Supreme Court Confirms Profits Remedy in Trademark Cases is Not Conditioned on Proof of WillfulnessYesterday, the Supreme Court issued a much-awaited opinion holding that a plaintiff is not required to prove willful infringement in order to seek a trademark infringer’s profits under the Lanham Act. This decision resolved a split among the Circuits and changes the law in a number of Circuits, including the Second and Ninth Circuits,

Seven crops of pomegranates (and other fruits) have grown, ripened, been picked, pulped and processed.  A river of juice has flowed.  After seven years of litigation, the last overripe fruit of the Lanham Act campaign launched by POM Wonderful against four of its major competitors has hit the ground with a squishy thud.

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Two recent Ninth Circuit Court of Appeals decisions in Yeager v. Bowlin, Nos. 10-15297 and 10-16503 (9th Cir. Sept. 10, 2012), a Lanham Act and right-of-publicity dispute between legendary test pilot Gen. Charles Yeager and purveyors of aviation memorabilia incorporating Yeager’s name and/or likeness, highlight several important issues relevant to false-advertising and related litigation.

The Circuit Court affirmed the District Court’s summary judgment of all of Yeager’s claims, primarily for untimeliness. It appears that the defendant persuaded the District Court to dispose of the case on statute of limitations grounds, and Yeager failed to preserve this issue for appeal by omitting to argue at the District Court level that the Lanham Act has no statute of limitations. The Ninth Circuit therefore affirmed without resolving whether a statute of limitations applies to the Lanham Act. In other circuits, it is generally accepted that the Lanham Act has no statutory limitations period, and untimeliness therefore is typically asserted by defendants in the form of a laches or equitable estoppel defense. In any event, the Ninth Circuit affirmed the untimeliness ruling where the plaintiff sued in January 2008 over content published on a web site in October 2003.

For purposes of determining the elapsed time, the court considered the application of the “single publication” rule to a typical web site that is updated piecemeal. “The single-publication rule limits tort claims premised on mass communications to a single cause of action that accrues upon the first publication of the communication, thereby sparing the courts from litigation of stale claims when an offending book or magazine is resold years later,” the court explained, quoting Roberts v. McAfee, Inc., 660 F.3d 1156, 1166-67 (9th Cir. 2011). Yeager contended that the defendants’ web site was republished in its entirety whenever any part of it was updated, but the court held that the specific part of the web site that was the basis of the was “not republished unless the statement itself [was] substantively altered or added to, or the website [was] directed to a new audience.” This is a ruling of obvious relevance to any advertiser seeking to establish the date when the courts will deem specific advertising claims on its web site to have been published for purposes of the timeliness of litigation challenges.

Continue Reading Breaking the Sham Barrier in Yeager v. Bowlin