler’s employer, CBS46, had other plans to protect its lead investigative reporter (and, ostensibly, one of its most popular segments): it filed a motion to intervene and to join a motion to strike filed by Mr. Samler that asked the Georgia Superior Court to make a finding that Mr. Frederics’ lawsuit impermissibly curtailed CBS46’s constitutionally-protected newsgathering activities.  Mr. Frederics opposed both motions, first claiming that, because CBS46 was neither a defendant in his actions nor the target of any of his specific claims, it had no right to intervene in the action.  The Superior Court promptly disposed of that argument, noting that “[t]he media’s right to intervene in legal actions that seek to impede its ability to gather and report the news is well established.” Continue Reading News at 11: Georgia court finds that television station has First Amendment right to produce investigative reports

Earlier this year, a unanimous Supreme Court held that a copyright owner may not file an infringement lawsuit until the Copyright Office has acted to register the owner’s application.  This decision resolves a long-standing circuit split over when a copyright owner may file an infringement lawsuit – either when the application has been submitted (the “application” approach) or when the Copyright Office registers the copyright (the “registration” approach).  In the wake of this ruling for the “registration” approach, content creators are expected to make greater use of the Copyright Act’s preregistration process as a way of protecting their work before it has been published. Continue Reading Supreme Court Ruling on When Copyright Infringement Lawsuits May Be Filed Brings Heightened Interest in Preregistration

On June 24, 2019, the U.S. Supreme Court issued its highly anticipated opinion in Iancu v. Brunetti, holding that the Lanham Act’s prohibition on the registration of “immoral” or “scandalous” trademarks violates the First Amendment.

In 1990, Erik Brunetti, an artist and entrepreneur, founded the streetwear clothing line, FUCT (pronounced as four letters, one after the other: F-U-C-T).  Brunetti attempted to register the FUCT trademark in order to protect its value.  The U.S. Patent and Trademark Office (PTO) denied his application for registration, concluding that because it was phonetically equivalent to the “past participle” of “a well-known” vulgarity, registering the FUCT trademark would violate Section 1052(a) of the Lanham Act, which prohibits trademark protection for immoral, shocking, offensive, and scandalous marks.  After exhausting his remedies in the PTO, Brunetti brought a First Amendment challenge to Section 1052(a) in the Court of Appeals for the Federal Circuit.  That court invalidated the “immoral or scandalous” clause.  In a 6-3 opinion, the Supreme Court affirmed the Federal Circuit’s decision, holding that the prohibition of immoral or scandalous trademarks infringes the First Amendment because it disfavors certain ideas.  The Court’s majority opinion, joined by both liberal and conservative justices, made clear that the government cannot discriminate against “ideas that offend.”  Continue Reading Supreme Court Strikes Down Prohibition of Registration of Immoral or Scandalous Trademarks on First Amendment Grounds

Two federal courts recently dismissed defamation claims brought against the New York Times and the Kansas City Star, finding the subject articles employed standard investigative journalism techniques that immunized the newspapers from liability under state defamation laws.

In Croce v. New York Times Co., No. 18-4158 (6th Cir. July 17, 2019), the 6th Circuit upheld the dismissal of an Ohio State University cancer researcher’s defamation claim, finding that a “reasonable reader” would interpret the article as presenting both sides of the controversy.  The suit arose after the Times published an article examining Dr. Carlo Croce’s cancer research in the context of a broader piece about the inherent conflicts present when large research institutions reap millions of dollars in grant money for “star” researchers, and then are put in the position of investigating those researchers’ methods. Continue Reading Fair and Balanced Reporting Pays Off: Newspapers Avoid Defamation Suits by Sticking to the Truth