Attorney Evan Brown

March 12, 2025 First Amendment, Trademarks

Bogus trademark infringement threats violated the First Amendment

trademark registration

In 2011, two women established a public Facebook group where parents and community members could discuss matters related to the Los Lunas, New Mexico school district. This online forum served as a space for open dialogue about local education issues for seven years before drawing administrative attention.

In 2018, the district’s superintendent discovered the group and became concerned about its content. Her specific worries included posts containing incorrect snow day information and criticism directed at one of the district’s middle school principals.

The superintendent then developed a legal strategy to address the concerning online group. She filed an application with the United States Patent and Trademark Office to register the mark LOS LUNAS SCHOOLS. The USPTO granted the registration on July 9, 2019 (Reg. No. 5798193).

Equipped with purported trademark rights, the school district’s legal counsel sent cease and desist letters to the operators of the “Los Lunas School District Parent Discussion Page.” These letters threatened trademark infringement litigation if the group continued to operate under its existing name.

The Facebook group administrators sued in federal court. Their claim asserted that these trademark infringement threats constituted retaliation for speech protected by the First Amendment. When the superintendent moved for summary judgment, the district court rejected her motion, finding that the district’s actions violated the plaintiffs’ “clearly established” constitutional rights.

On appeal, the Tenth Circuit Court affirmed the lower court’s denial of summary judgment. The appellate court’s reasoning drew from principles articulated in Beedle v. Wilson, 422 F.3d 1059 (10th Cir. 2005), saying that government officials violate the First Amendment when they threaten frivolous litigation to silence protected speech.

In Beedle, the court had determined that government entities cannot bring libel actions against private citizens who criticize them -such claims are legally frivolous by definition. Similarly, in this case, the court found the trademark infringement threats to be legally baseless because the Facebook group had used the district’s name solely for commentary about the district itself, without connection to any goods or services that would trigger Lanham Act protections.

The evidence demonstrated that the district was substantially motivated to threaten litigation specifically in response to protected speech. So the case can be viewed as a warning – at least for government officials – to not misuse intellectual property law seeking to achieve an objective for which the law was not intended.

Tachias v. Sanders, — F.4th —, 2025 WL 747688 (10th Cir., March 10, 2025)

March 6, 2025 Section 230

Content moderation lapses did not make hookup app liable for misrepresentation

Section 230

App’s general statement that it would provide a “safe and secure environment” did not amount to a promise for which plaintiff could assert Barnes-style misrepresentation and thereby avoid the app’s Section 230 immunity.

Plaintiff – an underage user – sued Grindr based on injuries he suffered from meeting up with four different men with whom he had connected on the platform. One of the claims plaintiff brought was for negligent misrepresentation. Defendant stated on the app that it was “designed to create a safe and secure environment for its users,” and plaintiff alleged that defendant failed to do so.

Defendant moved to dismiss this claim under 47 U.S.C. §230, which provides that “[n]o provider or user of an interactive computer service shall be treated as the publisher or speaker of any information provided by another information content provider.” 47 U.S.C. § 230(c)(1). The district court granted the motion and plaintiff sought review with the Ninth Circuit.

On appeal, the Ninth Circuit affirmed the dismissal under Section 230. In certain situations, a promise by an online platform to do something can form the basis of a claim against the platform that will not be barred by Section 230 immunity. For example, in Barnes v. Yahoo!, Inc., 570 F.3d 1096 (9th Cir. 2009), Section 230 did not protect Yahoo against a claim that it failed – despite its promise to do so – to take down indecent profiles impersonating the plaintiff in that case. And in Estate of Bride v. Yolo Technologies, Inc., 112 F. 4th 1168 (9th Cir. 2024), plaintiffs’ negligent misrepresentation claims were not subject to Section 230 immunity where the platform promised to unmask anonymous harassing users but failed to do so.

In this case, however, the Court saw the situation differently than it did in either Barnes or Estate of Bride. In those cases, plaintiffs were seeking to hold defendants liable for specific promises or representations. In this case, by contrast, Grindr’s general statement that its app was designed to create a safe and secure environment was a description of its moderation policy and thus protected from liability under Section 230.

Doe v. Grindr, Inc., 128 F.4th 1148 (9th Cir. February 18, 2025)

March 3, 2025 Employment

Federal court says it was OK to fire CEO who criticized boy wearing prom dress

The fired CEO of a telehealth company sued his former employer’s customer, alleging that the customer wrongfully pressured his employer to fire him after a video went viral of him confronting a boy wearing a prom dress. The lower court granted summary judgment and dismissed the plaintiff’s tortious interference claims. Plaintiff sought review with the Sixth Circuit. On appeal, the court affirmed the summary judgment in favor of the former employer’s customer.

What happened

In April 2021, plaintiff encountered teenagers taking prom photos at a Tennessee hotel. During this encounter, plaintiff told a teenage boy wearing a red prom dress that he “looked like an idiot.” Another teen recorded the interaction and posted it online, where it quickly went viral. Actress Kathy Griffin shared the video with her two million Twitter followers, identifying plaintiff.

The video created significant problems for plaintiff’s former employer. The company’s board of directors expressed concern about how plaintiff’s behavior reflected on the company.

Defendant, the former employer’s largest customer, soon received many messages expressing disappointment about its business relationship with a company whose CEO behaved this way. Defendant arranged a call with the company to discuss the situation.

According to plaintiff, defendant threatened to end its contract with the company if the company did not fire plaintiff. Shortly after this call, the company’s directors voted to terminate plaintiff’s employment. The next day, defendant publicly stated that the company “stepped up to do the right thing” by firing plaintiff.

The lawsuit

Plaintiff sued defendant (but not his former employer) for tortious interference with his employment contract and tortious interference with his employment relationship under Tennessee law. Defendant asked the court for summary judgment, arguing that plaintiff couldn’t prove his claims even if all facts were viewed in his favor.

The Court’s decision

The Sixth Circuit affirmed the district court’s decision to grant summary judgment to defendant, rejecting plaintiff’s claims for two main reasons.

First, plaintiff’s tortious interference with contract claim failed because the company did not breach any contract when it fired him. Plaintiff’s employment contract allowed the company to fire him with or without cause. Since the company had the legal right to terminate plaintiff’s employment, it could not have breached the contract by doing so. Under Tennessee law, a claim for tortious interference with a contract requires an actual breach of contract.

Second, plaintiff’s tortious interference with employment relationship claim failed because he could not show that defendant acted with an improper motive or used improper means. The court found no evidence that defendant acted with the primary purpose of injuring plaintiff. Instead, the record showed defendant sought to protect its business from public criticism. Additionally, defendant’s contract with the company gave it the right to stop doing business with the company “for any reason or no reason,” so, in the Court’s mind, threatening to exercise this right was not improper.

Three reasons why this case matters:

It clarifies that claims for tortious interference with contracts require an actual breach of contract, which does not occur when an employer exercises its contractual right to terminate an at-will employee.
It demonstrates that businesses can take steps to protect their reputation without facing liability for tortious interference, as long as they act within their contractual rights.
It illustrates how viral videos capturing personal conduct can have significant professional consequences, especially for people in leadership positions.

Johnson v. University Hospitals Health System, Inc., 2025 WL 637442 (6th Cir. February 27, 2025)

February 25, 2025 Contracts, Social Media

YouTube prevails in the Second Circuit over content removal breach of contract claim

Plaintiff sued defendants YouTube and Google for breach of contract, claiming that defendants violated their Terms of Service by removing and restricting plaintiff’s uploaded content without prior notice or cause. Plaintiff argued that defendants’ actions went against their agreement, which governed plaintiff’s use of the platform and the operation of plaintiff’s channels.

Defendants moved to dismiss plaintiff’s breach of contract claim, which the district court treated as a motion for summary judgment. The court granted the motion, finding that the Terms of Service clearly allowed defendants to remove content at their discretion. Plaintiff sought review with the Second Circuit. On appeal, the court affirmed the dismissal.

The appellate court noted that defendants’ Terms of Service explicitly reserved the right to take down content that violated their policies or posed potential harm. The agreement also stated that defendants would notify users after content was removed but did not require prior notice or a detailed explanation before taking action. Plaintiff received an email explaining that defendants removed content for serious or repeated violations of their Community Guidelines, which the court found sufficient under the contract’s terms.

On appeal, the pro se plaintiff did not present specific arguments against the district court’s decision. Instead, plaintiff repeated claims from the original complaint and attempted to introduce new allegations, including violations of intellectual property rights and his right to free speech. The appellate court declined to consider these new arguments because they were not part of the original case. Given the unambiguous contract terms, the court ruled that defendants had not breached the agreement and upheld the lower court’s ruling in favor of defendants.

Three reasons why this case matters:

Clarifies platform control – The ruling reinforces that social media companies have broad discretion under their Terms of Service to remove user content.
Limits user challenges – It highlights the difficulty users face when challenging content moderation decisions through breach-of-contract claims.
Confirms contract enforcement – The case affirms that courts will uphold clear contractual terms, even if users feel the enforcement is unfair.

Qian v. YouTube, LLC, 2025 WL 582785 (2d Cir. Feb. 24, 2025)

January 1, 2025 Cybersquatting, Unfair Competition

Cybersquatting claims involving unregistered trademark survive motion to dismiss

Impulse Communications sued defendants claiming unfair competition and cybersquatting. Plaintiff alleged that defendants’ use of the mark ADOPT ME! for a virtual pet game on the Roblox platform caused confusion and harmed its brand. Defendants moved to dismiss these claims. The court denied the motion.

Plaintiff’s longstanding use of its mark

Plaintiff argued that it had been using the mark ADOPT ME since 2000, investing over $200,000 to build a distinct and reputable brand. The game, originally hosted on a website, expanded into the physical toy market through partnerships and later became an iOS app. Plaintiff alleged that millions of users adopted virtual pets through the game and that the mark earned a reputation for family-friendly entertainment.

According to plaintiff, defendants launched their game ADOPT ME! in 2017 and registered domain names such as <playadopt.me>. Despite adding an exclamation mark to the branding, defendants allegedly created confusion by using names and marketing strategies that allegedly infringed on plaintiff’s mark. Plaintiff claimed this confusion damaged its reputation, especially as defendants’ game grew in popularity and entered markets such as plush toys and fast-food promotions.

Defendants’ motions

Defendants moved to dismiss plaintiff’s claims of cybersquatting and unfair competition, arguing that the mark ADOPT ME was not distinctive or famous enough for legal protection. They denied acting in bad faith when registering the disputed domain names and asserted that any similarity between the marks was unintentional. Defendants also filed a motion to strike parts of the complaint, which referenced criminal activity and speculative harms allegedly associated with defendants’ game.

The court’s decision

The court denied defendants’ motion to dismiss, ruling that plaintiff plausibly alleged distinctiveness in the mark ADOPT ME through longstanding use and national recognition. The court found sufficient allegations of consumer confusion, including misdirected communications, legal filings naming plaintiff in error, and public comments mistaking defendants’ game for plaintiff’s.

The court partially granted the motion to strike, removing allegations that were speculative or lacked a clear connection to defendants’ actions. However, the court upheld allegations related to consumer confusion and reputational harm, as they directly supported plaintiff’s claims.

Why this case matters

Consumer Confusion Risks: This case emphasizes the need for clear brand distinctions to avoid misleading customers.
Trademark Protection: It highlights the strength of common-law trademarks built on longstanding use, even without formal registration.
Digital Branding Challenges: The dispute shows the difficulties of trademark enforcement in online gaming and domain name conflicts.

Impulse Communications, Inc. v. Uplift Games, LLC, 2024 WL 5202077 (D.R.I. Dec. 23, 2024).

December 22, 2024 Cybersquatting, Trademarks

Cybersquatting claim failed where there was a weak mark and no evidence of bad faith intent

acpa

Aspire Health Partners sued Aspire MGT under the Anticybersquatting Consumer Protection Act, 15 U.S.C. §1125(d) (“ACPA”) over defendant’s registration and use of the domain name <aspirehealthgrp.com>. Plaintiff sought a preliminary injunction to stop defendant from using the disputed domain name, but the court denied the request. The court held that plaintiff failed to show that defendant acted with a bad-faith intent to profit from the use of the domain name, a key element of a cybersquatting claim under the ACPA.

To prevail on a cybersquatting claim under the ACPA, a plaintiff must demonstrate that (1) its trademark in the disputed domain name was distinctive when the domain name was registered, (2) the disputed domain name is identical or confusingly similar to that trademark, and (3) the defendant registered the disputed domain name with a bad-faith intent to profit. In this case, the court found plaintiff would not likely succeed on its cybersquatting claim because of deficiencies under the first and third element.

The court found that plaintiff’s mark was not distinctive but instead was descriptive as a “self-laudatory” type of mark. Citing to the well-known McCarthy treatise on trademark law, the court determined that the word “aspire” when applied to healthcare services was of the same sort of use as the word “best” or “super” that extolls some feature or attribute of services and thereby becomes descriptive in nature and likely too weak to be subject to trademark protection.

As for the lack of bad faith, the court found that plaintiff had only made a conclusory allegation on the topic. Looking at various factors that courts apply to determine bad faith under the ACPA, the court noted in particular, among other things, that defendant had used the domain name in connection with a bona fide offering of its goods and services, and had not been shown to possess any intent to divert customers form plaintiff’s website or any intent to transfer or sell the domain name for financial gain.

Three Reasons Why This Case Matters:

Legitimacy in Business Use: Using a domain name for legitimate business purposes can protect defendants against cybersquatting claims.
Trademark Strength: Descriptive trademarks often face greater challenges in cybersquatting cases without strong evidence of distinctiveness.
Evidence of Intent: Courts require clear proof of bad-faith intent to profit, not just similarity between domain names, to uphold a cybersquatting claim.

Aspire Health Partners, Inc. v. Aspire MGT LLC, 2024 WL 5169936 (M.D. Fla., Dec. 19, 2024)

December 18, 2024 Trademarks, Unfair Competition

When does a neighborhood name become a trademark?

neighborhood trademark
Stephanie Reveron sued multiple companies, including Zumiez, New Balance, Amazon, Etsy, Zazzle, and Redbubble, for trademark infringement. Plaintiff claimed that her trademarks, such as LES NYC and LOWER EAST SIDE were being improperly used on clothing and other products. She argued that defendants’ use of these marks created consumer confusion and amounted to unfair competition.

Defendants moved to dismiss the claims. They argued that their use of the words “Lower East Side,” “LES,” and similar phrases was protected under the “fair use” doctrine of trademark law. Specifically, defendants claimed they were using these terms descriptively to refer to the well-known geographic location in New York City, not as trademarks to identify the source of the goods.

The court dismissed certain claims but let others proceed. For certain defendants, such as New Balance, Etsy (partially), and Zazzle, the court found that the use of “Lower East Side” and similar terms clearly referred to the neighborhood, not to plaintiff’s brand. This use was descriptive, in line with the fair use defense, and did not infringe plaintiff’s rights. For others, such as Amazon and Redbubble, the court found that the use of the phrases—especially when stylized or prominently displayed—could plausibly be interpreted as trademarks, making dismissal inappropriate at this stage.

Why did the court reach this decision?

The court considered the fair use defense, which allows the use of trademark-protected words in a descriptive sense if done in good faith. The court reasoned that the phrases “Lower East Side” and “LES” are commonly understood as referring to the geographic location—a neighborhood in New York City. For most defendants, this descriptive use was clear, especially when the words appeared alongside other terms or images referencing the neighborhood. The court also noted that fair use often turns on context: when words appear on a product without clear descriptive meaning, the line between fair use and trademark infringement becomes less certain.

For defendants such as Amazon and Redbubble, the court found that more analysis was needed. In some cases, the terms “LES” or “Lower East Side” were stylized or prominently displayed in a way that might suggest they were being used as a brand identifier rather than in a purely descriptive sense. As a result, the court allowed those claims to move forward.

In short:

The court dismissed claims against most defendants because their use of the words “Lower East Side” and “LES” was descriptive and protected under the fair use defense. However, for some defendants, such as Amazon and Redbubble, the court allowed the claims to proceed because the use of the phrases could plausibly be seen as a trademark rather than a description of a location.

Three reasons why this case matters:

Clarifies Fair Use: The case highlights how courts apply the fair use defense when trademarks overlap with descriptive geographic terms.
E-Commerce Accountability: It raises questions about the role of online platforms, such as Amazon and Etsy, when third-party sellers offer potentially infringing products.
Balancing Trademark Rights: The case underscores the challenge of balancing trademark protections with the public’s right to use common words, such as neighborhood names, in a descriptive way

Reveron v. Zumiez, Inc. et al., 2024 WL 5131627 (S.D.N.Y. Dec. 17, 2024)

December 14, 2024 Uncategorized

Did the AP aid and abet the October 7 attack on Israel?

Noach Newman and others sued the Associated Press (AP), alleging that its use of freelance photographers with ties to Hamas contributed to the October 7, 2023, attacks in Israel. Newman and the other plaintiffs, who were either present at the attacks or affected by them, claimed AP’s publication of photos taken by these freelancers supported Hamas’s goals and amplified the terror group’s propaganda through social media. The court dismissed the case, finding plaintiffs’ allegations insufficient to proceed under federal and state anti-terrorism laws.

Plaintiffs’ claims focused on photographers and social media use

Plaintiffs argued that AP hired freelance photographers who were allegedly embedded with Hamas. The lawsuit claimed that these photographers knew of the attacks in advance, arrived at the scene alongside militants, and provided images to AP, which were then published in real time. According to plaintiffs, the publication of these photos—many of which later circulated on social media—acted as propaganda for Hamas, boosting its visibility and influence.

Plaintiffs also alleged that payments from AP to the photographers indirectly funded Hamas. They argued that defendant’s actions—hiring freelancers and publishing their content—both increased Hamas’s resources and legitimized its actions globally.

AP argued protections for journalism and lack of intent

Defendant filed a motion to dismiss, asserting that its publication of the photos was protected under the First Amendment. Defendant contended that it had no knowledge of any connection between the freelance photographers and Hamas and that hiring freelancers to document breaking news is a standard practice in journalism.

Additionally, defendant argued that plaintiffs failed to establish causation. Specifically, there was no evidence showing that defendant’s actions directly contributed to the attacks or to plaintiffs’ injuries.

Court dismissed the lawsuit

The court ruled in favor of the AP, finding that plaintiffs’ allegations did not demonstrate that AP knowingly supported terrorism. While the court acknowledged that the freelance photographers may have had ties to Hamas, there was no evidence showing defendant was aware of those affiliations at the time of hiring or publication. The court also determined that publishing truthful, newsworthy images, even if later shared on social media or repurposed as propaganda, did not amount to aiding terrorism.

Finally, the court noted that plaintiffs failed to prove causation. Plaintiffs provided no evidence that defendant’s publication of the photos influenced the attack or exacerbated their injuries.

Three reasons why this case matters

intersection of social media and news reporting: The case highlights how widely shared news content can take on new life on platforms such as Instagram and X, raising questions about journalistic responsibility.
Legal standards for reporting on terrorism: The decision reaffirms protections for journalists who document global events, even when their work involves sensitive subjects such as terrorism.
The role of freelancers in news gathering: It underscores the complexities of relying on freelancers in conflict zones and the need for media organizations to vet contributors carefully.

Newman v. Associated Press, No. 1:24-cv-20684-KMM, 2024 WL 5063288 (S.D. Fla. Dec. 10, 2024).

December 10, 2024 Defamation, Unfair Competition

Alex Jones gets partial win in Connecticut lawsuit over unfair trade practices

Erica Lafferty, William Sherlach, and other family members of victims of the Sandy Hook Elementary School shooting sued Alex Jones, Free Speech Systems, LLC, and related entities. Plaintiffs sought damages for defamation, invasion of privacy, emotional distress, and violations of the Connecticut Unfair Trade Practices Act (CUTPA). Plaintiffs argued that defendants’ conspiracy theories about the Sandy Hook shooting violated CUTPA because defendants spread lies to attract audiences and sell products such as dietary supplements and survival gear. Plaintiffs asked the court to hold defendants liable for using false statements as a deceptive trade practice tied to their business interests.

The trial court ruling

The trial court sided with plaintiffs and allowed the CUTPA claim to proceed. It found that defendants’ false statements about the shooting being a hoax were tied to the sale of products advertised on their media platforms. According to the lower court, defendants’ spreading of falsehoods to increase product sales qualified as an unfair trade practice under CUTPA. The jury awarded plaintiffs substantial damages, including compensation for the CUTPA violation.

The appellate court reversal

Defendants appealed, and the appellate court reversed the trial court’s ruling on the CUTPA claim. The appellate court concluded that defendants’ defamatory statements were not directly tied to the sale of goods or services in a way that CUTPA covers. While defendants monetized their platforms, the court reasoned that the alleged lies about Sandy Hook were not themselves commercial conduct. The court ruled that the connection between the false statements and product sales was too weak to support a CUTPA violation. As a result, the appellate court directed the trial court to adjust the judgment by removing the damages associated with the CUTPA claim.

Three Reasons Why This Case Matters:

It’s Sensational: Anything involving Alex Jones and the Sandy Hook Massacre are attention-getting.
Protects Defamation Framework: By separating defamation from trade practices, the court preserved traditional tort remedies for harmful speech without expanding CUTPA.
Addresses Modern Media Monetization: The case underscores how courts assess financial gain from speech in an era of monetized platforms.

Lafferty v. Jones, — A.3d —, 2024 WL 5036021 (App. Ct. Conn. December 10, 2024)