Lanham Act

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Considering Use in Commerce, Source-Identifying-Function, and Conduct vs. Confusion

On June 29, 2023, the Supreme Court vacated the 10thCircuit’s decision in Abitron Austria GmbH et al. v. Hetronic International Inc. (“Hetronic”). The Supreme Court principally held that the Lanham Act does not have extraterritorial application. As Crowell previously discussed, the Supreme Court sought briefing on Hetronic from the U.S. Solicitor General, signaling an interest in addressing the Tenth Circuit’s decision, the extraterritoriality of the Lanham Act, and the complex circuit split that has at least three distinct tests. Although the Court agreed 9-0 that the lower court’s decision should be vacated, Justice Alito’s majority opinion and Justice Sotomayor’s concurring opinion disagreed on the second step of the extraterritoriality test, specifically regarding whether foreign conduct can have domestic implications. The majority disagreed with both the Tenth Circuit and the Solicitor General, concluding that the Lanham Act cannot apply to foreign defendants’ foreign conduct.Continue Reading The Unanimous, but Contentiously Fractured, Supreme Court Decision on Extraterritoriality of the Lanham Act

The U.S. Supreme Court is poised to clarify the extraterritorial reach of the Lanham Act for the first time in seventy years.  The decision will impact corporations’ ability to seek damages for international trademark infringement, and may resolve a circuit split on the applicability of the Lanham Act on foreign defendants’ foreign conduct.  The Court will review the Tenth Circuit’s decision in Abitron Austria GmbH et al. v. Hetronic International Inc. (“Hetronic”) and the extraterritoriality of the Lanham Act, seemingly the Court’s desired outcome after requesting the United States weigh in on Abitron Austria GmbH’s (“Abitron”) certiorari petition filed in January 2022. Continue Reading U.S. Supreme Court to Decide the Extraterritorial Application of the Lanham Act

Allegations of trademark infringement against celebrity-founded brands are not new. In 2015, resort-wear brand Island Company LLC sued Kendall and Kylie Jenner for use of the phrase “Run Away, Fall in Love, Never Return,” which resembled Island Company’s trademark phrase “Quit Your Job, Buy a Ticket, Get A Tan, Fall In Love, Never Return”.[1] The case was settled in January 2016. In 2021, an Italian tribunal ordered social media influencer Chiara Ferragni to pull her snow boots from her footwear line, finding infringement on Tecnica group’s trademark for the world-renowned Moonboot.[2] Now, Vans, Inc., a sneaker company born out of 1960s California counter-culture, alleges trademark infringement by MSCHF, a Brooklyn art collective endorsed by rapper Tyga.Continue Reading Fashionable Parody or a Trademark Infringing Wearable Sneaker? The Second Circuit Hears Both Sides.

The DNR Tattoo

Last week, the Associated Press reported the fascinating story of an unconscious man admitted in acute distress to Miami’s Jackson Memorial Hospital. The words “Do Not Resuscitate” were tattooed across his upper chest, where one would see them before engaging in chest compressions. He carried no identification, so the medical staff could not reach his next of kin. A decision had to be made immediately, however: do we attempt to revive him?

© Getty Images

If doctors took the tattoo at face value, the patient would die. If they rejected the literal words, reading ambiguity into it (perhaps it was merely the result of youthful indiscretion), he might live. The stakes could not have been higher. “We’ve always joked about this, but holy crap, this man actually did it,” said the attending ER physician. “You look at it, laugh a little, and then go: Oh no, I actually have to deal with this.” Fortunately, Jackson Memorial has an ethics team on call for these kinds of situations, and after swift consideration, they recommended that the doctors honor the man’s tattooed request — they allowed the man to die.

Apparently, this is not the first DNR tattoo story. An author in the Journal of Internal Medicine writes of a patient admitted to the hospital for serious surgery, who had the letters “D.N.R.” tattooed on his sternum. When interviewed as part of preoperative procedure, he indicated that he in fact did want to be resuscitated if he went into arrest during surgery, contrary to what was written on his chest. He explained that he acquired the DNR tattoo after losing a drunken poker bet. The author dryly remarks, “It was suggested that he consider tattoo removal to circumvent future confusion about his code status.” The patient declined, however, saying that “he did not think anyone would take his tattoo seriously…”

Can Advertisers Be Taken at Their Word?

The tattoo story has me thinking about its application to advertising. In our line of work, we are frequently confronted with ad copy that expressly says one thing, but arguably implies something else. Indeed, most comparative advertising disputes arise from this kind of situation. The advertiser has carefully crafted a claim, believing it to be truthful and well substantiated. A challenger argues that the literal words may be true, but that the claim also implies something different, and that the different implication is false. Very few sophisticated advertisers are careless or unscrupulous enough to communicate literally false claims. Arguing about implied claims is where the action is.

Continue Reading “Do Not Resuscitate”: Lessons for Advertisers