Author Archives: Jim Astrachan

The Least of Ye’s Troubles

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The rapper formerly known as Kanye West is in a dump truckload of trouble for, among other things, his display of a “White Lives Matter” T-shirt.  The slogan’s so-called owners are calling him out for trademark infringement.

As bad as the politics might be, Ye, as he is now known, did no trademark harm. The U.S. Patent and Trademark Office, as a general rule, will refuse to register a trademark if the submitted specimen shows that use of the mark is decorative or ornamental.  A trademark must indicate a source of goods. Continue reading →

Why Mediate Intellectual Property Disputes?

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Chief Justice Warren Burger admonished the ABA in 1984, “Our litigation system is too costly, too painful, too destructive, too ineffective for a civilized people.” The Chief added, “For many claims trials by the adversarial contest must in time go the way of the ancient trial by battle and blood.” Copyright trademark and trade secret trials may be among the most expensive legal contests, and I am pretty sure the Chief would have recommended mediation.

The number of civil cases that reach trial in the federal courts is a very small percentage of the total cases filed; probably less than 5 percent. The road to settlement, however, can be long and very expensive. We can get these cases settled early on! Continue reading →

Do Analogous State Statute of Limitations Apply When the Lanham Act Provides None, Or Do Equitable Considerations, Such as Laches? How About Both?

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The federal Lanham Act goes beyond trademark protection and establishes causes of action, as well, for unfair competition, false advertising, and false association. Section 43(a), however, does not contain a statute of limitations for claims that arise under the Lanham Act for any of these improper activities. That’s different from the Copyright and Patent Acts which each provide for limitations and apparently that’s the way Congress wants it.

Continue reading →

The First Amendment and Social Media

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The Texas Legislature enacted HB 20, a gobsmacking law, in September 2021, declaring social media platforms and interactive computer services to be “common carriers,” charged, as the bill reads, with a public interest of being “central forums for public debate.”

HB 20 defines social media as an internet website having more than 50 million users that is open to the public and allows users to create accounts to communicate with others through the posting of information, comments, and messages or images. Media giants like YouTube and Twitter are affected. A few days ago, the U.S. Court of Appeals for the 5th Circuit held the law to be constitutional and enforceable.

Continue reading →

How to Reduce a Copyright Liability from Major to Minor

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A client recently had the good fortune to reduce its financial exposure for copyright infringement from $3 million to a little over $75,000. Still, $75,000 is a lot of money to pay for unauthorized reproduction of twenty photos that belonged to someone else. But on the down side, in addition to statutory damages of up to $150,000 per photo, there also was the possibility of an award of attorney’s fees, and because the facts as known pointed to the conclusion that this client was aware that the photos were not its to borrow, it was quite likely a jury would have found the infringement to be willful and would, and could, have awarded $150,000 per photograph.  Continue reading →

Bankruptcy Treatment of Trademark Licenses

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Worth mentioning if a licensee or licensor of a mark is facing bankruptcy, is a 2019
Supreme Court decision.  Mission Product Holdings, Inc. v. Tempnology, LLC, 139 S.Ct. 1652 (2019).  Decided 8–to–1 following a split among the circuits, the Court resolved the effect of a debtor in bankruptcy’s attempted rejection of a trademark license.

The question was would the rejection constitute a breach of contract, or a recission that would bar the licensee from ongoing use of the licensed mark?  The stakes are high for most licensees that want to continue to do business using the licensor’s mark. Continue reading →