Case 1: Dastar Corp. v. Twentieth Century Fox Film Corp.

1

Facts:
In 1948, Fox Film corp. bought the rights to a book titled, Crusades in Europe, by
Dwight D. Eisenhower and released a 26 episode long series based on the same and
bearing the same name. In 1977 the show entered public domain.
In 1995, Dastar purchased the Betacam videotapes of the original series by Fox and
vut it short to half of its original length and changed the packaging and sold the TV
series as World War II campaigns in Europe and mentioned their employees as
producers and no mention was made to the original series by Fox.
Issues:
Whether the series released by the defendant amounted to passing off
Outcome:
The Court of appeals and the trial court gave decisions in favour of Fox awarding full
profits and double the profits, respectively, earned by Dastar.
The Supreme Court reasoned that although the Lanham Act forbids a reverse passing
off, this rule regarding the misuse of trademarks is trumped by the fact that once
a copyrighted work (or, for that matter, a patented invention) passes into the public
domain, anyone in the public may do anything they want with the work, with or
without attribution to the author.
Relevance:
It strengthens the rights of those who intend to make use of those works which have passed
into public domains.



1
539 U.S. 23 (2003)
Case 2: WalMart Stores I nc. v. Samara Brothers I nc.
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Facts:
Samara Brothers, Inc. designs and manufactures a line of children's clothing. Wal-
Mart Stores, Inc., contracted with a supplier, Judy-Philippine, Inc. (JPI), to
manufacture outfits based on photographs of Samara garments and to be offered under
Wal-Mart's house label, "Small Steps."
When JPI manufactured the clothes, it copied sixteen of Samara's garments with some
small modifications to produce the line of clothes required under its contract with
Wal-Mart.
After discovering that Wal-Mart and other retailers were selling the so-called
knockoffs, Samara brought an action for infringement of unregistered trade dress
under section 43(a) of the Trademark Act of 1946
Issues:
Whether the plaintiffs product is distinctive and protectable from knock-offs under
section 43(a) of trademarks act,1946
Outcome:
The Supreme Court reversed the judgement of the lower courts in this regard and said
that an unregistered product configuration can never be inherently distinctive.
Further, the product in question needs to demonstrate that the product has acquired
distinctiveness to be protected under trademark law.
"Consumers should not be deprived of the benefits of competition with regard to the
utilitarian and aesthetic purposes that product design ordinarily serves by a rule of law
that facilitates plausible threats of suit against new entrants based upon alleged
inherent distinctiveness," Justice Scalia concluded.
Relevance:
It dealt with the issue of unregistered product designs of products used for utilitarian purposes


2
529 U.S. 205 (2000)
Case 3: Traffix Devices I nc. v. Marketing Displays I nc.
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Facts:
Marketing Displays, Inc. (MDI) held utility patents for a "dual-spring design"
mechanism that keeps temporary road and other outdoor signs upright in wind. After
the patents expired, Traffix Devices Inc. began marketing sign stands with a dual-
spring mechanism copied from MDI's design.
MDI brought suit under the Trademark Act of 1964 for, among other things, trade
dress infringement. MDA claimed that its sign stands were recognizable to buyers and
users because the patented design was visible.
Issues:
Whether Marketing Displays Inc.'s trade dress infringement claim precluded because
its dual-spring design is a functional feature for which there is no trade dress
protection
Outcome:
The Court unanimously held that MDIs claim was not valid as there was no trade
dress protection for its design
A utility patent is strong evidence that the features therein claimed are functional,
"wrote Justice Kennedy. Focusing on the dual-spring design, Justice Kennedy
continued that "where the expired patent claimed the features in question, one who
seeks to establish trade dress protection must carry the heavy burden of showing that
the feature is not functional, for instance by showing that it is merely an ornamental,
incidental, or arbitrary aspect of the device." "MDI did not, and cannot, carry the
burden," concluded the Court.
Relevance:
There can be no trademark protection for something that is functional.


3
532 U.S. 23 (2001)
Case 4: Kellogg Co.v National Biscuit Co.
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Facts:
Inventor Henry Perky developed a shredded wheat machine and introduced the cereal
in 1893; he was issued utility patents in 1895 on both the shredded wheat and on the
machine.
The cereal became successful, and Perky's company, the Shredded Wheat Company,
continued to manufacture the product after he retired.
The Kellogg Company started manufacturing shredded wheat cereal in 1912 after
Perky's patents expired
After the Shredded Wheat Company objected, Kellogg stopped manufacturing their
version in 1919. The nature of the settlement is not clear.[4] In 1927, the Kellogg
Company resumed manufacturing shredded wheat, prompting a lawsuit from the
Shredded Wheat Company; the lawsuit was settled. In 1930, the Shredded Wheat
Company was acquired by the National Biscuit Company (later Nabisco), which again
sued Kellogg, both in Canada and in the United States, for unfair competition.
Issues:
Whether the shape of the shredded wheat qualified to be protected under trademark
law
Whether the defendant was liable for unfair competition
Outcome:
The court rejected Nabiscos arguments and allowed the defendant to continue
manufacturing the shredded wheat.
The court held that the shape was functional and that there was a right to copy it after
the patent expired
Further, the name Kellogg was so prominent on the cartons of the defendant that the
question of passing-off of goods did not arise
Lastly, the court held that the term shredded wheat was generic and not
trademarkable.
Relevance

4
305 U.S. 111 (1938)
The present case became a foundation for the FunctionalityDoctrine, that says that
product designs that are intrinsic to functionality cannot be protected under unfair
practice or trademark laws.
At the time of this case, the trademark laws were in a state of confusion and the U.S.
Justice Department decided to codify the decision in the present case into law, as part
of the Lanham Act.

Case 5: Park N Fly I nc. v Dollar Park N Fly I nc.
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Facts:
In August 1971 the Petitioner, an operator of long-term parking lots, registered a
trademark consisting of the logo of an airplane and the words Park N Fly. Roughly
six years later, Petitioner was granted incontestable status of its trademark.
Respondent, another long-term airport parking lot service, called its business Park
and Fly.
Issues:
Whether the defendant was liable under Trademark Law or it was generic and merely
descriptive
Outcome:
The supreme court reversed the decision of the Court of Appeals which had held that
the incontestable status can provide a defense against invalidation of a mark but could
not be used to enjoin another partys use. Therefore, Respondent could defend its
infringing use by attempting to show that the mark was merely descriptive.
The Supreme Court held that the infringement of an incontestable mark cannot be
made on the grounds that its merely descriptive and awarded an injunction on the use
of the mark by the respondent.
Relevance:
It upheld that even if a trademark was descriptive, if granted incontestable status, it cannot be
infringed upon on any grounds.


5
469 U.S. 189 (1985)
Case 6: Two Pesos, I nc. v Taco Cabana, I nc.
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Facts:
Two Pesos was started in 1985 by Houston restaurateur Marno McDermot, who had
been in negotiations with Taco Cabana's management to take the patio-restaurant
chain nationwide.
When Taco Cabana's founding Stehling brothers rejected his advances, McDermot
decided to open up his own chain of similarly themed patio-dining Tex-Mex
restaurants under the Two Pesos name.
It was similar to Taco Cabana, however, Two Pesos never opened in Taco Cabana's
home market of San Antonio.
Issues:
Whether the Defendant is liable for infringement of the plaintiffs trade dress
Outcome:
The Supreme court ruled in favour of the plaintiff and held that the defendant was liable for
infringement of trade dress of the plaintiff.


6
505 U.S. 763 (1992)
Case 7: Qualitex Co. v J acobson Products Co.
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Facts:
Plaintiff Qualitex Co. had used a green-gold color for the pads which it sold to dry
cleaning firms to use in their dry cleaning presses.
Defendant Jacobson Products Co. was a rival of Qualitex. In 1989, Jacobson began
selling their own pads to dry cleaners which were a similar color to those of Qualitex.
In response, Qualitex filed a lawsuitagainst Jacobson in the United States District
Court for the Central District of California for unfair competition.
In 1991, Qualitex registered the green-gold color of its pads with the United States
Patent and Trademark Office as a trademark, and subsequently added a trademark
infringement count to its lawsuit.
The District Court found for Qualitex, but the United States Court of Appeals for the
Ninth Circuit set aside the judgment, on the grounds that color alone could not be
registered as a trademark.
Issues:
Whether a trademark can be granted based on colour of the product in question
Outcome:
Justice Breyer, writing for a unanimous court, overturned the Ninth Circuits decision,
holding that the Lanham Act was very broad in its definition of what a trademark
could be.
Breyer also determined that the functionality doctrine was no bar to the registration of
the plaintiffs color as a trademark. He determined that a product feature is only
functional if it is essential to the purpose of the article or if it affects
the cost or quality of the article.
Relevance:
The color in this case acted purely as a symbol, and served no other purpose. Jacobson argued
that there are only a limited number of colors that could be used for the products at issue
here, and that many colors are very similar looking, but Breyer dismissed this concern, saying

7
514 U.S. 159 (1995)
that if the defendants concerns were proven to be valid, the functionality doctrine would then
come into play. Breyer further held that a color could be trademarked separately from
any trade dress protection.

Case 8: Moseley v V Secret Catalogue, I nc.
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Facts:
Victoria's Secret, a registered trademark owned by V Secret Catalogue, Inc., was
found in 1988 to market moderately priced high quality lingerie in stores designed to
look like a woman's bedroom. By 1998 the company operated 750 Victoria's Secret
stores, including two in Louisville, Kentucky, and distributed 400 million copies of its
catalogue.
In 1998 a weekly publication distributed to residents at Fort Knox, Kentucky,
contained an ad for the grand opening of a store called Victor's Secret that was owned
by Victor and Cathy Moseley which sold lingerie and adult novelties and gifts.
An army colonel who saw the ad was offended by what he perceived to be an attempt
to use a reputable company's trademark to sell "unwholesome, tawdry merchandise"
and contacted Victoria's Secret, which then requested the Moseleys to immediately
discontinue the use of the name Victor's Secret and "any variations thereof."
In response the Moseleys changed the name of the store to Victor's Little Secret.
Unsatisfied with this name change, Victoria's Secret filed suit in the District Court for
the Western District of Kentucky alleging, among other claims, a violation of the
FTDA (Federal Trademark Dilution Act).
Issues:
Whether the defendants commercial use of a mark or trade name "causes dilution of the
distinctive quality" of the famous mark under the FTDA.
Outcome:
The Court held that the FTDA requires proof of actual dilution. However, this proof
did not necessarily include actual loss of sales or profit, as the Fourth Circuit had
held. Instead, the owner of the trademark could use surveys or other circumstantial
evidence of dilution. As Victoria's Secret did not provide evidence of actual dilution,
the judgment of the circuit court was reversed.
Justice Kennedy filed a concurring opinion which noted that Victoria's Secret was not
foreclosed from obtaining injunctive relief on remand of the case.

8
537 U.S. 418 (2003)
Relevance:
Following the remand of the case to district court, Congress in 2006 passed the FTDRA,
which essentially overturned the Supreme Court's Moseley decision. The district court
applied the new law and granted summary judgment in favor of Victoria's Secret and issued
an injunction against the use of the name Victor's Little Secret.

Case 9: KP Permanent Makeup I nc. v Lasting Impression I I nc.
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Facts:
Cosmetics Company Lasting Impression trademarked the term "micro colors."
Lasting Impression sued K.P. Permanent Make-Up in federal district court for using
the term.
K.P. used the "classic fair use defense" and argued it used the term only to describe
K.P. products. The district court sided with K.P. Lasting appealed to the Ninth Circuit
Court of Appeals.
Unlike other federal appellate courts, the Ninth Circuit required companies that used
the fair use defense to prove there was no likelihood of confusion in use of the term.
The Ninth Circuit ruled there was likelihood of confusion and reversed the district
court's ruling.
Issues:
Whether a fair use defense to trademark infringement require the party asserting the
defense to demonstrate an absence or likelihood of confusion
Outcome:
The Court held that a party raising the classic defense of fair use did not need to
negate any likelihood that the practice under question would confuse consumers about
the origin of the goods.
The Court interpreted federal trademark law as placing the burden of showing
likelihood of confusion on the party charging infringement. Moreover, Congress "said
nothing about likelihood of confusion in setting out the elements of the fair use
defense."
Relevance:
The burden of proof to prove absence or likelihood of confusion lies with the party charging
with infringement.


9
543 U.S. 111 (2004)
Case 10:
Facts:
Levitron is a brand of levitating toys and gifts in science and educational markets
marketed by Creative Gifts Inc. and Fascination Toys & Gifts.
The Levitron top device is a commercial toy that displays the phenomenon known
as spin-stabilized magnetic levitation. This method, with moving permanent magnets,
is quite distinct from other versions which use changing electromagnetic fields,
levitating various items such as a rotating world globe, model space shuttle or VW
Beetle, and picture frame.
In the 1990s, Michael and Karen Sherlock formed the company they named "UFO" in
New Mexico to market the Levitron under an oral agreement in partnership with
Hones' company, Creative Gifts, Inc.
Efforts to formalize the agreement in writing fell apart and grew acrimonious after
UFO's principals learned about the device's earlier invention by Harrigan, and
redesigned their website to incorporate the expos-style article "THE HIDDEN
HISTORY OF THE LEVITRON!", which accused Hones of stealing the invention
from Harrigan.
Issues:
Whether the Defendant is liable for trademark infringement of the Levitron
Outcome:
At trial and on appeal to the Tenth Circuit[8] Creative Gifts' trademark claims were upheld,
and all of UFO's counterclaims were rejected after UFO, which had been representing itself
as a pro se defendant, was sanctioned by the court for abuse of discovery. The appeals court,
noting that UFO had submitted a one-page opening brief with no citations to the record or
discussion of the relevant law, commented in its ruling, "they have shot themselves in the
foot."