In the past few weeks, two contentious trademark disputes have been appealed to the Sixth Circuit.  In the first, L.F.P.IP. Inc., et al. v. Hustler Cincinnati, Inc., et al., Hustler Cincinnati and Jimmy Flynt, the brother and former business associate of Larry Flynt, appealed the Southern District of Ohio’s entry of a permanent injunction prohibiting the unauthorized use of the mark “Hustler” in conjunction with the sale of sexually-oriented products.

In its lengthy opinion, the district court held that a license to use a trademark need not be oral or written, but can be implied by the objective conduct of the parties (in this case, the payment of purported license fees by Jimmy to Larry).  The district court then reaffirmed the doctrine of license estoppel when it held that Jimmy was estopped from claiming any rights to the mark when he had previously entered into an implied license agreement for its use and thereby acknowledged that the mark was owned by Larry.

Finally, the court rejected Jimmy’s claim that the “Hustler” trademark was a “naked” trademark (no pun intended, honestly), due to his brother’s failure to control its use and the resultant diminution in the mark’s value.  The court found that the defense of “nakedness” was unavailable to licensees like Jimmy because, to hold otherwise, the licensee would benefit from his own misuse of the trademark to the detriment of the mark and its licensor.

The other trademark-related case heading to the Sixth Circuit is American University of Antigua College of Medicine v. Woodward.  In Woodward, the Eastern District of Michigan evaluated whether the defendant student’s use of the plaintiff’s name and almost identical website violated the plaintiff’s rights under the Lanham Act, the Anticybersquatting Consumer Protection Act of 1999 (“ACPA”), the Family Educational Rights and Privacy Act of 1974, and Michigan’s defamation laws.

The court summarily rejected the plaintiff’s claims under the Lanham Act and the ACPA because the speech at issue was not intended to sell goods or services or otherwise result in a profit, as required to state a claim under those statutes.  Likewise, the court rejected the plaintiff’s Family Educational Rights and Privacy Act claim on the basis that the statute does not create a private right of action.  The court ultimately granted relief to the plaintiff on several defamation claims which were partly established by the requests for admission issued to the defendant and deemed admitted by the court when they were not timely answered.