KP Permanent Make-up, Inc. v. Lasting Impressions, Inc.

 

KP Permanent Make-up, Inc. v. Lasting Impressions, Inc., MCN International, Inc. tests whether a showing of the absence of a likelihood of confusion is necessary before a defendant may invoke the classic fair use defense in a trademark infringement suit. By statute, incorporating cases at common law, there appears to be no such requirement. In this case, the Court will determine whether the Ninth Circuit erred in applying such a rule.

Questions as Framed for the Court by the Parties

Does the classic fair use defense to trademark infringement require the party asserting the defense to demonstrate an absence of likelihood of confusion, as is the rule in the Ninth Circuit, or is Fair Use an absolute defense, irrespective of whether or not confusion may result, as is the rule in other Circuits?

KP Permanent Make-up, Inc. ("KP") and Lasting Impressions, Inc. ("LI") are direct competitors in the business of supplying and distributing pigment colors for use in permanent make-up. KP Permanent Make-up, Inc. v. Lasting Impression, Inc., 328 F.3d 1061, 1065 (9th Cir. 2001).

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Kowalski v. Tesmer

 

John Tesmer was convicted of a home invasion charge after pleading guilty in Michigan state court. A Michigan statute prohibited the appointment of appellate counsel for defendants who pleaded guilty. Citing that particular statute, the trial judge John F. Kowalski denied Tesmer's request for an appointed appellate counsel. Tesmer, along with two other indigent criminal defendants and two attorneys who routinely represented indigent criminal defendants, filed a complaint stating that the Michigan statute violated the Fourteenth Amendment. The Supreme Court had previously recognized a litigant's standing to sue when the litigant suffered an actual injury, bears a close relation to the third party, and the third party in question has limited ability to protect his or her own interests. In this case, the Supreme Court granted certiorari to determine two issues: (1) Does the Fourteenth Amendment guarantee an automatic right to appointed appellate counsel for indigent criminal defendants convicted by a guilty plea? (2) Do attorneys who derive part of their income from representing indigent criminal defendants convicted by a guilty plea have third-party standing to challenge the constitutionality of a state statute which purportedly violates the due process rights of such defendants?

Questions as Framed for the Court by the Parties

1. Does the Fourteenth Amendment guarantee a right to an appointed attorney in a discretionary first appeal of an indigent criminal defendant convicted by a guilty plea?

 
2. Do attorneys have third-party standing on behalf of potential future indigent criminal defendants to make a constitutional challenge to a state statute prohibiting the appointment of appellate counsel in discretionary first appeals following convictions by guilty pleas where the federal courts properly abstained from hearing the claims of indigent criminal defendant themselves?

In 1994, Michigan eliminated appeals of right for criminal defendants who plead guilty. See Mich. Const. 1963 art. I, § 20. In 1999, after John Tesmer pleaded guilty to the charge of home invasion, Judge John F.

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Knox v. Service Employees International Union, Local 1000

Issues

Whether a union can use nonunion members’ state-mandated fees to finance political expenditures or ballot measures, despite providing limited information about such uses, and without offering nonmembers any opportunity to object.

 

California nonunion state employees sued their collective bargaining agent, alleging that the imposition of an additional agency fee assessment used to fund political actions without notice or an opportunity to object violated their First, Fifth, and Fourteenth Amendment rights. The district court granted summary judgment in favor of the nonunion employees. On appeal, the Ninth Circuit reversed. The nonunion employees now appeal. The Supreme Court will determine what disclosures unions must provide when imposing additional agency fees on nonmembers, and the extent to which unions can use nonmembers’ wages to fund expenditures without first obtaining consent.

Questions as Framed for the Court by the Parties

1. In Teachers Local No. 1 v. Hudson, this Court held that "[b]asic considerations of fairness, as well as concern for the First-Amendment rights at stake, ... dictate that the potential objectors be given sufficient information to gauge the propriety of the union's [agency] fee" extracted from nonunion public employees. 475 U.S. 292, 306 (1986). May a State, consistent with the First and Fourteenth Amendments, condition employment on the payment of a special union assessment intended solely for political and ideological expenditures without first providing a notice that includes information about that assessment and provides an opportunity to object to its exaction?

2. In Lehnert v. Ferris Faculty Ass'n, this Court held that "the State constitutionally may not compel its employees to subsidize legislative lobbying or other political union activities outside the limited context of contract ratification or implementation." 500 U.S. 507, 522 (1991) (opinion of Blackmun, J.); accord id. at 559 (opinion of Scalia, J.) (concurring as to "the challenged lobbying expenses"). May a State, consistent with the First and Fourteenth Amendments, condition continued public employment on the payment of union agency fees for purposes of financing political expenditures for ballot measures?

California state employees are required to pay fees to Service Employers International Union, Local 1000 (the “Union”) for exclusive representation as their collective bargaining agent. See Knox v. California State Employees Ass’n, Local 1000, 628 F.3d 1115, 1117 (9th Cir. 2010).

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Knowles v. Mirzayance

Issues

1. What is the proper application of the Supreme Court's test for ineffective assistance of counsel when the state court opinion summarily denies habeas relief but does not explain its reasoning, where the Antiterrorism and Effective Death Penalty Act of 1996 statutorily denies federal habeas relief unless the state court proceeding "resulted in a decision that was contrary to, or involved an unreasonable application of, clearly established Federal law, as determined by the Supreme Court of the United States"?

2. Did the Ninth Circuit improperly substitute its own findings of fact for those of the district court?

 

During his trial for first-degree murder, Alexandre Mirzayance's attorney advised him to withdraw his insanity plea on the morning the insanity phase of the trial was to begin. After he was sentenced to twenty-nine years to life, Mirzayance initiated a habeas petition, claiming that his attorney's advice to withdraw his insanity plea constituted ineffective assistance of counsel. The California Court of Appeals and the California Supreme Court both summarily dismissed the petition without explanation. Mirzayance appealed to the federal court system. Under the Antiterrorism and Effective Death Penalty Act ("AEDPA"), a federal court is barred from granting habeas relief unless the prior state proceeding "resulted in a decision that was contrary to, or involved an unreasonable application of, clearly established Federal law, as determined by the Supreme Court of the United States." After a remand from the Ninth Circuit to conduct a factual hearing, the district court granted the petition, apparently misapprehending the test the Ninth Circuit dictated. The Ninth Circuit applied the facts surrounding the withdrawal of the defense and found ineffective assistance of counsel under the Strickland test. Knowles argues that the Ninth circuit failed to adhere to AEDPA's rule requiring deference to state courts. He argues that it should have reviewed the state-court decision based on whether there was any way that the state court could have ruled the way it did. Mirzayance argues that when a state court has no published reasoning for its decision, a federal court is entitled to conduct its own fact-finding on review.

Questions as Framed for the Court by the Parties

Concluding that defense counsel was ineffective in advising petitioner to withdraw his not-guilty-by-reason-of-insanity plea, the Ninth Circuit Court of Appeals granted habeas relief to petitioner without analyzing the state-court adjudication deferentially under "clearly established" law as required by 28 U.S.C. § 2254(d) and by supplanting the district court's factual findings and credibility determinations with its own, opposite factual findings. This Court vacated the Ninth Circuit decision and remanded the case for further consideration in light of Carey v. Musladin, 127 S. Ct. 649 (2006). On remand, the Ninth Circuit conceded that "no Supreme Court case has specifically addressed a counsel's failure to advance the defendant's only affirmative defense" but nonetheless concluded that its original decision was "unaffected" by Musladin and subsequent § 2254(d) decisions of this Court.

The questions presented are:

1. Did the Ninth Circuit again exceed its authority under § 2254(d) by granting habeas relief without considering whether the state-court adjudication of the claim was "unreasonable" under "clearly established Federal law" based on its previous conclusion that trial counsel was required to proceed with an affirmative insanity defense because it was the only defense available and despite the absence of a Supreme Court decision addressing the point?

2. May a federal appellate court substitute its own factual findings and credibility determinations for those of a district court without determining whether the district court's findings were "clearly erroneous?"

The facts as presented here are drawn from the party briefs.

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Knight v. Commissioner of Internal Revenue

Issues

Does the Internal Revenue Code allow trusts and estates to make full deductions on Federal Income tax returns for investment management advisory service fees?

 

Michael Knight, trustee of the Rudkin Testamentary Trust, petitioned the United States Tax Court to dispute the Internal Revenue Service ("IRS") assessment that the Trust owed taxes for investment-advisory expenses Knight had deducted in full. The Internal Revenue Code contains a 2% floor on all itemized deductions. The IRS assessed that Knight failed to recognize this floor, significantly lowering the deduction amount. Knight argued these expenses should be exempt because they were necessary for Knight to fulfill his fiduciary duties as a trustee. The Tax Court stated that, to be exempt, Knight needed to show these expenses would not have been incurred if the assets were not held in trust. The Tax Court found Knight failed to satisfy his burden of showing that the expenses were unique to trusts and decided in favor of the IRS. The United States Court of Appeals for the Second Circuit affirmed the Tax Court's holding. The Supreme Court of the United States granted certiorari to resolve a conflict between a holding by the Sixth Circuit and those of the Second, Fourth, and Federal Circuits. As trustees spend billions of dollars yearly on management advice, this case will have wide-reaching consequences. A decision for the IRS will result in the same level of taxation on investment-management expenses for individuals and trusts and more taxes to the IRS tempered by decreased use of management services by trustees. A decision for Knight would lower the taxes of trustees and encourage trustees to use investment-management services.

Questions as Framed for the Court by the Parties

Whether 26 U.S.C. § 67(e) permits a full deduction for costs and fees for investment management and advisory services provided to trusts and estates.

In the late 1930s, entrepreneur Margaret Rudkin founded a small business that ultimately developed into 

Acknowledgments

The authors would like to thank Professors Robert Green and Emily Sherwin and for their insights on trusts in the United States.

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Kloeckner v. Solis

Issues

Can a federal district court hear an appeal of a decision by the Merit System Protection Board (MSPB) if the MSPB decided on a procedural ground and the case was “mixed” and so involved both unlawful employment termination and discrimination claims?

 

In 2005, Carolyn M. Kloeckner (“Kloeckner”) left her job as a Senior Investigator for the Department of Labor’s (DOL) Employee Benefits Security Administration in the St. Louis office. Soon after, she filed an Equal Employment Opportunity (EEO) complaint alleging sex and age discrimination and a hostile work environment. The DOL charged her with being “absent without leave” and fired her a year later. The dismissal, coupled with the discrimination complaint, result in what is known as a "mixed"  case,  and  is therefore  subject to certain forum restrictions.  After an unsuccessful outcome with her EEO complaint, Kloeckner appealed to the Merit Systems Protection Board (MSPB) which dismissed her claims as untimely. Kloeckner tried to challenge this MSPB decision in federal district court, but the Eighth Circuit Court of Appeals affirmed the district court, holding that only federal circuit courts had jurisdiction over mixed cases that were dismissed on a procedural ground. The federal circuit courts disagree on this issue, and so the Supreme Court’s  decision in this case  will determine whether a federal district court or a federal appellate-level court can hear an appeal of an MSPB decision to dismiss a mixed claim for being untimely.

Questions as Framed for the Court by the Parties

The Merit Systems Protection Board (MSPB) is authorized to hear appeals by federal employees regarding certain adverse actions, such as dismissals. If in such an appeal the employee asserts that the challenged action was the result of unlawful discrimination, that claim is referred to as a "mixed case."

The Question Presented is:

If the MSPB decides a mixed case without determining the merits of the discrimination claim, is the court with jurisdiction over that claim the Court of Appeals for the Federal Circuit or a district court?

In 2005, Carolyn M. Kloeckner (“Kloeckner”) stopped going to work as a Senior Investigator for the Department of Labor’s (DOL) Employee Benefits Security Administration in the St. Louis office. Kloeckner v. Solis, 639 F.3d 834, 834 (8th Cir.

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Klein & Co. Futures Inc. v. Board of Trade City of New York

Issues

Do futures commission merchants, who guarantee their customers' trades on the commodities market, engage in the type of "transactions" required to sue a commodities board of trade under the Commodity Exchange Act?

 

Klein & Co. Futures, Inc. was a futures commission merchant ("FCM"), serving as a middleman in futures trading. Norman Eisler, the Chairman of the New York Futures Exchange, a subsidiary of the Board of Trade of the City of New York, allegedly engaged in a price fixing scheme that caused Klein & Co. to go out of business. Klein & Co. argues that it should have standing to sue the Board of Trade under 7 U.S.C §​25(b)(1) for damages resulting from the Board's initial failure to take action against Eisler. The Board of Trade successfully argued in the District Court for the Southern District of New York and the Court of Appeals for the Second Circuit that Klein & Co. should not have standing because Congress intended standing under the statute to be limited to buyers and sellers of commodities. This case will have an important impact on the $1.1 billion futures industry because FCMs provide the financial backing for all investors in the commodities market. If FCMs are denied the right to sue, the risk of lending will increase and board members will remain insulated from civil law suits.

Questions as Framed for the Court by the Parties

The Commodity Exchange Act provides an express private right of action for actual losses to a person who "engaged in any transaction on" or "subject to the rules of" a commodity board of trade against that board of trade if the board, in bad faith, engaged in illegal conduct that caused the person to suffer the actual losses, 7 U.S.C. § 25(b)(1).

Whether the court of appeals erred in concluding that futures commission merchants lack statutory standing to invoke that right of action because, in the court's view, they do not engage in such transactions, despite the statutory requirement that the merchants enter into and execute their transactions on, and subject to the rules of, a board of trade and the fact of the merchants' financial liability for the transactions.

An Explanation of Futures Trading

The following explanation is taken from the

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Kirtsaeng v. John Wiley & Sons, Inc.

Issues

When considering whether to award attorneys’ fees in a copyright action, should district courts place substantial weight on the objective reasonableness of the losing party’s position over other equitable factors?

 

In 2013, the Supreme Court decided in favor of Supap Kirtsaeng in a copyright infringement action brought by publisher John Wiley & Sons (“Wiley”), reversing the lower courts and remanding for an order in compliance with the opinion. On remand in the district court, Kirtsaeng petitioned for costs and attorneys’ fees. Although 17 U.S.C. § 505 empowers a district court in its discretion to award costs and attorneys’ fees, the court denied the petition and reaffirmed the circuit precedent assigning more weight to one factor in the equitable discretion analysis over all others. Here, the Supreme Court will provide a non-exclusive list of factors a district court should consider in a § 505 equitable discretion analysis and determine whether any of those factors, such as the objective reasonableness of the losing party’s position, should be assigned substantial weight. Kirtsaeng argues that placing substantial weight on any  one factor  risks compromising the discretion granted to the district court by the statute. Alternatively, Wiley argues that a district court in its discretion can assign more weight to the objective reasonableness of the defeated party’s position without defying § 505. This case will clarify the approach a district court should take in a § 505 equitable discretion analysis.

Questions as Framed for the Court by the Parties

Did the Second Circuit err in adopting a standard that emphasizes the objective reasonableness of the losing party’s position over all other factors, which unduly limits district court discretion and systematically favors copyright plaintiffs?

Supap Kirtsaeng, a Thai student who studied at American universities for several years, noticed during his studies that his American textbooks cost much more than the identical foreign editions available abroad. See John Wiley & Sons, Inc. v. Kirtsaeng, 654 F.3d 210, 212–13 (2d Cir.

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Kirtsaeng v. John Wiley & Sons, Inc.

Issues

Whether the first-sale doctrine codified in 17 U.S.C. § 109(a) applies to copyrighted works manufactured and purchased abroad and then resold in the United States without the copyright owner’s permission.

 

The Respondent, John Wiley & Sons, Inc. (“Wiley”), brought a claim against the Petitioner, Supap Kirtsaeng d/b/a Bluechristine99 (“Kirtsaeng”), for violation of the Copyright Act, 17 U.S.C. §§ 101–810. While attending school in the U.S., Kirtsaeng imported and sold foreign-made textbooks from Thailand manufactured by Wiley's Asian subsidiary. Wiley alleges that Kirtsaeng violated § 602(a)(1) of the Act, which prohibits the importation of foreign-made works or goods without the copyright owner's authority. Kirtsaeng claims that, according to the first-sale doctrine codified in § 109(a), he was permitted to resell Wiley’s textbooks in the U.S. without the Respondent’s permission because the doctrine states that a copyright owner loses exclusive rights after the first sale of the work. Therefore, the issue in the case centers on the interpretation of § 602(a)(1) and § 109(a). The outcome of this case will clarify the applicability of the Copyright Act to foreign-made products. The Supreme Court’s decision will affect not only the availability of foreign-made works and goods in the U.S. ,  but also the availability of such products abroad. If Wiley prevails, public, non-profit entities like museums, libraries, and charitable organizations will be heavily burdened because they will have to take extensive steps to procure the necessary licensing rights for goods that they import and distribute.

Questions as Framed for the Court by the Parties

This case presents the issue that recently divided the Court, 4–4, in Costco Wholesale Corp. v. Omega, S.A., 562 U. S. ____ (2010). Under § 602(a)(1) of the Copyright Act, it is impermissible to import a work “without the authority of the owner” of the copyright. But the first-sale doctrine, codified at § 109(a), allows the owner of a copy “lawfully made under this title” to sell or otherwise dispose of the copy without the copyright owner’s permission.

The question presented is how these provisions apply to a copy that was made and legally acquired abroad and then imported into the United States. Can such a foreign-made product never be resold within the U.S. without the copyright owner’s permission, as the Second Circuit held in this case? Can such a foreign-made product sometimes be resold in this country without permission, but only after the owner approves an earlier sale here, as the Ninth Circuit held in Costco? Or can such a product always be resold without permission within the United States, so long as the copyright owner authorized the first sale abroad, as the Third Circuit has indicated?

The Respondent Wiley, is an American company that publishes and sells textbooks. John Wiley & Sons, Inc. v. Kirtsaeng, 654 F.3d 210, 212-13 (2d Cir.

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Acknowledgments

The authors would like to thank former Supreme Court Reporter of Decisions Frank Wagner for his assistance in editing this preview.

Additional Resources

Kirk Sigmon, The Cornell Daily Sun, Textbooks Too Expensive? How the Supreme Court Might Make it Worse (Sept. 7, 2012)

Caroline Flax, The Cornell Daily Sun, Alumnus Appeals Copyright Verdict to Supreme Court (Apr. 18, 2012)

MSNBC, Supreme Court Takes Another Look at Gray Market Resales (Apr. 17, 2012)

Fox News, High Court Steps Into Copyright Case (Apr. 16, 2012)

Wex: Copyright

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Kircher v. Putnam Funds Trust

Issues

Did the Appeals Court have jurisdiction to review the District Court’s order to remand a suit removed under SLUSA, where the district court held the suit in state court was not removable under SLUSA and it thus had no “subject matter jurisdiction,” given that when a case is remanded under the lack of subject matter jurisdiction statute 28 U.S.C. § 1447(d) a party cannot appeal the remand order?

 

Petitioners are a group of investors who owned shares in mutual funds offered or advised by respondents, Putnam Funds Trust. These investors brought a class action suit in Illinois state court asserting  breach  of fiduciary duty and alleging that the mutual funds set prices in a way that allowed arbitrageurs to exploit differences in prices to the detriment of long-term investors. The respondents removed the suit to federal court pursuant to the Securities Litigation Uniform Standards Act (SLUSA). The judge then remanded the case to state court because the petitioners had not alleged a loss “in connection with the purchase or sale of securities” as required under the Act. Pursuant to 28 U.S.C. § 1447(d), such a remand is not appealable if the remand is for lack of subject matter jurisdiction. The Seventh Circuit, in conflict with previous decisions by the Second, Ninth, and Eleventh Circuits, ruled that the remand was reviewable because the basis of the SLUSA remand  was not  lack  of  subject matter jurisdiction, and therefore 28 U.S.C. § 1447(d) does not apply. In deciding this case, the Supreme Court will address whether 28 U.S.C. § 1447(d) bars appellate review of remand orders in suits removed under statutes such as SLUSA.

Questions as Framed for the Court by the Parties

Whether the court of appeals had jurisdiction, contrary to the holdings of three other circuits, to review a district court order remanding for lack of subject-matter jurisdiction a suit removed under the Securities Litigation Uniform Standards Act of 1998 (“SLUSA”), notwithstanding 28 U.S.C. § 1447(d)'s bar on appellate review of remand orders based on lack of subject-matter jurisdiction and the district courts' conclusion that petitioners' claims are not preempted by and thus not removable under SLUSA.

In 1998, Congress enacted the Securities Litigation Uniform Standards Act (“SLUSA”). Kircher v. Putnam Funds Trust, 373 F.3d 847, 847 (2004).

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