Santa Clara IP Conference: Where Do We Go From Here?

Posted on January 31, 2026 by rtushnet

Moderator: Edward Lee, Santa Clara Law

BJ Ard (copyright), University of Wisconsin Law School

© is often displaced by contract and other regimes in sectors—scaling
it up or down would produce minimal impact. Consumer copying for example is
often solved by non-© solutions: Spotify changed things, as did rise of
cloud-based services which meant people had less to share. Content ID can block
fair use but does allow lots of uses that otherwise wouldn’t be fair. Even
big-budget productions, like video games, don’t rely on © to deter
second-comers but on features that are costly to duplicate, actors/TM/ROP
protection, sequelization. It’s not that this sector is representative but hybrid
relations that are only partly ©-governed exist across the board. Copyright
owners use licensing models to overwrite © provisions. Streaming services
continue this trend w/no need for legal enforcement b/c access is built into the
system.

© is the only policymaking place where concerns about AI are
actually being aired, but © can’t stop AI; big © owners are going to license.
Given that © isn’t doing as much work in its traditional domains, we shouldn’t
expect it to do work in these new domains. Asking it to solve labor issues,
market concentration, privacy is likely to fail.

Colleen Chien (patent): AI’s effects on search for
examination; AI can also identify potentially infringing products. AI tools
used to digest evidence and make predictions. As we see platforms start to make
their own IP infringement determinations, we might find them “good enough” w/o
need for lawyers. Discussed need for human review—need to figure out.

Camilla Hrdy (trade secret), Rutgers Law School

Trade secret law is different from other IP; often not
defined until mid litigation where you perform “identification,” the law of
which is in chaos. California wants you to identify the secret before discovery;
courts had maybe been converging on that but the 9th Circuit said
no, the Defend Trade Secrets Act has a different standard—not reasonable
particularity but sufficient particularity; other circuits say different
things. Lack of clarity on fundamental initial issue. What does it mean to keep
something secret? Not clear; jury left on its own. What does it mean for a
secret to be readily ascertainable? In California, the most important trade
secret jurisdiction, there isn’t a requirement of lack of ready
ascertainability—even if you could perform reverse engineering in 8 hours you
can still be liable for getting it from an employee. NJ has the same rule. Lots
of lack of clarity about workers’ high level knowledge and experience—lots of
courts think that asking about that is the same as asking whether something is
generally known in the field. Not clear about what it takes for a secret to
have independent economic value—lots of courts just look at whether you
invested in the information. We need more people thinking about trade secret
law! People need to talk to practitioners. We don’t know enough!

Keith Robinson (patent), Wake Forest University School of
Law

Uncertainty around what counts as invention. Mental
conception doesn’t really match with the evidence we look for (documentary:
notebook, emails, other records). Identifying a problem rarely matters. Even a
highly specific articulation of a problem is typically insufficient unless
paired w/ a concrete solution.

Jennifer Rothman (right of publicity), Univ. of Pennsylvania
Carey Law School

Identity thicket: overlapping rights. People have been
registering marks in names/likenesses for a while; current focus on Matthew
McConaghey is perplexing to her (and me). But we might highlight how rights are
being separated out w/potentially different controllers and licensees. There
used to be a lot more distinction b/t people using name as business name/putting
it on goods/services. But now the Lanham Act and states protect use of names,
voices, and images as marks, at least if we are commercializing them in some
way. The PR stunt of the registrations is more interesting: he has a deal for
use of his voice as a voice clone that can speak multiple languages—it’s a way
to market his deal. False advertising law is also relevant to these uses. © is
also relevant and maybe is less peripheral than Ard said. Are digital replicas
uncopyrightable? Unclear! There are pending registrations. If registrable, can
there be multiple registrations of a digital replica as you can have multiple
registrations of photos of a person? If so, what’s infringement? We’ll see
people leveraging © this way more. © one’s personality or “character” bible in
the same way people © scripts. Music industry has already made © claims that
using similar voices is infringing.

At the federal level Take It Down is about intimate images;
No Fakes is also under consideration to regulate digital replicas generally.
There’s so much going on: that’s the identity thicket. And one person might not
control all these rights; rights conflicts are possible, raising serious
concerns about a human-centered approach. Compare to EU approach, focusing on
concerns about the underlying person being depicted and secondarily on the
public.

Capitol Hill: not clear what will happen, if anything. But
it won’t help matters very much b/c unlikely to preempt the thicket that
already exists. And won’t address concerns about transferring rights away from
underlying person, or about deception licensed by the underlying person. Considering
model state ROP law to address more of these issues, especially transferring
someone’s own name, likeness etc away from them—has seen SAG realize this is a
problem. Might see more of an appetite for repealing CDA 230; shifts in tech to
build guardrails; we might see shifts in preferences for authenticity—hopes for
the renaissance of theater.

from Blogger http://tushnet.blogspot.com/2026/01/santa-clara-ip-conference-where-do-we.html

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Santa Clara IP conference: How It’s Going: What Went Wrong?

Posted on January 30, 2026 by rtushnet

Moderator: Zahr Said, Santa Clara Law

Mark Lemley (patent), Stanford Law School

After 40 years of radical change, things settled down for
normalcy in the last 10 years until Trump. 1980-2017: we grant 350,000 a year up
from 50,000; now mostly computer/bio instead of mechanical; most inventors were
single and now they’re teams; most inventors were from US and now they’re
mostly foreign. University patenting started in 1980; now significant. Now
first to file (not first to invent); now 20 years from filing (instead of 17
from grant). Patent thickets; patent continuation practice—multiplication from
a single application to multiple patents. Lawsuit numbers have tripled. Jury
trial was starting to become a thing in 1970s but a small percentage; now a
vast majority of trials are before juries. Product producers used to file
against competitors; now 50% of lawsuits are filed by NPEs. Patents were
invalidated in 70s at around 65%; now it’s 43-45%. 1982: patent appeals consolidated
in Fed Cir. Before 1980 there was no reexamination; then inter partes reexam
and post-grant review; IPR proceedings became the way most patent validity
disputes were resolved. Introduced district court forum shopping—ED Tex, WD
Tex, D Del were not where we litigated in 1980.

Hatch-Waxman/pharma litigation against generics didn’t exist
until 1984, so pharma patent litigation grows from there. Patent claim Markman hearings
were created in 1990s, cemented in 1996; before then, we didn’t know the answer
to “who decides what a patent means, a judge or a jury?”

Then there are substantive changes: patentable subject
matter broadened to almost everything, then narrowed again. Major changes in
prior art; major changes in interferences; obviousness law changed in
fundamental ways, narrowing then broadening. Utility doctrine weakened, written
description doctrine and full scope enablement became things. All real disputes
about infringement are resolved in Markman hearings; changed law of inducement;
new concept of joint or divided infringement; we strike down large swathes of
rules on inequitable conduct. Ebay changes the rules for injunctive relief: no
longer injunctions as a matter of course. We introduce apportionment of damages
(renewed from 19th century); we change rules on willfullness/advice
of counsel and venue.

If you’ve been litigating for 40 years, everything in the
system has changed/been in flux, until about 2017. Not much happened since
then! A period of normalcy. 62 SCt patent cases 1982-2018, and none in last 3
terms. Recent SCt decisions have had “instinct for the capillary”—clarification
of assignor estoppel, not the central issue in patent law. 3 cases on 271(f)
about exporting components from the US that are combined outside the US: the
only 3 cases on 271(f) of which he is aware. Whether the post office is a “person”
under the Patent Act. Not earthshaking! Contrast to KSR, eBay, and patentable
subject matter cases before. Substantive cases began to affirm existing law rather
than change it. Fed Cir has also settled down: en bancs used to be 2x/any other
circuit, but only 2 in last 7 years (1 design patent, another a damages case
that was a dud). Fed Cir Dissent rate dropped from 2d highest to one of lowest;
many cases now not precedential.

IPRs turned out to have the same invalidity rate as courts
at 1/10 the cost. Even patentable subject matter is pretty predictable. There
are still cases but they don’t make fundamental changes.

This is generally a good story.

Then Trump. All is in flux. New PTO director dismantling
large swaths of PTO, making IPRs essentially impossible to get; increased
quotas; refused to hire new career examiners, offers no promotion path; on
track to replace examination with AI; Lemley is skeptical. Part of a broader chaos
targeting scientific research; 100% tariff on patented pharmaceuticals to
somehow magically reduce drug price; taxing university patents; proposing tax
on patents’ assessed value at time of filing. Not clear whether normalcy
survives.

Mark McKenna (trademark), UCLA School of Law

Conceptual changes that transformed what TM is mostly for
the worst. (1) unbounded expansion of the concept of source in TM. Source used
to mean actual historical source: who made the thing you were buying.
Infringement was very tightly limited to where consumers would believe D’s
products came from P. That was passing off. Only someone tricking consumers
into buying directly competing goods—very tightly connected to TM’s theory of harm:
illegitimate diversion of trade. Courts, primary drivers here, came to regard
that definition as overly limited; commerce was changing and courts wanted to
capture newer commercial practices, specifically outsourcing of production and
expansion of product lines to adjacent areas by companies—wanted to let Coca
Cola to license production to independent bottlers and still maintaining rights.
Redefined source as “control over quality” instead of actual historical source.
Also started to recognize confusion about use of same mark on products that
didn’t compete directly, like pancake mix and syrup. Unmoored TM from
traditional focus on direct competition and we never replaced it with a real
limit. “Sponsorship or affiliation” confusion is the worst; so open-ended that
virtually any conceivable connection can be conceived in those terms even
though it has different effects on consumers/competition more broadly. Net effect:
confusion is performance art—parties need to use that word, but that’s not what
the cases are really about, which is rights in gross.

(2) Connected and mutually reinforcing: structural collapse
of what used to be a separate but related body of unfair competition law into
TM, and resulting expansion of TM subject matter. Once upon a time, only
certain things could be TMs, words or devices that didn’t give info about
nature of goods/geographic origin: arbitrary/fanciful words/devices that were
separate from but attached to the goods. Personal names, descriptive terms, product
packaging/product design wouldn’t count; service marks weren’t affixed to anything
for sale. Only technical TMs could be infringed; unfair competition law was not
about what somebody owned, b/c by definition they didn’t own anything. P had to
show that D was passing off even w/o a TM, so there were additional proof
requirements and generally much more limited remedies. Would not bar use of
descriptive word, etc.

That system collapsed, mostly b/c of Erie. Unfair
competition became understood as state law, not common law, and federal courts
started to believe they couldn’t have common law, making lawyers worry about 50
different kinds of unfair competition law. That lack of uniformity wasn’t
really happening but courts and lawyers worried that it might. Solved by
recharacterizing things that used to be excluded from TM and calling them “unregistered
TMs.” Those things were previously unregistrable, not just unregistered.
Courts started interpreting 43(a) to give a cause of action for infringement of
unregistered TMs. Not what Congress anticipated. Huge change. We lost the
orientation of unfair competition as a residual doctrine w/more limited
remedies and got a huge amount of subject matter where we didn’t have rules about
what could be owned. Had to build that law about what could be owned from
scratch and haven’t been particularly successful.

These two things amplify each other: TM is redefined as
anything that can indicate source as we’ve expanded source beyond recognition.
Incremental; radicalism not notice. Courts act like the assumptions they used
to hold under the old system still apply, even though the changes are too great
to make that true.

Trevor Reed (copyright), UC Irvine School of Law

Indigenous creative rights: © is silent on status of citizens
of over 500 tribes, despite importance of Indian culture to 1970s American
culture. Many pieces of indigenous self-determination legislation in the 70s.

Mismatch b/t © and tribal sovereignty: tribes often regulate
traditional knowledge; © might call it public domain or give it only thin
protection. Eurocentric assumptions: limited times, transfers to certain people
only, money is a sufficient remedy, it doesn’t matter where the creativity
occurs; divides intangible from tangible. Ignores tribal sovereignty; 301
preemption can conflict. Tribes should, among other things, be able to take
over registration and deposit. His objections: Should be no public domain for
tribal creativity w/o tribal authorization; federal remedies for violation of
tribal rights; tribal courts should be recognized as venues for © claims and tribes’
regulatory authority should be formally recognized.

Pamela Samuelson (copyright), UC Berkeley Law

Statutory damages are the worst! Evolution: until 1909 Act,
there was a per sheet penalty dating back to the Statute of Anne, and statutory
damages were an improvement (anybody could ask for the PSP and half of the
money went to the US gov’t; not used often). Particularly useful when
difficult/expensive to prove damages; courts had discretion to grant statutory
damages but generally wouldn’t if damages or profits were measurable. Nonpunitive
way to get some compensation and deterrence.

1976: good parts: tripartite structure of $750-30,000 as
court considers just; up to $150K for willfulness; discretion to reduce awards
if innocent infringers or nonprofit educ/library users who thought uses were
fair. Compensatory at low end; deterrent in middle; punitive at high end.

Understandable but contribute to problems: Ps can ask for SD
at any time before final judgment; they’re mandatory.

In practice: Congress failed to consider how they should be
assessed in secondary liability or multiple work cases—in Cox, jury awarded
nearly 100K per work, $1 billion. Authors Guild v. Google, estimated risk was above
$350 billion. Arbitrary, inconsistent, and grossly excessive awards.

Suggested guidelines: award minimum where there’s no actual
damages or profits or P is unwilling to provide evidence; approximate actual
damages when fair use/lack of infringement is plausible, 2-3x actual/profits
when reckless or intentional; up to 10x if highly willful. Or consider what
will deter this D. Cox v. Sony: main issue is standard for contributory
infringement, but second issue was the standard for willful infringement, but
oral argument ignored it. SG and Cox said focus should be whether Cox knew its
own conduct was unlawful; reasonable for Cox to think it was OK to continue
to provide service to accounts whose users infringed, especially to hospitals
and barracks and the like.

Now getting worse: 1202 statutory damages. Very similar but
minimum is $2500 w/maximum 25K. Measured per violation (not defined) not per
infringed work. No “as the court considers just” limit. No need to have
registered © for eligibility. Way more likely to result in excessive damages.

Said: heard a lot about Erie, more than any other IP
conference: what gives?

McKenna: Congress has left the field and SCOTUS justices are
no longer picked for being lawyers but for specific hot-button issues. That
leaves everything to lower courts.

Lemley: we’ve also decided to abandon the common law and
equity for the dictionary definition of whatever terms the judge decides to
look up, which is a particular disaster for an IP regime that assumed a
common-law development. Many key concepts (infringement standard) aren’t even
in the statute. So we’ve abandoned the tools we’ve used for centuries. Leaving
us with the executive branch, and leaving aside Trump chaos, one of the
challenges is that you won’t get long term consistent development. We’re
looking at traditional sources of federal law and finding them wanting.

Samuelson: tech is also a big driver in ©. Generative AI,
billions of dollars at stake. Every other tech has pissed off a specific
sector: recording industry, movies, etc. Now everyone is mad. Dismantling of
federal science community is also hurting. Copyright is the only law on the
books is the only thing that seems like it could destroy AI; that’s not going
to happen but Ps can ask for impoundment/destruction, or they could end up
having control over the models.

Reed: people are losing faith in economic rationales of IP;
social justice is becoming a bigger rationale and people want to see more of
that, but we keep spinning out more economic arguments. Compare backlash to
racist mascots—pressure on corporations to change their TMs.

Farley: what went wrong in Dastar? Unbounded definition
needed constraint.

McKenna: Dastar’s biggest fan! But courts haven’t applied it.
The case is hard: you have to dig in to get what the court is saying. Whatever
else you thought of Scalia, he was smart and engaged with the arguments, and
that level of engagement is less common. Also, lower courts don’t like the outcomes
it produces and so ignore it. That means TM is used as a back door for
copyright, especially for works in public domain.

from Blogger http://tushnet.blogspot.com/2026/01/santa-clara-ip-conference-how-its-going.html

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Santa Clara School of Law: Intellectual Property Conference: How It Started, How It’s Going: What Went Right?

Posted on January 30, 2026 by rtushnet

Moderator: Brian Love, Santa Clara Law

Jeanne Fromer (trademark), New York University Law School

Search and examination on relative grounds (Europe doesn’t
do that)—has critiques but generally doing a decent job. Ironic b/c we think of
US as “free market” and Europe as paternalistic but registration works the
opposite way. Smaller businesses may not have registrations but can get
benefits from opting in; use is still the core of US TM. This is a way to give
them some protection/different pathways for TM rights, and having the two paths
(registered/unregistered) is generally good. Courts also helped systematize
distinctiveness—again with some things that aren’t working great, but the
systematization is a good thing. Semantic connection b/t mark and category of
goods/services must be evaluated: shouldn’t be protected as a mark when
connection is too strong, or protection shouldn’t be easily granted if it’s
pretty strong. Focus on consumer perception is also a good one from the
perspective of TM’s goals: to keep consumers from confusion in the marketplace
and being responsive to how they behave.

Rob Merges (patent), UC Berkeley Law

Volume/velocity of transactions based on IP rights has grown
amazingly since 70s/80s, a little bit invisibly in how many business models and
transactions enabled. Textualism/literal infringement doctrine gave rise to the
practice of claim charts, which made for transactional efficiency: a
formalistic procedure. Structures claim interpretation process into fairly
narrow channel. This allows a boom in patent licensing. Allows fast development
of vaccines—patent licensing is behind the scenes. ROP is also good b/c there
are things you can do with property rights that you can’t do with contract
alone in terms of transactions.

Rebecca Tushnet (copyright), Harvard Law School

Unlike my predecessors, I’m not going to do an overview, but
talk about a specific provision of copyright law. Just as democracy is the
worst form of government except for all the others that have been tried, so too
with section 512, the safe harbor provisions for internet service providers,
which has proven remarkably robust despite multiple efforts to destroy it over
the past nearly three decades. I have my own litany of complaints about
practical problems with 512, but in terms of dispute management it is a
resounding success. I will compare 512 to the recently enacted Take It Down Act
and discuss the evolution of caselaw by comparison to Carol Rose’s account of
property titling systems.

512 creates a safe harbor against monetary liability and
sweeping injunctive relief that would require changes in practices for online
service providers that follow certain rules about how to handle complaints of
infringement. It divides service providers into four categories, one of which
is essentially defunct; service providers that provide connections for content
like email or private messaging are supposed to have policies that terminate
repeat infringers, and that’s definitely created some problems now, but for
decades the key provisions were those for service providers who store
content—like YouTube—or provide links or search engines, like Google—who won’t
be held liable for direct or secondary infringement if they promptly take down
instances of infringement when properly notified about them. 512 explicitly
does not require services to monitor their services for infringing content. It
does provide for liability without notice if a host or linker has “red flag”
knowledge of infringement, but the courts have generally been pretty robust
about making sure that general knowledge that infringement is taking place on a
platform, or even general knowledge that there are multiple copies of an
infringing work on a platform, don’t count as red flag knowledge. So unless a
site is something like “top 50 movies to download,” it probably won’t have red
flag knowledge.

What went right with 512? Well, one way to measure it is how
many disputes it has resolved.  Caselaw
v. number of disputes—the number of disputes is in the billions (even if 1/3 of
the notices sent to Google are invalid, which seems to be the case, still
billions of correctly targeted notices). There are big 512 cases, but not that
many of them. The caselaw tells you only what was significant enough to fight
in court about for unusual reasons—either reasons of the defendant’s deep
pockets and structural significance in the entertainment ecosystem, or reasons
of the plaintiff’s specific interests, usually a moral sense of offense. The
everyday functioning of the system, though, is that lots of infringing stuff
gets quickly taken down, often—if you believe Google—even before anyone has
even seen it. And uploaders who disagree with the takedown can file
counternotices; a service that honors the counternotice is immune from
liability for reinstating the content and the copyright owner has to sue the
uploader. Very few counternotices are filed.

Another way to measure success: 512 immediately became the
default rule around the world, at least in practice—even in Europe, 512
compliance was for a long time sufficient to avoid being sued
successfully—suggests 512’s utility as a workable compromise between interests
of IP owners and accused infringers (compare the fate of the similar section
230, which definitely spurred US dominance in tech but was not routinely
accepted as the final word on intermediary liability in non-IP situations).

Europe eventually diverged, at least formally, by requiring
intermediaries to engage in licensing attempts and screening. But I say
formally because even today it doesn’t seem to me that this has worked except
for music and popular video; major forms of copyrightable works like
photographs and texts are just not amenable to that kind of licensing
requirement because ownership is not concentrated enough for comprehensive
licensing regimes to form. European regulators have the benefit of not actually
needing to require exact compliance with what looks like the plain meaning of
the law; being a “good guy” is generally enough in the EU, something that is
often surprising to US lawyers, who expect a law that doesn’t explicitly have a
good-faith standard to not have a good-faith standard for compliance. The DMCA,
that is, is still shaping behavior on the ground around the world.

There was a major attempt in the last 10 years to gut DMCA
and put in concepts like notice-and-staydown in the US, which would require
services to search for and remove similar copies after receiving notice about
the location of one infringing copy. This was a brilliant branding move by 512’s
haters—staydown sounds almost like takedown, so how hard could it be? But it is
actually a huge technical challenge, especially for smaller services, and would
have been a huge gift to YouTube in maintaining its dominance. Fortunately,
this attempt fizzled, which is one reason that sites like Wikipedia, Reddit,
Ravelry, and the Archive of Our Own can operate in relative confidence without
the resources of a Google or Microsoft.

What about my complaints? Well, there’s definitely
complexity, as the Supreme Court’s recent attempt to tackle intermediary
liability for internet service connection providers makes clear; we’ll see what
happens in the Cox case and that will tell us a lot about what 512 means for
connection providers in the US. And counternotice law is a mess: when abusive
notices are sent, it’s very hard to hold the sender accountable. But I want to
make the case that the crud that’s accrued around various aspects of 512 is the
standard fate of almost any law allocating rights, no matter how clear.

In her justly famous 1988 article Crystals and Mud
in Property Law, Carol Rose explained that all clear legal rules,
particularly rules created by legislatures, face pressure from two sources: the
ignorant and the conniving, the fools and the scoundrels. The ignorant don’t
know about the law, no matter how clear and crystalline it is, and they are
subject to mistakes that make them lose out despite them not having done
anything morally wrong. They didn’t know that land can only be transferred by a
writing, so they rely on an oral agreement and hand over their money and are
out of luck. The scoundrels exploit the clarity and hard edges of the legal
rule to get unfair outcomes: the law says a mortgage has to be fully paid by a
date certain or the borrower defaults and loses the land, so a conniving lender
can hide out and make it impossible to find them until the time has passed and
they get the land and most of the money. These abuses and unfairnesses pile up
and courts for completely understandable reasons will make up special
exceptions to allow equity back in, muddying the clarity of the written rule.
Equity of course has its own costs: it makes disputes more unpredictable,
therefore expensive, disadvantaging poorer actors, and equity is also more
reliant on the biases of the factfinder who may have its own predispositions
about the characteristics of good guys.

I believe that much of the uncertainty that has accreted in
the corners of 512 law is the inevitable effect of this crystals and mud
dynamic; it is not unique to 512 and therefore it’s extremely unlikely that
changes to 512 could do anything more than restart this process: replacement
rules would either be mud all the way down, which I think is worse, or be a
different and probably worse crystal that would not make either creators or
intermediaries better off. Rose concludes that, when the mud gets too bad, the
legislature often intervenes to put a new crystalline rule in place—the fact
that 512 has survived some reasonably well-resourced legislative assaults to me
suggests that this isn’t one of those situations where the mud has fully gummed
up the works.

I want to end by comparing 512 to the recently passed Take
It Down Act, aimed at sexually explicit images “indistinguishable from an
authentic visual depiction” published without the consent of the person shown
in the picture. TIDA is not a safe harbor regime. Instead, it requires two
things that aren’t in 512 to avoid liability: (1) services must remove accused
images within 48 hours of receiving notice (with no clarity on what qualifies
as receipt: I give it about 6 months before someone uses a mailing address and
sues based on the time the mailed notice arrived at a building); (2) services
must make reasonable efforts to remove known identical copies.

There are no counternotice provisions, even if the content
was fully protected by the First Amendment; no safe harbor against liability;
no guidance on what counts as reasonable efforts or what qualifies as
knowledge. 512 does better on all these counts. Harbinger of attempts to do
even more in proposals like Take It Down which cover any use of a digitally
altered likeness, even as the White House is posting AI-altered images on
official accounts.

Graeme Dinwoodie (International IP), Chicago-Kent College of
Law

US jurisdiction over foreign © claims was done right. US
wanted to become a leader in int’l © law to enable more effective enforcement.
Led to NAFTA, TRIPS. Public law side interventions not always received
enthusiastically outside the US—intrusion on sovereign choices. But private
litigants used them successfully to argue that US law shouldn’t be applied
extraterritorially. Predicate act: foreign profits from US infringement can be
secured in US courts, often w/o regard to law of other country, but there are
limits to that; would have liked more comity-facing analysis.

Historical reluctance globally to adjudicate claims of foreign
© infringement. SDNY, a few years after 1978 Act, allowed claims for
infringement in various South American countries to proceed. Impulse to provide
relief under multiple foreign © laws were spot on. NY was where D was amenable
to jurisdiction; hope that British courts would do the same thing in similar
circumstances. For some time, this case was alone, in part b/c of fear of
foreign “bramble bush” of law. Eventually, this approach got appellate
endorsement in Boosey & Hawkes v. Disney—simply having to apply foreign © law
of 18 countries was not a reason to decline jurisdiction. Not a torrent of
cases, but the availability of such relief has structured private behavior. Has
also been embraced by courts in Europe.

Especially valuable for small authors w/no resources to
litigate cross-continent. Streamlining duplicative litigation is not inherently
pro-© owner: Computer Associates v. Altai didn’t just occur in NY, but also in
France. After they won in the US, Altai unsuccessfully sought an anti-suit
injunction from relitigating in France, but it would have been more efficient
for a small defendant to secure global clearance in a single case. (Altai won
in France, but would have been much faster/cheaper in one court.) Better than
seeking enforcement of US law to entire dispute. Enhances legitimacy/embraces
sovereignty. But it does create complexity in applying foreign law; the good
news is that public law has reduced divergence; there weren’t 18 different
rules in the Disney case.

Different constraints in TM/patent. In patent, distaste for
litigating foreign patents in Fed Cir and ECJ. ALI principles endorse doing
patent/TM, with patent invalidation being given only inter partes effect. And
in last few years, courts signaled more willingness, though Albright in Texas
wants to grant anti-suit injunctions. That’s where this is going, along with
jurisdictional issues. Will be a dialogue b/t patent judges in different
countries; likely to be more respectful of sovereignty and thoughtful than the
public law debates we’re going to see.

from Blogger http://tushnet.blogspot.com/2026/01/santa-clara-school-of-law-intellectual.html

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False endorsement claim can proceed against gov’t issued license plates and gov’t facility named for Roberto Clemente

Posted on January 28, 2026 by rtushnet

Clemente Properties, Inc. v. Pierluisi-Urrutia, — F.4th
—-, 2026 WL 125574, No. 23-1922 (1st Cir. Jan. 16, 2026)

The representatives of the family of a famous deceased Puerto
Rico baseball player, Roberto Clemente, sued the Commonwealth of Puerto Rico
and several related defendants over the use of Clemente’s name and image on
commemorative license plates and registration tags. The court of appeals
partially reversed the judgment in favor of defendants on the trademark claims,
showing the breadth of “use in commerce” compared to “commercial advertising
and promotion.”

ROBERTO CLEMENTE is registered for various promotional goods
and charitable/educational services, though the court of appeals didn’t note
the goods and services; it hardly matters given the theories at issue.

Ciudad Deportiva Roberto Clemente operates a youth sports
facility (of the same name) on land donated by the Commonwealth, but is in poor
repair (plaintiffs blame the Commonwealth); the complaint didn’t make clear
what its relationship was with plaintiffs. Appellants authorized Ciudad
Deportiva “to use the trademark, name and likeness of Roberto Clemente” on
commemorative vehicle license plates.

Then, in 2021 the P.R. legislature enacted new laws
requiring any driver who acquired a new Puerto Rico license plate in calendar
year 2022 to purchase a special plate commemorating the 50th anniversary of
Roberto Clemente’s 3,000th hit for $21 extra; any member of the public who did
not need to acquire a new license plate could also pay $21 to exchange their
existing license plate for the commemorative plate. Another law added a
mandatory $5 surcharge to registration tags issued in calendar year 2022 in return
for a commemorative tag. Both the plate and tag had an image of Roberto
Clemente; the words “Clemente,” “anniversary,” and “3000 hits”; and the numbers
“21” and “50.” The money was to go in “the Roberto Clemente Sports District
Fund,” for the exclusive use of the Department of Sports and Recreation. Drivers
who got registration tags were also presented the opportunity to make a
donation to the Roberto Clemente Sports District Fund.

“Puerto Rico’s citizenry reacted negatively to the new
commemorative license plates and registration tags, and the public believed
that appellants were receiving some financial benefit for the charges
associated with the commemorative items.” Also, the Transportation Secretary
made a televised statement, in January 2022, that the funds collected for
commemorative plates and tags would go to “the Roberto Clemente Foundation.” And
a permit issued by the Department of Transportation and Public Works lists the $5
surcharge for vehicle registration tags next to the words “Roberto Clemente
Fund.”

Then the legislature transferred Ciudad Deportiva’s land
back to the Commonwealth for the purpose of building the “Roberto Clemente
Sports District” “as a sports and recreational facility for the enjoyment of
Puerto Ricans and sports tourism.” Plaintiffs alleged that the law communicates
“some kind of tacit endorsement of Roberto Clemente to this project” by
expressly referring to “his vision of building a Sports City for the benefit of
our young people and future generations.” The court of appeals, notably, is
open to this theory even though it seemingly doesn’t think much of the
lawyering.

The district court found that government-issued plates and
permits weren’t use “in connection with goods or services.” But they were:
license plates and registration tags are goods, and the Commonwealth collected
money for them; the PTO even has a classification for license plates. Also, to
the extent that the parties disputed “use in commerce,” the court of appeals
suggested that the Second Circuit was right that the definition in the Lanham
Act only applied to acquisition of rights, not to infringement—missing the
Supreme Court’s fairly clear instruction to the contrary in Hetronic.

“While trademark owners suing state governments have
generally lost, neither the district court nor the Commonwealth Defendants cite
a case suggesting that government activities are inherently, or even
presumptively, non-commercial.” Accepting the well-pleaded allegations of the
complaint, “the Commonwealth Defendants did not use Clemente’s name or image
simply to offer commentary about Clemente or to conduct some administrative
government task.”

What about naming the Sports District after Clemente? Well,
those allegations were “tied” to the other claims because “[p]roceeds from the
sale of license plates and registration tags were set aside to raise money for
the Sports District. And the Commonwealth Defendants invoked Clemente’s name
when soliciting donations for the Roberto Clemente Sports District Fund.” If an
infringement claim can proceed against “defendants who use someone’s name or
image to solicit donations in support of public non-profit services,” which
they can—citing United We Stand, about political parties—then it can
proceed against the Sports District on remand.  

The 43(a)(1)(A) false association claim survived. Plaintiffs
satisfied Lexmark by properly alleging reputational harm: “appellants’
business interests in licensing the Clemente mark for merchandise or other
projects were plausibly impacted by this public blowback. This is especially so
where appellants’ business reputation is built in part on an association with
charitable endeavors, and the public backlash was in response to the perceived
extortionate nature of the commemorative license plates and registration tags,
goods that all Puerto Rico residents who needed new plates or tags in 2022 were
forced to purchase.”

True, plaintiffs didn’t assert valid rights in Clemente’s
image—they can’t just claim a trademark in “any pictorial depiction of Roberto
Clemente.” However, they can still bring a false endorsement claim without
having rights in a specific image. Use of Clemente’s likeness, the court said,
was a “symbol” or “device” under 43(a). (This is an anachronistic reading of
the meaning of the terms at the time, but that ship has long sailed.)

And likely confusion was plausible. This wasn’t like the use
in the case relied on by the district court: a calendar that featured many
“[p]hotographs of baseball, its players and assorted memorabilia” where Babe
Ruth was just “one ballplayer among the many featured in the calendar.” The use
of Clemente’s name and image in connection with a project whose proceeds were
to be collected for “the Roberto Clemente Sports District Fund” was different
enough to make confusion plausible, especially given the allegations of actual
confusion and allegations that Clemente “was a highly recognizable figure whose
name and image appellants had licensed for use in a different license plate
program.” The Commonwealth expected to collect $15 million from the program,
which could be recovered under the Lanham Act. (I have … questions about this
statement. After all, the reason for the backlash was that people who needed a
license plate during that year had no choice but to pay. Isn’t there a
causation problem? Voluntary purchasers aside, as to whom I can see a
disgorgement argument, confusion can’t have played any role in the
payments made by people following the law that required them to have
plates/permits.)

The court also therefore revived the dilution claim.
(Household name fame as a mark for goods and services, as opposed to as
a figure of baseball history, seems unlikely.)False advertising failed,
though, because “commercial advertising or promotion” is substantially narrower
than “use in commerce”/“use in connection with goods and services.” At most, the
Commonwealth used “methods that communicate information to the public,” but
that didn’t make its speech “commercial speech.”

Nor did the alleged infringement constitute a Fifth
Amendment taking of appellants’ property. (There’s a further issue the court of
appeals didn’t mention, consistent with its lack of interest in the
goods/services specified in plaintiffs’ registration: Because of their failure
to plead any “trademark” other than the registered matter, their trademark
doesn’t cover the uses at issue even if there’s a false endorsement. So
whatever exclusive right the registered trademark grants, the Commonwealth’s
use shouldn’t be considered within the scope of that right.)

Plaintiffs argued that the Commonwealth engaged in a
“categorical taking” because a trademark is property and the Commonwealth
violated plaintiffs’ right to exclude. A “categorical taking” doesn’t require a
contextual inquiry; a “regulatory taking” requires balancing to figure out if
the government did so much damage to the value of property that it ought to
pay. A non-physical, regulatory taking is only “categorical” where it “denies
all economically beneficial or productive use” of the plaintiff’s property.

This case obviously wasn’t a categorical taking. First, physical
invasion (the usual categorical taking) wasn’t possible for intangible rights.
Second, the Commonwealth wasn’t alleged to have deprived them of all
economically beneficial use of their marks.

Plaintiffs argued that (1) they had a right to exclude
others from using the mark and (2) the commonwealth violated that right to
exclude, drawing on recent Supreme Court precedent that requiring landowners to
allow union organizers access to their land was a taking. But isolated
instances of infringement didn’t equate to preventing a trademark owner from
exercising their right to exclude, the way that the state’s labor law had
prevented landowners from suing organizers for trespass.

Also, a temporary and partial physical incursion is still a
physical incursion: “In the case of physical property, allowing even one
individual to temporarily occupy or possess the property physically displaces
the owner from possession or control of that portion of the property, however
small.” But “[u]se of a trademarked word or image does not necessarily have the
same effect.” (Note: I think the court should be talking about infringement,
not “use.” Not all use of a trademark is within the scope of trademark
“property” right, and the court worsens its point w/r/t takings analysis by not
being more precise.)

It’s not just that the TM owner can keep using the mark in
the TM use sense during government infringement. It’s that it can still keep
using the right in the “property right” sense during infringement: it
can still sue the government, and other alleged infringers, because it still
has that right. So the value of the right has not been completely destroyed, as
it would have to be for a nonpossessory act to constitute a categorical taking.
So balancing it is.

Also, interestingly:

There is special reason for caution
in the trademark context: a trademark owner’s right to exclude is less robust
when compared to other forms of property—and even when compared to other forms
of intellectual property. Thus the “background limitations” on any property
interest in trademarks might well be exceptions that swallow the rule, or at
least require more careful assessment than the more straightforward limitations
that apply in the case of physical property.

(Perhaps another way to say it: infringement is neither
trespass nor nuisance; it is infringement, which is why intangible rights have
to be analyzed differently.)

However, Puerto Rico had sovereign immunity, so defendants
couldn’t be sued in their official capacities. The Lanham Act purports to
abolish state sovereign immunity, but the Supreme Court found that
unconstitutional for want of sufficient tailoring to the prevention of
constitutional violations by the States, and Puerto Rico is, per circuit
precedent, treated like a state for sovereign immunity purposes “unless the
language of a particular statute demands [a different] result” or “some other
compelling reason” exists. 

What about Section 1122(a) of the Lanham Act?  Section 1122(a) provides that “[t]he United
States, [as well as] all agencies and instrumentalities thereof, … shall not
be immune from suit … for any violation under this chapter.” 15 U.S.C. §
1122(a). And the Lanham Act’s definition of the “United States” “includes and
embraces all territory which is under its jurisdiction and control.” But the
clear statement rule requires any act of Congress that purports to waive or
abrogate sovereign immunity to be “unmistakably clear in the language of the
statute,” and this wasn’t, because the phrase “territory which is under [the
United States’] jurisdiction and control” was open to multiple interpretations.
“Whether the word ‘territory’ captures Puerto Rico is itself ambiguous, given
Puerto Rico’s status as a self-governing commonwealth.”

The court found that, “[p]articularly in the Lanham Act, it
also seems plausible that Congress used the words ‘all territory’ (singular) to
ensure that the statute would cover the entire geographic scope of the United
States, rather than refer to the territories (plural) of the United States as
political or governmental units.” Such a geographical reading would be
consistent with provisions of the Lanham Act governing the importation of goods
“into the United States,” and defining the fame of a mark based on recognition
by “the general consuming public of the United States.” Indeed, it wasn’t even
“unmistakably clear” that the attempted revocation of sovereign immunity—which
referred to the States—showed an intent to waive Puerto Rico’s sovereign
immunity.

Of course, prospective injunctive relief was still possible,
but not here. The district court found no ongoing violation of federal law
because the sale of license plates and registration tags occurred only during
calendar year 2022. What about the “unauthorized use of the Roberto Clemente
trademark in connection with the Roberto Clemente Sports District”? This
argument was waived. (!)

Qualified immunity: You might think you know how this will
go, but these aren’t cops. Also waived at this stage! The individual defendants
“specifically argued that appellants had not established a claim ‘under the
Lanham Act’ and identified a particular element of one Lanham Act claim that
they believed was missing” as their qualified immunity argument, and since they
were wrong about that on the law, too bad. However, failing to properly invoke
qualified immunity on a motion to dismiss does not necessarily preclude defendants
from doing so at a later stage of litigation.

The court also was “skeptical” of plaintiffs’ argument that the
Lanham Act abolished qualified immunity by waiving/trying to get rid of
sovereign immunity. “[W]hen legislators have chosen to abolish qualified
immunity, they have done so with much greater clarity.”

Chief Judge Barron partially dissented and would have
affirmed the dismissal of claims for damages against the individual government
defendants. The dissent would have read the district court to have found qualified
immunity as to them on the ground that it was not clear that “use in commerce”
covered the issuance of official license plates. The district court wrote,
after discussing that element, that the individual defendants “were merely
complying with their official duties to enforce a law as adopted by the
legislature. As per the caselaw and other applicable law to date, any
reasonable public official in their situation could have concluded that no
trademark or proprietary rights were being violated by the imposition of the
license fees that Plaintiffs have challenged in this case.” There was no
clearly established precedent that governmental conduct akin to that involved
here satisfies the “commercial use” element. “[W]hile out-of-circuit precedent
establishes that private parties may violate the Lanham Act when they issue ‘marquee
license plates,’ it does not speak to the distinct issues that this
governmental context raises. Nor are those issues resolved by precedent that
provides that, in general, state officials may violate the Lanham Act when they
act in their official capacity.”

from Blogger http://tushnet.blogspot.com/2026/01/false-endorsement-claim-can-proceed.html

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Non-TM owner can use 43(a) to challenge confusing use

Posted on January 23, 2026 by rtushnet

Postar v. Hyland, 2026 WL 145934, No. 5:24-CV-019-H (N.D.
Tex. Jan. 20, 2026)

This case allows a non-TM owner to bring a false
advertising/unfair competition claim over allegedly confusing use of a
trademark, and I think it’s right to do so, despite some fumbles over other
parts of the law.

The facts are complicated, but the basics are:

In 2017, twin brothers Michael and
David Postar split their interests in Affordable Storage, a self-storage
business that they jointly owned and operated for many years. As part of the
split, the brothers assigned certain registered trademarks associated with the
business to a holding company in which they both own a 50% stake. Michael has
exclusive rights to use those marks in Lubbock County, whereas David has
exclusive rights to use them in Tom Green and Midland Counties. Years after the
split, David, through his company Gargoyle Management, Inc., licensed a
derivative of one of the marks to the brothers’ former employee, Gavin Hyland.
Hyland and his wife operate their own self-storage business, Slaton Affordable
Storage, Inc. Their two locations—one of which is in Lubbock County—are also
named Affordable Storage.

Michael’s resulting trademark infringement claim failed
because he is not the owner of the mark, and the holding company requires
unanimous consent to act.

Slaton Affordable Storage opened
in 2011 in Lubbock County using the Affordable Storage name and a yellow smiley
face, which the other Affordable Storage businesses also used. David argued
that the brothers didn’t view SAS as competition, because potential customers
were unlikely to drive to Slaton or Brownfield when they had Affordable Storage
options closer to home, and they even encouraged Hyland to use the Affordable
Storage name and smiley face logo and included the Slaton and Brownfield
locations in their own Affordable Storage advertising and websites. Several ads
suggested that all Affordable Storage locations were “Under Same Ownership.”

SAS location

Michael acknowledged at deposition that he knew SAS was
using the Affordable Storage name and smiley face logo as early as 2011 and
that he first objected to SAS’s branding in 2020 or 2021. Six years after the
Hylands opened the Slaton location, Michael told SAS’s co-owner in a recorded
phone call that “[Y]’all can use the name. Anybody can use the name affordable
storage, if you wanted to. ‘Cus there’s a whole bunch of them out there. You
also have the rights to use a regular smiley face. Anybody can use a regular
smiley face.”

word + design registration

In 2017—the same year as the split and transfer to the IP
holding company, Postar IP—the Postars applied to and received two registrations
for their logos with disclaimers of “AFFORDABLE STORAGE.” (The other has a crown on the smiley face.) Postar IP then
entered into a license agreement permitting SAS to use the registered marks for
three years; although an early draft said that SAS would stop using the Affordable
Storage name and smiley face signage at the conclusion of a three-year term, SAS
refused to sign. Still, absent an extension, SAS agreed to immediately stop
using the registered marks when the license expired. “But SAS continued to use
(and still uses today) its original Affordable Storage name and smiley face
signage.”

SAS then entered into a second license agreement with David
granting SAS a perpetual, non-transferable license to use, relevantly, an image
of a yellow smiley face with arms, legs, and gloved hands standing next to the
phrase “Affordable Self Storage.”

Image licensed under second license 

Fundamentally, Michael argued that David was using his
former employee to compete with Michael in Lubbock County, where Michael has
exclusive rights, even though David cannot unilaterally assign Postar IP’s
rights. There was also a binding arbitral award concluding that Michael had
exclusive rights to use the Smiley Mark and its iterations in Lubbock and that David
couldn’t grant any license that wasn’t subject to Michael’s rights. A later
arbitration panel concluded that “any ‘derivation’ (mark that includes one of
the Postar IP marks or a variation of one of those marks) is the property of
Postar IP.” Thus, the mark licensed to SAS, which created the same impression
as the registered marks, belonged to Postar AP, although the panel didn’t void
the second license agreement because SAS was no longer using the licensed mark.

Michael lacked statutory standing under §32: he was not the
registrant. Neither brother may act alone on behalf of Postar IP.

However, the court reasoned, §43(a)(1)(A) (false designation
of origin) and (B) (false advertising) were still available, although it
applied the materiality requirement to both claims so there was no difference
in analysis. Section 43 “does not require a plaintiff to establish ownership of
a trademark as an element of its cause of action.”

SAS argued that they didn’t do anything to associate their
business with Michael, just used the same name and logo they’ve used for years.
 A reasonable jury could find otherwise,
given that, as early as 2018, the first arbitration award found that only
Michael could use the smiley mark in Lubbock County and that there were strict
limits on David’s ability to license it. Then, the final arbitration award
concluded that David lacked authority to grant second license. “If the jury
believes Michael’s account, it could find that the Hylands and SAS misleadingly
associated their self-storage business with the original Affordable Storage
brand by continuing to use the name and smiley face logo after the parties
agreed that they would cease such use at the end of the three-year lease term.”
Or it could find otherwise.

And a jury could also find that the signage—“which is
somewhat generic and located in areas where Michael does not have Affordable
Storage locations”—was unlikely to cause confusion.  

Michael provided enough evidence of confusion to get to a
jury: his declaration stated that “[c]onsumers or customers of the Hyland
Defendants have called [him] or [his] Affordable Storage businesses confused
about who owned the stores in Slaton or Brownfield and complained about the
service they have received or their ability to reach someone on the phone to
discuss the Hyland Defendants’ services.” SAS packages were sent to one of Michael’s
locations, and SAS received an invoice from a gravel company that was intended
for one of Michael’s businesses. True, some of the evidence was from 2018, but
SAS was using the  Affordable Storage
name and logo in 2018, and Michael’s declaration wasn’t temporally limited.

Materiality: This was a closer call, but the evidence of
misdirected packages and invoices was “somewhat probative. Drawing all
inferences in Michael’s favor, the fact that items meant for one entity were
sent to the other suggests that a customer could be equally deceived into
thinking that the two Affordable Storage businesses are the same.” Statements
of actual confusion were also probative of materiality. (This seems to conflate
confusion with materiality, though I suppose one could argue that if consumers
were complaining to him the issues mattered to them.)

Also, self-storage was “in commerce” even if it was a local
business.  

Injury: “If the jury agrees with Michael’s theory of the
case—that the defendants are falsely associating themselves with the Affordable
Storage brand by using unauthorized marks or the Affordable Storage name and
signage in areas where he has exclusive rights—then it stands to reason that
Michael is ‘likely’ to be injured by that conduct.”

The court also allowed a reverse passing off claim to
proceed for reasons that are mysterious to me. The court even describes the
theory as that “misrepresented themselves as the original Affordable Storage
brand in a way that creates a likelihood of consumer confusion.” That’s just …
regular old palming off. (The state claims survived too.)

The court also seemed to misunderstand the non-preempted misappropriation
claims, focusing on the disputed claim that Michael “created” the mark—a theory
that would clearly be preempted by the Copyright Act. (It said “the fact that
the Registered Marks were assigned to Postar IP years after they were first
used says nothing about who created them.”) The goodwill in the mark is
something different. A jury could find that Michael and SAS compete in Lubbock
County, plus the disputed existence of confusion also meant that competition
was disputed. (I dunno, it could just mean that people don’t pay much attention
to locations when they search.)

David might be liable for encouraging the infringement, if
any.

The limitations-period/laches defense also required trial. The
parties agreed that Texas law sets out a four-year limitations period for the
Lanham Act claims. (Again, the court seems a bit confused about the difference
between laches and a limitations period.) Michael sued in January 2024.
Obviously, he knew about SAS’s use for a long time, even including it in his
own ads. But he argued that the federal violations did not occur until the
defendants entered into the second license agreement; a jury “could find that
at all times before then SAS’s use of the Affordable Storage name and the
smiley face logo was with Michael’s consent.” And that was within the
limitations period; Michael’s theory was that the first license was just to
allow SAS to transition away from the marks. (There seems like a naked licensing
problem before the first license.)

For the state law claims, the continuing-tort case law and
the appropriate limitations period was “far from clear.”

from Blogger http://tushnet.blogspot.com/2026/01/non-tm-owner-can-use-43a-to-challenge.html

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11th Circuit affirms defense TM verdict; evidence of confusion is not evidence of harm for disgorgement

Posted on January 19, 2026 by rtushnet

Florida Virtual School v. K12, Inc., 2026 WL 127063, No.
24-10449 (11th Cir. Jan. 15, 2026)

A pretty good example of why granting registrations to
highly descriptive (at best) terms is a bad idea! Also a good example of why
not having a harm requirement in trademark infringement encourages this kind of
litigation—although the lack of harm matters to remedies, it isn’t part of the
main case, making litigation seem much more attractive.

Florida Virtual, a state-funded initiative, has federal
registrations for “Florida Virtual School” and “FLVS” for educational services.
K12, a for-profit competitor, initially launched with “Florida Virtual Academy”
and “Florida Virtual Program.” Florida Virtual sued K12, which settled and
adopted the name “Florida Cyber Charter Academy.” But Florida Virtual sued
again when K12 launched a new program, “Florida Online School,” adding unfair
competition, false advertising, and breach of contract claims. K12 counterclaimed
for cancellation of Florida Virtual’s registrations for fraud against the
USPTO. The trial
court rejected all the claims (fraud on the PTO was barred by the
settlement agreement despite some decent evidence of misrepresentation), and
the court of appeals affirmed.

Of relevance to the breach of contract claims: K12 agreed to
(1) pay Florida Virtual $600,000; (2) stop using the Florida Virtual Academy
(FLVA) and Florida Virtual Program (FLVP) names and acronyms; (3) not use
additional “Prohibited Marks”; and (4) transfer domain names containing the
prohibited marks to Florida Virtual in 2016, until when it could use them to
redirect to itself. The settlement agreement included a list of “Approved
Marks” available to K12, but the parties agreed that there would “be no presumption
against K12’s choice of a mark” not on that list.

As is not uncommon, nobody apparently followed up on the
domain name transfer. If you have outside counsel do the litigation, you must
have someone internal calendar issues like this for your team! Followup is
where things are most likely to fall apart. This has been your practice pointer
for the day! Thus, when Florida Virtual objected to K12’s Florida Online School
(FLOS) in 2019, it also raised concerns with K12’s continued use of FLVA.com as
a redirect to its other websites. K12 then transferred the FLVA.com domain to
Florida Virtual and began the process of renaming its program “Digital Academy
of Florida,” but Florida Virtual still sued.

False advertising: The false advertising claim was based on
a checklist on K12’s website for “comparing K12 to other online learning
solutions.” The checklist showed two columns, each listing several features of
an online education program. “K12-Powered Schools” showed checked boxes next to
each feature while “Other Online Learning Solutions” had an unchecked box next
to each.

Florida Virtual’s survey expert concluded that the checklist
misled around 18 percent of consumers into believing that Florida Virtual
offered services that its competitors did not, but the district court concluded
that the survey portrayed the checklist “out of context” and granted summary
judgment on the false advertising claim because there was no other evidence of
consumer deception.

The analysis here is weird; the court didn’t like that the
survey didn’t show parents other virtual school options and ask them if they
actually had the features at issue—but that’s falsity, which usually is
established by evidence other than the survey. Still, the court reasoned, the
checklist wasn’t literally false, because, although one reasonable reading of
the checklist is that K12 provided “the checked services while other schools
[did] not,” another reasonable reading was that K12 was “inviting consumers to
do their own research and fill out the checklist—not stating that it possessed
features the other providers definitely did not.” (The vagueness of the “other” category leads me to a
similar ultimate conclusion—if such a comparison is even falsifiable, it
doesn’t seem that Florida Virtual showed that all other online options in fact
had the features in question. A better criticism would be that the survey didn’t test the alternate meaning if it didn’t give respondents the option to say “this is a checklist I can use” or something like that, along with “this means those other schools don’t have those features.”)

Even assuming falsity as to Florida Virtual—which did offer
all the features—the survey “did not allow respondents to review the websites
of K12’s competitors and assess whether they provided the same services as K12.”
[Again, this is about falsity, not misleadingness.] Thus, the survey was
unreliable for assessing a “marketing tool” whose stated purpose was to allow
users to “weigh [their] options” when comparing K12 to other providers.

Trademark infringement: The district court excluded the
lost-profits testimony of Florida Virtual’s damages expert, who wrongly/without
foundation assumed that every Florida Online School student would have enrolled
in Florida Virtual School absent the alleged infringement. With this
lost-profits testimony excluded, there was no evidence of actual damages.

Florida Virtual sought disgorgement of not only K12’s
profits related to Florida Online School, but also the profits from its other
programs because the continued use of FLVA.com as a redirect to these programs’
websites was allegedly an independent act of trademark infringement. The
district court disagreed and struck testimony unrelated to Florida Online
School; Florida Virtual had not “based its trademark infringement arguments on
[K12’s] use of the FLVA.com domain,” and the claim was released by the settlement
agreement.

The court of appeals affirmed the rejection of Florida
Virtual’s actual damages remedy. The only evidence Florida Virtual had of
damage did not show that confusion caused the damage. First, a parent testified
that she wanted to enroll her daughter in Florida Virtual School in 2020, but
accidentally enrolled her in Florida Online School instead. But she realized
her mistake and withdrew her daughter before classes began, then attempted to
enroll her daughter with Florida Virtual, but ultimately “decided to go back to
brick-and-mortar at the end of the day” (at the point that Covid shutdowns in
Florida had ended). This was not a lost customer.

Second, there was other arguable evidence of confusion among
students, parents, and school officials. “But there is a difference between
general confusion and actual damages, and Florida Virtual did not bridge that
gap.” The court highlighted some examples (most of which arguably just show
that the purported mark is near-generic or generic):

A social worker contacted Florida
Virtual for a Florida Online School student’s enrollment records after the
student’s father said he had “been enrolled in FLOS (Florida Online School)
which is a part of FLVS.”

A sixth grade Florida Online School
student told his teacher in an email that he was “just starting Florida Virtual
School.”

A parent emailed her son’s Florida
Online School teacher to withdraw him “from Florida virtual school.”

In an email to a Florida Online
School teacher, a parent said, “I am new to the Florida virtual school.”

A parent contacted both Florida
Virtual and Florida Online School employees to ask about the status of her
daughter’s enrollment in Florida Online School.

Even viewed in the light most favorable to Florida Virtual, “these
examples demonstrate confusion—but that’s all. They do not show that the
confusion diverted students from Florida Virtual to K12, or otherwise injured
Florida Virtual.” And the damages calculation was no help because the expert assumed
that Florida Virtual would have obtained all of K12’s registrations absent the
allegedly unlawful conduct. “That conclusion was not an abuse of discretion.”

But, because there’s no harm requirement, that didn’t end
the case, just kept it a bench trial.

There was no error in finding Florida Virtual’s marks weak.
FV conceded descriptiveness, but the 11th Circuit presumes relative
strength from incontestable registrations (boo). Still, that presumption can be
rebutted by showing commercial weakness, which K12 did. Florida Virtual’s
director of marketing testified that it had changed its logo six times since
1997 and acknowledged that changing a logo “can dilute a brand.” And its senior
director of marketing and communications “discussed a nearly $5 million effort
to rebrand [Florida Virtual’s] global operations as recently as 2020.” 

“In a 2018 survey, only 30 percent of parents with
school-aged children recognized Florida Virtual’s brand—even when prompted. And
in a 2020 survey, just 1 percent of respondents named Florida Virtual as an
online education provider without prompting.” There was other survey evidence
showing 50% prompted recognition, but that wasn’t much more than K12’s. There
was also evidence of third-party use of “Virtual School” modified by the names
of various Florida school districts; though FV argued that the geographic
designation removed any confusing similarity, the district court could
reasonably take a different view.

On similarity, the word marks were “nearly identical,” but Florida
Virtual “operates in a crowded field of similar marks on similar goods or
services,” where “slight differences in names may be meaningful,” and the
design marks looked “nothing alike.” There was no error in finding similarity
to be neutral.

Customer overlap: the court found this factor neutral because
Florida Online School’s only customer was Hendry County School District, not
“individual parents and students.” Florida Virtual argued that it “also
partners with school districts,” so its customers are similar either way, and
Florida Online School still “catered to the same general kinds of individuals,”
which was all that was required. “[W]ere we reviewing de novo, we might agree
that this factor weighs in Florida Virtual’s favor. But we are not—and it was
not clear error for the court to determine that this factor was neutral.” K12
presented evidence at trial that the Hendry County School District was the only
one purchasing services from Florida Online School, meaning there was no
overlap. Anyway, “error in its analysis of one of the subsidiary factors” is
“not enough to allow us to overturn” the trial court’s decision.

Similarity of advertising: Both parties “use[d] digital
media to reach their customers and facilitate services,” but they targeted
different audiences: K12 “primarily market[ed] to school districts,” while
Florida Virtual advertised directly to students and parents. This minimized the
overlap.

Intent: “While there was some evidence—like K12’s continued
use of FLVA.com—that could suggest intent to infringe, other evidence supported
the court’s finding,” including the name changes when challenged.

Actual confusion: “Short-lived confusion or confusion of
individuals casually acquainted with a business is worthy of little weight,
while confusion of actual customers of a business is worthy of substantial
weight.” Reasonable minds could disagree whether it was the marks that caused
any confusion reported, and thus the trial court did not clearly err.

For example, the parent mentioned above testified that she
believed the two programs to be “one in [sic] the same,” because she “thought
there was only one” online education provider in Florida. Because of that
belief, she “didn’t feel the need to research” her options “in depth.” “[I]t
was reasonable for the court to conclude that the source of her confusion was
her mistaken belief that there was only one provider, not the similarity of
K12’s marks. After all, if [the parent] was convinced there was only one online
provider, it would not make a difference to her whether the program she signed
up for was called Florida Virtual School, Florida Online School, or something
completely different, like Digital Academy of Florida.” The story was similar
with the other purportedly confused parent, who the district court found was
confused about the flexibility of the schedule offered, not the name of the
school. “[S]he testified that she did not care which program her son went to,
so long as it had a flexible schedule.”

It’s nice to see some focus on causation here! The court
compared the situation to one in which a skier believes that only one airline,
Delta Air Lines, offers a flight from Atlanta to Salt Lake City; she books the
first flight that comes up in her search, which happens to be on American. “Did
she book with American instead of Delta because their names were too similar?
Of course not—it’s because she thought there was only one option.” (Cf. Conopco,
Inc. v. May Dept. Stores Co., 46 F.3d 1556 (Fed. Cir. 1994) (rejecting similar
evidence of actual confusion where consumer testified that she believed that
national brands made the products used in house-branded alternatives).

Florida Virtual also argued that it was error for the court
to discount evidence demonstrating actual confusion: twenty-one emails from
employees, parents, students, and others. But it was not clear error for the
district court to find that the emails were not reliable evidence of confusion,
but rather of “the fact that online educational service providers exist in a
muddled marketplace replete with generically and descriptively named
participants.” It was also not clear error to point out that, without survey
evidence, there was “no way to filter out latent marketplace confusion that the
parties agree exists in the online education market.”

Consumer sophistication: The trial court found that Florida
Virtual’s customers were sophisticated given “the nature and importance of a
parent’s choice of where to educate their child.” This is, of course, a
normative statement, not an empirical one, as the parents above demonstrated.
Students looking for a college are “relatively sophisticated consumers” because
of “the nature, importance, and size of the investment in a college education.”
It was not clear error to apply that logic to schools where “parents, not
students, are the ones making that decision. Plus, the evidence showed that
some of Florida Virtual’s customers were school districts and administrators,
and we would expect them to have a developed understanding of their online
education options.”

from Blogger http://tushnet.blogspot.com/2026/01/11th-circuit-affirms-defense-tm-verdict.html

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CFP: Yale/Harvard/Stanford Junior Faculty Forum, May 21-22

Posted on January 16, 2026 by rtushnet

 Please share widely! 

Request for Submissions

Harvard/Stanford/Yale Junior Faculty Forum

May 21-22, Yale Law School

 Harvard,
Stanford, and Yale Law Schools are soliciting submissions for the 2026
Harvard/Stanford/Yale Junior Faculty Forum, to be held at Yale Law School on May
21-22, 2026. Ten to fifteen junior scholars (with one to seven years of
teaching experience) will be chosen, through a double-blind selection process,
to present their work at the Forum. A jury of accomplished scholars will choose
the papers to be presented. A senior scholar will comment on each paper. The
audience will include the participating junior faculty, senior faculty from the
host institutions, and any invited guests. There is no publication commitment.
Yale Law School will pay presenters’ travel expenses, though international
flights may be only partially reimbursed. 

The goal of the
Forum is to promote in-depth discussion about particular papers and more
general reflections on broader methodological issues, as well as to foster a
stronger sense of community among American legal scholars, particularly by
strengthening ties between new and veteran professors. 

TOPICS: Each year,
the Forum invites submissions on selected topics in public and private law,
legal theory, and law and humanities topics, alternating loosely between public
law and humanities subjects in one year, and private law and dispute resolution
in the next. For the upcoming 2026 meeting, the topics will cover these areas
of the law:

Antitrust

Bankruptcy

Civil Litigation
and Dispute Resolution

Contracts and
Commercial Law

Corporate and
Securities Law

Intellectual
Property

Private Law
Theory and Comparative Private Law

Property,
Estates, and Unjust Enrichment

Taxation

Torts 

QUALIFICATIONS: Authors
who teach law in the U.S. in a tenured or tenure-track position and have not
been teaching at either of those ranks for a total of more than seven years are
eligible to submit their work. American citizens or permanent residents
teaching abroad are also eligible, provided that they have held a faculty
position or the equivalent, including positions comparable to junior faculty
positions in research institutions, for not more than seven years, and that
they earned their last degree after 2016. Authors must be qualified as of the
date of submission. We accept jointly authored submissions, but each of the
coauthors must meet the qualification requirements. Papers that will be
published prior to the Forum are not eligible. There is no limit on the number
of submissions by any individual author. Faculty from Harvard, Stanford, and
Yale Law Schools are not eligible.

 

PAPER
SUBMISSION PROCEDURE: Please use the following form to submit: https://docs.google.com/forms/d/e/1FAIpQLSeE-Y1decyDrkmejVoztM2oPI3MrLfxdP3kCT500H1TwUBiMg/viewform?usp=header. The deadline for submissions is February 20,
2026. Remove all references to the author(s) in the paper. The form will ask for the title of your paper; under which
topic your paper falls; an affirmation that your paper satisfies the
non-publication qualification above; and the year in which you began teaching
in one of the qualifying positions above. Each paper may only be considered
under one topic. Any inquiries about the form should be directed to Christine
Jolls. 

FURTHER
INFORMATION: General inquiries concerning the Forum should be sent to Christine
Jolls (christine.jolls@yale.edu)
at Yale Law School, Norman Spaulding (nspaulding@stanford.law.edu) at
Stanford Law School, or Rebecca Tushnet (rtushnet@law.harvard.edu) at Harvard
Law School.

Christine Jolls

Norman Spaulding

Rebecca Tushnet

 

from Blogger http://tushnet.blogspot.com/2026/01/cfp-yaleharvardstanford-junior-faculty.html

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court rejects TM owner’s attempt to require full chain of custody for first sale defense, but where is the burden of proof?

Posted on January 9, 2026 by rtushnet

ZAGG Inc. v. Ichilevici, 2026 WL 63142, No.
23-cv-20304-ALTMAN/Reid (S.D. Fla. Jan. 8, 2026)

ZAGG sells a variety of screen protectors, power management
solutions, mobile keyboards, cases, and personal audio products, including my
beloved Mophie. Defendant DVG resells products, including ZAGG products,
through Amazon. ZAGG sued DVG for false advertising and trademark infringement;
DVG counterclaimed for false advertising/unfair competition/defamation. Here,
the court rejects the parties’ cross motions for summary judgment on trademark
and also leaves for the jury the related question of whether DVG’s listing of its
ZAGG products as “new” was false advertising, while dismissing the rest of the
counterclaims.

DVG bought its ZAGG products in a liquidation pallet from a
wholesaler. ZAGG argued that DVG’s advertisements are false because “Amazon’s
guidelines require a product listed for sale as in ‘New’ condition to be ‘brand
new’ and [ ] covered by a manufacturer’s warranty.”

Both parties produced Amazon pages supporting their views: it
seems that Amazon’s buyer-facing “Condition Guidelines” define “New” as: “Just
like it sounds. A brand-new item. Original manufacturer’s warranty, if any,
still applies, with warranty details included in the listing comments. Original
packaging is present for most New items but certain items like shoes may be
re-boxed.” However, the Amazon FBA Guidelines and Seller Central, in defendants’
telling, “simply require that the item is brand-new and unused, free of
blemishes, smudges or dirt, and in the original packaging,” and defendants
submitted an expert report in support of this view.

Past cases haven’t involved listings where a seller, like
DVG here, notifies purchasers that “it is not an authorized reseller” of ZAGG
products and urges them to “check with the manufacturer to see if a warranty
may apply.” Thus, there was a disputed question of material fact on literal
falsity.

The court also sent the “liquidation” theory of falsity to
the jury, though I’m not sure it should have under its own standards, given
that ZAGG had the burden of proof here. The “thrust” of ZAGG’s argument was
that, because DVG couldn’t “verify the full chain of custody or history of each
individual item,” it couldn’t confirm that was actually selling “brand new”
items.  Sure sounds like lack of
substantiation to me.

Later, the court found that ZAGG submitted enough to get to
the jury on injury: “diversion of sales to a direct competitor [is] the
paradigmatic direct injury from false advertising.” “There’s no question that
ZAGG and DVG are direct competitors and that they sell the exact same products.”

Trademark infringement: Again, ZAGG argued that defendants
had the burden of proving a complete chain of custody, back to sale by ZAGG,
before they could raise a first sale defense. (So much for selling your used stuff!)
The court’s research did not find any cases imposing this trace-to-manufacturer
requirement. DVG disclosed the identity of its supplier and produced documents
and testimony about that supplier’s sales to DVG. The circumstances weren’t
suspicious, as in another case where defendant claimed to have “found [products]
in storage units he acquired,” and the plaintiff submitted “proof that the
products [the defendant sold] were returned product not to be resold.”

There was no record evidence behind ZAGG’s speculation that
DVG was selling counterfeit or damaged goods; it conceded that all the products
it bought in test buys were genuine. DVG also attested (under oath) that all
the ZAGG products it buys are “independently sorted and graded in accordance
with Amazon’s condition guidelines before sending them to Amazon’s warehouses”
and that “[m]any of the products come in their original case packs from the
factory.”

“So, while DVG may not know where its supplier gets its ZAGG
inventory, that break in the custodial chain isn’t sufficient, standing alone
and at summary judgment, to render the first-sale doctrine inapplicable as a
matter of law. We’ll therefore permit DVG to assert its first-sale defense at
trial.” Still to come: who has the ultimate burden of proof here? I would think
it would have to be ZAGG, even if first sale is labeled a “defense” for convenience: The burden is still on ZAGG to show that defendants sold infringing products, and, just as the defense “this mark isn’t confusing because it’s different enough” would not shift the burden of proof to defendants, “this mark isn’t confusing because it’s a legitimate good from the TM owner” seems like it shouldn’t do so either. 

There were also disputed issues on the “material difference”
exception to the first-sale doctrine. “A material difference is one that
consumers consider relevant to a decision about whether to purchase a product.
Because a myriad of considerations may influence consumer preferences, the
threshold of materiality must be kept low to include even subtle differences
between products.” ZAGG argued that some of the products have been “opened,
repackaged, restickered, or damaged,” and DVG’s products don’t “carry the
manufacturer’s warranty.” DVG argued that it “meets or exceeds” the terms of
ZAGG’s warranty because it offers to replace customers’ defective items without
charging them a $10 shipping fee. This was a jury question, including on DVG’s
expert testimony that any damage to the products’ packaging likely occurred in
transit.

DVG’s defamation counterclaim based on ZAGG’s trademark
reports to Amazon was dismissed because it didn’t show falsity or negligence. One
claim that a test buy product had been “altered” and three that the product was
“wrong” were not shown to be false: the first had been opened and the packaging
seal removed, and the other three had different SKUs than listed. DVG didn’t
meet its burden of showing that the different SKUs didn’t matter.

from Blogger http://tushnet.blogspot.com/2026/01/court-rejects-tm-owners-attempt-to.html

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Temu’s “cheaper and way better quality than Shein” claims were potentially falsifiable, not puffery

Posted on January 8, 2026 by rtushnet

Roadget Business PTE. Ltd. v. PDD Holdings Inc., 2026 WL
44864, No. 24-2402 (TJK) (D.D.C. Jan. 7, 2026)

Plaintiff, aka Shein, sells low-priced fashion and lifestyle
products through a website and mobile application. Defendant runs a competing,
discount-driven online platform—Temu. “Each platform has accused the other of
engaging in unlawful, multifaceted campaigns to interfere with the other’s
competitive posture.” This is Shein’s countersuit alleging trade secret theft,
intellectual property right infringement, false advertising, and other unlawful
acts. The court allowed trade secret claims and false advertising claims, but dismissed
product disparagement or trademark dilution claims (Temu didn’t move to dismiss
all of Shein’s claims).

In May 2022, Shein’s mobile app
allegedly was the most downloaded app in the United States, and as of the
filing of the complaint, Shein had over 33 million followers on Instagram and
nearly 10 million followers on TikTok. Shein says it is “one of the most
popular” online fashion and “lifestyle brands” worldwide.

Shein alleged that its success stemmed from its data-driven
trade secrets about anticipating demand. Shein allegedly owned copyrights in
both its photographs and its designs. Shein owns several trademark
registrations for the SHEIN brand and its affiliate brands, and consumers
allegedly associate all these brands with “the sale of high-quality fashion and
home goods at a fair price.”

Temu, by contrast, functions as an “online marketplace”
where independent third-party sellers sell their own goods. Temu allegedly
stole Shein’s Best Seller Data; used or “instructed” its sellers to use
copyrighted images of Shein products as promotional images on the Temu website
and app; refused to let sellers “discontinue the sale of infringing products”
on Temu, even when sellers request such removal; used the SHEIN trademark (or
close variations, like “She/in”) in online ads, including sponsored ads on
Google, which suggest that “authentic” Shein merchandise is sold on Temu, but
when consumers click on the ads, they are directed to Temu’s website, which
offers no SHEIN-branded products for sale; created “fake” accounts that use the
SHEIN mark—for instance, by using the handle @SHEIN_USA—to “promote its own
website” and to “trick consumers” into downloading its mobile app; and
instructing paid influencers to “disparage” Shein’s products. E.g., one
influencer (with over 137,000 followers) allegedly posted a series of pictures
of herself wearing different Temu apparel with the caption, “Shein
Alternatives, cheaper but way better quality! Check Temu.com out! So freakin
cute and so freakin cheap!”  

Product disparagement: The court applied Massachusetts law
as alleged by Shein. In Massachusetts, a plaintiff bringing a product
disparagement claim must plausibly allege that the defendant “(1) published a
false statement to a person other than the plaintiff; (2) ‘of and concerning’
the plaintiff’s products or services; (3) with knowledge of the statement’s
falsity or with reckless disregard of its truth or falsity; (4) where pecuniary
harm to the plaintiff’s interest was intended or foreseeable; and (5) such
publication resulted in special damages in the form of pecuniary loss.” As is
common with respect to mass advertising claims, Shein failed on (5).

Special damages are “essential” to a product-disparagement
claim, and must be pled with specificity. They “limit[ ] a plaintiff’s recovery
to the ‘pecuniary loss that results directly or immediately from the effect of
the conduct of third persons’ acting in response to the alleged disparagement.’
” If a statement was so “widely disseminated” that it is impossible to identify
specific customers who chose not to buy the plaintiff’s products, then the
plaintiff may show “that the loss of the market has in fact occurred and that
no other factor caused that loss.” A plaintiff asserting that theory must at
least allege “facts showing an established business and the amount of sales
before and after the disparaging publication, along with [facts supporting]
causation.”

The only, conclusory allegation about attendant damages is
that Shein was “harmed by the dissemination of the Influencer Statements
because they caused consumers to believe that SHEIN-branded products were
inferior in quality to products sold by Temu when this is untrue.” Shein didn’t
even allege that it lost any sales, let alone that any such hypothetical losses
were solely attributable to influencer statements.

Dilution: Shein failed to allege fame. The very “nature of a
dilution claim itself makes it difficult to state claim to relief that is
plausible on its face.” Its allegations were conclusory, and worsened by the
fact that it apparently tried to claim fame for its other “affiliate” marks, including
SHEIN CURVE, DAZY, SHEGLAM, ROMWE, and LUVLETTE. It’s not acceptable to lump
marks together like that.

Shein alleged that it “has invested significant time,
effort, and money promoting, advertising, and marketing its business operations
across multiple channels,” and that the “SHEIN brand also enjoys a significant
presence on social media.” These allegations were “without more, conclusions,
which are not a proper factual basis for a finding of fame.” Shein didn’t
allege “how or since when it promoted its marks, or even how much money it
invested in any such marketing.”

Shein’s complaint likewise offered no details whatsoever on
the “amount, volume and geographic extent of sales” of any products offered
under the SHEIN brand, let alone any of its affiliate brands. On “actual
recognition of the mark,” a plaintiff cannot “simply allege” that “it has
attained widespread and favorable recognition.” That Shein—as a “brand” or
marketplace—allegedly enjoys a large social-media presence with “million[s]” of
“followers,” says little about consumer recognition of the “trademarks … in
suit.” The Lanham Act protects “the mark,” not “the designer” or “the brand
itself.”

“Shein’s alleged popularity on social media also says little
about consumer recognition among the general population.” “Many brands are
advertised” on social media and have a significant following there, but “not
all are famous.” As for its registrations, “[o]ne cannot logically infer fame
from the fact that a mark is one of the millions on the Federal Register.”

“[S]tating legal conclusions and reciting relevant factors
is insufficient no matter the pleading standard. But especially so when a claim
is inherently ‘difficult’ to establish because Congress prescribed a ‘purposely
rigorous’ element—in this case, fame.” Shein’s alleged global revenue and
growing customer base, or the number of downloads of its “shopping app,” “do
not speak to the alleged fame of the SHEIN or any other mark.”

False advertising: Shein did better here, though the “influencer
guidelines” were a “close call.”

First, were the accused statements “commercial advertising
or promotion” or merely “[p]rivate communications with business partners.” True,
providing guidelines to non-customers, without more, wouldn’t be false
advertising. But Temu alleged more: that Shein “provided influencers with
guidelines” that “require[d] them to make … false” statements on social media,
which were then made; these should, Temu alleged, count as Shein’s statements.

And social-media posts by paid influencers undisputedly qualified
as commercial advertising under the Lanham Act. Thus, a plaintiff can state a
false advertising claim by alleging that “the defendant itself, or through its
paid agents, made false statements in commercial advertisements.” Shein
plausibly alleged its agency theory of liability.

Temu’s puffery argument was a closer call, but the
statements couldn’t be deemed puffery as a matter of law. (Not every court
would agree, though I’m sympathetic.)

Temu’s Influencer Guidelines allegedly “instruct”
influencers to include, among others, the following statements in their
“Instagram Caption”: “Shein is not the only cheap option for clothing! Check
Temu.com out, cheaper and way better quality!” and “Looking for clothes better
than Shein but cheaper than revolve? Check Temu.com out.” And Shein gave
examples of posts that used these/nearly these captions.

Claims that Temu’s clothes are “cheaper” but “way better
quality” than Shein’s were actionable because they made “specific” claims that
can “be[ ] proved false” or can “reasonably be interpreted as … statement[s]
of objective fact.” “Cheaper” was undoubtedly “objectively verifiable.” While statements
like “better” generally “amount[ ] to little more than an exaggerated opinion
of superiority that no consumer would be justified in relying on,” saying that
a “product can do something ‘more efficiently,’ ‘easier,’ ‘quicker,’ or ‘safer’
is more specific.” This is especially true when a statement “make[s]” an
“explicit comparison” to “other brands” about “particular characteristics that
would be important to a consumer.” A reasonable consumer could “believe” that
the advertising party actually “test[ed]” and compared competing products and
“deduced” that one was “superior in these ways.”

“Here, a reasonable consumer could think just that.” Quality
is a specific enough characteristic for clothes, and it’s material, “particularly
in the fast-fashion context, where buyers know that low prices (a key selling
point) can come at the cost of quality.” Indeed, the fast-fashion context
itself renders the statement less “vague” and “unmeasurable,” “because there
are only so many ways in which one company’s clothing article can be of ‘better
quality’ than another’s.” Also, the “way better quality” claim appeared next to
the verifiable claim that Temu’s clothes are “cheaper” than Shein’s, and was made
by an “influencer” (depicting herself wearing Temu’s clothes) “whom consumers
perceive as having personal experience with—i.e., as having ‘tested’—the
products they promote.” How other courts treat a “a specific word is of little
help unless that word is used in a sufficiently similar context,” and most of
the cases cited by Temu involved general claims of superiority—e.g., “better
customer service” and “better coverage,” or “better data network”—with no
reference to specific features or specific competitor products.

Although a news article appended to the complaint stated
that “Temu’s prices” for clothing “are usually … 20-30% lower than on SHEIN,”
that didn’t show that Temu’s prices are always cheaper than Shein’s—which Temu
would need to show to establish that the alleged influencer statements,
portraying particular products, are true.

For similar reasons, Shein stated a claim for contributory
false advertising, which is available under the Lanham Act, since it’s
available for trademark and 43(a) has the same introductory language applied to
both causes of action.  “[C]ontributory
liability is a common law theory of derivative liability that requires no
express statutory basis.”

from Blogger http://tushnet.blogspot.com/2026/01/temus-cheaper-and-way-better-quality.html

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Dueling geneologists: photo (c) claims allowed, but not Lanham Act or factual compilation claims

Posted on January 8, 2026 by rtushnet

Hein v. Mai, 2026 WL 44798, No.
24-01126-JWB (D. Kan. Jan. 7, 2026)

Some interesting stuff going on in
the genealogy world!

The Volga German
people are individuals of German origin who moved to the Volga region of Russia
in the eighteenth century. … There is a sizable Volga German diaspora in the
American Midwest. Plaintiff Margreatha Hein and Defendant Dr. Brent Mai are
both genealogy researchers on the Volga German people. Their research is the
subject of this lawsuit.

Hein operates volgagermans.org,
where she publishes her research. Mai is the Dean of Libraries at Wichita State
University, has held similar positions with other universities, and operates volgagermaninstitute.org,
where he publishes his research.

Hein first objected to Mai’s
copying in 2020; in 2023, she registered the copyright in eight photos she took
in Europe that were republished on Mai’s website as early as 2017. (This
removes her eligibility for statutory damages.) She also registered ten “textual
compilations” and alleged that Mai copied 107 textual compilations from her
website: paragraph form summaries of genealogical information, organized by
last name.

The parties focused on a particular
example, which plaintiff’s expert contended was representative; as plaintiff
has the burden of proof of infringement, the court extended its finding of
noninfringement to the other, unargued examples; plaintiff didn’t provide “any
additional examples that vary in a significant way.”

Hein registered this text:

Johann Jacob
Hessler (son of Johann Jacob Hessler of Niedergründau) was baptized on 15
December 1718. Anna Maria Meininger (daughter of Johannes Meininger of
Mittelgründau) was baptized on 2 December 1725. Johann Jacob and Anna Maria
married in Rothenbergen on 26 August 1745.

Baptisms were
recorded for the following children, all born in Rothenbergen: Johann Conrad,
born 5 February and baptized 12 February 1747 (died 30 April 1754); twin
daughters born 28 May and baptized 29 May 1751, Anna Margaretha (died 16 May
1754) and Christina; Anna Margaretha born 22 May and baptized 25 May 1755;
Elisabetha, born 24 January and baptized 26 January 1760 (died 27 Jan 1760);
and twin sons born 5 February and baptized 7 Feb 1762, Valentin (died 5 Mar
1764) and Friedrich.

Jacob Hessler
died on 8 Nov 1762. On 5 Jan 1764, Anna Maria Hessler (widow of Jacob Hessler)
married Hartmann Ifland (son of Johannes Ifland from Lützelhausen) in
Rothenbergen. They had a daughter Catharina, born 2 January and baptized 8
January 1765.

Hartmann, Anna
Maria, and three of the Hessler children (Christina, Anna Margaretha, and
Friedrich) arrived in Russia on 9 August 1766. Hartmann apparently died during
the journey to the villages.

Mai admittedly copied; he listed
Hein as a contributor or researcher. The parties’ research is “freely
accessible to the public and neither party receives any income directly from
the disputed material on their website.” Mai, however, on occasion receives income
from leading tours of the Volga region or translating certain documents. Hein
has stated she has no interest in similar business.

The court first allowed Dr.
Kenneth Crews to testify as a copyright expert, but only about issues of fact
(the process of getting a registration and possibly some facts related to fair
use, though it’s harder to see how that would work), not ultimate legal issues.

Mai challenged Hein’s standing
since she doesn’t seek to generate revenue, but she adequately alleged
copyright infringement—which has a sufficient common law analogue—and reputational
harm for the Lanham Act by listing her as a researcher/contributor and
allegedly including inaccurate information.

Copyright limitations period:
contested issue of facts precluded summary judgment for Mai given the discovery
rule and the possibility that Mai engaged in new publications when he moved
institutions/changed domain names. The court accepted Hein’s argument that she
didn’t discover the “full scope” of the infringement until 2023 as sufficient
to avoid summary judgment, though I’m not sure how persuasive that is given the
2020 objections.

Copyright in the form compilations
of historical genealogical information: This claim failed because Mai did not
copy anything copyrightable. The court’s north star was the Supreme Court’s
admonition that “the selection and arrangement of facts cannot be so mechanical
or routine as to require no creativity whatsoever.” Still, there might be a
valid copyright in Hein’s compilations. But even with a triable issue on that,
infringement claims failed.

Stripping each entry of uncopyrightable
facts/asserted facts, what remained was a mechanical “skeleton.” An abstraction-filtration-comparison
approach was useful here given the thinness of the copyright. The sample Hessler
text was “composed almost entirely of facts (names, dates, and locations) that
are not subject to copyright protection.” Without the facts, here was the
selection/coordination/arrangement:

_____________
(son of _____________of _____________) was baptized on _____________.
_____________ (daughter of _____________ of _____________) was baptized on
_____________. _____________and _____________married in _____________on
_____________. … etc.

Mai’s version:

Johann Jacob
Hessler, son of Johann Jacob Hessler of Niedergründau, was baptized on 15
December 1718. Anna Maria Meininger, daughter of Johannes Meininger of
Mittelgründau, was baptized on 2 December 1725, Johann Jacob and Anna Maria
were married Rothenbergen on 26, August 1745.

The Gründau
parish register records the baptisms of the following children of Johann Jacob
& Anna Maria Hessler, each born in Rothenbergen: (1) Johann Conrad, born 5
February 1747, baptized 12 February 1747, died 30 April 1754; (2 & 3) twins
Anna Margaretha (who died 16 May 1754) & Christina, born 28 May 1751,
baptized 29 May 1751; (4) Anna Margaretha, born 22 May 1755, baptized 25 May
1755; (5) Elisabetha, born 24 January 1760, baptized 26 January 1760, died 27
January 1760; and (6 & 7) twins Valentin (who died 5 March 1764) &
Friedrich, born 5 February 1762, baptized 7 February 1762.

Johann Jacob
Hessler died 8 November 1762, and his widow remarried on 5 January 1764 to
Hartmann Ifland. They had a daughter Catharina, born 2 January 1765 and
baptized 8 January 1765.

The Ifland
family, along with 3 of the Hessler children, arrived from Lübeck at the port
of Oranienbaum on 9 August 1766 aboard the pink Slon under the command of
Lieutenant Sergey Panov.

“While Mai’s reproduction
certainly contains the same basic information as Ms. Hein’s skeleton above, it
can hardly be said to be a copy of copyrightable content. Basic sentences,
which at least in this example Mai does not copy verbatim, and words like ‘baptism’
or ‘born’ which appear throughout, do not possess the ‘creative spark’ required
to demonstrate copyright protection.”

What about the “mode of
presentation”? “Because Ms. Hein chooses the humble paragraph format to present
her information, she argues that Dr. Mai should not have been able to do so. But
this argument proves too much. Copyright law cannot grant the first researcher
who discovered and published a compilation of facts with little additional
synthesis a monopoly over the mode of presentation of that information.” All
the other examples Hein submitted were substantially similar; summary judgment
for Mai was appropriate.

That left the photos, as to which
the court denied Mai’s motion for summary judgment on fair use. (This is also
framed as a finding of no fair use, but it seems like it’s still available for
trial.)

Purpose and character: Mai “primarily”
argued noncommerciality, not transformativeness, which probably makes sense.  “While the court agrees that Dr. Mai’s use is
on its face non-commercial, there is at least a question of fact as to whether
the photographs contribute to Dr. Mai’s other sources of income, such as his
tours or translations.”

Nature of the work: photos are
creative. (Sigh; no mention of publication status or free availability
elsewhere, though that shouldn’t necessarily outweigh creativity—but not all
photos are the same!)

Amount and substantiality: eight
whole photos.

Market value: Because Hein has no
interest in monetization of the website or through tours and translations, “there
can be no effect on the market.” However, “the fair market value could at some
future date be affected should Ms. Hein ever decide to monetize her work.” Summary
judgment denied. Mai’s pyrrhic victory on factor four is probably matched by
Hein’s overall pyrrhic victory, given that statutory damages and attorneys’
fees are unavailable.

Lanham Act/state law unfair
competition claims: Hein argued that the use of her name, with the title
“researcher” or “contributor” placed next to it, diminished her stature in her
research field and falsely indicated she has a professional association with
Mai. Mai argued that Hein wrongly tried to create a “required citation format”
through federal law, highlighting “apparently conflicting complaints that Dr.
Mai does not give Ms. Hein credit but also diminishes her when he cites her.”
(This is Dastar’s concern, too.)

The court didn’t have to reach the
issue because it found that the Lanham Act and state law claims didn’t cover noncommercial
uses. “The court’s survey of Lanham Act case law confirms a commerciality
requirement.” (Citing Lexmark and its progeny—this requires the plaintiff
to suffer a commercial injury and is different from requiring the defendant to
be commercial.)

Although Hein alleged that the use
of her name enabled Mai to receive income from selling tours and translations
on a different page of his website, that wasn’t enough; it was simply “too
attenuated,” given that Mai’s website was “overwhelmingly noncommercial in
nature,” despite its link to another website with information about his tours. Even
more attenuated were other alleged commercial connections:  Mai’s “paying for a URL and copyright
registrations, having a bank account, and spending substantial sums on hard
copy research materials, subscription websites, technical support for a
website, and travel for research and to attend conferences.” Thus, Mai wasn’t
using Hein’s name “in commerce.”   

from Blogger http://tushnet.blogspot.com/2026/01/dueling-geneologists-photo-c-claims.html

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