Hermès Int’l v. Rothschild No. 22-cv-384 (JSR), 2023 WL 1458126 (S.D.N.Y. Feb. 2, 2023)
By Angela Garcia
Defendant Mason Rothschild (“Rothschild”) is a digital artist and serial entrepreneur in Los Angeles, California. Rothschild previously worked for luxury fashion brands such as Christian Dior and Saint Laurent. In 2021, Rothschild began two Birkin bag projects relating to the Birkin bag owned by plaintiffs Hermès International and Hermès of Paris, Inc. (collectively, “Hermès”).
Plaintiff Hermès is a French luxury fashion brand known for its high quality and craftsmanship, selling products under its iconic Birkin line. Hermès’ss federally registered Birkin trademark covered tangible handbags. Since 1986, Birkin sales in the United States have reached USD $1 billion. One Birkin bag costs between USD $9,000 and USD $30,000, making it an opulent and exclusive product.
In December 2021, Rothschild created a hundred non-fungible tokens (“NFTs”) linked to his collection of digital images called “MetaBirkins.” “NFTs are digital records of ownership, typically recorded on a publicly accessible ledger known as ‘blockchain.’” The collection depicted Birkin bags covered in fur, ranging in color and design, and portrayed with a slightly blurred effect. Each MetaBirkin NFT has its own smart contract, which is a computer code recorded through the blockchain that identifies the name of each NFT, restricts its means of sale and transfer, and dictates the digital assets associated with each NFT. Rothschild sold nearly USD $1 million of the Meta- Birkins at Art Basel in December 2021. Rothschild also received a 7.5% resale value in creator fees.
* * * * * * *
Horror, Inc. v. Miller 15 F.4th 232 (2d Cir. 2021)
By Slater Stanley
Appellee Victor Miller (“Miller”) is a writer and longtime member of the Writers Guild of America, East, Inc. (“WGA”), a nationally recognized labor union supporting film and television writers. Producer Sean Cunningham (“Cunningham”), formerly a close friend of Miller, created Manny, Inc. (“Manny”) to produce and distribute films. In 1978, Manny joined the WGA Theatrical and Television Basic Agreement (“MBA”), a collective bargaining agreement for employers and writers.
In 1979, Cunningham reached out to Miller about an idea for a horror film. The two utilized a WGA standard union form denoting Miller as a WGA member and Manny as an MBA signatory to formalize their roles for the pro- ject. The contractual terms stated that Manny employed Miller to produce a screenplay for a prospective film, then titled “Friday 13,” and Manny would pay Miller USD $5,569 for a first draft and USD $3,713 for a final draft.
Cunningham later agreed to an arrangement with financier Phil Scuderi, who led Georgetown Productions, Inc. (“Georgetown”) where, in exchange for supporting the film, Cunningham granted Scuderi “complete control over the screenplay and the film.” Notably, Scuderi changed Miller’s final scene and ultimately “gave birth to the character Jason as an immortal adult killer who returned from the dead, and to numerous sequels in the franchise.”
In 1980, Manny transferred the screenplay and film rights to Georgetown which registered the associated copyrights, noting the film as a work made-for- hire authored by Georgetown. The Copyright Office’s digital record credited Miller with writing the screenplay. Horror, Inc. (“Horror”) subsequently ob- tained the rights, title, and interest to the Friday the 13th franchise from Georgetown, which included the Screenplay and Film. On May 9, 1980, the Friday the 13th film was released. The franchise has resulted in eleven sequels and related products so far. In 2016, Miller served a copyright termination notice to Manny and Horror, Inc. to recover his copyright.
* * * * * * *
Ogletree v. Cleveland State Univ. No. 1:21-CV-00500, 2022 WL 3581569 (N.D. Ohio Dec. 20, 2022)
By Madison Cassulo
In May 2016, Cleveland State University (“CSU”), a public university, published campus-wide guidelines for online classes that permitted room scans for remote tests.
One of the test-proctoring devices CSU used was a third-party vendor who would record a student briefly by requiring the student to turn on their computer camera to scan the student’s surroundings and ensure the integrity of remote tests by preventing any impermissible study aids. CSU’s guidelines did not require or encourage classes to use the room scan. It was implemented at the professors’ discretion.
In 2021, CSU students were required to pass daily health assessments to attend classes in-person due to the COVID-19 pandemic. CSU student Aaron Ogletree could not pass the CSU daily health assessment due to medical issues, so he attended online courses. In the syllabus of one Ogletree’s online classes, the professor announced that room scans would be used “before, during, or after an exam to show their surroundings, screen and/or work area” at the proctor’s request.
At the start of the semester, Ogletree successfully petitioned to remove the policy. However, a month later, two hours before an exam, Ogletree received an email notifying him he would be required to comply with a room scan. CSU’s online testing rules required students to take remote tests in an isolated room, but Ogletree could not be alone elsewhere, so he had to perform the room scan in his bedroom. Olgetree explained in an email that he had confidential documents and tax forms in his room which he could not put away in time for the test. Nevertheless, Ogletree complied with the room scan at the start of his test for the test proctor.
* * * * * * *
Meenaxi Enterprise, Inc. v. Coca-Cola Co. 38 F.4th 1067 (Fed. Cir. 2022)
By Julia Mainini
Appellant, Meenaxi Enterprise, Inc. (“Meenaxi”), has produced and sold beverages in the United States under the marks THUMS UP and LIMCA since 2008. Meenaxi’s THUMS UP and LIMCA beverages are predominately sold in Indian grocery stores in the United States. Meenaxi claimed they con- ducted two trademark clearance searches for U.S. beverages before adopting the marks. For the first search, Meenaxi claimed they visited several Indian grocery stores since they cater to Meenaxi’s target consumers. For the second search, Meenaxi claimed they conducted a trademark search through the United States Patent and Trademark Office (“USPTO”) database. The USPTO database search showed an abandoned application from 1987 for a THUMS UP mark and an expired registration from 1996 for a LIMCA mark.
After determining the two marks were not registered nor in use in the United States, Meenaxi sought, and was granted, registration of its THUMS UP and LIMCA marks in 2012. Both marks were registered in International Class 32 for “Colas; Concentrates, syrups or powders used in the preparation of soft drinks; Soft drinks, namely, sodas.”
Appellee, Coca-Cola Company (“Coca-Cola”), started selling beverages in India in 1950. Parle Exports (“Parle”) began selling the soft drinks LIMCA in India in 1971 and THUMS UP in 1977. In 1993, Coca-Cola acquired Parle and its trademarks. Coca-Cola has sold THUMS UP and LIMCA in India and other international countries. Coca-Cola claimed that since 2005, third parties have imported and sold Coca-Cola’s THUMS UP and LIMCA bever- ages in the United States. However, Coca-Cola does not have registrations for their THUMS UP and LIMCA marks in the United States.
* * * * * * *
Minerva Surgical, Inc. v. Hologic, Inc. 141 S. Ct. 2298 (2021)
By Chase Wyatt
In the late 1990s, Csaba Truckai (“Truckai”) invented the NovaSure Sys- tem, a device that treated abnormal uterine bleeding by using a moisture-per- meable applicator head that destroyed certain targeted cells in the uterine lin- ing. Truckai’s patent application for the device included a claim for a moisture- permeable head that avoids burning or abrasions and assigned his interest in this application and any future continuation applications to his company, Novacept, Inc. (“Novacept”). The Patent and Trademark Office (“PTO”) issued a patent in 2001 and, soon after, the FDA approved the NovaSure System for commercial distribution. Novacept sold its assets to another company in 2004 and, in 2007, respondent Hologic, Inc. (“Hologic”) acquired the rights to the NovaSure System through a subsequent sale.
In 2008, Truckai founded Minerva Surgical, Inc. (“Minerva”), the peti- tioner in this case, and Minerva developed the Minerva Endometrial Ablation System, a device similar to the NovaSure System. This device also used a mois- ture-impermeable applicator head to remove target cells in the uterine lining to treat abnormal uterine bleeding.
Hologic was aware of Truckai’s activities in creating the new device at Minerva and filed a continuation application with the PTO in 2013 in order to add several new claims to its NovaSure System patent. Hologic replaced specific language claiming the moisture-permeable applicable head with a gen- eralized encompassed applicator. The PTO issued the altered patent to Ho- logic in 2015. Within the year, Hologic was issued the Minerva Endometrial Ablation System and the FDA approved its commercial sale.
* * * * * * *
