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Breaking (Up) Bad: Watch-outs for Brand Owners Faced with Ex-Licensee's Trademark Use

A series of recent decisions have heightened the standard for obtaining preliminary injunctive relief for trademark infringement. This trend presents unique challenges for brand owners seeking to enjoin unauthorized “holdover” use of a trademark by former franchisees or licensees. This situation commonly arises when a franchisee or licensee continues using a franchisor or licensor’s trademarks following termination of a franchise or license agreement.   Under the test for preliminary injunctive relief in most jurisdictions, a plaintiff must establish:

US Importers, Managing Director, and Wholesale Customer Face Monetary Damages in Two Recently Unsealed False Claims Act Cases

The False Claims Act imposes liability on persons and companies who defraud the government of monies, whether it is by receiving monies based on false statements or material omissions, or avoiding the payment of monies through false statements or omissions. The statute permits both private parties (whistleblowers) and the government to bring actions against the perpetrators of such fraud in order for the government to collect damages, a portion of which will be paid to the whistleblower, if one is involved.

Please Wait While I Check Your Bag: California Court Certifies Nike Bag-Check Class Action & Converse Workers Seek Class Certification in Similar Case

Long lines and waiting for security inspections are the new normal not only at airports and stadiums, but also at office buildings and theatres—just to name a few places. According to the plaintiff in Rodriquez v. Nike Retail Services, Inc., N.D. Cal. Case No. 5:14-cv-01508, he and other Nike retail employees also had to wait for security inspections when they left for breaks or after their shifts at Nike’s retail stores.

Fashion Law Institute and Arent Fox File Amicus Brief on Behalf of Designers in Supreme Court Copyright Case

New York, NY — On September 21, the Fashion Law Institute at Fordham filed an amicus brief with the Supreme Court of the United States in the matter of Star Athletica LLC v. Varsity Brands, Inc., in support of continuing copyright protection for designs incorporated into useful articles, including the cheerleader uniform designs at issue in the litigation.  

Converse Loses Its Midsole Amidst ITC Trademark Battle

What Made News? Last month, the US International Trade Commission issued a decision invalidating a trademark for Converse’s iconic Chuck Taylor sneaker. Although Converse did win some of its claims, the ITC decision overall represents a potentially significant setback for Converse after the company took aggressive action to try to stop the sale of shoes that Converse claimed infringed its rights in the Chuck Taylor design. 

What Global Fashion Companies Need to Know About the GDPR If They Collect EU Personal Data

What’s New? (The GDPR.) Fashion and luxury goods companies need to take heed of yet another data protection regulation. This one could substantially impact them if they collect, process, or transfer EU individuals’ personal data, or plan to do so at some point soon. Specifically, the General Data Protection Regulation (GDPR) is the EU’s new data protection law, recently and finally entered into law. It replaces the old EU data protection regime established by the Data Protection Directive (95/46/EC).

Clothing Companies Spin a Yarn with Commercial Invoices, Resulting in $13.4 Million in Fines for Customs Violations

Be skeptical of suppliers offering to “help” keep duties low. Thoroughly investigate any indications of double invoicing. Two China-based clothing manufacturers, Motives Far East and Motives China Limited, and their affiliated US importer, Motives, Incorporated (collectively “Motives”), agreed to pay nearly $13.4 million for engaging in a double invoicing scheme designed to defraud the United States out of millions of dollars in customs duties, according to US Immigration and Customs Enforcement's Homeland Security Investigations directorate, and US Customs

Name That Circuit Split: Nominative Fair Use in the Second Circuit

In the recent case of International Information Systems Security Certification Consortium v. Security University, LLC, the Second Circuit articulated its test for analyzing nominative fair use claims in trademark infringement cases. While we now know the Second Circuit’s test, the case also highlights a notable circuit split between the Ninth, Second, and Third Circuits regarding nominative fair use. As a result, companies intending to rely on a nominative fair use defense may have varying success depending on the jurisdiction.

Triple Threat: Chinese Ad Company’s Malware Raises Ad Fraud, Cybersecurity, and Privacy Concerns

What’s New? Recent reports indicate that advertising fraud is not only increasing but is now being run by groups alongside otherwise legitimate advertising businesses.    Cybersecurity company Check Point recently released a report finding that HummingBad—a known malware that takes over Android devices, generates fraudulent advertising revenue, and installs apps on the infected phones—was developed and is controlled by a group of cybercriminals within Yingmob, an otherwise legitimate advertising analytics business based in Beijing.   

California Retailers: Use of Thermal Receipt Paper Gets Costly

The first NOV involving register receipts was issued by the Center for Environmental Health against a restaurant in Lake Forest  California retailers appear to have two options: post warning signs in the store or switch to electronic receipts or BPA-free paper Since May 11, 2016, consumer products sold in California that contain the chemical bisphenol A (BPA) require a Proposition 65 Warning Notice at the point of sale or on the products themselves.