Courts have taken a host of significant actions over the last several weeks in intellectual property litigation. Recent developments include an injunction, issued under the Lanham Act, against junk e-mails; rulings on trademark issues of first impression in the Third and Sixth Circuits; decisions on claim construction, corroboration and jury trial rights in patent litigation; rulings on copyright misuse and the copyrightability of photographic copies of art works; false advertising decisions concerning Internet web site “meta tags” and standing issues; and a multimillion dollar award to the actor Dustin Hoffman in a right of publicity case.
Ending its isolation on a key point of trademark law, a Third Circuit en bancruling has held that a trademark plaintiff must prove likelihoodof confusion, rejecting Third Circuit precedent indicating that mere possibilityof confusion suffices where a newcomer enters a territory already occupied by an established trademark holder. A&H Sportswear, Inc. v. Victoria’s Secret Stores, Inc., 1999 WL 23441 (3rd Cir., Jan. 21, 1999). The district court had found the “possibility” of confusion between A&H’s Miraclesuit swimsuit, and Victoria’s Secret Miracle Bra swimsuit, and on that basis ordered Victoria’s Secret to use a disclaimer, and to pay royalties on past and future sales of its product. Finding that every other circuit uses the likelihood of confusion standard, the en banc Court of Appeals brought Third Circuit law in line with the rest of the federal courts. It also held that use of a royalty in trademark (as opposed to patent and trade secret) cases should ordinarily be limited to circumstances where the parties have a prior licensing agreement, or the defendant has acted in bad faith.
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