Trademark, Advertising, and Unfair Competition
Trademarks are the cornerstone of many businesses and are essential in building and safeguarding brand value. Protecting these vital assets requires constant vigilance and enforcement efforts on a global scale. Nationally recognized by Chambers USA as a leader in Trademark, Copyright, and Trade Secrets, Jenner & Block excels in helping clients protect their trademarks, preserve and maximize the value of their brands worldwide, and assert and defend infringement, misappropriation of trade secrets, trade dress, false advertising, and unfair competition claims.
Experience
- Diageo North America, Inc. v. Deutsch Family Wine & Spirits: Secured a jury trial victory for Diageo North America, Inc., the world’s largest spirits company, in a lawsuit accusing defendants of infringing the trade dress of Diageo’s popular Bulleit whiskey bottle through the marketing of their Redemption whiskey bottles. The court also subsequently granted Diageo’s request for a permanent injunction.
- MGFB Properties, Inc., et al. v. Viacom, et al.: Achieved a complete victory for Paramount Global (f/k/a ViacomCBS) in a $100 million trademark dispute over the title of the MTV reality show, “MTV Floribama Shore.” The plaintiffs, owners of the “Flora Bama Lounge, Package and Oyster Bar,” sued ViacomCBS seeking an injunction to stop MTV from using the term “Floribama” in the title and alleging claims for federal and state trademark infringement. After years of litigation, the judge granted summary judgment to ViacomCBS, dismissing the case in full, ruling that ViacomCBS’s First Amendment right to title its expressive work “MTV Floribama Shore” outweighed the plaintiffs’ rights under the Lanham Act. The US 11th Circuit Court of Appeals affirmed the ruling.
- Warner Bros. Entm’t v. Random Tuesday, Inc.: Represented motion picture and television studio Warner Bros. in successfully prosecuting and resolving a lawsuit for trademark infringement, copyright infringement, and trademark dilution against a business operating “virtual running clubs” that made unauthorized uses of Warner Bros.’ Harry Potter and Gilmore Girls trademarks and copyrighted images in their business names, websites, marketing materials, and merchandise sales. The matter concluded with the entry of a permanent injunction.
- Hetronic International v. Hetronic Germany, et al.: Secured a substantial jury verdict in the Western District of Oklahoma in a case involving the product names and trade dress of industrial radio remote controls. The jury award included damages for trademark and trade dress infringement, breach of contract, and other claims. The case was appealed to the 10th Circuit and ultimately to the US Supreme Court, which adopted a new rule on the extraterritorial application of the Lanham Act. The case has been remanded to the district court for further proceedings.
- JTH Tax LLC v. AMC Networks Inc. and Sony Pictures Television, Inc.: Won a motion to dismiss federal trademark claims brought against AMC Networks, Inc. and Sony Pictures Television, Inc. by Liberty Tax Service. The plaintiff alleged that defendants had infringed on their trademark and trade dress with the depiction of a fictional business in an episode of the popular series Better Call Saul. The case involved substantial questions of First Amendment protection for creative works and limitations on trademark rights being used to challenge such works.
- NBCUniversal Media LLC v. Jay Kennette Media LLC, et al.: Won a victory for NBCUniversal in its lawsuit accusing two companies of squatting on trademarks from former NBC hit shows The Office and Friday Night Lights by selling merchandise branded with “Dunder Mifflin” and “Dillon Football.” The defendants, according to the lawsuit, “built a business based on registering trademarks belonging to others in order either to sell them back to their rightful owners or to profit from consumer confusion by selling branded merchandise that consumers inevitably will associate" with the established media. The court entered a permanent injunction in favor of our client.
- Akeem Daniels v. FanDuel Inc, et al.: Secured a victory in the Indiana Supreme Court for FanDuel in a closely watched putative class action accusing daily fantasy sports operators of profiting off the unauthorized use of the names and likenesses of former NCAA athletes. The high-profile case addressed questions about the scope of the “newsworthy” exception to Indiana’s right of publicity law and presented huge stakes not only for fantasy sports businesses, but also for the burgeoning sports betting industry.