USA
USA – Ninth Circuit Affirms Dismissal of Drag Queen’s Claim Against Netflix
Lance Hara, a “well-known Drag Queen in Hollywood” professionally known as Vicky Vox, sued Netflix. The suit concerned Netflix’s use of Vox’s likeness and persona (but not her name) in an animated series, Q-Force, about a “gay James Bond.” Vox’s alleged likeness appears for ten seconds in one episode and in an “official teaser” for the series. She sued under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125, alleging “the unauthorized use of her image and likeness led viewers to believe that she endorsed Q-Force.”
The district court dismissed the complaint under Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989). On appeal, the Ninth Circuit recognized that claims can be brought “under § 43(a) relating to the use of a public figure’s persona, likeness, or other uniquely distinguishing characteristic.” Ordinarily, it said, Section 43(a) claims are decided under the likelihood of confusion test. But “when the alleged infringement involves the title or some other aspect of an expressive work, however, we employ the Rogers test to determine whether the Lanham Act applies.” The court made clear that, under Rogers, the Ninth Circuit does not apply the Lanham Act to expressive works “unless the [use of the trademark or other identifying material] has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the [use of trademark or other identifying material] explicitly misleads as to the source or the content of the work.” The Ninth Circuit has applied Rogers both when the allegedly infringing mark is used in the title of a work and when it is used in the body of the work.
Vox argued that Rogers should not apply, given the Supreme Court’s Jack Daniel’s decision, which limited the scope of Rogers. The Ninth Circuit distinguished Jack Daniel’s, saying it involved a trademark for a commercial product, namely, a chew toy for dogs. The Ninth Circuit held, because Vox’s likeness was used in the ten-second scene solely to perform “some other expressive function” for the series, Rogers would apply. The court then concluded that “use of an animated drag queen alleged to resemble Vox is artistically relevant to Q-Force because it is a series ‘about a group of LGBT spies’” and did not explicitly mislead as to the source or content of the series. The Court therefore affirmed the dismissal of the complaint. The full text of the decision may be found here.
Takeaway: It has been and will continue to be difficult to stop the use of a real person’s name or likeness within a motion picture or television program.
USA – The LKQ Case and Design Patent Obviousness
Looking back, the 2024 the Federal Circuit ruling, an en banc decision by nine members of a ten-judge appellate panel, was poised to change the jurisprudence of design patents fundamentally. It held the nearly forty-year-old Rosen-Durling test, the primary factor the Patent Trial and Appeal Board (PTAB) relied on for design patent obviousness examinations, should be replaced with the Graham test for utility patent obviousness.
The Graham test, derived from Graham v. John Deere Co.,383 U.S. 1 (1966), established four factors for determining obviousness: scope and content of the prior art, differences with prior art designs, the level of ordinary skill, and secondary considerations such as commercial success. The test was to provide a more “flexible” approach, consonant with Supreme Court precedent for utility patent obviousness, including in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007).
Nonetheless, in the year-plus since the LKQ decision, no Federal or published PTAB cases have invalidated a design patent for obviousness under the Patent Act’s Section 103. Granted, we may soon see an application of the Graham test in the pending, near-decade-long, design patent litigation between Columbia Sportswear and Seirus Innovative Accessories. In October 2024, the Southern District of California granted Seirus’s motion to vacate a prior stipulation of validity based on the intervening LKQ decision. Columbia Sportswear N. Am., Inc. v. Seirus Innovative Accessories, Inc., No. 3:17-CV-01781-HZ, 2024 WL 4643096, at *4 (S.D. Cal. Oct. 30, 2024).
In our practice, the number of obviousness rejections by USPTO examiners has also not increased. To date, the LKQ decision, by and large, has not led to more difficult prosecutions before the USPTO for design patent filers. But time will tell. And we will keep monitoring the legal landscape and reporting on developments. Find the full LKQ decision here.
Takeaway: We see no reason to forego seeking design patent protection, as the threat of a more expansive obviousness test at the USPTO has not yet materialized.
DATA PRIVACY
California Dreaming (or Nightmares) – New CCPA Regulations Take Effect
On September 22, 2025, California’s Office of Administrative Law approved the California Privacy Protection Agency (CPPA) Board’s final version of amendments to the regulations implementing the California Consumer Privacy Act (CCPA). The significant changes in the amendments impose additional compliance obligations on businesses that process the personal information of California consumers and cover new or heightened requirements in several key areas. These areas include:
Automated Decision-Making Technology (ADMT) Governance
Although the new regulations do not mention Artificial Intelligence (AI), and specifically omit the definition of AI present in prior drafts, the regulation of AI systems through ADMT colors much of the new rulemaking and imposes obligations that must be satisfied before starting certain ADMT operations. The new ADMT compliance requirements will become effective January 1, 2027, which means a business’s evaluation of any ADMT processes already in use should begin now.
Broadly, ADMT covers technologies that use computation to process personal data and make “significant decisions” without substantial human involvement. Examples of “significant decisions” using ADMT include those that affect providing or denying financial or lending services, educational opportunities, healthcare services, or employment opportunities or compensation.
Companies already covered by the CCPA must now give California consumers clear notice about how and why they use ADMT and their rights regarding ADMT. Such rights include access to information about how ADMT is being used (e.g., the logic behind its processing) and the right to appeal a decision made using ADMT. Subject to limited exceptions, companies must offer an opt-out of ADMT with a corresponding link on their websites; however, an opt-out is generally not required where consumers may request human decision-making review and intervention. As detailed below, the use of ADMT also triggers new risk assessment and reporting requirements.
Risk Assessments for Processing with Significant Risk
Companies whose processing of personal information presents “significant risk” to consumers must conduct a risk assessment before starting that processing. “Significant risk” includes selling or sharing personal information (e.g., for targeted advertising), processing sensitive personal information, and using ADMT for significant decision making or certain consumer profiling.
A business that engages in such processing must conduct a risk assessment that examines whether the risks to the consumers’ privacy outweigh the benefits of that processing to the consumer, the business, the public, or other stakeholders. The business must identify and document, among other things, its purpose for processing consumers’ personal information, the categories of personal information to be processed (including sensitive information), and certain operational elements of its processing. Generic terms, such as “to improve our services” or “for security purposes” do not suffice; the nature, purpose, and operational elements must be stated in detail.
Notably, businesses must submit risk assessment reports to the CPPA starting April 1, 2028. For most businesses, this new requirement will entail a time-consuming examination and detailing of current processing practices, and therefore should not be delayed despite the distant enforcement date.
Mandatory Annual Cybersecurity Audits
Companies that meet statutory revenue and data thresholds must now conduct annual cybersecurity audits when their processing of personal information presents significant risks set forth in the amendments. These audits must be conducted by a “qualified, objective, independent” professional and must document the extent to which the business’s security measures are effective in safeguarding consumers’ personal information.
The new regulations contain specific criteria regarding the content of an adequate audit and set forth revenue-based compliance deadlines. Businesses with annual gross revenue above $100 million must comply by April 1, 2028; between $50 million and $100 million by April 1, 2029; and all others meeting the statutory applicability standards by April 1, 2030. These dates may appear far off, but businesses should consider and establish audit processes now by identifying qualified audit personnel, documenting cybersecurity practices, and establishing internal reporting and communication protocols.
Affirmative Consent Through Privacy Banners
For businesses that have added privacy banners (also called cookie banners) to their websites to facilitate consumers’ right to opt out of cookies and other trackers, the amendments eliminate a prior ambiguity by stating that “a consumer closing or navigating away from a pop-up window on a website that requests consent without first affirmatively selecting the equivalent of an ‘I accept’ button shall not constitute consent.” Companies should pay special attention to this clarification, considering the spate of wiretapping claims based on unauthorized disclosure of personal information through such trackers.
With the amendments now fully enacted, and given the increasing frequency of regulatory enforcement actions, companies of all sizes across industries should take note of these changes and begin preparing now for heightened compliance requirements.
Takeaway: The recent CCPA amendments require companies to spend significant time and resources to evaluate how they process consumers’ personal information. Key areas for deep consideration include automated decision-making technologies, risk assessments for high-risk processing (including for targeted advertising), mandatory cybersecurity audits, and details around how consumer consent is handled. Other additions and modifications, too voluminous to cover here, will demand companies’ meaningful examination of their privacy compliance practices and how they are reflected in consumer-facing privacy notices. All businesses should take note of these changes and begin preparing now for heightened compliance obligations and increased regulatory enforcement.
Texas – “Don’t text us,” says Texas – New Requirements for Marketing Text Messages
The consumer protection laws of many states shield consumers from unwanted voice-call solicitations. These laws, familiarly known as “mini-TCPAs,” largely duplicate key provisions of the federal Telephone Consumer Protection Act of 1991 (TCPA). However, as of September 1, 2025, Texas Senate Bill 140 (SB 140) will expand the scope of “telephone solicitations” in Texas’s telemarketing law to explicitly cover mobile text messages. This significant modification should be on the radar of all companies whose marketing efforts include text messaging.
Unless an exemption applies, companies that send marketing-related text messages to Texas residents may need to, among other things:
- Pay a $200 application fee and file a registration statement, renewable annually, with the Texas Secretary of State using the form provided on its website; this detailed statement becomes public and includes personal, financial, and other business-related information;
- Post a $10,000 security deposit, which may be satisfied by a bond, an irrevocable letter of credit, or certain certificates of deposit; and
- Comply with specific requirements and restrictions that include “quiet hours,” during which no texts may be sent, and respect proper caller ID and disclosure rules.
Certain exemptions may be available under SB 140, but they must be examined in the full context of a company’s actual practices, and the burden of proof falls on the business. Examples include:
- Retail companies with brick-and-mortar locations, if they have operated under the same business name for at least the last two years and a majority of their sales occur at retail locations;
- Companies contacting their current or former customers, if they have operated under the same business name for at least the last two years.
- Certain publicly
- Certain financial institutions;
- Educational institutions; and
- 501(c)(3) nonprofits
Notable risks to companies that do not comply with the new law:
- Up to $5,000 per violation in civil penalties, with the possibility of treble damages under the Texas Deceptive Trade Practices Act (DTPA).
- Increased risk of “serial” private actions, which may expose a business to multiple lawsuits, even by the same plaintiff, for the same or similar conduct; and
- Attorney’s fees and costs awarded to successful plaintiff(s).
With this new law now enforceable, companies should immediately: (1) review all marketing channels, including text-based communications, to determine whether they constitute covered telephone solicitations; (2) review compliance requirements such as registration, disclosures and quiet hours; (3) obtain proper consent for new customers; and (4) ensure that marketing teams, vendors, and agents understand and comply with these expanded telemarketing provisions.
Takeaway: A recent amendment to Texas’s law on telemarketing communications adds marketing text messages to its roster of regulated communications. Companies that market using text messages should immediately review the new law’s requirements, such as filing a registration statement with the Texas Secretary of State, complying with disclosure obligations, quiet hours, obtaining consent for new customers, and ensuring marketing teams, vendors, and agents understand and comply with these expanded provisions.
INTERNATIONAL
United Kingdom – Examination practice after SkyKick – Is the coverage too broad?
As we have reported, trademark owners are abuzz about the implications of the UK’s Supreme Court ruling in SkyKick UK Ltd and another v. Sky Ltd and others [2024] UKSC 36 in late 2024. The Court ruled broad specifications of goods and services can subject a registration to potential invalidation, in whole or in part, based on the owner’s lack of genuine intent at the time of filing to use the mark so broadly. This past June, the UK PTO published Practice Amendment Notice 1/25 (the “PAN”) to provide guidelines consistent with the Skykick judgment.
The PAN begins with the basic principle set out in Section 3(6) of the Trade Mark Act 1994, namely registration of a mark is prohibited “if or to the extent that the application is made in bad faith.” The PAN then points out SkyKick considered whether bad faith “can stem from an overly broad specification of goods and services, or an overly broad term within it” if the applicant did not have a genuine intent to use the mark for all of the identified goods and services. The PAN acknowledges that use is not required for filing UK trademark applications but that such a system can be subject to abuse by those who overclaim to prevent others from adopting a mark.
Accordingly, the PAN cautions applicants against filing for “vast number[s] of goods and services in large numbers of classes” and advises “[c]aution when the terms used to describe the listed goods/services are themselves broad.” It also warns against use of class headings, a common tactic in filing broadly. The PAN also warns that “selection of general terminology,” e.g., terms “computer software,” “pharmaceuticals,” and “clothing,” might be viewed as bad faith depending on the nature of the applicant.
PAN clarifies that “IPO examiners will not at this stage automatically object to broad terms such as computer software or clothing.” But applicants “should carefully consider what is appropriate for their intended use, which might mean that a subcategory is more appropriate.”
In July, in a case in which the defendant counterclaimed based on bad faith, the High Court relied on Skykick to pare down the coverage in one of the plaintiff’s registrations, narrowing the Class 9 coverage for “computer software” and “application software” to software relating to its specific financial and monetary business services. See Wise Payments Limited & ors v With Wise Ltd & ors [2025] EWHC 1722 (IPEC).
Time will tell how these new policies will play out. PAN 1/25 may be found here.
Takeaways: Applicants filing in the UK should:
- limit filings more closely to those goods and services they offer or intend to offer, and keep records of actual use or genuine intent to use at the application stage;
- take great care when relying on broad registrations in contested proceedings and consider basing their cases only on marks that they can defend from a potential counterclaim on bad faith grounds;
- bear in mind that the Skykick Court found a trademark owner may not rely on well-known status to justify overbroad coverage; and
- be aware that at the filing stage, applicants will be given two months to respond to bad faith objections with suitable rationale(s) for their claims; or they can amend the subject specification(s). And further opportunity for a hearing or appeal will be available.
China – New Amended Anti-Unfair Competition Law becomes effective October 15
China’s Amended Anti-Unfair Competition Law will take effect on October 15, 2025. Among the principal revisions are the following:
Unauthorized uses broadly defined
The new law expressly protects against unauthorized uses of certain identifiers, such as online screen names and handles, names of new-media accounts, application names, and app icons. In addition, it addresses conflicts between trademarks and enterprise names, strengthening the relief available to rights holders. “Where another’s registered trademark or an unregistered well-known trademark is used as the distinctive part of an enterprise name/trade name, thereby misleading the public into believing that the goods are those of another or that there is a specific connection with another, such conduct constitutes confusion ….” Acts of unfair competition will also now include unauthorized use of another’s mark as a search keyword in certain contexts. The new law also codifies a broader definition for what constitutes assisting others in acts of unfair competition than prior judicial interpretation. Specifically, it does not delineate or limit the types of conduct that would constitute “assisting” proscribed acts. In particular, Art. 7(3) of the new law provides, “aiding others in implementing confusing acts” constitutes unfair competition.
Responsibilities of platform operators expanded
The new law also places specific responsibilities on platform operators. For example, it prohibits these operators from compelling below-cost sales and places on them a proactive duty to adhere to fair competition practices. In this regard, it provides that “[p]latform operators shall specify fair competition rules in platform service agreements and trading rules, establish mechanisms for reporting/complaints about unfair competition and for dispute resolution,” preserve records, and report acts of unfair competition to the relevant authorities. The law provides for particularly steep penalties for online acts of unfair competition, doubling the maximum fine to RMB 1,000,000 and increasing the fine in serious cases from RMB 3,000,000 to RMB 5,000,000.
Abuse of superior position
Of special note is Article 15, which targets large companies’ abuse of “superior” position. “Operators such as large enterprises must not abuse their superior position to require SMEs [small and medium enterprises] to accept manifestly unreasonable payment periods, methods, conditions, or liability for breach, or to delay payment for goods, works or services.” Market “dominance” is not required. The new law provides for an opportunity to rectify Article 15 abuse violations, and it is up to the relevant provincial or higher-level government department to order rectification within a prescribed period. If the abuse is not rectified within such period, an administrative fine may be imposed amounting to anywhere from RMB 1,000,000 to RMB 5,000,000 (in serious cases).
Takeaways: Rights holders should now have more tools to combat a much broader range of conduct. But it will be important to monitor the market – and especially the internet – regularly and keep and maintain detailed records of a broad range of abuses to secure enforcement by local authorities.
France – Evidence – Good news for plaintiffs in infringement actions
On May 12, 2025, in a copyright and unfair competition action brought by the luggage company Rimowa GmbH against HP Design and Intersod, the French Court of Cassation took the opportunity to reverse important precedent dating to 2017. Under this precedent, only third parties unrelated to the plaintiff (usually a bailiff) could prepare and submit purchase reports for the relevant products. Defendants could invalidate reports of purchases made by parties related to the plaintiff, including employees of plaintiff’s law firm, on the basis that this partisan involvement taints the evidence’s “neutrality.” The plaintiff required an independent purchaser.
In this case, to support its claim that a suitcase marketed by defendants had infringed one of its designs, Rimowa submitted a bailiff’s report that contained evidence gathered by an employee of its law firm, which fact was disclosed in the report. The report was declared invalid by the Paris Commercial Court, based on precedent. The Paris Court of Appeal, however, disagreed, accepted the report as evidence, and ruled against defendants on Rimowa’s claims.
On further appeal, the Court of Cassation rejected prior precedent, reasoning that such “automatic” invalidation based only on the relationship between and buyer and the plaintiff itself was too rigid. Rather, it concluded that a court could reasonably determine the probative value of a report based on the circumstances of the case, e.g., full disclosure of the relationship between buyer and plaintiff, proper role of the bailiff, and any other facts supporting trustworthiness. In so ruling, the Court’s decision was consistent with the fairness requirement set out in DIRECTIVE 2004/48/EC of the European Parliament and of the Council of April 29, 2004 on the enforcement of intellectual property rights, found here.
Takeaway: This long-awaited, important ruling provides rights-holders with a far more practical and flexible approach to evidence-gathering in infringement actions in France. The decision is here.