is the chair of Debevoise & Plimpton’s Intellectual Property Litigation Group and widely recognized as one of the world’s “preeminent” trademark lawyers. He helps global companies navigate their most important and complex intellectual property matters, including those involving trademark and trade dress infringement and dilution, false advertising, domain names, copyrights and publicity rights. Legal directories and clients have described Mr. Bernstein as a “rockstar,” “indisputably one of the very best trademark lawyers in the country” and “the dean of the IP litigation bar.” Mr. Bernstein litigates IP cases nationwide, manages multi-jurisdictional litigations, and mediates and arbitrates IP cases around the world, including both as advocate and arbitrator.
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When an influencer is paid to promote a brand – and the brand’s name is trademark-infringing – can the influencer be on the hook for the infringement? A federal district court just said yes. The result could widely expand trademark litigation against influencers – and could reshape how companies and their influencers relate to one another contractually.
With brick-and-mortar stores closing at rapid paces and online sales surging, marketers are developing new models to facilitate sales through innovative online platforms. One of those new business models is Redbubble’s hybrid “print-on-demand” service. Two recent Court of Appeals decisions – from the Sixth and Ninth Circuits – consider important questions about when these new approaches to online sales gives rise to liability for trademark infringement, trademark counterfeiting, and right of publicity violations.
It has long been a fundamental tenet of advertising law that comments made to investors, and particularly those made before the commercial launch of a product or service, do not constitute the kind of “advertising” that is regulated by the Federal Trade Commission (FTC) or the National Advertising Division of the Better Business Bureau (NAD), and are outside the reach of the Lanham Act. That is because advertising law regulates communications that propose a commercial transaction; in contrast, the securities laws govern communications to investors that are designed to promote investments. A recent decision from the NAD has put a big crack in that jurisdictional wall, and threatens to breach the dam that has long shielded comments made in investor presentations from potential liability for false advertising.
Late Monday evening, Congress passed a massive omnibus budget bill to avert a federal government shutdown and provide critical COVID-19 relief. But that is not all – much to the surprise of the intellectual property world, the last-minute bill included several pieces of legislation, previously thought to be sidetracked in light of the current lame duck administration, that will alter the landscape of trademark, copyright and patent law as we know it. The changes include a Trademark Modernization Act that restores the rebuttable presumption of irreparable harm when a Lanham Act violation has been proven, allowing brand owners to more easily obtain injunctions, and the creation of a copyright small claims tribunal within the Copyright Office.
Last week, the U.S. Patent and Trademark Office (USPTO) released its long-awaited Examination Guide on so-called generic.coms – domain names comprised of generic elements along with a generic top-level domain (such “gTLDs” include .com, .net, .org, .biz and .info). The Guide (No. 3-20, entitled “Generic Terms after USPTO v. Booking.com”) provides needed guidance to trademark examiners on how to apply the U.S. Supreme Court’s decision in USPTO v. Booking.com B. V., 140 S. Ct. 2298 (2020); it also provides guidance to trademark applicants on the standards they can expect the USPTO to apply in considering whether their domain names are registrable as trademarks. Unfortunately, instead of faithfully applying the Supreme Court’s lesson about the importance of consumer perception in assessing whether a term functions as a trademark, the USPTO has relied on factors close to its discredited per se rule that will make it very difficult to register such marks.
A case now pending before the Ninth Circuit, LTTB LLC v. Redbubble, Inc., Docket No. 19-16464, has the potential to clarify the controversial doctrine of aesthetic functionality. Aesthetic functionality has puzzled courts for decades. Particularly before the U.S. Supreme Court issued its modern guidance on functionality in Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844 (1982); TrafFix Devices v. Mktg. Displays, Inc., 532 U.S. 26 (2001), and Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159 (2d Cir. 2009), courts struggled with how to apply the aesthetic functionality doctrine and issued opinions that, in some instances, muddied the already murky aesthetic functionality waters. Perhaps the most notorious aesthetic functionality case is International Order of Job’s Daughters v. Lindeburg & Co., 633 F.2d 912 (9th Cir. 1980), a case that many observers believed to be abrogated by subsequent Supreme Court and Ninth Circuit opinions but that has recently continued to wreak havoc on trademark law.
The Lanham Act’s ban on federal registration of “immoral or scandalous” trademarks is unconstitutional under the First Amendment. So held the United States Supreme Court on Monday, resoundingly, if a bit uneasily, in Iancu v. Brunetti. It’s a good result, and one that the trademark bar and the free speech community had broadly urged, including Debevoise’s client, the International Trademark Association (INTA), in an amicus brief that we had the privilege of writing.
A Final Rule issued by the Centers for Medicare and Medicaid Services (CMS) on May 8 (the “Final Rule”) that requires direct-to-consumer (DTC) television advertisements for a prescription drug or biologic covered by the Medicare or Medicaid programs to disclose the product’s “list price,” will become effective on July 9, 2019. The Final Rule mandates price disclosures for any covered drug that is $35 or more for a one-month supply or the usual course of therapy, and includes a unique enforcement mechanism whereby CMS would rely for enforcement on private lawsuits filed pursuant to Section 43(a) of the Lanham Act. In a conference call with reporters, Department of Health and Human Services (HHS) Secretary Alex M. Azar II analogized the new requirement to mandatory price disclosures required for the automobile industry—despite the fact that cars are not reimbursed by the government, subject to co-pays, prescribed by third parties who function as gatekeepers, or subject to complex arrangements with prescription benefit managers (PBMs) and other healthcare providers. The strained analogy to automobile price disclosures reflects the legal complexities implicated by this requirement and the absence of relevant precedent.