Our weekly SoCal IP Institute meeting on Monday, March 30, 2015 will be a discussion of two cases. The first is a 9th Circuit trademark case involving the exploitation of Bob Marley’s likeness.  For this case, we will be joined by Paul Bost, an associate in the Los Angeles office of Sheppard Mullin. He is one of the attorneys who represented plaintiff Fifty-Six Hope Road Music.  The second case is a Supreme Court case involving the applicability of decisions by administrative bodies for issue preclusion in subsequent cases.

Fifty-Six Hope Road Music, Ltd. v. A.V.E.L.A, Inc. and Related Cases, No. 12-17502 (9th Cir.  Feb. 20, 2015) (available here).  This case involves the assertion of trademark and related rights owned by the heirs of Bob Marley.  Here, the Ninth Circuit affirmed the Nevada district court’s judgment after a jury trial on claims under the Lanham Act and Nevada state law regarding the use of Bob Marley images on apparel and other merchandise.  Specifically, the district court’s decisions on false endorsement, assessing damages for defendants’ profits, awarding attorneys’ fees to the plaintiffs, and finding that the case was exceptional as willful, granting summary judgment to defendants as to a Nevada right of publicity claim, finding interference with prospective economic advantage and in granting a motion for judgement as a matter of law as to punitive damages were all affirmed.

B&B Hardware, Inc. v. Hargis Indus., Inc., No. 13-352 (S. Ct. March 24, 2015)  (available here). Hargis Industries, tried to register its trademark for SEALTITE with the United States Patent and Trademark Office. B&B Hardware opposed registration, claiming that SEALTITE is too similar to B&B’s own SEALTIGHT trademark. The Trademark Trial and Appeal Board (TTAB) concluded that SEALTITE should not be registered because of the likelihood of confusion. Hargis did not seek judicial review of that decision.

Later, in an infringement suit before a district court, B&B argued that Hargis was precluded from contesting the likelihood of confusion because of the TTAB’s decision. The district court disagreed. The Eighth Circuit affirmed, holding that preclusion was unwarranted because the TTAB and the court used different factors to evaluate likelihood of confusion, the TTAB placed too much emphasis on the appearance and sound of the two marks, and Hargis bore the burden of persuasion before the TTAB while B&B bore it before the district court.

Here, Justice Alito writing for the majority, held that issue preclusion is available so long as the typical conditions are met, such that here, when the trademark use adjudicated by the TTAB is materially the same as those before a district court issue preclusion may apply.  The case was remanded to the Eighth Circuit.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, March 30, 2015 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.