candy buyers fail to allege difference between pumpkin & Jack-o’-lantern shape

Posted on September 22, 2026 by rtushnet

Vidal v. Hershey Co., No. 24-60831-CIV-DAMIAN, 2026 WL
2730302 (S.D. Fla. Sept. 16, 2026)

Reese’s Peanut Butter Pumpkins with carved face on package
actual candy

There’s a Reese’s Peanut Butter pumpkin. It was advertised with a Jack-o’-lantern package, but the actual pumpkin-shaped chocolate had no such face. The package that says, in all capital letters: “DECORATING SUGGESTION.” (So you’re supposed to carve off little strips of chocolatey coating? With what tools? Hope your house is really cool, given the pliability of the coating at room temperature!) It is possible to make chocolates with molds that would give them Jack-o’-lantern faces.

Jack-o’-lantern molds for candy

 Plaintiffs sued for false advertising under the Florida Deceptive and Unfair Trade Practices Act (FDUTPA).

The court found lack of standing due to lack of injury in fact. “A plaintiff may establish a concrete injury-in-fact under a benefit-of-the-bargain theory by showing that they paid for a product but received something of lesser value or that was completely worthless.” FDUTPA “does not provide for the recovery of nominal damages, speculative losses, or compensation for subjective feelings of disappointment.”

Plaintiffs didn’t that the Reese’s Peanut Butter Pumpkins they purchased were not edible or that they suffered any side effect, health issue, or harm from consuming the product. Nor have did they allege that the sale of the Peanut Butter Pumpkins was illegal. So there was no benefit-of-the-bargain injury.

This was true even though plaintiffs alleged that they purchased the products at issue “for the novelty/party-display value of the depicted faces, not merely for generic chocolate-and-peanut-butter candy.” Still, “their only injury is their subjective disappointment.” And the disclaimer “DECORATING SUGGESTION” was next to the image of the carved chocolate pumpkin; while the product may not have the “cool looking carving of a pumpkin’s mouth and eyes,” it does have “a novel pumpkin shape.”

A price premium theory also failed despite allegations that, “[i]n retail commerce, Reese’s Peanut Butter Pumpkins are priced higher per ounce than regular Reese’s Peanut Butter Cups across mainstream retailers and the manufacturer’s website.” But they only alleged a price premium at Target, Walmart, and Hershey’s, not at Publix where they bought. (This seems like a perfectly reasonable inference, though, and plaintiffs did allege that this was representative. Ah, the manipulability of Twiqbal.) But also, that still didn’t show economic injury, because plaintiffs still received candy actually shaped like pumpkins, which could also justify a price premium.

from Blogger https://tushnet.blogspot.com/2026/09/candy-buyers-fail-to-allege-difference.html

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Amicus in section 230 false light case

Posted on September 17, 2026 by rtushnet

 The EFF, Eric Goldman, Jess Miers, Mark Lemley, and I filed a brief in Does 1-10 v. Freesites in the Fourth Circuit, arguing that context–the other third-party content surrounding a post–cannot be the basis for a false light claim against a host site. 

from Blogger https://tushnet.blogspot.com/2026/09/amicus-in-section-230-false-light-case.html

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Amicus in Rise & Shine

Posted on September 16, 2026 by rtushnet

 I’ve submitted a brief on behalf of trademark scholars in support of neither party.

Summary of argument:

The issue before the Court is whether trademark strength in a likely confusion analysis is a question of fact or a question of law, but this question actually bears on the confusion inquiry as a whole. Sometimes, factual issues predominate in this consideration, but sometimes legal issues do.

This conclusion may sound surprising given the phrase “likelihood of confusion,” which sounds empirical. The full version of the standard—likely confusion among a substantial number of reasonable consumers—clarifies that normative legal judgments (what is substantial, what is reasonable, and what constitutes confusion) are crucial to infringement inquiries. Infringement inquiries therefore are mixed questions of law and fact in which legal analysis can often predominate.

The hallmark of fact finding that deserves appellate deference and clear-error review is individualized adjudication. The multifactor framework to assess likelihood of confusion that courts have regularly used in the 80 years since the enactment of the Lanham Act involves propositions that sound factual, but that have never—not in this case, nor in any other—been tested by factfinding at the district court level.

This includes the question of trademark strength. The theory that “suggestive marks are conceptually stronger than descriptive marks with secondary meaning, thus favoring the plaintiff more in the confusion inquiry,” is not an “adjudicative fact” found by the factfinder based on individualized evidence.

Contrary to some suggestions in Petitioner’s brief, conceptual strength inquiries do not involve direct investigation of consumer understanding of the extent to which a word functions to indicate source when applied to a product. Conceptual strength is partly empirical (involving an assessment of, inter alia, dictionary definitions and other marketplace uses) and partly a matter of prediction about whether people will need to use “imagination and thought” to connect a word with the goods or services at issue. No trademark is “suggestive” or “descriptive” as a state of nature; Judge Friendly accepted that his division was “rough[]” at best. Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976).

Furthermore, the propositions that suggestive marks are “stronger” than descriptive marks with secondary meaning, and thus that, all else being equal, a mark’s status as suggestive makes confusion more likely than if it were descriptive, are broad claims about reality.

Courts evolved the multifactor confusion test over time, and they are still adding variations for new situations—as they should be. As with many torts, the existence of trademark infringement (given a set of adjudicative facts) is a classic mixed question of law and fact. No resolution of this case should treat either likelihood of confusion or trademark strength as a purely factual question.

from Blogger https://tushnet.blogspot.com/2026/09/amicus-in-rise-shine.html

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it’s hard to get rid of a foreign TM owner’s complaint at the motion to dismiss stage despite territoriality

Posted on September 4, 2026 by rtushnet

Honest Greens Barcelona, S.A.U. v. Poky’s LLC, 2026 WL
2593358, No. 4:24-cv-07023-JD (D.S.C. Sept. 2, 2026)

Honest Greens operates restaurants in Spain and Portugal
under the HONEST GREENS name and related marks; it owns registrations for
HONEST GREENS in several foreign jurisdictions, and allegedly developed
substantial goodwill through restaurant operations, advertising, digital
platforms, and social media. It also alleged “substantial contact with United
States consumers” by selling meals to customers from the US. It also alleged
that it marketed its services to United States consumers; received tens of
thousands of visits to honestgreens.com from United States IP addresses; since
2021, has attributed at least seven percent of its sales to customers using
United States-based credit cards; identified more than 36,000 United
States-based users who have downloaded its mobile app; and has approximately
8,000 United States-based users following its HONEST GREENS Instagram account. The
app permits users, including travelers in the United States, to place an order
in advance for collection at one of HG’s European restaurants.

Poky’s allegedly uses the domain name <honestgreens.us>,
a website, a mobile application, and the Instagram username HONESTGREENS.US to
promote a Myrtle Beach restaurant operating under the HONEST GREENS name. The
complaint alleged consumer confusion, including a message asking, “Same menu as
honest greens abroad?” and another reporting, “I’ve placed this order but it
got sent to the wrong location in Myrtle Beach.”

For statutory standing, Poky’s noted that HG didn’t allege
that a consumer chose Poky’s Myrtle Beach restaurant instead of an Honest
Greens restaurant in Spain or Portugal, and that one or two instances of online
confusion are too isolated to establish a plausible causal connection with harm
to HG. This might be true later on, but at the pleading stage HG did enough. It
alleged a US-facing commercial reputation as well as injury to that reputation
from the allegedly confusing restaurants, which sufficed for proximate
causation.

Although Belmora cautioned that “[a] few isolated
consumers” who merely confuse a domestic mark with one seen abroad, without
additional misleading conduct, would rarely state a viable claim,” HG alleged
additional conduct including use of the .us domain when HG’s identical .com
domain was unavailable for the same general category of restaurant services and
an alleged specific intent to deceive consumers as to source or sponsorship. “Whether
Plaintiff can prove intentional copying, meaningful United States goodwill, or
material confusion is a later question.”

Poky’s also argued that, without US restaurants, HG could obtain
neither an injunction (Dawn Donut) nor damages. True, the relevant cases
make geographic market separation “highly relevant, particularly to likelihood
of confusion and territorial injunctive relief, but they do not establish the
categorical rule Defendant proposes.” Again, a motion to dismiss did not
determine whether the evidence could ultimately show “sufficient confusion,
market penetration, or reputational injury.”

However, because false advertising requires more evidence
than trademark infringement, the false advertising claim failed. The complaint
didn’t identify a false or misleading statement of fact or a misrepresentation
of a specific characteristic or quality, nor did it allege materiality. 

An ACPA claim over the domain name also survived because the
complaint plausibly alleged a bad faith intent to profit. At this stage, it was
enough to allege Poky’s knowledge of the mark, intent to infringe, and
confusing similarity, even though Poky’s use of the domain name to operate a
real restaurant “may be relevant to the totality of the circumstances and to
Poky’s contention that it is a legitimate concurrent user.”  “[T]he pleaded consumer diversion facts, not
mere knowledge of the .com domain or similarity of names, are what permit the
ACPA theory to survive at the pleading stage. Whether the proof ultimately
shows only ordinary infringement rather than cybersquatting remains for the
developed record.”

And HG didn’t need to plead a South Carolina registration to
bring common-law claims.

from Blogger https://tushnet.blogspot.com/2026/09/its-hard-to-get-rid-of-foreign-tm.html

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dct strikes down California’s new recyclability law on vagueness/1A grounds

Posted on September 2, 2026 by rtushnet

California League of Food Producers v. Bonta, 2026 WL
2055589, No. 3:26-cv-01675-WQH-BLM (S.D. Cal. Jul. 14, 2026)

Trade associations challenged a California law about
recyclability claims; the court found it unconstitutionally vague and also
unconstitutional under Central Hudson. Basically, the law provided that
using a recycling symbol would be deemed deceptive or misleading “unless the
product or packaging is considered recyclable pursuant to statewide
recyclability criteria and is of a material type and form that routinely
becomes feedstock used in the production of new products or packaging.” Something
would be deemed recyclable if it was collected by jurisdictions including least
60 percent of the population of the state and processed by facilities that
serve 60 percent of recycling programs statewide. But the standards for “routinely
becoming feedstock” and other key terms were too vague, even for an economic
regulation; there was no scienter requirement to mitigate its harshness. The
state’s own reporting disclaimed comprehensiveness. Defining a consumer good as
“recyclable” if it can be “conveniently recycled” in California counties with
more than 300,000 people offered no guidance as to what recycling programs
satisfy the “conveniently recycled” requirement. Reference to outside guidance
like the Basel Convention also wasn’t specific enough to provide guidance.

Reference to the APR Design Guide for plastic packaging “does
not correspond to other language in the statute because a product or package
design that is ‘detrimental to recycling’ or ‘needs improvement’ may reasonably
be understood as precluding recycling of that material”—or not. “Constitutional
concerns regarding fair notice and standardless enforcement are heightened here
because, under California law, the APR Design Guide provision may be enforced
by private individuals and local governmental actors and may result in criminal
sanctions.” Plus, the Guide described itself as “dynamic” and subject to change
as “packaging technologies evolve.” “Manufacturers are left without statutory
guidance not only as to whether their compliance will be measured at the time
of design, manufacture, or sale of their packaging, but also without reliable
information regarding which version of the APR Design Guide will apply. The
record indicates that the APR Design Guide has been repeatedly revised after
the enactment of [the new law].” Even if the date of design was key, there was
vagueness in determining when a package was “designed.”

Similarly, requirements that “plastic products and
non-plastic products and packaging” must be “designed to ensure recyclability
and [must] not include any components, inks, adhesives, or labels that prevent
the recyclability of the product or packaging” were too vague. Determining what
“prevented” recyclability requires consideration of not only recycling
technologies, but also whether it is “economically feasible” for recycling
facilities to ultimately process those materials into feedstock. The court
severed all the challenged provisions.

Unsurprisingly, then, the Central Hudson challenge
also succeeded. The law directly regulated commercial speech: “environmental
marketing claim[s], whether explicit or implied” related to products and
packaging.

The legislature couldn’t just declare use of recyclability
claims inconsistent with the government’s definition of recyclability to be
inherently misleading. [Now do gas mileage calculations.] In the context of recyclability,
where there were a lot of variables about local practices, the term was only
potentially misleading, not inherently misleading.

California identified two primary government interests:
reducing consumer confusion and improving recycling rates. These were
substantial.

Did the regulation directly advance those interests? “To
satisfy its burden, California must provide evidence establishing that the
harms it recites are real and that its speech restriction will significantly
alleviate those harms.” However, this does not “require that ‘empirical data
come … accompanied by a surfeit of background information … We have
permitted litigants to justify speech restrictions by reference to studies and
anecdotes pertaining to different locales altogether, or even, in a case
applying strict scrutiny, to justify restrictions based solely on history,
consensus, and ‘simple common sense.’ ”

Under Ninth Circuit precedent,

[A] state can invoke ‘common sense’
only if the connection between the law restricting speech and the government
goal is so direct and obvious that offering evidence would seem almost
gratuitous. But as the government’s justifications for a regulation become more
attenuated, bare appeals to common sense quickly veer into impermissible
speculation. In such cases, the state needs to provide evidence to substantiate
that its law will meaningfully further its stated objectives.

Plaintiffs argued that uncertainty would chill recycling
claims, contrary to the state’s objective. California responded that it was
trying to address a different problem: “cross-contamination in recycling
streams, which makes recycling less effective.” This process “weakens the
recyclables market” by increasing the cost to reclaim materials and reducing
the value of contaminated “plastic lots.” But the record didn’t support the
government’s position that enforcement would reduce the total amount of
material that is deposited into landfills.

The evidence showed that “California faces serious
difficulties in efficiently recycling consumer products and packaging, at least
with respect to those made of plastic.” And there was evidence that “consumers’
attempts to recycle materials, especially plastic bags, are detrimental to the
recycling process because—as a matter of practice—recycling facilities are
unable to process these materials and turn them into feedstock that can become
new products and packaging.” Thus, “elimination of contaminated materials from
recycling streams would benefit the operations of recycling facilities and
result in a greater portion of their collected materials being turned into
feedstock. But the evidence in the record indicates that … this benefit to
recycling facilities would come at the cost of increasing the amount of
materials placed in landfills.” Plaintiffs submitted declarations from members
stating that the law would require them to omit truthful statements regarding
recyclability from their products and packaging, which will result in materials
that would otherwise be recycled going to a landfill. California conceded that
this would be a short-term effect, but argued that manufacturers would respond
by redesigning; this was speculative given manufacturers’ declarations that
instead recycling claims would be omitted entirely. “While these declarations
are self-serving, Defendant offers no evidence to counter them.”

What about consumer confusion? Plaintiffs argued that
consumers would be deprived of “accurate, qualified recycling instructions” for
products and packaging that are capable of being recycled. True, there was
evidence that consumers lack adequate information about which products to
recycle. And the court assumed that “consumers read and consider recyclability
claims on products and packaging during their purchasing decisions and at the
time that they discard the products and packaging.” But the record was conflicting
on whether the law would improve accuracy. Presumably, standardizing the
requirements would “facilitate California consumers’ ability to trust that, if
a product or package is labelled as recyclable, it will be recycled and turned
into feedstock if they place it in the appropriate bin.” And information about
recyclability is presumably difficult for consumers to obtain without relying
on manufacturers’ representations. But there was also evidence that
manufacturers would forgo some recyclability claims, leaving consumers with
less information, including “truthful and genuinely helpful information, such
as a listing of which areas accept the product or package for recycling and
which do not.” [Do such packages with lists actually exist?] And the law “would
still leave consumers in dark about whether a package or product marked as
recyclable is genuinely recyclable in the consumers’ area—i.e., whether the
consumer is in the portion of the state (which can be up to 40%) which does not
accept the material for recycling.” Ultimately, the consumer understanding
claims were too speculative to support the law.

It followed that narrow tailoring was also not present.  The law failed to leave “breathing room for
manufacturers to provide qualified information about their products and
packaging,” such as “[n]ot recyclable in most areas; check locally” or a QR
code on the packaging with “details regarding the product’s recyclability.”
This meant that the provisions of the law that survived vagueness did not
survive Central Hudson.

from Blogger https://tushnet.blogspot.com/2026/09/dct-strikes-down-californias-new.html

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look, there’s a lawsuit: bad claim against comedian leads to anti-SLAPP award

Posted on August 31, 2026 by rtushnet

Morake v. Mwanyenyeka, No. 2:26-cv-02795-JLS-AS, 2026 WL
2548629 (C.D. Cal. Aug. 28, 2026)

Noted because, well, it’s an unusually bad claim. Morake is
the creator and original performer of “Nants’ingonyama bagithi Baba,” the
opening chant from Disney’s The Lion King. Mwanyenyeka is a “comedian and
content creator” who appeared on a podcast, where he asserted that
“Nants’ingonyama bagithi Baba” means “Look, there’s a lion. Oh my god” in the
Zulu language. This went viral, and he repeated the joke at various comedy
clubs. Morake alleged that this was false and that the true
translation of “Nants’ingonyama bagithi Baba” is “All hail the king, we all bow
in the presence of the king.”

Morake sued for violation of the Lanham Act, defamation,
trade libel, and tortious interference. Mwanyenyeka filed a motion to strike
under California’s anti-SLAPP law, and then Morake dropped all the state claims
in an amended complaint.

The amended complaint now argued false advertising and false
affiliation focused on Mwanyenyeka’s “online
storefront marketing an ‘It’s a Lion’ line of apparel and goods derived
from Plaintiff’s composition.” (Sighs in Dastar.)

Because this sequence showed that Mwanyenyeka was the
prevailing party on the state claims, the court awarded $39,560 in fees.

from Blogger https://tushnet.blogspot.com/2026/08/look-theres-lawsuit-bad-claim-against.html

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5th Circuit puts its own spin on the server test

Posted on August 28, 2026 by rtushnet

Emmerich Newspapers, Inc. v. Particle Media, Inc., No.
25-60550 (5th Cir. Aug. 27, 2026)

This is being reported as creating a split with the 9th
Circuit; I don’t think that’s right in practice. As far as I can tell, the 9th
Circuit says that public display is made by the server that transmits
the display, while the 5th Circuit says that public display is made by the
server that transmits the display. Plenty of good cites to the copyright
scholars’ amicus
brief that I filed and to the Restatement of Copyright.

The court of appeals also suggested that URLs could constitute CMI, though it recognized that this would often create not just expensive fact-finding but also a separate issue of intentional removal–intentionally removing URLs as a general practice, even if some might be CMI, doesn’t seem like it should trigger 1202, similar to the cases holding that stripping metadata from photos isn’t actionable even though metadata might sometimes have CMI in it. 

Overall, a good result (and I would have said that even without the repeated citations, promise!).

from Blogger https://tushnet.blogspot.com/2026/08/5th-circuit-puts-its-own-spin-on-server.html

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weak infringement case + bad litigation conduct = fee shift for anticompetitive suit over descriptive term

Posted on August 27, 2026 by rtushnet

BBK Tobacco & Foods LLP v. Central Coast Agriculture Inc.,
No. CV-19-05216-PHX-MTL, 2026 WL 2445019 (D. Ariz. Aug. 20, 2026)

Previously.
Although BBK forced Central Coast to an (expensive) trial on its very weak
infringement claims over the use of “raw” on smoking-related products, it is
now subject to a fee award. “[W]hen a company pushes flimsy legal arguments
with scorched-earth, win-at-any-expense litigation to bully its competitors
into submission,” it harms consumers by raising prices. “In about two hours,
after a two-week trial, the jury returned a verdict fully in favor of Central
Coast,” finding no infringement based on the shared word “raw.” “The jury’s
verdict makes perfect sense, since the trademarks have nothing else in common
other than this three-letter combination. Tellingly, BBK could not introduce a
single instance of actual customer confusion.”

But it took over seven years, plus a trip to the Ninth
Circuit and the aforementioned jury trial, to get there.

Central Coast (CCA) was the prevailing party because it is now
free to use its RAW GARDEN mark without the threat of an infringement suit by
BBK. Even though BBK succeeded in voiding CCA’s pending intent-to-use
applications, both parties were free to use the marks just as before, and
defeating CCA’s cancellation counterclaims left BBK’s registrations just as
they already stood. By contrast, “[h]ad BBK prevailed on the infringement
claims, CCA would have faced damages and an injunction against its Raw Garden
brand, and the defense verdict removed that exposure.” BBK’s successful defense
of CCA’s counterclaims didn’t make it a prevailing party, because CCA succeeded
on the infringement claims that drove the litigation.

Octane Fitness provides that “[a]n ‘exceptional’ case
is simply one that stands out from others with respect to the substantive
strength of a party’s litigating position (considering both the governing law
and the facts of the case) or the unreasonable manner in which the case was
litigated.”

BBK argued that the court of appeals, in reversing the initial
grant of summary judgment already found the Sleekcraft factors “evenly
matched or tip[ped] only slightly in favor of either party” and remanded for
trial, foreclosing any finding that its position was weak. But that’s not what
the court of appeals did—it said that likely confusion “is a factual question
ordinarily reserved for the trier of fact.” (See Sepehr Shahshahani’s useful Fact-Law
Confusion for why this is a silly thing to say.) The Ninth Circuit’s “evenly
matched” observation “established only that the question could not be resolved
on summary judgment … and, in any event, it described a summary judgment record
rather than the proof ultimately presented at trial.” Nor was the panel even
unanimous on that point.  

“And this Court, having presided over a two-week trial and
observed the evidence develop live before the jury, is well positioned to
assess the strength of the merits of BBK’s arguments.” The trial bore out all
the weaknesses in the central factors. For example, there was no evidence of actual
confusion, even though the RAW and Raw Garden brands had been sold in some of
the same California dispensaries together for more than five years. “The
absence of actual confusion over so lengthy a period of concurrent use in the
same market is itself powerful evidence that confusion is unlikely.”

Nor was this unclear to BBK until trial. At summary
judgment, the Court found the record “contain[ed] no evidence of actual
instances of confusion,” and that the relevant deposition testimony of BBK’s
founder was “uncorroborated and self-serving” and insufficient even to create a
triable issue, particularly because BBK’s own Rule 30(b)(6) witness was unaware
of any confusion. “That BBK could marshal no more than this, after years of
head-to-head sales in the same dispensaries, strongly indicates confusion was
not occurring.”

BBK’s affirmative confusion evidence came from a survey that
produced net confusion rates of roughly 11.9 percent. Rates in that range are
“not so high as to constitute persuasive evidence in favor of confusion,” and
“survey confusion numbers that go below 20% need to be carefully viewed against
the background of other evidence weighing for and against a conclusion of
likely confusion.” Weighed against the marks’ visual dissimilarity and the lack
of other evidence of confusion, the survey did not show that confusion was
“probable, not simply a possibility.”

Nor was BBK’s position on mark similarity justified. “Marks
must be compared as a whole and as they appear in the marketplace, rather than
by taking a deconstructionist view of the different components of the marks,
and across appearance, sound, and meaning.” Apart from the shared descriptive term
“raw,” the Court found the marks “visually…not similar” and possessed of
“significantly different commercial impressions,” such that “consumers could
readily distinguish between the parties’ products as they appear in the
marketplace”—a dissimilarity that “weigh[ed] strongly against a likelihood of
confusion.”

But this was not the sole reason to find exceptionality,
merely a factor weighing in favor of it.  [Comment: if we’re almost never going to allow
TM cases to be rejected at summary judgment, then a fee shift for pressing
ahead with an expensive trial despite clear weakness in the case is one of the
few remaining constraints on abusive litigation, and should be available even
in the absence of litigation misconduct. But that’s a worse solution than just
actually applying the summary judgment standard.] “The manner in which BBK
litigated this case supplies the additional showing that, combined with the
weakness of its proof, makes this case exceptional.”

Most significantly, BBK relied on a photograph of a
purported Raw Garden product bearing RAW-branded cones, and the Court
sanctioned BBK’s counsel under Rule 11 for advancing allegations about that
photograph “that counsel must have known were false.” There was no evidence
that BBK itself fabricated the photograph, but counsel had been repeatedly
warned was not genuine, “and a party’s counsel’s conduct is properly considered
in the exceptional-case analysis. Knowingly pressing fabricated evidence to
defeat summary judgment is the sort of conduct that makes a case stand out from
others.”

That wasn’t the end of it.

BBK introduced, both before and
during trial, late-disclosed evidence of supposed actual confusion that it had
never produced in discovery, including an affidavit dated years after the close
of fact discovery and testimony that roughly fifty people had approached [its
principal] expressing confusion. That testimony was at odds with BBK’s own
verified discovery responses, in which it had repeatedly denied awareness of
any actual confusion. A litigant’s reliance on confusion evidence it withheld
through discovery and sprang at trial supports an exceptional-case finding.

This litigation conduct reinforced the court’s conclusion
that BBK “pursued scorched-earth tactics aimed at securing exclusive rights to
the ordinary word ‘raw.’” The court noted “BBK’s broader litigation practice of
strong-arming other companies out of using the term.” It repeatedly threatened
and sued businesses that incorporated “raw” into their marks. “Trademark law
does not exist to let a single company annex a common, descriptive word and
wield costly infringement suits to keep competitors from using it.” Octane
Fitness allows the court to consider anticompetitive motive. “The trial
record indicates that part of BBK’s aim was to position itself to claim the ‘raw’
name for its own use as the cannabis market moves toward national legalization.”

CCA got over $2.5 million in fees, less than half of what it
requested. So BBK was still able to impose a lot of costs on it.

from Blogger https://tushnet.blogspot.com/2026/08/weak-infringement-case-bad-litigation.html

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use of (R) on goods for which mark is not registered might be literally false

Posted on August 27, 2026 by rtushnet

Southern Marsh Collection, LLC v. Dixie Decoys, LLC, 2026 WL
2431220, No. 24-00905-BAJ-EWD (M.D. La. Aug. 19, 2026)

This opinion deals only with defendant’s attempt to get
claims against its allegedly false use of the ® symbol dismissed; it is otherwise
a trademark and copyright infringement case. Southern Marsh sells a variety of
outdoor apparel and accessories using a duck-style logo; it has several
registrations for its trademarks, including the logo and the slogan “PRESERVE
THE TRADITION.” Dixie Decoys allegedly uses a registered mark for its outdoor
apparel that is confusingly similar to Southern Marsh’s, as well as “Preserve
the Sporting Tradition” and “Preserve Your Sporting Tradition,” which allegedly
infringes.

Southern Marsh duck
Decoy duck

These are really weak, anticompetitive claims, but the usual deference given to trademark claims here extends even to the false advertising claim based on misuse of the ® symbol, which is that Dixie Decoys does have a registration for the logo, but only for “Waterfowl hunting decoys.” Nonetheless it uses the ® symbol more broadly.

The court found that general allegations of harm to Southern Marsh’s reputation and goodwill sufficed to plead both standing and sufficient harm to survive a motion to dismiss. That is, let’s say, unusual in false advertising cases. I tell my students to tell, and challenge, “harm stories,” but other than reciting the word “harm,” there is no harm story here. People might believe that Dixie Decoys has a trademark registration for its logo for apparel and … what? True underpants gnomes reasoning here.

The court also rejected Dixie Decoys’ argument that the use wasn’t literally false because there was a registration. “Federal trademark registration is not totally untethered from the goods or services identified in the registration, as Dixie Decoys contends…. [G]iven that federal trademark registration rights are goods-specific, this Court similarly finds that Southern Marsh has plausibly alleged that Dixie Decoys’ use of the ® symbol next to the challenged marks on goods outside of the registration could be a literally false statement of fact.” Thus, no evidence of deception was required, and anyway Southern Marsh alleged that consumers were deceived, which was enough at the pleading stage. [Materiality?]

from Blogger https://tushnet.blogspot.com/2026/08/use-of-r-on-goods-for-which-mark-is-not.html

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Midjourney can’t force Disney to disclose the prompts it used that didn’t generate material in complaint

Posted on August 27, 2026 by rtushnet

Disney Enterprises, Inc. v. Midjourney, Inc., No. 2:25-cv-05275-JAK-AJR,
2026 WL 2055488 (C.D. Cal. Jun. 15, 2026)

This is what seems like a significant discovery dispute; I’m
not an evidence scholar, but there’s interaction with the fair use analysis
that copyright folks should attend to.

Plaintiffs sued Midjourney over its image and video
generation “diffusion models,” arguing that they infringed both by copying their
characters in training and by distributing copies of those characters in images
and videos to Midjourney subscribers.

Midjourney sought to compel plaintiffs to produce: “(1)
documents concerning their development, use of, and policies regarding
generative artificial intelligence (‘AI’) tools for image and video creation,
and (2) the complete set of Midjourney prompts and outputs that Plaintiffs (or
their agents) used” for the operative complaint. The court granted the request
in part for (1) but found (2) was privileged.

Plaintiffs objected to producing documents about third-party
datasets they used in connection with any AI tool and similar documents. They
agreed to produce nonprivileged responsive documents “sufficient to show
instances in which [Plaintiffs] authorized its employees or contractors to use
generative AI to generate images and/or video outputs intended for consumers,
featuring the asserted works.” As for the prompts, they agreed to produce
nonprivileged responsive documents “sufficient to identify the prompts used to
create the image[s] generated by Midjourney shown in the complaint and put at
issue in this action, and the side-by-side outputs contemporaneously generated
in response to such prompts,” but not the prompts that they didn’t choose to
include.

Midjourney argued that these discovery requests were
relevant to both its defense of fair use, as well as its equitable defense of
unclean hands.

Fair use: Midjourney argued that its requests bore on
multiple elements of fair use, including transformativeness. But the court didn’t
buy its argument that, “if Plaintiffs are developing and deploying diffusion
models (employing the same technology, training techniques, and public data as
Midjourney), that is a powerful concession that such models produce something
fundamentally new and useful—relevant evidence of the transformative nature of
that (and Midjourney’s) technology.” After all, Warhol says “the same
copying may be fair when used for one purpose but not another.” [But this would
be the same purpose, just a different user, no?] The SDNY has agreed that “the
relevant inquiry under the first fair use factor concerns a defendant’s use of
a plaintiff’s copyrighted material, not a downstream use of defendant’s
allegedly infringing material by a copyright-holder plaintiff.” In re OpenAI,
Inc., Copyright Infringement Litig., 800 F. Supp. 3d 602, 608 (S.D.N.Y. 2025). Likewise,
New York Times Co. v. Microsoft Corp., 757 F. Supp. 3d 594 (S.D.N.Y. 2024),
held that the fair-use factors “do not require a court to examine statements or
comments a copyright holder may have made about a defendant’s general industry,
whether the copyright holder has used tools in the defendant’s general
industry, whether the copyright holder has admitted that other uses of its
copyrights may or may not constitute fair use, or whether the copyright holder
has entered into business relationships with other entities in the defendant’s
industry.”

Public benefits (part of factor four after GvO): But GvO
“made clear” that balancing the public benefits against the losses to copyright
owners would not “always [be] relevant to the application of fair use,” and focused
on the consequences of Google’s copying, not anything that the plaintiff
(Oracle) did in its own business.

Nor was this evidence relevant to market harm. Relevant
discovery would include the loss to plaintiffs and how the challenged use might
“kill demand for the original,” as well as discovery directed to Midjourney concerning
the public benefits from the copying.

What about industry custom and practice? Wall Data Inc. v.
Los Angeles Cnty. Sheriff’s Dep’t, 447 F.3d 769, 778 (9th Cir. 2006), says that
courts “should bear in mind that fair use is appropriate where a reasonable
copyright owner would have consented to the use, i.e., where the custom or
public policy at the time would have defined the use as reasonable.” But that’s
dicta. [This is contrary to what one might have thought was happening two
decades ago.] Sure, “industry custom and practice may be relevant to the
analysis of fair use in a particular case,” but “courts consistently reject the
argument that ‘everybody else is doing it’ as a defense to copyright
infringement.” This is really about the (narrower) defense of unclean hands.

But the equitable defense of “unclean hands is recognized
only rarely, when the plaintiff’s transgression is of serious proportions and
relates directly to the subject mater of the infringement action.” Indeed, “the
alleged wrongdoing of the plaintiff does not bar relief unless the defendant
can show that he has personally been injured by the plaintiff’s conduct.”

Thus, plaintiffs’ development, use of, and policies
regarding generative AI were not relevant to the defense of unclean hands
because none of the discovery would establish inequitable conduct that is both
directly related to plaintiffs’ claims and injured Midjourney. [Other than through
preventing competition with this lawsuit.]

Still, the requested discovery was potentially relevant to
establishing: (1) the potential market for or value of the copyrighted work;
(2) industry custom and practice; and (3) the defense of unclean hands. But plaintiffs
agreed to produce documents sufficient to show their business plans, roadmaps,
research reports, other studies, and approvals of their actual or proposed
development or training of generative AI intended for consumers, including
their contractors’ authorized use of generative AI intended for consumers, as
well as documents about some related matters. That was enough. Documents
related to the actual or proposed development of generative AI not intended for
consumers were not relevant, or not enough to be proportional. However, the
court granted the motion to compel plaintiffs to also produce documents sufficient
to show plaintiffs’ approval of the use of generative AI to generate images
and/or video outputs intended for consumers, featuring the asserted works,
which is relevant to the market-harm factor.

Requests for training-related documents had some relevance
to establishing industry custom and practice, but had to be narrowed to focus
on actual or proposed development of generative AI intended for consumers. “By
contrast, Plaintiffs’ training of generative AI tools not intended for
consumers would not provide evidence of industry customs and practices that
would be relevant to Defendant’s defense of fair use,” or, if relevant, not enough
to justify the burden of production. Thus, plaintiffs needed to produce
non-privileged responsive documents sufficient to show their “development,
training, or contemplated development or training of any generative AI to
generate images and/or video outputs intended for consumers, featuring the
asserted works, including training datasets, datasources, or model weights.”

Midjourney prompts: Plaintiffs agreed to produce documents
sufficient to identify the prompts used to create the images generated by
Midjourney shown in the operative complaints, as well as the side-by-side
outputs contemporaneously generated in response to such prompts.

Midjourney argued that “withholding prompts and outputs
related to images not used in the operative complaints would allow Plaintiffs
to artificially inflate the universe of allegedly infringing outputs, distort
the damages calculus, or misrepresent their own engineered images as examples
of third-party infringement.” But “the volume of prompts and outputs related to
images generated for potential use in the operative complaints, but not
actually used, is infinitesimal compared to the true scope of this case which
involves tens of millions of subscriber prompts associated with Plaintiffs’
copyrighted works.” Given the current statistical sampling protocol that the
parties are finalizing, withholding the prompts wouldn’t distort a damages award.

The non-used prompts and outputs were protected work
product.  The work-product doctrine
protects “from discovery documents and tangible things prepared by a party or
his representative in anticipation of litigation.” This was “classic” pre-suit
investigation and efforts to prepare the operative complaints. Such unused prompts
and outputs were “core” work product because they necessarily reveal counsel’s
“mental impressions, conclusions, opinions, or legal theories developed in
anticipation of litigation.” This kind of opinion work product “is virtually
undiscoverable.” 

Midjourney argued that plaintiffs waived protection by
submitting prompts to Midjourney in the first place because Midjourney’s Terms
of Service make prompts and outputs public by default and grant Midjourney a
license to reproduce, prepare derivative works of, publicly display, publicly
perform, sublicense, and distribute their inputs. But “waiver of attorney
work-product protection requires more than the disclosure of confidential
information, it requires an act inconsistent with the adversary system.” Pre-suit
investigation was not inconsistent with the adversary system. Nothing stops
Midjourney from conducting its own investigation of prompts submitted by plaintiffs
and their counsel, though.

“Accepting Defendant’s view of selective disclosure would
virtually eliminate the protection for attorney work product in the context of
any court filing because every court filing inherently reflects strategic
choices of counsel in what facts to include and even what legal arguments to
make.”

Comment: If you believe, as many people seem to, that “how
hard was it to get the model to generate an allegedly infringing output?” is a
relevant question, then the rulings here make it harder to conduct that
inquiry. I’m no evidence expert, but the ruling seems to make
probabilistic/guardrails inquiries off-limits to fair use, which seems
directionally wrong to me. (Burden-shifting might help—one could say that if
the defendant puts in evidence that it tried to make it hard to generate
infringing outputs, then the plaintiff has to do more to show that those
guardrails didn’t work, which wouldn’t necessarily require disclosure of
attorney work product. This is my optimistic reading of the reference to the
millions of prompts at issue in this case.)

from Blogger https://tushnet.blogspot.com/2026/08/midjourney-cant-force-disney-to.html

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