Ironhawk Techs., Inc. v. Dropbox, Inc. 994 F.3d 1107 (9th Cir. 2021)
By Tomiko Cairo
Plaintiff is Ironhawk Technologies, Inc. (“Ironhawk”). Defendant is Dropbox, Inc. (“Dropbox”). Both parties develop and market computer software.
This case is an appeal from summary judgment in a trademark infringement claim where the district court held that Dropbox, the moving party, met the burden of establishing no genuine dispute of material fact that their mark caused customer confusion with Ironhawk’s mark.
Both Ironhawk and Dropbox use the words “Smart” and “Sync” in connection with their computer software products. In 2004, Ironhawk began marketing its “SmartSync” software which transfers data efficiently in “bandwidth-challenged environments.” Ironhawk obtained a trademark registration in 2007 for SmartSync which made Ironhawk the senior mark holder and user. In 2017, Dropbox added a feature called “Smart Sync” to its cloud storage software. The feature allows users to conserve hard drive space by accessing files in the cloud. The only distinction between the two marks is Dropbox’s use of a space between the words Smart and Sync.
Ironhawk asserted claims against Dropbox for trademark infringement under the Lanham Act and unfair competition under California’s Unfair Competition Law. Ironhawk alleged that Dropbox’s use of the name Smart Sync intentionally infringed upon Ironhawk’s SmartSync trademark because such use is likely to cause consumer confusion.
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VIP Products, LLC. v. Jack Daniel’s Properties, Inc. 953 F.3d 1180 (9th Cir. 2020)
By Lila Garlinghouse
Plaintiff is VIP Products (“VIP”), a designer, manufacturer, and vendor of dog toys. Defendant is Jack Daniel’s Properties, Inc. (“JDPI”), a manufacturer of whiskey, most notably in this case, Old No. 7 Black Label Tennessee Whiskey.
In July 2013, VIP launched the Bad Spaniels Silly Squeaker dog toy, a rubber toy that, like many of their other products, is designed to resemble a well-known human beverage for VIP’s stated purpose of “reflect[ing] on the humanization of the dog in our lives.” The Silly Squeaker in question bears the same square shape of a Jack Daniel’s whisky bottle with a few “silly” changes to reflect common canine activities and phrases: the toy is adorned by a cartoon image of a Spaniel; where the Jack Daniel’s bottle displays “Old No. 7 Brand Tennessee Sour Mash Whiskey” the Silly Squeaker advertises “the Old No. 2, on your Tennessee Carpet;” and, instead of an alcohol by volume percentage, the toy states “43% POO BY VOL.” as well as “100% SMELLY.” Lastly, in an attempt to mitigate customer confusion, the toy bears a tag that states the “product is not affiliated with Jack Daniel Distillery.”
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Metal Jeans, Inc. v. Metal Sport, Inc. 987 F.3d 1242 (9th Cir. 2021)
By Amy L. Metzgar
Plaintiff in this action, Metal Jeans, Inc., owns the non-stylized trademark “METAL,” and sells clothing (jeans, shirts, and boots) under this trademark (“Metal Jeans Trademark”). Metal Jeans is owned by Gary Topolewski, and the company has been selling clothing under the “METAL” trademark since 1999. The Metal Jeans trademark was originally issued under Topolewski America, Inc., of which Mr. Topolewski was the president and owner. In 2005, during a separate proceeding, Mr. Topolewski notified the United States Patent and Trademark Office (“USPTO”) that the “METAL” trademark was continually used on jeans, shirts, and boots since the trademark was issued in 1999. The USPTO found this statement false⎯the trademark had not been used continually for boots, and the USPTO cancelled the registration of the trademark in 2008. The trademark was reinstated under the entity Metal Jeans, Inc. in 2013.
Defendant, Metal Sport, Inc., a brand specializing in powerlifting apparel and gear, has a similar, but stylized “METAL” trademark (“Metal Sport Trademark”). The owner of Metal Sport, Ano Turtianinen, a Finnish powerlifter, created the Metal Sport Trademark around 1997 and registered it with the USPTO in 2016.
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Kihn v. Bill Graham Archives 445 F.Supp. 3d 234 (N.D. Cal. 2020)
By Kirkman Ridd
Plaintiffs are recording and performing artist Greg Kihn (“Kihn”) and his music publisher Rye Boy Music, LLC (“Rye Boy”). Defendants are music business entrepreneurs Bill Graham Archives, LLC d/b/a Wolfgang’s Vault; Norton, LLC; and William Sagan.
Kihn and Rye Boy filed a putative class action against Defendants claiming infringement under the Copyright Act and unauthorized trafficking of live audio and audiovisual recordings in violation of the “Anti-Bootlegging Act.” Plaintiffs claimed that, beginning in 2006, Defendants used their websites to distribute and sell thousands of audio and audiovisual recordings that captured the live performances of hundreds of musical artists over several decades without the artists’ authorization. Defendants purchased the vast majority of the recordings in 2002 from the estate of deceased San Francisco Bay Area concert promoter Bill Graham.
Defendants contended that their acquisition agreements granted them full and unrestricted ownership of the recordings, and that the artists whose performances were captured had known of and consented to the recordings and had never asserted any ownership in or rights to the recordings. Kihn and Rye Boy stated that Kihn’s live performances were recorded without his awareness or permission, and that his performances and compositions were exploited when they were trafficked on Defendants’ websites without his permission.
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AMG Capital Mgmt., LLC v. FTC 141 S. Ct. 1341 (2021)
By Pierce Stanley
Petitioners are Scott Tucker, personally, and several payday loans companies which he controlled (collectively, “Tucker”).1 Tucker provided high-interest, short-term payday loans to customers via website marketing. Respondent is the Federal Trade Commission (“FTC”), which deemed the loans deceptive because essential terms—specifically, auto-renewal provisions— of the loan agreements were hidden in lengthy, cross-referenced repayment agreements, resulting in charges far-exceeding what was provided to customers when they applied.
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