August/September 2011 Issue

Civil Cases

Christian Louboutin S.A. v.
Yves Saint Laurent Am., Inc.,
2011 WL 3505350 (S.D.N.Y. Aug. 10, 2011)
Southern District of New York denies Christian Louboutin’s request for preliminary injunction against competitor’s similar red-soled shoe.

Fair Isaac Corp. v.
Experian Info. Solutions, Inc.,
2011 WL 3586429 (8th Cir. Aug. 17, 2011)
Eighth Circuit upholds jury determination that registration for “300-850” mark was procured by fraud based on statements made during examination related to descriptiveness of mark.

Habush v. Cannon,
09-CV-18149 (Milwaukee County Cir. Ct.
June 8, 2011)
Wisconsin state court rules that defendants’ purchase of plaintiffs’ surnames as search-engine keywords did not violate the state right-of-publicity statute.

Levi Strauss & Co. v. Papikian Enters., Inc.,
2011 WL 3739550 (N.D. Cal. Aug. 26, 2011)
The first-sale doctrine generally prevents trademark owners from controlling the sale of its branded goods after the first sale.  The Northern District of California, however, finds a genuine issue of material fact as to whether the defendants’ online sales of genuine branded products nonetheless constituted trademark infringement because the presence of the plaintiff’s mark in the website’s domain name falsely suggested a connection between the parties.

Quia Corp. v. Mattel, Inc.,
2011 WL 2749576 (N.D. Cal. July 14, 2011)
Northern District of California holds that accused infringer’s “aggressive” use of social-media advertising, such as blogs, email blasts, YouTube channels, and Facebook applications, could possibly establish an overlap in trade channels for purposes of determining likelihood of confusion where plaintiff uses the same types of social-media advertising.