Fairlife brand name plausibly misleading where cows allegedly lived abuse-filled lives of suffering

Bhotiwihok v. Fairlife, LLC, № 2:25-cv-01650-ODW (AGRx), 2026 WL 413749 (C.D. Cal. Feb. 13, 2026)

“In 2014, Select Milk, a dairy cooperative, partnered with Coca-Cola to launch Fairlife, a company with an eponymous line of premium milk and milk products…. Fairlife promotes, and charges more for, high levels of environmental sustainability and animal care.”

Fairlife bottles include the phrase “Recycle Me” on their labels and are stamped with a recyclability arrow, and it claims that its farms are “top in the industry for environmental sustainability.” Plaintiffs alleged that 0% of Fairlife bottles are recyclable and that the sustainability practices at Fairlife’s farms cause disproportionate environmental damage.

Fairlife also allegedly claims to follow industry-leading animal care standards and to have zero tolerance for abusive practices at farms supplying its milk, as represented by its logo:

Fairlife logo

But successive independent investigations have allegedly uncovered “horrendous animal abuse” at farms supplying Fairlife’s milk, which I will not recite but are indeed horrendous.

Plaintiffs alleged the usual California claims.   

Although the court found that plaintiffs hadn’t plausibly alleged enough Coca-Cola involvement to keep the parent company in, claims against Fairlife survived. The only allegations with sufficient particularity involved the Fairlife Logo and the recyclability claims on Fairlife’s bottle label. Nor did plaintiffs successfully plead fraudulent omission. Courts have required plaintiffs to “describe the content of the omission and where the omitted information should or could have been revealed, as well as provide representative samples of advertisements, offers, or other representations that plaintiff relied on to make her purchase and that failed to include the allegedly omitted information.” Although plaintiffs pled that Fairlife “intentionally fail[ed] to disclose material information about the products,” including that Fairlife’s products are derived from abused cows and that the products’ packaging is not recyclable, they didn’t identify where this information should or could have been revealed or which specific “advertisements, offers, or other representations” omitted critical information. Leave to amend granted if there was more.

Claims based on the logo survived as a plausible misrepresentation of Fairlife’s animal care practices. “[B]rand names can be an especially powerful source of misleading information,” even if the brand name itself is not a recognized word. Combining the words “fair” and “life” together in a brand name “may reasonably lead to the assumption that the subject of the brand lives a ‘fair life.’” Superimposed on a cartoon picture of a cow, “the implication becomes unmistakable: the cows are living a fair life. Thus, it is well within reason for a consumer to believe that, based on the Fairlife logo, the cows supplying Fairlife’s dairy products are living lives free from abuse.”

Fairlife argues that its logo was nonactionable puffery. But the Fairlife brand name, “at bottom, suggests that the cows are living lives free from abuse.” That was specific enough for a reasonable consumer to rely on, especially in context of the cow image. “Taking as true at this pleading stage the substantial evidence that shows Fairlife sources its dairy from cows that live dreadful and appalling lives, it is plausible that Fairlife’s labeling is misleading.” This may be an example of the line of cases that refuses to find puffery when no reasonable person could agree that an otherwise capacious term applied.

Recyclability claims on the bottle: Fairlife argued that California provided a safe harbor provision through October 4, 2026. The FAL’s specific regulation of recyclability claims specifically does not apply to “[a]ny product or packaging that is manufactured up to 18 months after the date the department publishes the first material characterization study required” by the law (or before January 1, 2024 if that was later). “Read plainly, it appears that the California Legislature intended to give companies eighteen months after publication of a generally applicable material characterization study to comply with recycling guidelines.” This occurred on April 4, 2024. This safe harbor provision foreclosed the recyclability claims until later in the year. When “specific legislation provides a ‘safe harbor,’ plaintiffs may not use the general unfair competition law to assault that harbor.” Nor may they use express warranty claims.

disgorgement can't be a lottery windfall--even when D was engaged in illegal gambling

TNT Amusements, Inc. v. Torch Electronics, LLC, 2026 WL 411747, No. 4:23-CV-330-JAR (E.D. Mo. Feb. 13, 2025)

Previously. TNT leases traditional arcade games in retail locations throughout Missouri. Torch Electronics leases “no-chance” gaming devices in the same market. A jury accepted TNT’s argument that Torch’s devices are illegal slot machines that divert TNT’s customers in violation of state law. Statements that the devices eliminated chance were false, and therefore the statement “this amusement device does not fit any definition of a ‘gambling device’ in the state of Missouri and is not prohibited for use by you” was also false. The jury awarded $500,000 in damages, which the court found was $125,000 for lost profits and the rest for injuries to TNT’s reputation and goodwill. (In a separate opinion, 2026 WL 413322, the court enters declaratory judgment that these are illegal gambling devices in Missouri, given the trial evidence, including from both parties’ experts, that the games contain “multiple elements of chance.”)

The court also found the case exceptional for purposes of attorneys’ fees. “[T]he Missouri Gaming Commission declared Torch Devices illegal in 2019. However, because the Commission’s jurisdiction is limited to licensed operators, Torch simply ignored the Commission’s opinion and continued to operate outside the Commission’s regulatory reach.” The Missouri Highway Patrol and multiple local law enforcement agencies also warned Torch that its devices were illegal, and several prosecutors pursued charges against its customers, and one store was convicted. “Missouri jurisprudence since 1913 has held that a gaming machine with a prize viewer is still a gambling device. Appellate courts in sister states have reached the same conclusion in recent years, as cited in the Commission’s 2019 opinion.”

Thus, “Torch was on notice since at least 2019 that its commercial representations defied the realities of the legal landscape and were therefore willfully and deliberately false when viewed in context. Torch simply chose to ignore existing authority in pursuit of profit. For the same reasons, the substantive strength of TNT’s position, both in fact and law, was exceptionally compelling, as reflected by the jury’s swift and significant verdict in TNT’s favor.” There were also some litigation shenanigans.

The court also planned to award partial disgorgement; out-of-circuit precedent suggests as factors “whether the defendant had the intent to confuse or deceive, whether sales have been diverted, the adequacy of other remedies, any unreasonable delay by the plaintiff in asserting its rights, the public interest in making the misconduct unprofitable, and whether the case involves palming off.” And, as the Supreme Court said, “A ‘defendant’s mental state is a highly important consideration in determining whether an award of profits is appropriate.’ ” Ultimately, “the district court is given broad discretion to award the monetary relief necessary to serve the interests of justice, provided it does not award such relief as a penalty.”

From 2017 to 2023, Torch collected over $5.5 million from 100 machines in locations where it overlapped with TNT, though Torch operates more than 6,000 devices statewide and might have profited by $68 million in the past year alone. The court declined to order statewide disgorgement (which suggests that Torch will still continue to break the law unless stopped by regulators) but did ask for briefing on appropriate disgorgement.

Torch relied on Retractable Techs., Inc. v. Becton Dickinson & Co., 919 F.3d 869 (5th Cir. 2019), “where the Fifth Circuit opined that disgorgement, separate from recovery of diverted profits, would have constituted a windfall to the plaintiff.” The court found this non-binding case “largely inapposite,” but noted that it still affirmed the broad discretion of a district court to consider the equities.

Torch also argued that it had a good faith belief in the veracity of its statements, based on a 2017 opinion letter from a Chicago law firm and the fact that some county prosecutors opted not to pursue charges involving Torch devices. “But the opinion letter was supplied by an Illinois lawyer prior to the Missouri Gaming Commission’s unequivocal warning in 2019, and the county prosecutors who abstained from pursuing charges did so in direct reliance on Torch’s false statements at issue here…. Overall, the evidence belies any objectively reasonable claim of good faith.”

In addition, Truck Equip. Serv. Co. v. Fruehauf Corp., 536 F.2d 1210 (8th Cir. 1976), although based on an earlier version of the statute, supported the view that “where the evidence shows willfulness and bad faith, disgorgement may exceed a plaintiff’s demonstrated losses in order to serve as a deterrent.” The court was also sympathetic to TNT’s argument that “the Lanham Act offers multiple forms of recovery precisely due to the inadequacy of diverted sales and the difficulty of proving the full extent to which a defendant’s misconduct has harmed the plaintiff or impacted the market.” The court wasn’t convinced that the amount awarded by the jury fully compensated TNT for the totality of its market injury, given that TNT was a long-established business that suffered a loss of 35% after Torch entered; some of TNT’s accounts lost to Torch had been TNT customers for 20 to 30 years. Though the parties compete for floor space, TNT’s owner explained that “it’s not a fair fight” and “We can’t generate the revenue that slot machines generate.”

The court also found that deterrence was an important consideration and that disgorgement would serve the interests of justice and further the public interest of making Torch’s conduct unprofitable. “If Torch hadn’t falsely represented and marketed its devices as ‘no-chance’ games exempt from Missouri’s definition of a gambling device, Torch couldn’t have operated anywhere in its current territory. Rather, it could only have operated in licensed casinos subject to state gaming taxes benefiting public education. One hundred percent of its revenue is attributable to its misrepresentations.”

However, given the scope of Torch’s operations, “a disgorgement award sufficient to render Torch’s advertising unprofitable would inevitably result in a ‘lottery-level windfall’ to TNT.” Thus, disgorgement limited to overlapping locations was appropriate to deter Torch’s willful conduct “and render it at least slightly less profitable, to fully compensate TNT for its market loss, and to serve the greater interests of justice given the unique circumstances of this case.” Consumers spent over $32 million on Torch devices in overlapping locations alone during the relevant period. “Torch has profited tremendously from its misrepresentations and had avoided regulation, taxation, and prosecution by virtue of its government relations efforts and the Gaming Commission’s limited jurisdiction. In this regulatory void, TNT’s lawsuit not only vindicates its own competitive interests but also protects consumers from the fallacy of ‘no-chance’ gaming going forward.” Further briefing, and possibly discovery, was required to set the size of the award.

CFP: emerging First Amendment scholars

Second Annual Aspiring Free Speech Scholars Workshop
jointly sponsored by the Sandra Day O’Connor College of Law (ASU)
and the Hoover Institution (Stanford University)

Are you a law student, judicial law clerk, lawyer, or beginning academic hoping to publish a journal article on free speech law? Would you like the opportunity to get advice about your draft from leading free speech scholars?

If so, send us your draft by Sunday, August 16, 2026. (This should still be a draft article, not an article that’s already published or expected to be published within six months.) We plan to select the submissions that we think are particularly promising, and invite their authors to a workshop where they can present their papers and get helpful feedback on them. The workshop will be Saturday, October 24, 2026 (with dinner the night before) at the Sandra Day O’Connor College of Law in Phoenix, and we will inform the selected authors by Tuesday, September 8, 2026.

We have funds to pay for transportation and lodging for the selected authors’ trips. Eligibility is limited to people who have so far published three or fewer law-related journal articles. 

We also plan to officially recognize zero to three of the top articles among those we review. If the authors wish, they can also have their articles reviewed for publication in the Journal of Free Speech Law (http://JournalOfFreeSpeechLaw.org), presumably after they revise the articles in light of the workshop feedback.

If you’re interested, please submit your draft at http://tinyurl.com/aspiring-free-speech (Google logon required). Please single-space, and format the article nicely, so we can more easily read it.

Please do not include your name or law school affiliation in the document or document filename, and please do not include an author’s note thanking your advisors and others. Please make your filename be the title of your article (or some recognizable subset of the article title). We want to review the article drafts without knowing the authors’ identities.

If you have questions, please check http://tinyurl.com/aspiring-free-speech-faq; if your question isn’t answered there, please e-mail volokh@stanford.edu.

Many thanks to the Stanton Foundation for its generous support.

* * *

James Weinstein, Dan Cracchiolo Chair in Constitutional Law and Professor of Law, Sandra Day O’Connor College of Law, Arizona State University

Eugene Volokh, Thomas M. Siebel Senior Fellow, Hoover Institution (Stanford University), and Gary T. Schwartz Distinguished Professor of Law Emeritus, UCLA School of Law

"ambiguity" is taking hold in consumer protection class actions, but it's not the Lanham Act concept

Ramirez v. S. Martinelli & Co., 2026 WL 272621, No. 25-cv-07569-NC (N.D. Cal. Feb. 2, 2026)

Martinelli’s apple juice products’ front labels state either “Premium 100% Juice Not From Concentrate” or “100% Juice From U.S. Grown Fresh Apples.” The products now contain ascorbic acid, a preservative, listed in the ingredients on the products’ back labels. Martinelli allegedly intentionally designed the products’ labeling so they appear to contain only juice because consumers are willing to pay more for a product without additives, and charges roughly fifty percent more than comparators. FDA and state law allegedly requires “with added preservatives” on the front label.

Plaintiffs brought NY and California statutory claims, which the court declined to dismiss.

The court found deception plausible: “Premium 100% Juice Not From Concentrate” and “100% Juice from U.S. Grown Fresh Apples” were “likely to deceive a reasonable consumer into believing that the products contain only apple juice, without other ingredients. That is, reasonable consumers could see the front label as making an unambiguous representation which would not require further information.”

Under consumer protection precedents, “[j]ust because the labels are subject to two reasonable interpretations—that the product is 100% juice, or that the juice is 100% from fresh apples/not from concentrate—does not make it ambiguous” such that a reasonable consumer is required to consult the back label.  Instead, the labels could be “unambiguously deceptive to an ordinary consumer, such that the consumer would feel no need to look at the back label.” 

[I think it’s bad to have two different definitions of “unambiguous,” one for competitors and one for consumers, applied to the same “false advertising” concept, especially since none of the courts I’ve seen have acknowledged this difference or given a theoretical justification therefor. These conflicting definitions are inevitably going to cause legal confusion. “Plausibly sufficient to convey a specific false message, without the consumer needing to check for more information” might be better than “unambiguous” for the consumer protection class action context; it much better captures the concept although it is of course longer.]

Nor did the claims rest solely on a violation of federal law: the front labels were plausibly misleading and the plaintiffs alleged reliance and resulting injury.

The court did kick out a punitive damages request, but not warranty/unjust enrichment claims or a request for injunctive relief.

conducting dueling internet searches converts attys into fact witnesses in TM case

Vicious Brands, Inc. v. Face Co., No. 24-cv-04996-LJC, 2026 WL 276178 (N.D. Cal. Feb. 3, 2026) (magistrate)

Plaintiff, aka Saints & Sinners, sued Face, aka Skin Saint, alleging trademark infringement and false advertising. The court granted the motion to dismiss the false advertising claims but denied summary judgment on trademark infringement, except for reverse confusion, reflecting the higher barriers to false advertising claims.

Plaintiff has sold Saints & Sinners haircare products since 2016, using a mark that includes two horizontally conjoined instances of the letter S:

It has registrations including that mark.

Defendants sell beauty consultation services and skincare products under the Skin Saint trade name, using a mark that consists of two vertically conjoined instances of the letter S:

They began using it in 2021; Saints & Sinners first learned of it in 2023. “Defendants sell their products through a physical location in Michigan and, to a lesser extent, nationally through their website” and through shop.app. They promote themselves on social media and some national television appearances.

Saints & Sinners alleged that it has been planning to expand into skincare.

False advertising: Saints & Sinners alleged that “Defendants have engaged in false advertising by making misleading and deceptive claims about their products in commercial advertisements and promotions, including representations that their products are medical grade, provide anti-aging results equivalent to that of medical cosmetic treatments like injectable fillers and toxins, and reverse/prevent aging changes in the skin.”

But Saints & Sinners didn’t have standing because there was no imminent injury. (Why is there standing to claim trademark infringement, then? Sigh.)

It alleged that it was “ready to launch its skincare line upon finalization of product attributes and regulatory review,” and that its products would “directly compete with the serums, creams, and other topical formulations marketed and sold under Defendants’ brand … namely: cleanser; moisturizer; creams; cleansers [sic]; toners; masks; skin treatments; and serums, all in Class 3.” It also alleged that both parties sell through e-commerce to the same general consumer demographics seeking moisturizing, antioxidant, and anti-aging skincare products, targeting the same customer demographics— “customers seeking luxury and performance skincare products”—and sold through overlapping channels, including online retail/ecommerce platforms like Amazon.

The Supreme Court has “repeatedly reiterated that threatened injury must be certainly impending to constitute injury in fact, and that allegations of possible future injury are not sufficient.” In Lanham Act cases, the Ninth Circuit has “generally presumed commercial injury when defendant and plaintiff are direct competitors and defendant’s misrepresentation has a tendency to mislead consumers.” A plaintiff can meet that burden “using actual market experience and probable market behavior,” which in the absence of “lost sales data” might be done by “creating a chain of inferences showing how defendant’s false advertising could harm plaintiff’s business.” At issue here was “harm to reputation or sales, which generally arises from direct competition.”

For Article III, the court pointed to the classic Lujan case, where environmental plaintiffs’ “mere profession of an intent, some day, to return” to sites allegedly harmed by the challenged projects was insufficient to satisfy Article III’s injury requirement. As there, “the plaintiff alleges only an injury at some indefinite future time, and the acts necessary to make the injury happen are at least partly within the plaintiff’s own control.”

In Tercica, Inc. v. Insmed Inc., No. C 05-5027 SBA, 2006 WL 1626930 (N.D. Cal. June 9, 2006), the court found false advertising standing against an intended competitor in the pharmaceutical industry where the plaintiff had obtained “FDA approval ... and product distribution [was] likely imminent.” And courts and commentators have stated that “actively preparing to produce the article in question” is sufficient as “the last point before the point of no return” in the context of declaratory judgments. But this wasn’t a declaratory judgment case where the plaintiff would otherwise risk infringement liability. “So long as there are necessary steps beyond Plaintiff’s control, or doubt as to if or when a competing product will actually come to market, Plaintiff has alleged only ‘possible future injury’ as a result of Defendants’ purportedly false advertising, rather than the ‘certainly impending’ injury necessary ‘to constitute injury in fact.’” The allegations here indicated that Saints & Sinners’ products remain subject to “finalization of product attributes and regulatory review” before they come to market, “raising questions of whether their launch could still be derailed.”

This analysis also applied to statutory standing under Lexmark. The court did, however, reject any suggestion that a competitor in a “market [with] numerous participants” lacks a sufficient expectation of “ ‘automatically’ displace[d]” sales to support standing under the Lanham Act— “a premise that would seem to preclude most if not all Lanham Act false advertising claims in typical markets with multiple competitors.” The allegations of the complaint were sufficient to support a plausible inference that, if or when Sinners & Saints products come to market, at least some of them will compete directly with at least some of defendants’ products. Leave to amend granted.

Trademark/summary judgment: I gotta admit, this one seems extremely thin to me, but nonetheless the parties must proceed on the forward confusion theory.

Plaintiff’s double-S mark appears on many (perhaps all) of its products, typically with the double-S mark positioned above Saints & Sinners, which is in turn positioned above a product title. The product packaging tends to be a solid color or gradient, with the mark and text generally displayed in monochrome white, silver, or black. Saints & Sinners products are mostly sold at suggested retail prices ranging from $20 to $95, and in third-party beauty subscription boxes. And, as discussed, Saints & Sinners planned to expand.

Skin Saint’s founder testified at a deposition that she used a “logo generator” to develop a new mark in 2020, and settled on the double-S mark because it was visually appealing and resembled her logo for her related FACE clinic, which “is a wave with an F.” She did not research whether the mark was similar to other marks used by other companies. Skin Saint’s products often display their double-S mark positioned vertically above the words “SKIN SAINT,” in turn above a product name or description. The packaging is white and the mark and text are black. Since they began using the accused mark in 2021, defendants have sold significantly more Skin Saint products through their clinic than through their website.

Saints & Sinners learned of Skin Saint’s mark from a trademark watch report that characterized defendants’ mark as having a “Low risk” of conflict with plaintiff’s mark. Plaintiff nonetheless opposed, which is ongoing.

Plaintiff’s counsel offered “screenshots of searches [he] personally conducted on the SHOP.app website” that show some of defendants’ products among search results for the search query “Saints and Sinners skincare” and other similar queries. But defense counsel was unable to replicate those results and did not find any of defendants’ products when running the same searches on Shop.app. (Hmm… a personalized algorithm might be doing this if, as is plausible, plaintiff’s counsel had sought out defendants’ products before.) Defendants’ sales through Shop.app were 28 orders for a total of $2,468 in the first ten months of 2025 and less in 2024.

There was no evidence of actual confusion or other harm. “A Google search for either party’s name does not return the other party’s website or products in the first ten pages of results.” Several other skincare and haircare brands use marks with a double S, but none use “saint” or “sinner” in their trade names.

Saints & Sinners also submitted an expert declaration from “a beauty industry consultan[t] specializing in market strategy and consumer behavior across skincare, haircare, and adjacent personal care categories” who opined that haircare and skincare markets were converging to focus on scalp care (the “skinnification” of hair), that impulse buying of beauty products in the social media era was common, and that consumer confusion was likely, although the court didn’t rely on that last for its summary judgment ruling.  

As for those searches on shop.app: “Whether intentionally or not, both parties’ attorneys have made themselves fact witnesses, and the Court now orders that the parties may take their depositions regarding the limited issue of their Shop.app searches within the time that the parties have reserved for other specific depositions.” The court wouldn’t disregard either parties’ attorneys’ searches. [Not sure depositions would help if the issue is algorithms! Bringing in the specific computers, or at least logging in as the specific attorneys, might do more.]

Basically, the multifactor confusion inquiry means that it’s hard to grant summary judgment for defendants. Unfortunately, along with deeming the double-S logo arbitrary and possessed of some commercial strength, the court also quoted out-of-circuit precedent that incontestable registrations “are presumed to be strong marks.” [I didn't pull the registrations--but the description that the registrations "include" rather than consist of the double-S would also cut against this conclusion, since what is incontestable is the registration as a whole, not parts of it.]

For reverse confusion, though, “Defendants’ relatively modest sales—at least on the scale of the national skincare or beauty market as a whole—undermine any implication that Defendants pose a serious risk of dominating the public’s perception of the market.”

And, though the parties’ “marks have meaningful differences, such that someone comparing them side by side would never consider them to be the same mark,” there was enough similarity to go to a jury, even though it was perhaps “a close call,” given the parties’ monochromatic color palettes and overlapping use of “saint.”

And, even if a lack of survey evidence should be presumed to favor the defendant, “whether a presumption has been overcome is normally a question for the jury.” [I think this presumption is best applied to large companies with large litigation budgets: if P&G doesn’t submit a survey, we can infer that it expected bad results. I don’t think it’s a good idea to disregard the absence of a survey in all summary judgment contexts, but the court here does because it focuses on the Ninth Circuit’s caution that summary judgment is disfavored in trademark infringement cases.]

Likewise, the court discounted the absence of any actual confusion evidence because the parties weren’t in “direct local competition over a period of several years.” “It remains possible that consumers have confused the two marks, and either purchased or declined to purchase products based on that mistake, without alerting either party to their having done so.” How is the jury to assess this possibility in assessing likelihood?

Santa Clara IP Conference: Where Do We Go From Here?

Moderator: Edward Lee, Santa Clara Law

BJ Ard (copyright), University of Wisconsin Law School

© is often displaced by contract and other regimes in sectors—scaling it up or down would produce minimal impact. Consumer copying for example is often solved by non-© solutions: Spotify changed things, as did rise of cloud-based services which meant people had less to share. Content ID can block fair use but does allow lots of uses that otherwise wouldn’t be fair. Even big-budget productions, like video games, don’t rely on © to deter second-comers but on features that are costly to duplicate, actors/TM/ROP protection, sequelization. It’s not that this sector is representative but hybrid relations that are only partly ©-governed exist across the board. Copyright owners use licensing models to overwrite © provisions. Streaming services continue this trend w/no need for legal enforcement b/c access is built into the system.

© is the only policymaking place where concerns about AI are actually being aired, but © can’t stop AI; big © owners are going to license. Given that © isn’t doing as much work in its traditional domains, we shouldn’t expect it to do work in these new domains. Asking it to solve labor issues, market concentration, privacy is likely to fail.

Colleen Chien (patent): AI’s effects on search for examination; AI can also identify potentially infringing products. AI tools used to digest evidence and make predictions. As we see platforms start to make their own IP infringement determinations, we might find them “good enough” w/o need for lawyers. Discussed need for human review—need to figure out.

Camilla Hrdy (trade secret), Rutgers Law School

Trade secret law is different from other IP; often not defined until mid litigation where you perform “identification,” the law of which is in chaos. California wants you to identify the secret before discovery; courts had maybe been converging on that but the 9^th Circuit said no, the Defend Trade Secrets Act has a different standard—not reasonable particularity but sufficient particularity; other circuits say different things. Lack of clarity on fundamental initial issue. What does it mean to keep something secret? Not clear; jury left on its own. What does it mean for a secret to be readily ascertainable? In California, the most important trade secret jurisdiction, there isn’t a requirement of lack of ready ascertainability—even if you could perform reverse engineering in 8 hours you can still be liable for getting it from an employee. NJ has the same rule. Lots of lack of clarity about workers’ high level knowledge and experience—lots of courts think that asking about that is the same as asking whether something is generally known in the field. Not clear about what it takes for a secret to have independent economic value—lots of courts just look at whether you invested in the information. We need more people thinking about trade secret law! People need to talk to practitioners. We don’t know enough!

Keith Robinson (patent), Wake Forest University School of Law

Uncertainty around what counts as invention. Mental conception doesn’t really match with the evidence we look for (documentary: notebook, emails, other records). Identifying a problem rarely matters. Even a highly specific articulation of a problem is typically insufficient unless paired w/ a concrete solution.

Jennifer Rothman (right of publicity), Univ. of Pennsylvania Carey Law School

Identity thicket: overlapping rights. People have been registering marks in names/likenesses for a while; current focus on Matthew McConaghey is perplexing to her (and me). But we might highlight how rights are being separated out w/potentially different controllers and licensees. There used to be a lot more distinction b/t people using name as business name/putting it on goods/services. But now the Lanham Act and states protect use of names, voices, and images as marks, at least if we are commercializing them in some way. The PR stunt of the registrations is more interesting: he has a deal for use of his voice as a voice clone that can speak multiple languages—it’s a way to market his deal. False advertising law is also relevant to these uses. © is also relevant and maybe is less peripheral than Ard said. Are digital replicas uncopyrightable? Unclear! There are pending registrations. If registrable, can there be multiple registrations of a digital replica as you can have multiple registrations of photos of a person? If so, what’s infringement? We’ll see people leveraging © this way more. © one’s personality or “character” bible in the same way people © scripts. Music industry has already made © claims that using similar voices is infringing.

At the federal level Take It Down is about intimate images; No Fakes is also under consideration to regulate digital replicas generally. There’s so much going on: that’s the identity thicket. And one person might not control all these rights; rights conflicts are possible, raising serious concerns about a human-centered approach. Compare to EU approach, focusing on concerns about the underlying person being depicted and secondarily on the public.

Capitol Hill: not clear what will happen, if anything. But it won’t help matters very much b/c unlikely to preempt the thicket that already exists. And won’t address concerns about transferring rights away from underlying person, or about deception licensed by the underlying person. Considering model state ROP law to address more of these issues, especially transferring someone’s own name, likeness etc away from them—has seen SAG realize this is a problem. Might see more of an appetite for repealing CDA 230; shifts in tech to build guardrails; we might see shifts in preferences for authenticity—hopes for the renaissance of theater.

Santa Clara IP conference: How It’s Going: What Went Wrong?

Moderator: Zahr Said, Santa Clara Law

Mark Lemley (patent), Stanford Law School

After 40 years of radical change, things settled down for normalcy in the last 10 years until Trump. 1980-2017: we grant 350,000 a year up from 50,000; now mostly computer/bio instead of mechanical; most inventors were single and now they’re teams; most inventors were from US and now they’re mostly foreign. University patenting started in 1980; now significant. Now first to file (not first to invent); now 20 years from filing (instead of 17 from grant). Patent thickets; patent continuation practice—multiplication from a single application to multiple patents. Lawsuit numbers have tripled. Jury trial was starting to become a thing in 1970s but a small percentage; now a vast majority of trials are before juries. Product producers used to file against competitors; now 50% of lawsuits are filed by NPEs. Patents were invalidated in 70s at around 65%; now it’s 43-45%. 1982: patent appeals consolidated in Fed Cir. Before 1980 there was no reexamination; then inter partes reexam and post-grant review; IPR proceedings became the way most patent validity disputes were resolved. Introduced district court forum shopping—ED Tex, WD Tex, D Del were not where we litigated in 1980.

Hatch-Waxman/pharma litigation against generics didn’t exist until 1984, so pharma patent litigation grows from there. Patent claim Markman hearings were created in 1990s, cemented in 1996; before then, we didn’t know the answer to “who decides what a patent means, a judge or a jury?”

Then there are substantive changes: patentable subject matter broadened to almost everything, then narrowed again. Major changes in prior art; major changes in interferences; obviousness law changed in fundamental ways, narrowing then broadening. Utility doctrine weakened, written description doctrine and full scope enablement became things. All real disputes about infringement are resolved in Markman hearings; changed law of inducement; new concept of joint or divided infringement; we strike down large swathes of rules on inequitable conduct. Ebay changes the rules for injunctive relief: no longer injunctions as a matter of course. We introduce apportionment of damages (renewed from 19^th century); we change rules on willfullness/advice of counsel and venue.

If you’ve been litigating for 40 years, everything in the system has changed/been in flux, until about 2017. Not much happened since then! A period of normalcy. 62 SCt patent cases 1982-2018, and none in last 3 terms. Recent SCt decisions have had “instinct for the capillary”—clarification of assignor estoppel, not the central issue in patent law. 3 cases on 271(f) about exporting components from the US that are combined outside the US: the only 3 cases on 271(f) of which he is aware. Whether the post office is a “person” under the Patent Act. Not earthshaking! Contrast to KSR, eBay, and patentable subject matter cases before. Substantive cases began to affirm existing law rather than change it. Fed Cir has also settled down: en bancs used to be 2x/any other circuit, but only 2 in last 7 years (1 design patent, another a damages case that was a dud). Fed Cir Dissent rate dropped from 2d highest to one of lowest; many cases now not precedential.

IPRs turned out to have the same invalidity rate as courts at 1/10 the cost. Even patentable subject matter is pretty predictable. There are still cases but they don’t make fundamental changes.

This is generally a good story.

Then Trump. All is in flux. New PTO director dismantling large swaths of PTO, making IPRs essentially impossible to get; increased quotas; refused to hire new career examiners, offers no promotion path; on track to replace examination with AI; Lemley is skeptical. Part of a broader chaos targeting scientific research; 100% tariff on patented pharmaceuticals to somehow magically reduce drug price; taxing university patents; proposing tax on patents’ assessed value at time of filing. Not clear whether normalcy survives.

Mark McKenna (trademark), UCLA School of Law

Conceptual changes that transformed what TM is mostly for the worst. (1) unbounded expansion of the concept of source in TM. Source used to mean actual historical source: who made the thing you were buying. Infringement was very tightly limited to where consumers would believe D’s products came from P. That was passing off. Only someone tricking consumers into buying directly competing goods—very tightly connected to TM’s theory of harm: illegitimate diversion of trade. Courts, primary drivers here, came to regard that definition as overly limited; commerce was changing and courts wanted to capture newer commercial practices, specifically outsourcing of production and expansion of product lines to adjacent areas by companies—wanted to let Coca Cola to license production to independent bottlers and still maintaining rights. Redefined source as “control over quality” instead of actual historical source. Also started to recognize confusion about use of same mark on products that didn’t compete directly, like pancake mix and syrup. Unmoored TM from traditional focus on direct competition and we never replaced it with a real limit. “Sponsorship or affiliation” confusion is the worst; so open-ended that virtually any conceivable connection can be conceived in those terms even though it has different effects on consumers/competition more broadly. Net effect: confusion is performance art—parties need to use that word, but that’s not what the cases are really about, which is rights in gross.

(2) Connected and mutually reinforcing: structural collapse of what used to be a separate but related body of unfair competition law into TM, and resulting expansion of TM subject matter. Once upon a time, only certain things could be TMs, words or devices that didn’t give info about nature of goods/geographic origin: arbitrary/fanciful words/devices that were separate from but attached to the goods. Personal names, descriptive terms, product packaging/product design wouldn’t count; service marks weren’t affixed to anything for sale. Only technical TMs could be infringed; unfair competition law was not about what somebody owned, b/c by definition they didn’t own anything. P had to show that D was passing off even w/o a TM, so there were additional proof requirements and generally much more limited remedies. Would not bar use of descriptive word, etc.

That system collapsed, mostly b/c of Erie. Unfair competition became understood as state law, not common law, and federal courts started to believe they couldn’t have common law, making lawyers worry about 50 different kinds of unfair competition law. That lack of uniformity wasn’t really happening but courts and lawyers worried that it might. Solved by recharacterizing things that used to be excluded from TM and calling them “unregistered TMs.” Those things were previously unregistrable, not just unregistered. Courts started interpreting 43(a) to give a cause of action for infringement of unregistered TMs. Not what Congress anticipated. Huge change. We lost the orientation of unfair competition as a residual doctrine w/more limited remedies and got a huge amount of subject matter where we didn’t have rules about what could be owned. Had to build that law about what could be owned from scratch and haven’t been particularly successful.

These two things amplify each other: TM is redefined as anything that can indicate source as we’ve expanded source beyond recognition. Incremental; radicalism not notice. Courts act like the assumptions they used to hold under the old system still apply, even though the changes are too great to make that true.

Trevor Reed (copyright), UC Irvine School of Law

Indigenous creative rights: © is silent on status of citizens of over 500 tribes, despite importance of Indian culture to 1970s American culture. Many pieces of indigenous self-determination legislation in the 70s.

Mismatch b/t © and tribal sovereignty: tribes often regulate traditional knowledge; © might call it public domain or give it only thin protection. Eurocentric assumptions: limited times, transfers to certain people only, money is a sufficient remedy, it doesn’t matter where the creativity occurs; divides intangible from tangible. Ignores tribal sovereignty; 301 preemption can conflict. Tribes should, among other things, be able to take over registration and deposit. His objections: Should be no public domain for tribal creativity w/o tribal authorization; federal remedies for violation of tribal rights; tribal courts should be recognized as venues for © claims and tribes’ regulatory authority should be formally recognized.

Pamela Samuelson (copyright), UC Berkeley Law

Statutory damages are the worst! Evolution: until 1909 Act, there was a per sheet penalty dating back to the Statute of Anne, and statutory damages were an improvement (anybody could ask for the PSP and half of the money went to the US gov’t; not used often). Particularly useful when difficult/expensive to prove damages; courts had discretion to grant statutory damages but generally wouldn’t if damages or profits were measurable. Nonpunitive way to get some compensation and deterrence.

1976: good parts: tripartite structure of $750-30,000 as court considers just; up to $150K for willfulness; discretion to reduce awards if innocent infringers or nonprofit educ/library users who thought uses were fair. Compensatory at low end; deterrent in middle; punitive at high end.

Understandable but contribute to problems: Ps can ask for SD at any time before final judgment; they’re mandatory.

In practice: Congress failed to consider how they should be assessed in secondary liability or multiple work cases—in Cox, jury awarded nearly 100K per work, $1 billion. Authors Guild v. Google, estimated risk was above $350 billion. Arbitrary, inconsistent, and grossly excessive awards.

Suggested guidelines: award minimum where there’s no actual damages or profits or P is unwilling to provide evidence; approximate actual damages when fair use/lack of infringement is plausible, 2-3x actual/profits when reckless or intentional; up to 10x if highly willful. Or consider what will deter this D. Cox v. Sony: main issue is standard for contributory infringement, but second issue was the standard for willful infringement, but oral argument ignored it. SG and Cox said focus should be whether Cox knew its own conduct was unlawful; reasonable for Cox to think it was OK to continue to provide service to accounts whose users infringed, especially to hospitals and barracks and the like.

Now getting worse: 1202 statutory damages. Very similar but minimum is $2500 w/maximum 25K. Measured per violation (not defined) not per infringed work. No “as the court considers just” limit. No need to have registered © for eligibility. Way more likely to result in excessive damages.

Said: heard a lot about Erie, more than any other IP conference: what gives?

McKenna: Congress has left the field and SCOTUS justices are no longer picked for being lawyers but for specific hot-button issues. That leaves everything to lower courts.

Lemley: we’ve also decided to abandon the common law and equity for the dictionary definition of whatever terms the judge decides to look up, which is a particular disaster for an IP regime that assumed a common-law development. Many key concepts (infringement standard) aren’t even in the statute. So we’ve abandoned the tools we’ve used for centuries. Leaving us with the executive branch, and leaving aside Trump chaos, one of the challenges is that you won’t get long term consistent development. We’re looking at traditional sources of federal law and finding them wanting.

Samuelson: tech is also a big driver in ©. Generative AI, billions of dollars at stake. Every other tech has pissed off a specific sector: recording industry, movies, etc. Now everyone is mad. Dismantling of federal science community is also hurting. Copyright is the only law on the books is the only thing that seems like it could destroy AI; that’s not going to happen but Ps can ask for impoundment/destruction, or they could end up having control over the models.

Reed: people are losing faith in economic rationales of IP; social justice is becoming a bigger rationale and people want to see more of that, but we keep spinning out more economic arguments. Compare backlash to racist mascots—pressure on corporations to change their TMs.

Farley: what went wrong in Dastar? Unbounded definition needed constraint.

McKenna: Dastar’s biggest fan! But courts haven’t applied it. The case is hard: you have to dig in to get what the court is saying. Whatever else you thought of Scalia, he was smart and engaged with the arguments, and that level of engagement is less common. Also, lower courts don’t like the outcomes it produces and so ignore it. That means TM is used as a back door for copyright, especially for works in public domain.

Santa Clara School of Law: Intellectual Property Conference: How It Started, How It's Going: What Went Right?

Moderator: Brian Love, Santa Clara Law

Jeanne Fromer (trademark), New York University Law School

Search and examination on relative grounds (Europe doesn’t do that)—has critiques but generally doing a decent job. Ironic b/c we think of US as “free market” and Europe as paternalistic but registration works the opposite way. Smaller businesses may not have registrations but can get benefits from opting in; use is still the core of US TM. This is a way to give them some protection/different pathways for TM rights, and having the two paths (registered/unregistered) is generally good. Courts also helped systematize distinctiveness—again with some things that aren’t working great, but the systematization is a good thing. Semantic connection b/t mark and category of goods/services must be evaluated: shouldn’t be protected as a mark when connection is too strong, or protection shouldn’t be easily granted if it’s pretty strong. Focus on consumer perception is also a good one from the perspective of TM’s goals: to keep consumers from confusion in the marketplace and being responsive to how they behave.

Rob Merges (patent), UC Berkeley Law

Volume/velocity of transactions based on IP rights has grown amazingly since 70s/80s, a little bit invisibly in how many business models and transactions enabled. Textualism/literal infringement doctrine gave rise to the practice of claim charts, which made for transactional efficiency: a formalistic procedure. Structures claim interpretation process into fairly narrow channel. This allows a boom in patent licensing. Allows fast development of vaccines—patent licensing is behind the scenes. ROP is also good b/c there are things you can do with property rights that you can’t do with contract alone in terms of transactions.

Rebecca Tushnet (copyright), Harvard Law School

Unlike my predecessors, I’m not going to do an overview, but talk about a specific provision of copyright law. Just as democracy is the worst form of government except for all the others that have been tried, so too with section 512, the safe harbor provisions for internet service providers, which has proven remarkably robust despite multiple efforts to destroy it over the past nearly three decades. I have my own litany of complaints about practical problems with 512, but in terms of dispute management it is a resounding success. I will compare 512 to the recently enacted Take It Down Act and discuss the evolution of caselaw by comparison to Carol Rose’s account of property titling systems.

512 creates a safe harbor against monetary liability and sweeping injunctive relief that would require changes in practices for online service providers that follow certain rules about how to handle complaints of infringement. It divides service providers into four categories, one of which is essentially defunct; service providers that provide connections for content like email or private messaging are supposed to have policies that terminate repeat infringers, and that’s definitely created some problems now, but for decades the key provisions were those for service providers who store content—like YouTube—or provide links or search engines, like Google—who won’t be held liable for direct or secondary infringement if they promptly take down instances of infringement when properly notified about them. 512 explicitly does not require services to monitor their services for infringing content. It does provide for liability without notice if a host or linker has “red flag” knowledge of infringement, but the courts have generally been pretty robust about making sure that general knowledge that infringement is taking place on a platform, or even general knowledge that there are multiple copies of an infringing work on a platform, don’t count as red flag knowledge. So unless a site is something like “top 50 movies to download,” it probably won’t have red flag knowledge.

What went right with 512? Well, one way to measure it is how many disputes it has resolved.  Caselaw v. number of disputes—the number of disputes is in the billions (even if 1/3 of the notices sent to Google are invalid, which seems to be the case, still billions of correctly targeted notices). There are big 512 cases, but not that many of them. The caselaw tells you only what was significant enough to fight in court about for unusual reasons—either reasons of the defendant’s deep pockets and structural significance in the entertainment ecosystem, or reasons of the plaintiff’s specific interests, usually a moral sense of offense. The everyday functioning of the system, though, is that lots of infringing stuff gets quickly taken down, often—if you believe Google—even before anyone has even seen it. And uploaders who disagree with the takedown can file counternotices; a service that honors the counternotice is immune from liability for reinstating the content and the copyright owner has to sue the uploader. Very few counternotices are filed.

Another way to measure success: 512 immediately became the default rule around the world, at least in practice—even in Europe, 512 compliance was for a long time sufficient to avoid being sued successfully—suggests 512’s utility as a workable compromise between interests of IP owners and accused infringers (compare the fate of the similar section 230, which definitely spurred US dominance in tech but was not routinely accepted as the final word on intermediary liability in non-IP situations).

Europe eventually diverged, at least formally, by requiring intermediaries to engage in licensing attempts and screening. But I say formally because even today it doesn’t seem to me that this has worked except for music and popular video; major forms of copyrightable works like photographs and texts are just not amenable to that kind of licensing requirement because ownership is not concentrated enough for comprehensive licensing regimes to form. European regulators have the benefit of not actually needing to require exact compliance with what looks like the plain meaning of the law; being a “good guy” is generally enough in the EU, something that is often surprising to US lawyers, who expect a law that doesn’t explicitly have a good-faith standard to not have a good-faith standard for compliance. The DMCA, that is, is still shaping behavior on the ground around the world.

There was a major attempt in the last 10 years to gut DMCA and put in concepts like notice-and-staydown in the US, which would require services to search for and remove similar copies after receiving notice about the location of one infringing copy. This was a brilliant branding move by 512’s haters—staydown sounds almost like takedown, so how hard could it be? But it is actually a huge technical challenge, especially for smaller services, and would have been a huge gift to YouTube in maintaining its dominance. Fortunately, this attempt fizzled, which is one reason that sites like Wikipedia, Reddit, Ravelry, and the Archive of Our Own can operate in relative confidence without the resources of a Google or Microsoft.

What about my complaints? Well, there’s definitely complexity, as the Supreme Court’s recent attempt to tackle intermediary liability for internet service connection providers makes clear; we’ll see what happens in the Cox case and that will tell us a lot about what 512 means for connection providers in the US. And counternotice law is a mess: when abusive notices are sent, it’s very hard to hold the sender accountable. But I want to make the case that the crud that’s accrued around various aspects of 512 is the standard fate of almost any law allocating rights, no matter how clear.

In her justly famous 1988 article Crystals and Mud in Property Law, Carol Rose explained that all clear legal rules, particularly rules created by legislatures, face pressure from two sources: the ignorant and the conniving, the fools and the scoundrels. The ignorant don’t know about the law, no matter how clear and crystalline it is, and they are subject to mistakes that make them lose out despite them not having done anything morally wrong. They didn’t know that land can only be transferred by a writing, so they rely on an oral agreement and hand over their money and are out of luck. The scoundrels exploit the clarity and hard edges of the legal rule to get unfair outcomes: the law says a mortgage has to be fully paid by a date certain or the borrower defaults and loses the land, so a conniving lender can hide out and make it impossible to find them until the time has passed and they get the land and most of the money. These abuses and unfairnesses pile up and courts for completely understandable reasons will make up special exceptions to allow equity back in, muddying the clarity of the written rule. Equity of course has its own costs: it makes disputes more unpredictable, therefore expensive, disadvantaging poorer actors, and equity is also more reliant on the biases of the factfinder who may have its own predispositions about the characteristics of good guys.

I believe that much of the uncertainty that has accreted in the corners of 512 law is the inevitable effect of this crystals and mud dynamic; it is not unique to 512 and therefore it’s extremely unlikely that changes to 512 could do anything more than restart this process: replacement rules would either be mud all the way down, which I think is worse, or be a different and probably worse crystal that would not make either creators or intermediaries better off. Rose concludes that, when the mud gets too bad, the legislature often intervenes to put a new crystalline rule in place—the fact that 512 has survived some reasonably well-resourced legislative assaults to me suggests that this isn’t one of those situations where the mud has fully gummed up the works.

I want to end by comparing 512 to the recently passed Take It Down Act, aimed at sexually explicit images “indistinguishable from an authentic visual depiction” published without the consent of the person shown in the picture. TIDA is not a safe harbor regime. Instead, it requires two things that aren’t in 512 to avoid liability: (1) services must remove accused images within 48 hours of receiving notice (with no clarity on what qualifies as receipt: I give it about 6 months before someone uses a mailing address and sues based on the time the mailed notice arrived at a building); (2) services must make reasonable efforts to remove known identical copies.

There are no counternotice provisions, even if the content was fully protected by the First Amendment; no safe harbor against liability; no guidance on what counts as reasonable efforts or what qualifies as knowledge. 512 does better on all these counts. Harbinger of attempts to do even more in proposals like Take It Down which cover any use of a digitally altered likeness, even as the White House is posting AI-altered images on official accounts.

Graeme Dinwoodie (International IP), Chicago-Kent College of Law

US jurisdiction over foreign © claims was done right. US wanted to become a leader in int’l © law to enable more effective enforcement. Led to NAFTA, TRIPS. Public law side interventions not always received enthusiastically outside the US—intrusion on sovereign choices. But private litigants used them successfully to argue that US law shouldn’t be applied extraterritorially. Predicate act: foreign profits from US infringement can be secured in US courts, often w/o regard to law of other country, but there are limits to that; would have liked more comity-facing analysis.

Historical reluctance globally to adjudicate claims of foreign © infringement. SDNY, a few years after 1978 Act, allowed claims for infringement in various South American countries to proceed. Impulse to provide relief under multiple foreign © laws were spot on. NY was where D was amenable to jurisdiction; hope that British courts would do the same thing in similar circumstances. For some time, this case was alone, in part b/c of fear of foreign “bramble bush” of law. Eventually, this approach got appellate endorsement in Boosey & Hawkes v. Disney—simply having to apply foreign © law of 18 countries was not a reason to decline jurisdiction. Not a torrent of cases, but the availability of such relief has structured private behavior. Has also been embraced by courts in Europe.

Especially valuable for small authors w/no resources to litigate cross-continent. Streamlining duplicative litigation is not inherently pro-© owner: Computer Associates v. Altai didn’t just occur in NY, but also in France. After they won in the US, Altai unsuccessfully sought an anti-suit injunction from relitigating in France, but it would have been more efficient for a small defendant to secure global clearance in a single case. (Altai won in France, but would have been much faster/cheaper in one court.) Better than seeking enforcement of US law to entire dispute. Enhances legitimacy/embraces sovereignty. But it does create complexity in applying foreign law; the good news is that public law has reduced divergence; there weren’t 18 different rules in the Disney case.

Different constraints in TM/patent. In patent, distaste for litigating foreign patents in Fed Cir and ECJ. ALI principles endorse doing patent/TM, with patent invalidation being given only inter partes effect. And in last few years, courts signaled more willingness, though Albright in Texas wants to grant anti-suit injunctions. That’s where this is going, along with jurisdictional issues. Will be a dialogue b/t patent judges in different countries; likely to be more respectful of sovereignty and thoughtful than the public law debates we’re going to see.

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.”