False endorsement claim can proceed against gov't issued license plates and gov't facility named for Roberto Clemente

Clemente Properties, Inc. v. Pierluisi-Urrutia, --- F.4th ----, 2026 WL 125574, No. 23-1922 (1st Cir. Jan. 16, 2026)

The representatives of the family of a famous deceased Puerto Rico baseball player, Roberto Clemente, sued the Commonwealth of Puerto Rico and several related defendants over the use of Clemente’s name and image on commemorative license plates and registration tags. The court of appeals partially reversed the judgment in favor of defendants on the trademark claims, showing the breadth of “use in commerce” compared to “commercial advertising and promotion.”

ROBERTO CLEMENTE is registered for various promotional goods and charitable/educational services, though the court of appeals didn’t note the goods and services; it hardly matters given the theories at issue.

Ciudad Deportiva Roberto Clemente operates a youth sports facility (of the same name) on land donated by the Commonwealth, but is in poor repair (plaintiffs blame the Commonwealth); the complaint didn’t make clear what its relationship was with plaintiffs. Appellants authorized Ciudad Deportiva “to use the trademark, name and likeness of Roberto Clemente” on commemorative vehicle license plates.

Then, in 2021 the P.R. legislature enacted new laws requiring any driver who acquired a new Puerto Rico license plate in calendar year 2022 to purchase a special plate commemorating the 50th anniversary of Roberto Clemente’s 3,000th hit for $21 extra; any member of the public who did not need to acquire a new license plate could also pay $21 to exchange their existing license plate for the commemorative plate. Another law added a mandatory $5 surcharge to registration tags issued in calendar year 2022 in return for a commemorative tag. Both the plate and tag had an image of Roberto Clemente; the words “Clemente,” “anniversary,” and “3000 hits”; and the numbers “21” and “50.” The money was to go in “the Roberto Clemente Sports District Fund,” for the exclusive use of the Department of Sports and Recreation. Drivers who got registration tags were also presented the opportunity to make a donation to the Roberto Clemente Sports District Fund.

“Puerto Rico’s citizenry reacted negatively to the new commemorative license plates and registration tags, and the public believed that appellants were receiving some financial benefit for the charges associated with the commemorative items.” Also, the Transportation Secretary made a televised statement, in January 2022, that the funds collected for commemorative plates and tags would go to “the Roberto Clemente Foundation.” And a permit issued by the Department of Transportation and Public Works lists the $5 surcharge for vehicle registration tags next to the words “Roberto Clemente Fund.”

Then the legislature transferred Ciudad Deportiva’s land back to the Commonwealth for the purpose of building the “Roberto Clemente Sports District” “as a sports and recreational facility for the enjoyment of Puerto Ricans and sports tourism.” Plaintiffs alleged that the law communicates “some kind of tacit endorsement of Roberto Clemente to this project” by expressly referring to “his vision of building a Sports City for the benefit of our young people and future generations.” The court of appeals, notably, is open to this theory even though it seemingly doesn’t think much of the lawyering.

The district court found that government-issued plates and permits weren’t use “in connection with goods or services.” But they were: license plates and registration tags are goods, and the Commonwealth collected money for them; the PTO even has a classification for license plates. Also, to the extent that the parties disputed “use in commerce,” the court of appeals suggested that the Second Circuit was right that the definition in the Lanham Act only applied to acquisition of rights, not to infringement—missing the Supreme Court’s fairly clear instruction to the contrary in Hetronic.

“While trademark owners suing state governments have generally lost, neither the district court nor the Commonwealth Defendants cite a case suggesting that government activities are inherently, or even presumptively, non-commercial.” Accepting the well-pleaded allegations of the complaint, “the Commonwealth Defendants did not use Clemente’s name or image simply to offer commentary about Clemente or to conduct some administrative government task.”

What about naming the Sports District after Clemente? Well, those allegations were “tied” to the other claims because “[p]roceeds from the sale of license plates and registration tags were set aside to raise money for the Sports District. And the Commonwealth Defendants invoked Clemente’s name when soliciting donations for the Roberto Clemente Sports District Fund.” If an infringement claim can proceed against “defendants who use someone’s name or image to solicit donations in support of public non-profit services,” which they can—citing United We Stand, about political parties—then it can proceed against the Sports District on remand.  

The 43(a)(1)(A) false association claim survived. Plaintiffs satisfied Lexmark by properly alleging reputational harm: “appellants’ business interests in licensing the Clemente mark for merchandise or other projects were plausibly impacted by this public blowback. This is especially so where appellants’ business reputation is built in part on an association with charitable endeavors, and the public backlash was in response to the perceived extortionate nature of the commemorative license plates and registration tags, goods that all Puerto Rico residents who needed new plates or tags in 2022 were forced to purchase.”

True, plaintiffs didn’t assert valid rights in Clemente’s image—they can’t just claim a trademark in “any pictorial depiction of Roberto Clemente.” However, they can still bring a false endorsement claim without having rights in a specific image. Use of Clemente’s likeness, the court said, was a “symbol” or “device” under 43(a). (This is an anachronistic reading of the meaning of the terms at the time, but that ship has long sailed.)

And likely confusion was plausible. This wasn’t like the use in the case relied on by the district court: a calendar that featured many “[p]hotographs of baseball, its players and assorted memorabilia” where Babe Ruth was just “one ballplayer among the many featured in the calendar.” The use of Clemente’s name and image in connection with a project whose proceeds were to be collected for “the Roberto Clemente Sports District Fund” was different enough to make confusion plausible, especially given the allegations of actual confusion and allegations that Clemente “was a highly recognizable figure whose name and image appellants had licensed for use in a different license plate program.” The Commonwealth expected to collect $15 million from the program, which could be recovered under the Lanham Act. (I have … questions about this statement. After all, the reason for the backlash was that people who needed a license plate during that year had no choice but to pay. Isn’t there a causation problem? Voluntary purchasers aside, as to whom I can see a disgorgement argument, confusion can’t have played any role in the payments made by people following the law that required them to have plates/permits.)

The court also therefore revived the dilution claim. (Household name fame as a mark for goods and services, as opposed to as a figure of baseball history, seems unlikely.)False advertising failed, though, because “commercial advertising or promotion” is substantially narrower than “use in commerce”/“use in connection with goods and services.” At most, the Commonwealth used “methods that communicate information to the public,” but that didn’t make its speech “commercial speech.”

Nor did the alleged infringement constitute a Fifth Amendment taking of appellants’ property. (There’s a further issue the court of appeals didn’t mention, consistent with its lack of interest in the goods/services specified in plaintiffs’ registration: Because of their failure to plead any “trademark” other than the registered matter, their trademark doesn’t cover the uses at issue even if there’s a false endorsement. So whatever exclusive right the registered trademark grants, the Commonwealth’s use shouldn’t be considered within the scope of that right.)

Plaintiffs argued that the Commonwealth engaged in a “categorical taking” because a trademark is property and the Commonwealth violated plaintiffs’ right to exclude. A “categorical taking” doesn’t require a contextual inquiry; a “regulatory taking” requires balancing to figure out if the government did so much damage to the value of property that it ought to pay. A non-physical, regulatory taking is only “categorical” where it “denies all economically beneficial or productive use” of the plaintiff’s property.

This case obviously wasn’t a categorical taking. First, physical invasion (the usual categorical taking) wasn’t possible for intangible rights. Second, the Commonwealth wasn’t alleged to have deprived them of all economically beneficial use of their marks.

Plaintiffs argued that (1) they had a right to exclude others from using the mark and (2) the commonwealth violated that right to exclude, drawing on recent Supreme Court precedent that requiring landowners to allow union organizers access to their land was a taking. But isolated instances of infringement didn’t equate to preventing a trademark owner from exercising their right to exclude, the way that the state’s labor law had prevented landowners from suing organizers for trespass.

Also, a temporary and partial physical incursion is still a physical incursion: “In the case of physical property, allowing even one individual to temporarily occupy or possess the property physically displaces the owner from possession or control of that portion of the property, however small.” But “[u]se of a trademarked word or image does not necessarily have the same effect.” (Note: I think the court should be talking about infringement, not “use.” Not all use of a trademark is within the scope of trademark “property” right, and the court worsens its point w/r/t takings analysis by not being more precise.)

It's not just that the TM owner can keep using the mark in the TM use sense during government infringement. It’s that it can still keep using the right in the “property right” sense during infringement: it can still sue the government, and other alleged infringers, because it still has that right. So the value of the right has not been completely destroyed, as it would have to be for a nonpossessory act to constitute a categorical taking. So balancing it is.

Also, interestingly:

There is special reason for caution in the trademark context: a trademark owner’s right to exclude is less robust when compared to other forms of property—and even when compared to other forms of intellectual property. Thus the “background limitations” on any property interest in trademarks might well be exceptions that swallow the rule, or at least require more careful assessment than the more straightforward limitations that apply in the case of physical property.

(Perhaps another way to say it: infringement is neither trespass nor nuisance; it is infringement, which is why intangible rights have to be analyzed differently.)

However, Puerto Rico had sovereign immunity, so defendants couldn’t be sued in their official capacities. The Lanham Act purports to abolish state sovereign immunity, but the Supreme Court found that unconstitutional for want of sufficient tailoring to the prevention of constitutional violations by the States, and Puerto Rico is, per circuit precedent, treated like a state for sovereign immunity purposes “unless the language of a particular statute demands [a different] result” or “some other compelling reason” exists. 

What about Section 1122(a) of the Lanham Act?  Section 1122(a) provides that “[t]he United States, [as well as] all agencies and instrumentalities thereof, ... shall not be immune from suit ... for any violation under this chapter.” 15 U.S.C. § 1122(a). And the Lanham Act’s definition of the “United States” “includes and embraces all territory which is under its jurisdiction and control.” But the clear statement rule requires any act of Congress that purports to waive or abrogate sovereign immunity to be “unmistakably clear in the language of the statute,” and this wasn’t, because the phrase “territory which is under [the United States’] jurisdiction and control” was open to multiple interpretations. “Whether the word ‘territory’ captures Puerto Rico is itself ambiguous, given Puerto Rico’s status as a self-governing commonwealth.”

The court found that, “[p]articularly in the Lanham Act, it also seems plausible that Congress used the words ‘all territory’ (singular) to ensure that the statute would cover the entire geographic scope of the United States, rather than refer to the territories (plural) of the United States as political or governmental units.” Such a geographical reading would be consistent with provisions of the Lanham Act governing the importation of goods “into the United States,” and defining the fame of a mark based on recognition by “the general consuming public of the United States.” Indeed, it wasn’t even “unmistakably clear” that the attempted revocation of sovereign immunity—which referred to the States—showed an intent to waive Puerto Rico’s sovereign immunity.

Of course, prospective injunctive relief was still possible, but not here. The district court found no ongoing violation of federal law because the sale of license plates and registration tags occurred only during calendar year 2022. What about the “unauthorized use of the Roberto Clemente trademark in connection with the Roberto Clemente Sports District”? This argument was waived. (!)

Qualified immunity: You might think you know how this will go, but these aren’t cops. Also waived at this stage! The individual defendants “specifically argued that appellants had not established a claim ‘under the Lanham Act’ and identified a particular element of one Lanham Act claim that they believed was missing” as their qualified immunity argument, and since they were wrong about that on the law, too bad. However, failing to properly invoke qualified immunity on a motion to dismiss does not necessarily preclude defendants from doing so at a later stage of litigation.

The court also was “skeptical” of plaintiffs’ argument that the Lanham Act abolished qualified immunity by waiving/trying to get rid of sovereign immunity. “[W]hen legislators have chosen to abolish qualified immunity, they have done so with much greater clarity.”

Chief Judge Barron partially dissented and would have affirmed the dismissal of claims for damages against the individual government defendants. The dissent would have read the district court to have found qualified immunity as to them on the ground that it was not clear that “use in commerce” covered the issuance of official license plates. The district court wrote, after discussing that element, that the individual defendants “were merely complying with their official duties to enforce a law as adopted by the legislature. As per the caselaw and other applicable law to date, any reasonable public official in their situation could have concluded that no trademark or proprietary rights were being violated by the imposition of the license fees that Plaintiffs have challenged in this case.” There was no clearly established precedent that governmental conduct akin to that involved here satisfies the “commercial use” element. “[W]hile out-of-circuit precedent establishes that private parties may violate the Lanham Act when they issue ‘marquee license plates,’ it does not speak to the distinct issues that this governmental context raises. Nor are those issues resolved by precedent that provides that, in general, state officials may violate the Lanham Act when they act in their official capacity.”

Non-TM owner can use 43(a) to challenge confusing use

Postar v. Hyland, 2026 WL 145934, No. 5:24-CV-019-H (N.D. Tex. Jan. 20, 2026)

This case allows a non-TM owner to bring a false advertising/unfair competition claim over allegedly confusing use of a trademark, and I think it’s right to do so, despite some fumbles over other parts of the law.

The facts are complicated, but the basics are:

In 2017, twin brothers Michael and David Postar split their interests in Affordable Storage, a self-storage business that they jointly owned and operated for many years. As part of the split, the brothers assigned certain registered trademarks associated with the business to a holding company in which they both own a 50% stake. Michael has exclusive rights to use those marks in Lubbock County, whereas David has exclusive rights to use them in Tom Green and Midland Counties. Years after the split, David, through his company Gargoyle Management, Inc., licensed a derivative of one of the marks to the brothers’ former employee, Gavin Hyland. Hyland and his wife operate their own self-storage business, Slaton Affordable Storage, Inc. Their two locations—one of which is in Lubbock County—are also named Affordable Storage.

Michael’s resulting trademark infringement claim failed because he is not the owner of the mark, and the holding company requires unanimous consent to act.

Slaton Affordable Storage opened in 2011 in Lubbock County using the Affordable Storage name and a yellow smiley face, which the other Affordable Storage businesses also used. David argued that the brothers didn’t view SAS as competition, because potential customers were unlikely to drive to Slaton or Brownfield when they had Affordable Storage options closer to home, and they even encouraged Hyland to use the Affordable Storage name and smiley face logo and included the Slaton and Brownfield locations in their own Affordable Storage advertising and websites. Several ads suggested that all Affordable Storage locations were “Under Same Ownership.”

SAS location

Michael acknowledged at deposition that he knew SAS was using the Affordable Storage name and smiley face logo as early as 2011 and that he first objected to SAS’s branding in 2020 or 2021. Six years after the Hylands opened the Slaton location, Michael told SAS’s co-owner in a recorded phone call that “[Y]’all can use the name. Anybody can use the name affordable storage, if you wanted to. ‘Cus there’s a whole bunch of them out there. You also have the rights to use a regular smiley face. Anybody can use a regular smiley face.”

word + design registration

In 2017—the same year as the split and transfer to the IP holding company, Postar IP—the Postars applied to and received two registrations for their logos with disclaimers of “AFFORDABLE STORAGE.” (The other has a crown on the smiley face.) Postar IP then entered into a license agreement permitting SAS to use the registered marks for three years; although an early draft said that SAS would stop using the Affordable Storage name and smiley face signage at the conclusion of a three-year term, SAS refused to sign. Still, absent an extension, SAS agreed to immediately stop using the registered marks when the license expired. “But SAS continued to use (and still uses today) its original Affordable Storage name and smiley face signage.”

SAS then entered into a second license agreement with David granting SAS a perpetual, non-transferable license to use, relevantly, an image of a yellow smiley face with arms, legs, and gloved hands standing next to the phrase “Affordable Self Storage.”

Image licensed under second license 

Fundamentally, Michael argued that David was using his former employee to compete with Michael in Lubbock County, where Michael has exclusive rights, even though David cannot unilaterally assign Postar IP’s rights. There was also a binding arbitral award concluding that Michael had exclusive rights to use the Smiley Mark and its iterations in Lubbock and that David couldn’t grant any license that wasn’t subject to Michael’s rights. A later arbitration panel concluded that “any ‘derivation’ (mark that includes one of the Postar IP marks or a variation of one of those marks) is the property of Postar IP.” Thus, the mark licensed to SAS, which created the same impression as the registered marks, belonged to Postar AP, although the panel didn’t void the second license agreement because SAS was no longer using the licensed mark.

Michael lacked statutory standing under §32: he was not the registrant. Neither brother may act alone on behalf of Postar IP.

However, the court reasoned, §43(a)(1)(A) (false designation of origin) and (B) (false advertising) were still available, although it applied the materiality requirement to both claims so there was no difference in analysis. Section 43 “does not require a plaintiff to establish ownership of a trademark as an element of its cause of action.”

SAS argued that they didn’t do anything to associate their business with Michael, just used the same name and logo they’ve used for years.  A reasonable jury could find otherwise, given that, as early as 2018, the first arbitration award found that only Michael could use the smiley mark in Lubbock County and that there were strict limits on David’s ability to license it. Then, the final arbitration award concluded that David lacked authority to grant second license. “If the jury believes Michael’s account, it could find that the Hylands and SAS misleadingly associated their self-storage business with the original Affordable Storage brand by continuing to use the name and smiley face logo after the parties agreed that they would cease such use at the end of the three-year lease term.” Or it could find otherwise.

And a jury could also find that the signage—“which is somewhat generic and located in areas where Michael does not have Affordable Storage locations”—was unlikely to cause confusion.  

Michael provided enough evidence of confusion to get to a jury: his declaration stated that “[c]onsumers or customers of the Hyland Defendants have called [him] or [his] Affordable Storage businesses confused about who owned the stores in Slaton or Brownfield and complained about the service they have received or their ability to reach someone on the phone to discuss the Hyland Defendants’ services.” SAS packages were sent to one of Michael’s locations, and SAS received an invoice from a gravel company that was intended for one of Michael’s businesses. True, some of the evidence was from 2018, but SAS was using the  Affordable Storage name and logo in 2018, and Michael’s declaration wasn’t temporally limited.

Materiality: This was a closer call, but the evidence of misdirected packages and invoices was “somewhat probative. Drawing all inferences in Michael’s favor, the fact that items meant for one entity were sent to the other suggests that a customer could be equally deceived into thinking that the two Affordable Storage businesses are the same.” Statements of actual confusion were also probative of materiality. (This seems to conflate confusion with materiality, though I suppose one could argue that if consumers were complaining to him the issues mattered to them.)

Also, self-storage was “in commerce” even if it was a local business.  

Injury: “If the jury agrees with Michael’s theory of the case—that the defendants are falsely associating themselves with the Affordable Storage brand by using unauthorized marks or the Affordable Storage name and signage in areas where he has exclusive rights—then it stands to reason that Michael is ‘likely’ to be injured by that conduct.”

The court also allowed a reverse passing off claim to proceed for reasons that are mysterious to me. The court even describes the theory as that “misrepresented themselves as the original Affordable Storage brand in a way that creates a likelihood of consumer confusion.” That’s just … regular old palming off. (The state claims survived too.)

The court also seemed to misunderstand the non-preempted misappropriation claims, focusing on the disputed claim that Michael “created” the mark—a theory that would clearly be preempted by the Copyright Act. (It said “the fact that the Registered Marks were assigned to Postar IP years after they were first used says nothing about who created them.”) The goodwill in the mark is something different. A jury could find that Michael and SAS compete in Lubbock County, plus the disputed existence of confusion also meant that competition was disputed. (I dunno, it could just mean that people don’t pay much attention to locations when they search.)

David might be liable for encouraging the infringement, if any.

The limitations-period/laches defense also required trial. The parties agreed that Texas law sets out a four-year limitations period for the Lanham Act claims. (Again, the court seems a bit confused about the difference between laches and a limitations period.) Michael sued in January 2024. Obviously, he knew about SAS’s use for a long time, even including it in his own ads. But he argued that the federal violations did not occur until the defendants entered into the second license agreement; a jury “could find that at all times before then SAS’s use of the Affordable Storage name and the smiley face logo was with Michael’s consent.” And that was within the limitations period; Michael’s theory was that the first license was just to allow SAS to transition away from the marks. (There seems like a naked licensing problem before the first license.)

For the state law claims, the continuing-tort case law and the appropriate limitations period was “far from clear.”

11th Circuit affirms defense TM verdict; evidence of confusion is not evidence of harm for disgorgement

Florida Virtual School v. K12, Inc., 2026 WL 127063, No. 24-10449 (11^th Cir. Jan. 15, 2026)

A pretty good example of why granting registrations to highly descriptive (at best) terms is a bad idea! Also a good example of why not having a harm requirement in trademark infringement encourages this kind of litigation—although the lack of harm matters to remedies, it isn’t part of the main case, making litigation seem much more attractive.

Florida Virtual, a state-funded initiative, has federal registrations for “Florida Virtual School” and “FLVS” for educational services. K12, a for-profit competitor, initially launched with “Florida Virtual Academy” and “Florida Virtual Program.” Florida Virtual sued K12, which settled and adopted the name “Florida Cyber Charter Academy.” But Florida Virtual sued again when K12 launched a new program, “Florida Online School,” adding unfair competition, false advertising, and breach of contract claims. K12 counterclaimed for cancellation of Florida Virtual’s registrations for fraud against the USPTO. The trial court rejected all the claims (fraud on the PTO was barred by the settlement agreement despite some decent evidence of misrepresentation), and the court of appeals affirmed.

Of relevance to the breach of contract claims: K12 agreed to (1) pay Florida Virtual $600,000; (2) stop using the Florida Virtual Academy (FLVA) and Florida Virtual Program (FLVP) names and acronyms; (3) not use additional “Prohibited Marks”; and (4) transfer domain names containing the prohibited marks to Florida Virtual in 2016, until when it could use them to redirect to itself. The settlement agreement included a list of “Approved Marks” available to K12, but the parties agreed that there would “be no presumption against K12’s choice of a mark” not on that list.

As is not uncommon, nobody apparently followed up on the domain name transfer. If you have outside counsel do the litigation, you must have someone internal calendar issues like this for your team! Followup is where things are most likely to fall apart. This has been your practice pointer for the day! Thus, when Florida Virtual objected to K12’s Florida Online School (FLOS) in 2019, it also raised concerns with K12’s continued use of FLVA.com as a redirect to its other websites. K12 then transferred the FLVA.com domain to Florida Virtual and began the process of renaming its program “Digital Academy of Florida,” but Florida Virtual still sued.

False advertising: The false advertising claim was based on a checklist on K12’s website for “comparing K12 to other online learning solutions.” The checklist showed two columns, each listing several features of an online education program. “K12-Powered Schools” showed checked boxes next to each feature while “Other Online Learning Solutions” had an unchecked box next to each.

Florida Virtual’s survey expert concluded that the checklist misled around 18 percent of consumers into believing that Florida Virtual offered services that its competitors did not, but the district court concluded that the survey portrayed the checklist “out of context” and granted summary judgment on the false advertising claim because there was no other evidence of consumer deception.

The analysis here is weird; the court didn’t like that the survey didn’t show parents other virtual school options and ask them if they actually had the features at issue—but that’s falsity, which usually is established by evidence other than the survey. Still, the court reasoned, the checklist wasn’t literally false, because, although one reasonable reading of the checklist is that K12 provided “the checked services while other schools [did] not,” another reasonable reading was that K12 was “inviting consumers to do their own research and fill out the checklist—not stating that it possessed features the other providers definitely did not.” (The vagueness of the “other” category leads me to a similar ultimate conclusion—if such a comparison is even falsifiable, it doesn’t seem that Florida Virtual showed that all other online options in fact had the features in question. A better criticism would be that the survey didn't test the alternate meaning if it didn't give respondents the option to say "this is a checklist I can use" or something like that, along with "this means those other schools don't have those features.")

Even assuming falsity as to Florida Virtual—which did offer all the features—the survey “did not allow respondents to review the websites of K12’s competitors and assess whether they provided the same services as K12.” [Again, this is about falsity, not misleadingness.] Thus, the survey was unreliable for assessing a “marketing tool” whose stated purpose was to allow users to “weigh [their] options” when comparing K12 to other providers.

Trademark infringement: The district court excluded the lost-profits testimony of Florida Virtual’s damages expert, who wrongly/without foundation assumed that every Florida Online School student would have enrolled in Florida Virtual School absent the alleged infringement. With this lost-profits testimony excluded, there was no evidence of actual damages.

Florida Virtual sought disgorgement of not only K12’s profits related to Florida Online School, but also the profits from its other programs because the continued use of FLVA.com as a redirect to these programs’ websites was allegedly an independent act of trademark infringement. The district court disagreed and struck testimony unrelated to Florida Online School; Florida Virtual had not “based its trademark infringement arguments on [K12’s] use of the FLVA.com domain,” and the claim was released by the settlement agreement.

The court of appeals affirmed the rejection of Florida Virtual’s actual damages remedy. The only evidence Florida Virtual had of damage did not show that confusion caused the damage. First, a parent testified that she wanted to enroll her daughter in Florida Virtual School in 2020, but accidentally enrolled her in Florida Online School instead. But she realized her mistake and withdrew her daughter before classes began, then attempted to enroll her daughter with Florida Virtual, but ultimately “decided to go back to brick-and-mortar at the end of the day” (at the point that Covid shutdowns in Florida had ended). This was not a lost customer.

Second, there was other arguable evidence of confusion among students, parents, and school officials. “But there is a difference between general confusion and actual damages, and Florida Virtual did not bridge that gap.” The court highlighted some examples (most of which arguably just show that the purported mark is near-generic or generic):

A social worker contacted Florida Virtual for a Florida Online School student’s enrollment records after the student’s father said he had “been enrolled in FLOS (Florida Online School) which is a part of FLVS.”

A sixth grade Florida Online School student told his teacher in an email that he was “just starting Florida Virtual School.”

A parent emailed her son’s Florida Online School teacher to withdraw him “from Florida virtual school.”

In an email to a Florida Online School teacher, a parent said, “I am new to the Florida virtual school.”

A parent contacted both Florida Virtual and Florida Online School employees to ask about the status of her daughter’s enrollment in Florida Online School.

Even viewed in the light most favorable to Florida Virtual, “these examples demonstrate confusion—but that’s all. They do not show that the confusion diverted students from Florida Virtual to K12, or otherwise injured Florida Virtual.” And the damages calculation was no help because the expert assumed that Florida Virtual would have obtained all of K12’s registrations absent the allegedly unlawful conduct. “That conclusion was not an abuse of discretion.”

But, because there’s no harm requirement, that didn’t end the case, just kept it a bench trial.

There was no error in finding Florida Virtual’s marks weak. FV conceded descriptiveness, but the 11^th Circuit presumes relative strength from incontestable registrations (boo). Still, that presumption can be rebutted by showing commercial weakness, which K12 did. Florida Virtual’s director of marketing testified that it had changed its logo six times since 1997 and acknowledged that changing a logo “can dilute a brand.” And its senior director of marketing and communications “discussed a nearly $5 million effort to rebrand [Florida Virtual’s] global operations as recently as 2020.” 

“In a 2018 survey, only 30 percent of parents with school-aged children recognized Florida Virtual’s brand—even when prompted. And in a 2020 survey, just 1 percent of respondents named Florida Virtual as an online education provider without prompting.” There was other survey evidence showing 50% prompted recognition, but that wasn’t much more than K12’s. There was also evidence of third-party use of “Virtual School” modified by the names of various Florida school districts; though FV argued that the geographic designation removed any confusing similarity, the district court could reasonably take a different view.

On similarity, the word marks were “nearly identical,” but Florida Virtual “operates in a crowded field of similar marks on similar goods or services,” where “slight differences in names may be meaningful,” and the design marks looked “nothing alike.” There was no error in finding similarity to be neutral.

Customer overlap: the court found this factor neutral because Florida Online School’s only customer was Hendry County School District, not “individual parents and students.” Florida Virtual argued that it “also partners with school districts,” so its customers are similar either way, and Florida Online School still “catered to the same general kinds of individuals,” which was all that was required. “[W]ere we reviewing de novo, we might agree that this factor weighs in Florida Virtual’s favor. But we are not—and it was not clear error for the court to determine that this factor was neutral.” K12 presented evidence at trial that the Hendry County School District was the only one purchasing services from Florida Online School, meaning there was no overlap. Anyway, “error in its analysis of one of the subsidiary factors” is “not enough to allow us to overturn” the trial court’s decision.

Similarity of advertising: Both parties “use[d] digital media to reach their customers and facilitate services,” but they targeted different audiences: K12 “primarily market[ed] to school districts,” while Florida Virtual advertised directly to students and parents. This minimized the overlap.

Intent: “While there was some evidence—like K12’s continued use of FLVA.com—that could suggest intent to infringe, other evidence supported the court’s finding,” including the name changes when challenged.

Actual confusion: “Short-lived confusion or confusion of individuals casually acquainted with a business is worthy of little weight, while confusion of actual customers of a business is worthy of substantial weight.” Reasonable minds could disagree whether it was the marks that caused any confusion reported, and thus the trial court did not clearly err.

For example, the parent mentioned above testified that she believed the two programs to be “one in [sic] the same,” because she “thought there was only one” online education provider in Florida. Because of that belief, she “didn’t feel the need to research” her options “in depth.” “[I]t was reasonable for the court to conclude that the source of her confusion was her mistaken belief that there was only one provider, not the similarity of K12’s marks. After all, if [the parent] was convinced there was only one online provider, it would not make a difference to her whether the program she signed up for was called Florida Virtual School, Florida Online School, or something completely different, like Digital Academy of Florida.” The story was similar with the other purportedly confused parent, who the district court found was confused about the flexibility of the schedule offered, not the name of the school. “[S]he testified that she did not care which program her son went to, so long as it had a flexible schedule.”

It’s nice to see some focus on causation here! The court compared the situation to one in which a skier believes that only one airline, Delta Air Lines, offers a flight from Atlanta to Salt Lake City; she books the first flight that comes up in her search, which happens to be on American. “Did she book with American instead of Delta because their names were too similar? Of course not—it’s because she thought there was only one option.” (Cf. Conopco, Inc. v. May Dept. Stores Co., 46 F.3d 1556 (Fed. Cir. 1994) (rejecting similar evidence of actual confusion where consumer testified that she believed that national brands made the products used in house-branded alternatives).

Florida Virtual also argued that it was error for the court to discount evidence demonstrating actual confusion: twenty-one emails from employees, parents, students, and others. But it was not clear error for the district court to find that the emails were not reliable evidence of confusion, but rather of “the fact that online educational service providers exist in a muddled marketplace replete with generically and descriptively named participants.” It was also not clear error to point out that, without survey evidence, there was “no way to filter out latent marketplace confusion that the parties agree exists in the online education market.”

Consumer sophistication: The trial court found that Florida Virtual’s customers were sophisticated given “the nature and importance of a parent’s choice of where to educate their child.” This is, of course, a normative statement, not an empirical one, as the parents above demonstrated. Students looking for a college are “relatively sophisticated consumers” because of “the nature, importance, and size of the investment in a college education.” It was not clear error to apply that logic to schools where “parents, not students, are the ones making that decision. Plus, the evidence showed that some of Florida Virtual’s customers were school districts and administrators, and we would expect them to have a developed understanding of their online education options.”

CFP: Yale/Harvard/Stanford Junior Faculty Forum, May 21-22

 Please share widely! 

Request for Submissions

Harvard/Stanford/Yale Junior Faculty Forum

May 21-22, Yale Law School

 Harvard, Stanford, and Yale Law Schools are soliciting submissions for the 2026 Harvard/Stanford/Yale Junior Faculty Forum, to be held at Yale Law School on May 21-22, 2026. Ten to fifteen junior scholars (with one to seven years of teaching experience) will be chosen, through a double-blind selection process, to present their work at the Forum. A jury of accomplished scholars will choose the papers to be presented. A senior scholar will comment on each paper. The audience will include the participating junior faculty, senior faculty from the host institutions, and any invited guests. There is no publication commitment. Yale Law School will pay presenters’ travel expenses, though international flights may be only partially reimbursed. 

The goal of the Forum is to promote in-depth discussion about particular papers and more general reflections on broader methodological issues, as well as to foster a stronger sense of community among American legal scholars, particularly by strengthening ties between new and veteran professors. 

TOPICS: Each year, the Forum invites submissions on selected topics in public and private law, legal theory, and law and humanities topics, alternating loosely between public law and humanities subjects in one year, and private law and dispute resolution in the next. For the upcoming 2026 meeting, the topics will cover these areas of the law:

Antitrust

Bankruptcy

Civil Litigation and Dispute Resolution

Contracts and Commercial Law

Corporate and Securities Law

Intellectual Property

Private Law Theory and Comparative Private Law

Property, Estates, and Unjust Enrichment

Taxation

Torts 

QUALIFICATIONS: Authors who teach law in the U.S. in a tenured or tenure-track position and have not been teaching at either of those ranks for a total of more than seven years are eligible to submit their work. American citizens or permanent residents teaching abroad are also eligible, provided that they have held a faculty position or the equivalent, including positions comparable to junior faculty positions in research institutions, for not more than seven years, and that they earned their last degree after 2016. Authors must be qualified as of the date of submission. We accept jointly authored submissions, but each of the coauthors must meet the qualification requirements. Papers that will be published prior to the Forum are not eligible. There is no limit on the number of submissions by any individual author. Faculty from Harvard, Stanford, and Yale Law Schools are not eligible.

 

PAPER SUBMISSION PROCEDURE: Please use the following form to submit: https://docs.google.com/forms/d/e/1FAIpQLSeE-Y1decyDrkmejVoztM2oPI3MrLfxdP3kCT500H1TwUBiMg/viewform?usp=header. The deadline for submissions is February 20, 2026. Remove all references to the author(s) in the paper. The form will ask for the title of your paper; under which topic your paper falls; an affirmation that your paper satisfies the non-publication qualification above; and the year in which you began teaching in one of the qualifying positions above. Each paper may only be considered under one topic. Any inquiries about the form should be directed to Christine Jolls. 

FURTHER INFORMATION: General inquiries concerning the Forum should be sent to Christine Jolls (christine.jolls@yale.edu) at Yale Law School, Norman Spaulding (nspaulding@stanford.law.edu) at Stanford Law School, or Rebecca Tushnet (rtushnet@law.harvard.edu) at Harvard Law School.

Christine Jolls

Norman Spaulding

Rebecca Tushnet

 

court rejects TM owner's attempt to require full chain of custody for first sale defense, but where is the burden of proof?

ZAGG Inc. v. Ichilevici, 2026 WL 63142, No. 23-cv-20304-ALTMAN/Reid (S.D. Fla. Jan. 8, 2026)

ZAGG sells a variety of screen protectors, power management solutions, mobile keyboards, cases, and personal audio products, including my beloved Mophie. Defendant DVG resells products, including ZAGG products, through Amazon. ZAGG sued DVG for false advertising and trademark infringement; DVG counterclaimed for false advertising/unfair competition/defamation. Here, the court rejects the parties’ cross motions for summary judgment on trademark and also leaves for the jury the related question of whether DVG’s listing of its ZAGG products as “new” was false advertising, while dismissing the rest of the counterclaims.

DVG bought its ZAGG products in a liquidation pallet from a wholesaler. ZAGG argued that DVG’s advertisements are false because “Amazon’s guidelines require a product listed for sale as in ‘New’ condition to be ‘brand new’ and [ ] covered by a manufacturer’s warranty.”

Both parties produced Amazon pages supporting their views: it seems that Amazon’s buyer-facing “Condition Guidelines” define “New” as: “Just like it sounds. A brand-new item. Original manufacturer’s warranty, if any, still applies, with warranty details included in the listing comments. Original packaging is present for most New items but certain items like shoes may be re-boxed.” However, the Amazon FBA Guidelines and Seller Central, in defendants’ telling, “simply require that the item is brand-new and unused, free of blemishes, smudges or dirt, and in the original packaging,” and defendants submitted an expert report in support of this view.

Past cases haven’t involved listings where a seller, like DVG here, notifies purchasers that “it is not an authorized reseller” of ZAGG products and urges them to “check with the manufacturer to see if a warranty may apply.” Thus, there was a disputed question of material fact on literal falsity.

The court also sent the “liquidation” theory of falsity to the jury, though I’m not sure it should have under its own standards, given that ZAGG had the burden of proof here. The “thrust” of ZAGG’s argument was that, because DVG couldn’t “verify the full chain of custody or history of each individual item,” it couldn’t confirm that was actually selling “brand new” items.  Sure sounds like lack of substantiation to me.

Later, the court found that ZAGG submitted enough to get to the jury on injury: “diversion of sales to a direct competitor [is] the paradigmatic direct injury from false advertising.” “There’s no question that ZAGG and DVG are direct competitors and that they sell the exact same products.”

Trademark infringement: Again, ZAGG argued that defendants had the burden of proving a complete chain of custody, back to sale by ZAGG, before they could raise a first sale defense. (So much for selling your used stuff!) The court’s research did not find any cases imposing this trace-to-manufacturer requirement. DVG disclosed the identity of its supplier and produced documents and testimony about that supplier’s sales to DVG. The circumstances weren’t suspicious, as in another case where defendant claimed to have “found [products] in storage units he acquired,” and the plaintiff submitted “proof that the products [the defendant sold] were returned product not to be resold.”

There was no record evidence behind ZAGG’s speculation that DVG was selling counterfeit or damaged goods; it conceded that all the products it bought in test buys were genuine. DVG also attested (under oath) that all the ZAGG products it buys are “independently sorted and graded in accordance with Amazon’s condition guidelines before sending them to Amazon’s warehouses” and that “[m]any of the products come in their original case packs from the factory.”

“So, while DVG may not know where its supplier gets its ZAGG inventory, that break in the custodial chain isn’t sufficient, standing alone and at summary judgment, to render the first-sale doctrine inapplicable as a matter of law. We’ll therefore permit DVG to assert its first-sale defense at trial.” Still to come: who has the ultimate burden of proof here? I would think it would have to be ZAGG, even if first sale is labeled a "defense" for convenience: The burden is still on ZAGG to show that defendants sold infringing products, and, just as the defense "this mark isn't confusing because it's different enough" would not shift the burden of proof to defendants, "this mark isn't confusing because it's a legitimate good from the TM owner" seems like it shouldn't do so either. 

There were also disputed issues on the “material difference” exception to the first-sale doctrine. “A material difference is one that consumers consider relevant to a decision about whether to purchase a product. Because a myriad of considerations may influence consumer preferences, the threshold of materiality must be kept low to include even subtle differences between products.” ZAGG argued that some of the products have been “opened, repackaged, restickered, or damaged,” and DVG’s products don’t “carry the manufacturer’s warranty.” DVG argued that it “meets or exceeds” the terms of ZAGG’s warranty because it offers to replace customers’ defective items without charging them a $10 shipping fee. This was a jury question, including on DVG’s expert testimony that any damage to the products’ packaging likely occurred in transit.

DVG’s defamation counterclaim based on ZAGG’s trademark reports to Amazon was dismissed because it didn’t show falsity or negligence. One claim that a test buy product had been “altered” and three that the product was “wrong” were not shown to be false: the first had been opened and the packaging seal removed, and the other three had different SKUs than listed. DVG didn’t meet its burden of showing that the different SKUs didn’t matter.

Temu's "cheaper and way better quality than Shein" claims were potentially falsifiable, not puffery

Roadget Business PTE. Ltd. v. PDD Holdings Inc., 2026 WL 44864, No. 24-2402 (TJK) (D.D.C. Jan. 7, 2026)

Plaintiff, aka Shein, sells low-priced fashion and lifestyle products through a website and mobile application. Defendant runs a competing, discount-driven online platform—Temu. “Each platform has accused the other of engaging in unlawful, multifaceted campaigns to interfere with the other’s competitive posture.” This is Shein’s countersuit alleging trade secret theft, intellectual property right infringement, false advertising, and other unlawful acts. The court allowed trade secret claims and false advertising claims, but dismissed product disparagement or trademark dilution claims (Temu didn’t move to dismiss all of Shein’s claims).

In May 2022, Shein’s mobile app allegedly was the most downloaded app in the United States, and as of the filing of the complaint, Shein had over 33 million followers on Instagram and nearly 10 million followers on TikTok. Shein says it is “one of the most popular” online fashion and “lifestyle brands” worldwide.

Shein alleged that its success stemmed from its data-driven trade secrets about anticipating demand. Shein allegedly owned copyrights in both its photographs and its designs. Shein owns several trademark registrations for the SHEIN brand and its affiliate brands, and consumers allegedly associate all these brands with “the sale of high-quality fashion and home goods at a fair price.”

Temu, by contrast, functions as an “online marketplace” where independent third-party sellers sell their own goods. Temu allegedly stole Shein’s Best Seller Data; used or “instructed” its sellers to use copyrighted images of Shein products as promotional images on the Temu website and app; refused to let sellers “discontinue the sale of infringing products” on Temu, even when sellers request such removal; used the SHEIN trademark (or close variations, like “She/in”) in online ads, including sponsored ads on Google, which suggest that “authentic” Shein merchandise is sold on Temu, but when consumers click on the ads, they are directed to Temu’s website, which offers no SHEIN-branded products for sale; created “fake” accounts that use the SHEIN mark—for instance, by using the handle @SHEIN_USA—to “promote its own website” and to “trick consumers” into downloading its mobile app; and instructing paid influencers to “disparage” Shein’s products. E.g., one influencer (with over 137,000 followers) allegedly posted a series of pictures of herself wearing different Temu apparel with the caption, “Shein Alternatives, cheaper but way better quality! Check Temu.com out! So freakin cute and so freakin cheap!”  

Product disparagement: The court applied Massachusetts law as alleged by Shein. In Massachusetts, a plaintiff bringing a product disparagement claim must plausibly allege that the defendant “(1) published a false statement to a person other than the plaintiff; (2) ‘of and concerning’ the plaintiff’s products or services; (3) with knowledge of the statement’s falsity or with reckless disregard of its truth or falsity; (4) where pecuniary harm to the plaintiff’s interest was intended or foreseeable; and (5) such publication resulted in special damages in the form of pecuniary loss.” As is common with respect to mass advertising claims, Shein failed on (5).

Special damages are “essential” to a product-disparagement claim, and must be pled with specificity. They “limit[ ] a plaintiff’s recovery to the ‘pecuniary loss that results directly or immediately from the effect of the conduct of third persons’ acting in response to the alleged disparagement.’ ” If a statement was so “widely disseminated” that it is impossible to identify specific customers who chose not to buy the plaintiff’s products, then the plaintiff may show “that the loss of the market has in fact occurred and that no other factor caused that loss.” A plaintiff asserting that theory must at least allege “facts showing an established business and the amount of sales before and after the disparaging publication, along with [facts supporting] causation.”

The only, conclusory allegation about attendant damages is that Shein was “harmed by the dissemination of the Influencer Statements because they caused consumers to believe that SHEIN-branded products were inferior in quality to products sold by Temu when this is untrue.” Shein didn’t even allege that it lost any sales, let alone that any such hypothetical losses were solely attributable to influencer statements.

Dilution: Shein failed to allege fame. The very “nature of a dilution claim itself makes it difficult to state claim to relief that is plausible on its face.” Its allegations were conclusory, and worsened by the fact that it apparently tried to claim fame for its other “affiliate” marks, including SHEIN CURVE, DAZY, SHEGLAM, ROMWE, and LUVLETTE. It’s not acceptable to lump marks together like that.

Shein alleged that it “has invested significant time, effort, and money promoting, advertising, and marketing its business operations across multiple channels,” and that the “SHEIN brand also enjoys a significant presence on social media.” These allegations were “without more, conclusions, which are not a proper factual basis for a finding of fame.” Shein didn’t allege “how or since when it promoted its marks, or even how much money it invested in any such marketing.”

Shein’s complaint likewise offered no details whatsoever on the “amount, volume and geographic extent of sales” of any products offered under the SHEIN brand, let alone any of its affiliate brands. On “actual recognition of the mark,” a plaintiff cannot “simply allege” that “it has attained widespread and favorable recognition.” That Shein—as a “brand” or marketplace—allegedly enjoys a large social-media presence with “million[s]” of “followers,” says little about consumer recognition of the “trademarks ... in suit.” The Lanham Act protects “the mark,” not “the designer” or “the brand itself.”

“Shein’s alleged popularity on social media also says little about consumer recognition among the general population.” “Many brands are advertised” on social media and have a significant following there, but “not all are famous.” As for its registrations, “[o]ne cannot logically infer fame from the fact that a mark is one of the millions on the Federal Register.”

“[S]tating legal conclusions and reciting relevant factors is insufficient no matter the pleading standard. But especially so when a claim is inherently ‘difficult’ to establish because Congress prescribed a ‘purposely rigorous’ element—in this case, fame.” Shein’s alleged global revenue and growing customer base, or the number of downloads of its “shopping app,” “do not speak to the alleged fame of the SHEIN or any other mark.”

False advertising: Shein did better here, though the “influencer guidelines” were a “close call.”

First, were the accused statements “commercial advertising or promotion” or merely “[p]rivate communications with business partners.” True, providing guidelines to non-customers, without more, wouldn’t be false advertising. But Temu alleged more: that Shein “provided influencers with guidelines” that “require[d] them to make ... false” statements on social media, which were then made; these should, Temu alleged, count as Shein’s statements.

And social-media posts by paid influencers undisputedly qualified as commercial advertising under the Lanham Act. Thus, a plaintiff can state a false advertising claim by alleging that “the defendant itself, or through its paid agents, made false statements in commercial advertisements.” Shein plausibly alleged its agency theory of liability.

Temu’s puffery argument was a closer call, but the statements couldn’t be deemed puffery as a matter of law. (Not every court would agree, though I’m sympathetic.)

Temu’s Influencer Guidelines allegedly “instruct” influencers to include, among others, the following statements in their “Instagram Caption”: “Shein is not the only cheap option for clothing! Check Temu.com out, cheaper and way better quality!” and “Looking for clothes better than Shein but cheaper than revolve? Check Temu.com out.” And Shein gave examples of posts that used these/nearly these captions.

Claims that Temu’s clothes are “cheaper” but “way better quality” than Shein’s were actionable because they made “specific” claims that can “be[ ] proved false” or can “reasonably be interpreted as ... statement[s] of objective fact.” “Cheaper” was undoubtedly “objectively verifiable.” While statements like “better” generally “amount[ ] to little more than an exaggerated opinion of superiority that no consumer would be justified in relying on,” saying that a “product can do something ‘more efficiently,’ ‘easier,’ ‘quicker,’ or ‘safer’ is more specific.” This is especially true when a statement “make[s]” an “explicit comparison” to “other brands” about “particular characteristics that would be important to a consumer.” A reasonable consumer could “believe” that the advertising party actually “test[ed]” and compared competing products and “deduced” that one was “superior in these ways.”

“Here, a reasonable consumer could think just that.” Quality is a specific enough characteristic for clothes, and it’s material, “particularly in the fast-fashion context, where buyers know that low prices (a key selling point) can come at the cost of quality.” Indeed, the fast-fashion context itself renders the statement less “vague” and “unmeasurable,” “because there are only so many ways in which one company’s clothing article can be of ‘better quality’ than another’s.” Also, the “way better quality” claim appeared next to the verifiable claim that Temu’s clothes are “cheaper” than Shein’s, and was made by an “influencer” (depicting herself wearing Temu’s clothes) “whom consumers perceive as having personal experience with—i.e., as having ‘tested’—the products they promote.” How other courts treat a “a specific word is of little help unless that word is used in a sufficiently similar context,” and most of the cases cited by Temu involved general claims of superiority—e.g., “better customer service” and “better coverage,” or “better data network”—with no reference to specific features or specific competitor products.

Although a news article appended to the complaint stated that “Temu’s prices” for clothing “are usually ... 20-30% lower than on SHEIN,” that didn’t show that Temu’s prices are always cheaper than Shein’s—which Temu would need to show to establish that the alleged influencer statements, portraying particular products, are true.

For similar reasons, Shein stated a claim for contributory false advertising, which is available under the Lanham Act, since it’s available for trademark and 43(a) has the same introductory language applied to both causes of action.  “[C]ontributory liability is a common law theory of derivative liability that requires no express statutory basis.”

Dueling genealogists: photo (c) claims allowed, but not Lanham Act or factual compilation claims

Hein v. Mai, 2026 WL 44798, No. 24-01126-JWB (D. Kan. Jan. 7, 2026)

Some interesting stuff going on in the genealogy world!

The Volga German people are individuals of German origin who moved to the Volga region of Russia in the eighteenth century. … There is a sizable Volga German diaspora in the American Midwest. Plaintiff Margreatha Hein and Defendant Dr. Brent Mai are both genealogy researchers on the Volga German people. Their research is the subject of this lawsuit.

Hein operates volgagermans.org, where she publishes her research. Mai is the Dean of Libraries at Wichita State University, has held similar positions with other universities, and operates volgagermaninstitute.org, where he publishes his research.

Hein first objected to Mai’s copying in 2020; in 2023, she registered the copyright in eight photos she took in Europe that were republished on Mai’s website as early as 2017. (This removes her eligibility for statutory damages.) She also registered ten “textual compilations” and alleged that Mai copied 107 textual compilations from her website: paragraph form summaries of genealogical information, organized by last name.

The parties focused on a particular example, which plaintiff’s expert contended was representative; as plaintiff has the burden of proof of infringement, the court extended its finding of noninfringement to the other, unargued examples; plaintiff didn’t provide “any additional examples that vary in a significant way.”

Hein registered this text:

Johann Jacob Hessler (son of Johann Jacob Hessler of Niedergründau) was baptized on 15 December 1718. Anna Maria Meininger (daughter of Johannes Meininger of Mittelgründau) was baptized on 2 December 1725. Johann Jacob and Anna Maria married in Rothenbergen on 26 August 1745.

Baptisms were recorded for the following children, all born in Rothenbergen: Johann Conrad, born 5 February and baptized 12 February 1747 (died 30 April 1754); twin daughters born 28 May and baptized 29 May 1751, Anna Margaretha (died 16 May 1754) and Christina; Anna Margaretha born 22 May and baptized 25 May 1755; Elisabetha, born 24 January and baptized 26 January 1760 (died 27 Jan 1760); and twin sons born 5 February and baptized 7 Feb 1762, Valentin (died 5 Mar 1764) and Friedrich.

Jacob Hessler died on 8 Nov 1762. On 5 Jan 1764, Anna Maria Hessler (widow of Jacob Hessler) married Hartmann Ifland (son of Johannes Ifland from Lützelhausen) in Rothenbergen. They had a daughter Catharina, born 2 January and baptized 8 January 1765.

Hartmann, Anna Maria, and three of the Hessler children (Christina, Anna Margaretha, and Friedrich) arrived in Russia on 9 August 1766. Hartmann apparently died during the journey to the villages.

Mai admittedly copied; he listed Hein as a contributor or researcher. The parties’ research is “freely accessible to the public and neither party receives any income directly from the disputed material on their website.” Mai, however, on occasion receives income from leading tours of the Volga region or translating certain documents. Hein has stated she has no interest in similar business.

The court first allowed Dr. Kenneth Crews to testify as a copyright expert, but only about issues of fact (the process of getting a registration and possibly some facts related to fair use, though it’s harder to see how that would work), not ultimate legal issues.

Mai challenged Hein’s standing since she doesn’t seek to generate revenue, but she adequately alleged copyright infringement—which has a sufficient common law analogue—and reputational harm for the Lanham Act by listing her as a researcher/contributor and allegedly including inaccurate information.

Copyright limitations period: contested issue of facts precluded summary judgment for Mai given the discovery rule and the possibility that Mai engaged in new publications when he moved institutions/changed domain names. The court accepted Hein’s argument that she didn’t discover the “full scope” of the infringement until 2023 as sufficient to avoid summary judgment, though I’m not sure how persuasive that is given the 2020 objections.

Copyright in the form compilations of historical genealogical information: This claim failed because Mai did not copy anything copyrightable. The court’s north star was the Supreme Court’s admonition that “the selection and arrangement of facts cannot be so mechanical or routine as to require no creativity whatsoever.” Still, there might be a valid copyright in Hein’s compilations. But even with a triable issue on that, infringement claims failed.

Stripping each entry of uncopyrightable facts/asserted facts, what remained was a mechanical “skeleton.” An abstraction-filtration-comparison approach was useful here given the thinness of the copyright. The sample Hessler text was “composed almost entirely of facts (names, dates, and locations) that are not subject to copyright protection.” Without the facts, here was the selection/coordination/arrangement:

_____________ (son of _____________of _____________) was baptized on _____________. _____________ (daughter of _____________ of _____________) was baptized on _____________. _____________and _____________married in _____________on _____________. … etc.

Mai’s version:

Johann Jacob Hessler, son of Johann Jacob Hessler of Niedergründau, was baptized on 15 December 1718. Anna Maria Meininger, daughter of Johannes Meininger of Mittelgründau, was baptized on 2 December 1725, Johann Jacob and Anna Maria were married Rothenbergen on 26, August 1745.

The Gründau parish register records the baptisms of the following children of Johann Jacob & Anna Maria Hessler, each born in Rothenbergen: (1) Johann Conrad, born 5 February 1747, baptized 12 February 1747, died 30 April 1754; (2 & 3) twins Anna Margaretha (who died 16 May 1754) & Christina, born 28 May 1751, baptized 29 May 1751; (4) Anna Margaretha, born 22 May 1755, baptized 25 May 1755; (5) Elisabetha, born 24 January 1760, baptized 26 January 1760, died 27 January 1760; and (6 & 7) twins Valentin (who died 5 March 1764) & Friedrich, born 5 February 1762, baptized 7 February 1762.

Johann Jacob Hessler died 8 November 1762, and his widow remarried on 5 January 1764 to Hartmann Ifland. They had a daughter Catharina, born 2 January 1765 and baptized 8 January 1765.

The Ifland family, along with 3 of the Hessler children, arrived from Lübeck at the port of Oranienbaum on 9 August 1766 aboard the pink Slon under the command of Lieutenant Sergey Panov.

“While Mai’s reproduction certainly contains the same basic information as Ms. Hein’s skeleton above, it can hardly be said to be a copy of copyrightable content. Basic sentences, which at least in this example Mai does not copy verbatim, and words like ‘baptism’ or ‘born’ which appear throughout, do not possess the ‘creative spark’ required to demonstrate copyright protection.”

What about the “mode of presentation”? “Because Ms. Hein chooses the humble paragraph format to present her information, she argues that Dr. Mai should not have been able to do so. But this argument proves too much. Copyright law cannot grant the first researcher who discovered and published a compilation of facts with little additional synthesis a monopoly over the mode of presentation of that information.” All the other examples Hein submitted were substantially similar; summary judgment for Mai was appropriate.

That left the photos, as to which the court denied Mai’s motion for summary judgment on fair use. (This is also framed as a finding of no fair use, but it seems like it’s still available for trial.)

Purpose and character: Mai “primarily” argued noncommerciality, not transformativeness, which probably makes sense.  “While the court agrees that Dr. Mai’s use is on its face non-commercial, there is at least a question of fact as to whether the photographs contribute to Dr. Mai’s other sources of income, such as his tours or translations.”

Nature of the work: photos are creative. (Sigh; no mention of publication status or free availability elsewhere, though that shouldn’t necessarily outweigh creativity—but not all photos are the same!)

Amount and substantiality: eight whole photos.

Market value: Because Hein has no interest in monetization of the website or through tours and translations, “there can be no effect on the market.” However, “the fair market value could at some future date be affected should Ms. Hein ever decide to monetize her work.” Summary judgment denied. Mai’s pyrrhic victory on factor four is probably matched by Hein’s overall pyrrhic victory, given that statutory damages and attorneys’ fees are unavailable.

Lanham Act/state law unfair competition claims: Hein argued that the use of her name, with the title “researcher” or “contributor” placed next to it, diminished her stature in her research field and falsely indicated she has a professional association with Mai. Mai argued that Hein wrongly tried to create a “required citation format” through federal law, highlighting “apparently conflicting complaints that Dr. Mai does not give Ms. Hein credit but also diminishes her when he cites her.” (This is Dastar’s concern, too.)

The court didn’t have to reach the issue because it found that the Lanham Act and state law claims didn’t cover noncommercial uses. “The court’s survey of Lanham Act case law confirms a commerciality requirement.” (Citing Lexmark and its progeny—this requires the plaintiff to suffer a commercial injury and is different from requiring the defendant to be commercial.)

Although Hein alleged that the use of her name enabled Mai to receive income from selling tours and translations on a different page of his website, that wasn’t enough; it was simply “too attenuated,” given that Mai’s website was “overwhelmingly noncommercial in nature,” despite its link to another website with information about his tours. Even more attenuated were other alleged commercial connections:  Mai’s “paying for a URL and copyright registrations, having a bank account, and spending substantial sums on hard copy research materials, subscription websites, technical support for a website, and travel for research and to attend conferences.” Thus, Mai wasn’t using Hein’s name “in commerce.”   

false advertising's injury requirement causes reverse passing off claim to fail

Kesters Merchandising Display International, Inc. v. SurfaceQuest, Inc., --- F.4th ----, 2026 WL 35198, No. 24-3112 (10th Cir. Jan. 6, 2026)

SurfaceQuest allegedly marketed its products with photographs of its competitor Kesters’ competing product. Kesters sells “a lightweight, seamless material used in architectural products” called MicroLite, while SurfaceQuest mainly sells “architectural film that goes on surfaces like MicroLite.” Indeed, around 2014, the parties jointly marketed MicroLite samples wrapped in SurfaceQuest film. In connection with that, Kesters supplied SurfaceQuest with products, specification guides, and photographs of Kesters’ products. SurfaceQuest then applied its film to the products.

However, two years later, “SurfaceQuest decided to sell and market its own lightweight beam wrapped in SurfaceQuest film. These marketing efforts included advertisements using photographs of MicroLite.” Kesters alleged that SurfaceQuest “published a video characterizing MicroLite as SurfaceQuest’s product,” “published images from a grocery store renovation and misrepresented them as depicting SurfaceQuest products,” “placed a SurfaceQuest sticker on a MicroLite binder and falsely represented to a Kesters customer that SurfaceQuest had manufactured MicroLite,” “put a SurfaceQuest sticker on a MicroLite sample and falsely told Kesters customers that SurfaceQuest had invented MicroLite,” and “allowed a SurfaceQuest dealer to advertise with an image of MicroLite.”

Kesters lost its Lanham Act claim because “injury isn’t presumed and the plaintiff has not presented evidence of an actual injury.”

Kesters had the burden of showing injury: either a direct diversion of sales or a loss of goodwill. The court of appeals reasoned that a presumption of injury exists when the plaintiff proves material falsity and the “plaintiff and defendant are the only two significant participants in a market or submarket.” But, even presuming literal falsity, Kesters failed to create a genuine dispute of material fact regarding the presence of a limited market.

“[A] market is sparsely populated only when the other participants are insignificant. Otherwise, the court can’t assume that the plaintiff’s lost sales would go to the defendant.”  SurfaceQuest showed the existence of multiple competitors. Kesters had a competing affidavit, but it only offered it in support of its own summary judgment motion, not in opposition to SurfaceQuest’s summary judgment motion, and it only offered the affidavit too late—in a reply brief.

Dipping its toes into antitrust reasoning (always a dangerous move), the court of appeals reasoned that even considering the affidavit wouldn’t have helped. “To determine the scope of the market, we examine ‘cross-elasticity of demand,’ which measures the substitutability of products.” The affidavit didn’t address cross-elasticity of demand, only similarities between the products made by Kesters and SurfaceQuest. “But these similarities didn’t necessarily affect the ability to substitute products,” and “a single market may include companies making dissimilar products.”

Evidence of actual injury was also insufficient. Kesters argued that it lost a bid for work on a grocery store’s health markets, but there was no evidence that SurfaceQuest obtained those projects or that the store had seen SurfaceQuest’s marketing materials, whether directly from SurfaceQuest or otherwise. Thus, the district court couldn’t reasonably infer a causal connection between SurfaceQuest’s false advertising and Kesters’ loss of the bid.

laches, once established, bars Lanham Act claims even during more recent periods

Design Gaps, Inc. v. Distinctive Design & Construction LLC, --- F.4th ----, 2025 WL 3492373, No. 24-1860 (Dec. 5, 2025)

Super complicated facts; I’ll try to focus on the Lanham Act laches part because of that. “[A]fter a squabble developed over a cabinet and closet job for a luxury home in Charleston, South Carolina, the parties went to arbitration. The arbitration turned out well for the homeowners and the general contractor overseeing the home renovations but badly for the cabinet maker.” The cabinet maker nonetheless sued in federal court, including suing people that the arbitrator had held could not be brought into the arbitration because they weren’t bound by the agreement. The court of appeals nonetheless found that, because the disallowed parties were in privity with entities validly in the arbitration, res judicata and collateral estoppel precluded any claims against them based on the job.

Design Gaps “designs and installs cabinetry in luxury homes,” and frequently worked with defendant Shelter, “a general contractor engaged in homebuilding and renovation.” They had disputes during their years of working together. “For example, Design Gaps claimed from time to time that Shelter advertised Design Gaps’ cabinets without attributing the work to Design Gaps.” These claims were not covered by the arbitration, but they were still barred by laches.

The parties accepted that South Carolina’s three-year statutes of limitations for fraud and unfair trade practices supplied the analogous limitations period. Design Gaps filed its lawsuit on January 13, 2023, meaning that any alleged Lanham Act violations occurring before January 2020 presumptively were barred by laches.

Design Gaps argued that it did not have sufficient information concerning Shelter’s violations until arbitration commenced. But it sent a C&D in April 2018 about Shelter’s unattributed uses of Design Gaps’ work specifically referencing the Lanham Act in connection with its failure-to-attribute objections. While “mere knowledge that [a trademark owner] might have an infringement claim at some future date is not sufficient to trigger the period of unreasonable delay required for estoppel by laches,” the inquiry is objective. And the objective evidence was that “Design Gaps knew Shelter was using Design Gaps’ cabinet work in its promotional materials and that Shelter was not attributing that work to Design Gaps. Design Gaps had also stated in writing that it believed such conduct was false and misleading as to the origin of the cabinet work and that Design Gaps was being harmed. These facts are virtually identical to those alleged to support Design Gaps’ Lanham Act claims in this lawsuit.”

Would laches also cover continuing the same conduct during the presumptively not-lached period? Yes. Here, the core “claim” remained the same, so the continuing violation doctrine extended laches to the more recent period.

Design Gaps argued that its delay was excusable based on Citibank, N.A. v. Citibanc Group, Inc., 724 F.2d 1540 (11th Cir. 1984); there, Citibank should have known of the defendants’ use of its name “prior to 1960, but did not file suit until 1979.” “When [Citibank] first learned of defendants’ adoption of Citibanc as the name of its holding company in 1972, [Citibank] wrote letters warning that it regarded the use of” the name “as an infringement of [Citibank]’s rights.” But, unlike Citibank, Design Gaps did not “sen[d] several other letters over the next few years” before bringing suit. Moreover, in Citibank, the defendants did “not rel[y] on the delay of plaintiffs in expanding their use of the mark; indeed, they [ ] expanded their use while asserting their right to do so, in the face of plaintiff’s constant complaints.” By contrast, the record here didn’t indicate that Shelter asserted its belief that it had the right to promote its work in the way it did to Design Gaps.

Design Gaps also argued that settlement discussions excused its delay, but the record didn’t support the existence of discussions, only that Shelter didn't respond to the letter.

Design Gaps also argued that there was no prejudice. Prejudice can be economic or evidentiary. For trademark, a defendant’s “assertion that it would suffer economic injury if enjoined from using” a plaintiff’s mark, “without reference to any evidence beyond the length of time it has used the mark, is simply insufficient to establish economic prejudice.” In another false advertising case, the Fourth Circuit found that “unreasonable delay prejudiced” the defendant “because of [the defendant]’s continued use of the advertisement on all of its [products] in over a dozen retail stores for years,” to the point that the plaintiff alleged that the defendant “ha[d] been unjustly enriched by over $27 million.” The record didn’t show that much here, but Shelter “demonstrated its continued economic investment in promotional materials between 2015 and 2022.”

For evidentiary prejudice, a defendant must “articulate how” intervening time “would prejudice [its] defense specifically.” Indeed, a defendant “ha[s] an obligation to adduce specific evidence of prejudice” to use this type of laches. Shelter relied on the death of a Mr. Butler, one of its principals, who communicated with Design Gaps about the challenged conduct. Design Gaps argued that it served interrogatories and requests for production on Mr. Butler ten weeks before his unexpected death and that Shelter’s refusal to answer discovery and deficient responses created the prejudice Shelter claims to have suffered. “Design Gaps has not supported this argument with citation to the record. Besides, written discovery responses are no substitute for live testimony. Any responsibility for discovery issues does not change the fact that Shelter has demonstrated some evidentiary prejudice. When considered in the context of over four years of unreasonable delay, we conclude that Shelter has carried its burden.” (Not entirely sure why it’s Shelter’s burden given the presumption of laches, but ok.)

what particularity is required when an ad campaign has zillions of possibly algorithmic variants?

Ledesma v. Hismile, Inc., --- F.Supp.3d ----, 2025 WL 3785960, No. 24-cv-03626-KAW (N.D. Cal. Sept. 23, 2025)

Blogging because it’s one of the first cases I’ve seen that has to address questions raised by algorithmically modified ads that are different for different users. Hismile allegedly engaged in fraudulent marketing of its teeth whitening products, “which promise to deliver instant and dramatic results.” Plaintiffs brought the usual California claims. The judge grants the motion to dismiss, with leave to amend (except as to a nationwide class for breach of warranty/unjust enrichment, which is out for good).

Hismile allegedly advertises its products through social media, particularly on TikTok, Instagram, and Facebook, with falsified before-and-after images, misleading celebrity endorsements, deceptive/undisclosed influencer marketing, and “customer reviews” by its own employees.

For example, ads for one product allegedly show the product’s purple serum while it is still on the models’ teeth, giving an illusion that the purple serum cancels out the yellow tones (consistent with their advertising focusing on “color correction” and the “color wheel”), but “fully rinsing off the product causes the color-correcting effect to disappear entirely.” They also allegedly used unnaturally bright lighting and models who already have very white teeth to exaggerate the before-and-after effect of another product. Celebrities paid to endorse allegedly already have very white teeth and are not bona fide users. They also allegedly made false claims of clinical proof, in contradiction to the science indicating minimal effectiveness.

Hismile’s primary argument was that plaintiffs failed to identify the specific ads they saw sufficient to satisfy Rule 9(b). (I’m not convinced that Rule 9(b) should apply to false advertising statutory claims, which were designed to change all the key elements of common-law fraud, but most courts routinely apply it.) The court agreed, but indicated its willingness to accept a somewhat more detailed pleading.

Plaintiffs argued that it was enough to describe their experiences and provide example ads. E.g., plaintiff Tanaka “relied on before-and-after images and videos on Defendants’ Instagram and TikTok, customer reviews, and customer reactions on Defendants’ website and on social media.”  It’s true that “courts have found that pleadings are insufficient where the complaint included a number of representative advertisements, but it was unclear which specific advertisement the plaintiff had seen and relied upon in making their purchase. Likewise, courts have often found it insufficient to simply point to a particular misleading and fraudulent statement or phrase that appeared in various advertisements. Courts have also found it insufficient to merely provide representative advertisements without stating that those were the same advertisements that the plaintiffs saw and relied upon.”

However, plaintiffs argued that they alleged exposure to a long-term advertising campaign, allowing their claims to proceed under In re Tobacco II Cases, 46 Cal. 4th 298 (2009), which stated that when “a plaintiff alleges exposure to a long-term advertising campaign, the plaintiff is not required to plead with an unrealistic degree of specificity that the plaintiff relied on particular advertisements or statements.” The circumstances of the advertising campaign may make it “impossible” to identify the specific advertisement that persuaded an individual to purchase a product.

The court reasoned that “this appears to be a case where Plaintiffs could potentially allege a pervasive, targeted advertising campaign over a period of time, all of which pushes the same message: that Defendants’ products will ‘instantly and dramatically whiten’ teeth.” They alleged a multi-million dollar advertising campaign on social media; they also alleged posts of fifteen or more advertisements per day. One plaintiff alleged seeing approximately sixty advertisements before deciding to purchase the products; requiring a plaintiff to “specifically identify each and every one of these sixty advertisements hardly seems practical or practicable.”

This is especially true for modern social media advertising. At the hearing (not in the pleadings, which is key), plaintiffs noted that the ads include a “seemingly infinite variations of what the ads can look like,” with multiple ads including the same video but in different orders. “One video may include the yellow rubber duck clip followed by a scientist clip, while another video may have the scientist clip come first followed by the yellow rubber duck clip or a yellow banana clip. In short, the same yellow rubber duck clip may be in hundreds of different of ads, making it difficult to identify which advertisement an individual may have seen.” The realities of social media exposure to “numerous 30-second or shorter advertisements, each of which may have focused on demonstrating that whitening worked through color-correction technology,” had to be taken into account.

Bottom line: “To find that Rule 9(b) requires a plaintiff to meet such a high standard would be the same as insulating a defendant from liability simply because they have created so many different types of advertisements that are then repeatedly pushed onto social media users. This would not be a fair result.”

However, the complaint wasn’t enough as currently pled. “Plaintiff must still plausibly allege that this is the type of advertising campaign that would not require them to identify the specific advertisements they viewed,” with allegations about its duration or their exposure; allegations about the strategy of using the same clip in multiple advertisements; and/or allegations that defendants’ social media accounts include thousands of false advertisements.  

Also, with respect to some categories of claims— “before or after videos, videos with scientists and dentists explaining color theory, and videos demonstrating color theory by wiping off purple paint from yellow objects”—there was more specific information, but some plaintiffs alleged that they relied on influencer endorsements without identifying who the influencer was and what was stated:

Significantly, Plaintiffs do not appear to allege that all influencer endorsements are false, such that every influencer endorsement would constitute false advertising. Likewise, some Plaintiffs relied on customer reviews, but do not specify who made these reviews or what they stated. Again, Plaintiffs do not allege that all positive reviews are fake, nor do they suggest that reviews from real customers would be actionable. To the extent Plaintiffs intend to rely on influencer endorsements or reviews, Plaintiffs will need to provide sufficient allegations to demonstrate that the endorsements or reviews they relied upon were false.

The court also commented, looking forward to an amended complaint, that claims of “instant” and “dramatic” whitening might well be non-actionable puffery; “[s]tatements that characterize the speed of an action with terms like ‘fast’ are frequently held to be puffery.”