Lerner David Gets Appeal Dismissed, Preserving Win Against Preliminary Injunction Motion
Claiming trademark infringement, unfair competition, and breach of contract, Osram Sylvania, Inc. (“OSI”) filed a complaint on November 23, 2020 in the Southern District of New York against Lerner David client Ledvance, LLC (“Ledvance”). OSI moved for a preliminary injunction, arguing that Ledvance, which held a license from OSI, simultaneously breached its license agreement and infringed OSI’s mark by selling licensed products through an Amazon Store. Lerner David vigorously opposed the motion, emphasizing that OSI had not proven the harm necessary to support a preliminary injunction. On January 27, 2021, Judge Abrams of the Southern District of New York denied OSI’s motion for a preliminary injunction, finding that OSI failed to demonstrate any likelihood of irreparable harm. The Court addressed each of OSI’s points individually in a detailed opinion and agreed with Lerner David that OSI’s primary theory of irreparable harm “appear[ed] to lack any legal precedent.” Moreover, as the opinion explained, Lerner David’s explanation of Amazon’s search functions “cast further doubt on the plausibility” of OSI’s argument. The decision in the district court, combined with Lerner David’s success on appeal, not only preserves Ledvance’s right to operate its Amazon Store, but also lays the foundation for future proceedings in the district court, and will make it difficult for OSI to prove its case on the merits. Lerner David’s work here demonstrates its experience and skill in navigating trademark cases at both the trial and appellate levels, and responding rapidly and effectively to beat back requests for emergent relief.
New Jersey State Appeals Court Affirms Rutgers’ Victory in Open Public Records Act Lawsuit
A New Jersey state appeals court affirmed the dismissal of a state Open Public Records Act (“OPRA”) lawsuit against Rutgers. In this case, the plaintiff sought copies of Rutgers’ footage of a football game (referred to as “All-22” footage) against Pennsylvania State University. Rutgers denied plaintiff’s request for the videos on the basis that it was not permitted to share the videos with the public. Rutgers is a party to an agreement among other members of the NCAA Football Big Ten Conference to exchange their All-22 video footage, which also prohibits public dissemination of the videos. The plaintiff asserted that the videos were subject to OPRA, and brought suit after Rutgers’ denied the request for access to the videos. In August 2021, a New Jersey Superior Court ruled that the videos were exempt from OPRA, finding that (1) the video was proprietary to Rutgers; (2) the video fell within the competitive-advantage exemption under OPRA; and (3) that the copyright law's fair use doctrine was inapplicable. The plaintiff appealed. On August 15, 2022 a New Jersey state appeals court affirmed the dismissal of the suit, finding in favor of Rutgers on all points.
Lerner David Defeats Motion for Preliminary Injunction in Trademark Case
On January 27, 2021, Judge Abrams in the United States District Court, Southern District of New York, denied the opponent’s motion for a preliminary injunction, finding that the opponent failed to demonstrate any likelihood of irreparable harm. In the opponent’s motion, it argued that our client simultaneously breached a license agreement and infringed its mark by selling genuine, authorized products through an Amazon Store. The Court addressed each of the opponent’s points individually in a detailed opinion and stated that the opponent’s primary theory of irreparable harm “appear[ed] to lack any legal precedent.” Moreover, the opinion expressed that our demonstration of Amazon’s search functions “cast further doubt on the plausibility” of the opponent’s argument. This decision will have a major impact in the case because the opinion lays the foundation that will make it difficult for the opponent to prove its case going forward.
Lerner David Defeats Motion for Summary Judgment in Trademark Case
On December 20, 2018, Judge Wolfson in the United States District Court, District of New Jersey, denied the opponent’s summary judgment motion on all grounds that our client’s trademark is invalid. In the opponent’s motion, it argued that our client’s mark is invalid because 1) it creates a likelihood of confusion with other, third-party marks; 2) our client never actually used the mark in commerce; 3) our client committed fraud on the PTO in attempting to obtain registration; and 4) the defense of laches bars our client from asserting a trademark infringement claim. The Court addressed each of these points individually in a detailed opinion and reasoned that the opponent failed to meet its burden on each one, and that a genuine issue of fact exists with respect to each that precludes entry of summary judgment. This decision will have a major impact in the case because the opinion lays the foundation that will make it difficult for the opponent to prove its case going forward.
Global Trademark Skills Recognized
A global outlook characterises the thriving practice at Lerner David. This New Jersey boutique has its sights firmly trained on Asia; offices in China and Japan have brought in waves of new work, with many businesses looking for truly international trademark strategies. After determining which jurisdictions are most important to their clients, the team’s canny practitioners employ first-hand experience of the integrity of different trademark offices and courts around the world and then come up with a sound way forward. Of late, they have been particularly busy wrestling domain names away from cybersquatters and embarking on work in the social media sphere. Gregg Paradise’s background in computer science engineering gives him a crucial edge when start-ups are in the market for new counsel. He is a technical whizz who makes light work of even the most multifaceted briefs. His teammate Bruce Sales is a top negotiator. His 30 years of experience have imbued an instinctive understanding of which buttons to press; remaining calm, he gets favourable settlements time and again. The erudite Thomas Palisi manages portfolios with aplomb; issues surrounding the Madrid system are his bread and butter.
Lerner David Triumphs In Australian Trademark Strategy
Our firm developed a strategy for our client Bed Bath & Beyond in pursuit of revoking a trademark registration owned by a New Zealand company for the mark BED BATH & BEYOND. We successfully formulated and implemented a strategy by which the New Zealand company’s Australian registration for BED BATH & BEYOND was revoked and its effort to oppose our client’s application to register the BED BATH & BEYOND mark was defeated. With the assistance of Australian counsel, we were able to establish unequivocally that the New Zealand company was not making use of its BED BATH & BEYOND mark, resulting in revocation of the New Zealand company’s registration by IP Australia. IP Australia also ruled against the New Zealand company in its opposition to our client’s application for registration of the BED BATH & BEYOND mark.
Floyd Rose wins UDRP complaint before WIPO Administrative Panel
Floyd Rose, represented by Gregg A. Paradise and Aaron S. Eckenthal, recently prevailed on his Uniform Domain Name Resolution Policy Complaint against Adam Reiver. The complaint sought a transfer of the Domain Name floydupgrades.com because use of that Domain Name violated Floyd Rose’s trademarks and was being used in bad faith. Floyd Rose is the inventor of the locking tremolo used on electric guitars. Floyd Rose owns several United States Trademarks, including FLOYD ROSE and THE FLOYD (U.S. Reg. Nos. 1,292,157; 1,925,371; 2,606,770), which are used in connection with electric guitar accessories, stringed instruments, and include tuners, tremolos, guitar stands, picks, etc. Adam Reiver used the floydupgrades.com Domain Name to deliberately refer to the Floyd Rose trademarks and offers products, including instructional videos on how a musician can modify or “upgrade” their FLOYD ROSE products such as the world-famous tremolo bridge. In his complaint, Floyd Rose contended that the disputed Domain Name (floydupgrades.com) is identical or confusingly similar to its trademarks. In addition, the complaint alleged that Adam Reiver used the trademarks for illegal solicitation and to gain an illicit profit based on the likelihood of confusion with Complainant’s trademark, which creates the likelihood that customers will believe that Floyd Rose is the owner and operator of the floydupgrades.com Domain Name. The three member Administrative Panel agreed with Floyd Rose. In the opinion, the panel held that Adam Reiver does not have a right to use the Floyd Rose trademarks, either as nominative fair use or otherwise. Any nominative fair use by Adam Reiver was negated by the fact that Reiver used the floydupgrades.com Domain Name for a website that not only sells goods and services related to Floyd Rose branded goods, but also products that directly compete with those offered by Floyd Rose. In addition, the panel held that Adam Reiver’s use of the floydupgrades.com Domain Name reflects bad faith in engendering at least initial confusion for commercial gain. Thus, based on the finding, the panel ordered that the Disputed Domain Name floydupgrades.com be transferred to Floyd Rose. Lerner, David was also previously successful in getting Facebook to terminate Adam Reiver’s “The Original Floyd Rose Upgrades” web page.
Lerner David Prevails on behalf of G&W Laboratories in Case of First Impression on Trademark Fraud
G&W LABORATORIES, INC. v. G W PHARMA LIMITED, Opposition No. 91169571 (TTAB January 29, 2009). In a case of first impression dealing with the scope of cancellation of a trademark registration including goods on which the trademark is not used, the Trademark Trial and Appeal Board held in favor of Lerner David's client G&W Laboratories. In an opposition proceeding before the Trademark Trial and Appeal Board, against the mark "G W Pharma," G W Pharma filed a counterclaim seeking cancellation of G&W's trademark registrations alleging fraud based on a lack of use of the mark by G&W for the Class 35 services. G W Pharma sought cancellation of the entirety of G&W's registrations -- not just in Class 35, but G&W's core goods in Class 5 as well. On Lerner David's motion to dismiss this counterclaim as to our client's core goods in Class 5, the Board issued a precedential decision, holding that a multiple-class application can be viewed as a series of applications for registration. Thus, the Board found, fraud in one class can not serve to invalidate any other class in a combined application. This decision fills a void in the line of cases going to back to Medinol Ltd. v. Neuro Vasx Inc., 67 USPQ2d 1205 (TTAB 2003), which have applied a very strict standard of fraud based on a party's failure to use its mark on each and every one of the goods and/or services identified in its registration.
Court Grants Howmedica Osteonics' Motion to Stay Further Proceedings Pending Patent Reexam
SYNTHES (U.S.A.) v. STRYKER CORP., Civil Action No. 06-5681-AB (E.D. Pa. Mar. 19, 2009). In this two-year-old patent infringement suit brought by Synthes (U.S.A.) against our client Stryker Corp. and its subsidiary, Howmedica Osteonics Corp., the district court granted our motion to stay further proceedings pending reexamination of Synthes' patent-in-suit, directed to a threaded insert for a bone plate screw hole. Reexamination of Synthes' patent by the United States Patent and Trademark Office was commenced in response to a request for reexamination filed on behalf of Howmedica Osteonics by our firm. In March 2008, the district court had issued a claim construction order broadly construing the patent's claims, which resulted in the request for reexamination. The stay was granted by the district court in the face of arguments by Synthes that the stay motion was a "transparent" attempt to unnecessarily delay the case.
Sony Wins Successful Settlement of Blu-ray Patent Dispute
SONY DADC U.S. INC. v. TARGET TECHNOLOGY, LLC ET AL. , SA CV 04-1083 (DOC), CDCA. Sony successfully intervened in a lawsuit in April 2007 that was pending in the Central District of California between Target Technologies, LLC and Williams Advanced Materials, Inc. and others. Target had asserted that it owned a large family of patents covering optical discs, such as Sony's Blu-ray DVDs. We asserted that Sony was the actual owner of the patents and succeeded in obtaining a favorable settlement for Sony in late 2008.
Stryker's Jury Verdict against Synthes is Bolstered by Successful Reexamination of Orthopedic Patent on an External Fracture Fixation Device
In a trial in late 2006, we successfully tried the issues of validity and infringement before a jury in Newark, New Jersey in Stryker v. Synthes. The Stryker patent found infringed by the jury relates to the setting fractures with an external fixation system somewhat reminiscent of an erector set. After fighting off Synthes' post trial motions before the judge on, among other things, the validity of the asserted patent, we were faced with yet another validity challenge, this time the result of Synthes' petition for reexamination before the U.S. Patent and Trademark Office. With the depth of our litigation and prosecution experience, we presented evidence supporting our longstanding and judge and jury-tested position that the asserted patent was valid. In June 2008, the U.S. Patent and Trademark Office rendered a decision that Synthes' attack was not persuasive and that the patent claims held infringed would stand as previously issued and litigated.
Ecce Panis, inc. v. Maple Leaf Foods USA, inc.
Ecce Panis, inc. v. Maple Leaf Foods USA, inc., 2007 U.S. Dist. LEXIS 85780 (D. Ariz. Nov. 7, 2007). Plaintiff Ecce Panis, which markets "artisan" breads, brought an action against our client Maple Leaf Foods alleging trade dress infringement in connection with packaging using a European motif for a competing line of breads. After the plaintiff moved for a preliminary injunction, the court conducted a two-day evidentiary hearing and subsequently issued a decision denying the requested injunction. Noting that the plaintiff's trade dress contained functional elements, the court concluded that the plaintiff had not shown that a likelihood of confusion existed between the two competing products, based upon dissimilarities in the trade dress, the absence of intentional copying, and the failure of the plaintiff's survey to demonstrate actual confusion.