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Gibson Dunn - The Fashion Law and Business Report > Posts > News Roundup: Fashion and Retail Companies Should Be Aware of Recent U.S. Cases on Trademark ‘Tacking,’ Copyright Misuse, as well as updates on Myanmar Sanctions, French Consumer Law
1.26.15
News Roundup: Fashion and Retail Companies Should Be Aware of Recent U.S. Cases on Trademark ‘Tacking,’ Copyright Misuse, as well as updates on Myanmar Sanctions, French Consumer Law

Gibson Dunn has released a number of client alerts in the last week that will be of interest to all companies in the fashion and retail space.  In particular:

                1) On January 21, 2015, the U.S. Supreme Court resolved a longstanding Circuit split on the standards for trying a trademark owner’s attempt to get credit for a previous iteration of its mark.  The case, Hana Financial, Inc. v. Hana Bank, involved the question of how courts should evaluate a claim under the trademark “tacking” doctrine, which allows a current trademark to receive the “priority of use” attributable to an earlier version of its mark because both versions of the mark convey the same commercial impression.   The Federal and Sixth Circuits had evaluated tacking as a question of law for the judge, but the Ninth Circuit had held that it is a question of fact for a jury.  The Supreme Court agreed with the Ninth Circuit and affirmed.  A fuller description of the decision is available here.

                2) On January 20, 2015, the U.S. Court of Appeals for the Ninth Circuit issued its much-awaited decision in the long-running battle between Omega and Costco over Omega’s decision to affix its Omega Globe Design--only approximately one-eighth of an inch in size--to the underside of its Seamaster watches in an effort to use copyright law to prevent their unauthorized importation into the United States.  The district court had granted summary judgment, finding that Omega had engaged in “copyright misuse” by attempting to leverage its copyright in the Globe Design into a monopoly on sales of uncopyrightable “useful articles.”  The majority of the Ninth Circuit found that the Supreme Court’s 2013 decision in Kirtsaeng v. John Wiley & Sons, Inc. mandated a win for Costco under the “first sale” doctrine because the watches at issue had been lawfully sold outside the U.S. before they were imported into the U.S.  Judge Wardlaw issued a spirited concurrence, stating that she agreed that Costco should win, but on the copyright misuse ground adopted by the district court.  A description of the case is here.

                3) On January 23, Gibson Dunn issued its annual French Law Update.  Available here, it covers a number of interesting topics.  Among other things, the update provides an overview of the 2014 “Hamon Statute,” which creates a number of new protections for French consumers, including setting standards for enforceable e-commerce contracts.

                4) Finally, on January 26, Gibson Dunn issued an overview of the current status of sanctions on the nation of Myanmar (available here).   Myanmar has been attracting the attention of international investors since the U.S. Obama administration has loosened sanctions that were previously in place as a response to the Myanmar government’s crackdown on dissent.  Any businesses that may seek to import goods from Myanmar will want to stay current on the changing sanctions regime.


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