Apr 23, 2020

Supreme Court Overturns Second Circuit Precedent, Holds Willful Infringement Unnecessary for Award of Profits in Trademark Infringement Case

Supreme Court and Lady Justice

April 23, 2020, Washington, D.C.  The Supreme Court today held that a plaintiff need not prove that a defendant acted “willfully” in order to recover profits as an equitable remedy for trademark infringement under Section 35(a) of the Federal Trademark Act of 1946, as amended (the “Lanham Act”), 15 U.S.C. § 1117(a).  Romag Fasteners, Inc. v. Fossil, Inc., No. 18-1233, — S.Ct. —-, 2020 WL 1942012 (April 23, 2020). The plaintiff, a designer of fasteners used in handbags, brought an action against a handbag manufacturer alleging infringement of its “ROMAG” trademark.  A jury found the manufacturer liable for patent and… Read more


Apr 23, 2020

Musicians’ Class Actions Play On

Gavel with Headphones

In the midst of this global pandemic—as many musicians (like so many others) are struggling to make ends meet—courts in New York have continued to issue important decisions that impact musicians’ livelihoods.  Within the last month, the Southern District of New York permitted two separate class actions against Sony Music Entertainment, Inc. (“Sony”) and Universal Music Group (“UMG”), respectively, to proceed.  The class actions, styled Johansen v. Sony Music Entertainment, Inc. and Waite v. UMG Recordings, Inc. were brought by musicians and songwriters David Johansen, John Lyon (a.k.a Southside Johnny), Paul Colins (from Paul Collins’ Beat), John Waite, Joe Ely,… Read more


Oct 21, 2019

On Second Thought, Don’t Say My Name – Registering Surnames in the United States

Surname-IP-Registration-Blog-10.18.2019-

The Following Article is reprinted, with permission, from INTA Bulletin, Vol. 74, No.16 The Lanham Act prohibits registration on the Principal Register of marks that are primarily merely a surname. For many small businesses, this prohibition proves problematic because owners tend to want to include their own names in the business name to let customers know that they stand behind the quality of their goods or services. The United States Patent and Trademark Office applies a five-part test to determine whether registration should be denied on this basis. Its recent decisions, however, establish that some of these factors are weighted… Read more


Oct 17, 2019

Do “Expenses” Include the PTO’s Attorney’s Fees in a New Civil Action Filed to Challenge the PTO’s REfusal of an Application

Judge Gavel with Money

On October 7, 2019, the Supreme Court heard oral arguments in Peter v. Nantkwest, Inc., Case No. 18-801.  This case addresses the question of whether an applicant must pay the attorney’s fees incurred by the Patent and Trademark Office (“PTO”) in defending against a civil action to challenge the PTO’s refusal of an application to register a patent or trademark – whether the applicant prevails in the action or not.  The Fourth Circuit and the Federal Circuit decided this issue differently, thus creating a Circuit split that the Supreme Court needed to resolve. When an application for a trademark or… Read more


May 8, 2019

Claims Against Caterpillar Can Proceed Despite “Mere Conclusory” Allegations in CERCLA Complaint

Claims against Caterpillar Global Mining LLC survived Caterpillar’s Motion to Dismiss on the ground that the allegations were merely conclusory in a CERCLA cost recovery claim before the U.S. District Court for the Southern District of Indiana. In its May 3 opinion, the Court stated that the information regarding who, what, when, and where, which would be required under a heightened pleading standard, isn’t required at the pleading stage in a Superfund action.  The plaintiff in the case acquired farmland in Richmond, Indiana in 2012, which was part of a larger property that included manufacturing operations.  Hazardous waste, including polychlorinated… Read more


Nov 7, 2018

OSHA Court Case Shows Limits on Safety Inspections

OSHA Safety Inspections

A recent ruling by the Eleventh Circuit Court of Appeals could limit OSHA’s ability to search for other hazards when investigating an accident. Many employers have traditionally allowed OSHA inspectors to expand their inspection to areas in the workplace not directly related to the accident under investigation, leading them to identify other hazards that often result in additional penalties. However, a Georgia poultry plant challenged this practice when OSHA showed up to investigate an accident involving a worker being burned. An attorney for the chicken plant refused to allow the inspector to walk through the plant to examine the tools… Read more


Feb 29, 2016

Third Circuit Upholds Diligent Prosecution Bar to Citizen Suit Under Clean Air Act

In May, 2014, Group Against Smog and Pollution (GASP) sued coke producer Shenango, Inc. under the Clean Air Act’s (CAA) citizen suit provision for allegedly violating opacity limits in its air permit for its Neville Island, Pennsylvania facility.  Prior to that lawsuit, U.S. EPA, Pennsylvania Department of Environmental Protection (DEP) and Allegheny County Health Department (ACHD) had sued Shenango in 2012 in the U.S. District Court for the Western District of Pennsylvania and entered into a consent decree addressing opacity violations.  The Court retained jurisdiction to enforce the consent decree.  In 2014, ACHD sued Shenango in the Allegheny County Court… Read more


Feb 1, 2016

Eighth Circuit Reverses Summary Judgment Finding of CERCLA Arranger Liability

On December 10, the Eighth Circuit Court of Appeals, in a 2-1 decision, reversed a trial court’s summary judgment finding that Dico, Inc. had arranger liability under CERCLA for selling buildings known to contain PCB-contaminated insulation. United States v. Dico, Inc., et al, No. 14-2762 (8th Cir. 2015). The Court found that under the U.S. Supreme Court opinion in Burlington Northern and Santa Fe Railway Co. v. U.S., 129 S. Ct. 1870 (2009), the determination of intent to arrange for disposal of a hazardous substance is fact-specific, and that because there was some evidence that the buildings had some commercial… Read more


Nov 17, 2015

Fertilizer Manufacturers Challenge EPA Air Toxics Rule

In October, the Fertilizer Institute and a coalition of fertilizer manufacturers led by PCS Phosphate Company, Inc. filed separate challenges in the U.S. Court of Appeals for the D.C. Circuit, seeking to stay and invalidate EPA’s final rule  for Phosphoric Acid Manufacturing and Phosphate Fertilizer Production Risk and Technology Review and Standards of Performance for Phosphate Processing, under the Clean Air Act.  The October Petitions claim that EPA imposed new requirements to continuously monitor the liquid and gas influent flow rates for low-energy scrubbers and demonstrate continuous compliance with a minimum influent liquid-to-gas ratio, effective immediately upon publication of the… Read more


Aug 18, 2015

A Lesson About Protective Orders

In Glock v. Glock, Inc., Case No. 14-15601 (decided August 17, 2015), the United States Court of Appeals for the Eleventh Circuit addressed a novel about the use of discovery taken in the United States to aid a case filed overseas. However, the more useful lesson of that case is about protective orders. Glock, Inc. is the well-known manufacturer of guns. In 2011, Gaston Glock and Helga Glock began a divorce proceeding in Austria. In connection with those proceedings, Helga Glock filed an action in the United States under 28 U.S.C. § 1782 seeking to discover evidence from Glock, Inc. and… Read more