Weekly IP Takeaways

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D.

1. The Supreme Court denied certiorari in an important case involving ADA-compliant websites. In this case, the Ninth Circuit reversed a trial court ruling dismissing a case against Domino’s Pizza under federal and California law wherein Domino’s website and/or mobile application were not accessible to blind or visually impaired persons. The Ninth Circuit’s opinion is here. The Ninth Circuit’s ruling allows the case to proceed. By denying certiorari, the Supreme Court allowed the Ninth Circuit’s ruling to stand. Expect a spike in litigation over ADA-compliant websites and apps.

2. The Court of Appeals for the Federal Circuit denied a writ of mandamus filed by Amazon and HTC seeking to force a transfer of a case from the Eastern District of Texas to the Eastern District of Virginia. The order is here. The Eastern District of Texas had denied the motion to transfer and the defendants sought mandamus to move the case because the plaintiff was apparently a Virginia company before changing its name to remove “Virginia” and merging with a Texas entity. Despite that alleged fact, the Federal Circuit denied mandamus because none of the petitioners for mandamus was headquartered in Virginia, and because they did not identify any employees with relevant information based in Virginia.

3. In a case out of the District of Colorado, well known producer Marty Stouffer (of Wild America fame on PBS) sued National Geographic for producing a documentary series called America the Wild after failed negotiations between Stouffer and NatGeo to work together. Stouffer sued for, among other things, trademark infringement in connection with certain features of NatGeo’s show that allegedly were very similar to certain aspects of Stouffer’s Wild America show. When dealing with expressive content in a trademark context, trademark law and the First Amendment can abut one another. The Second Circuit formulated the Rogers test to determine if the First Amendment trumps the Lanham Act. Rogers. v. Grimaldi, 875 F.2d 994 (2d Cir. 1989). Under Rogers, use of a trademark in an artistic work is actionable only if the use of the mark lacks artistic relevance to the underlying work, or it explicitly misleads as to the source or content of the work. The Ninth Circuit has embellished on the explicitly misleads factor in Gordon v. Drape Creative, Inc., 909 F.3d 257, 270 (9th Cir. 2018), to note that explicit misleading can be found from use of the mark alone if that is how consumers would understand the use of the mark. The Colorado court, in reviewing many authorities on the issue, formulated its own set of factors to ensure that First Amendment rights are protected in view of Lanham Act claims, as follows: (1) Do the senior and junior users use the mark to identify the same kind, or a similar kind, of goods or services?; (2) To what extent has the junior user added his or her own expressive content to the work beyond the mark itself; (3) Does the timing of the junior user’s use in any way suggest a motive to capitalize on popularity of the senior users mark?; (4) In what way is the mark artistically related to the underlying work, service, or product?; (5) Has the junior user made any statement to the public, or engaged in any conduct known to the public, that suggests a non-artistic motive?; and, (6) Has the junior user made any statement in private, or engaged in any conduct in private, that suggests a non-artistic motive? The District of Colorado opinion is very instructive on the issue, and is here.