How High Court TM Profits Ruling Bears On False Advertising

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May 1, 2020

How High Court TM Profits Ruling Bears On False Advertising

Law360

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In Romag Fasteners Inc. v. Fossil Inc., the U.S. Supreme Court recently made it easier for Lanham Act plaintiffs to disgorge the ill-gotten profits of trademark infringers.

Naturally, the question arises: Since false advertising suits are also governed by the Lanham Act, does Romag apply to false advertising suits, too? The answer is likely yes — but there are important differences between the two types of suits that may make disgorgement awards more difficult for false advertising plaintiffs to obtain.

To continue reading Jonah M. Knobler's article in Law360, please click here.

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Fresenius Ruling May Shift Anti-Kickback Enforcement

When is it illegal to donate to a charity? According to the federal government, when you're a pharmaceutical manufacturer, and the charity helps Medicare patients afford your medicines. The government has argued that such donations may be illegal kickbacks. Courts have largely agreed with this view, but a recent decision by the U.S. Court of Appeals for the Ninth Circuit in Fresenius Medical Care Orange County LLC v. Bonta raises new doubts, suggesting that businesses have a First Amendment right to donate to certain charities — even when those donations are motivated by economic self-interest and have distortive economic effects. To continue reading Jonah Knobler's article in Law360, click here.

Geoffrey Potter to Speak at National Association of Boards of Pharmacy 122nd Annual Meeting

On Wednesday, May 13, Partner Geoffrey Potter will present a program at the National Association of Boards of Pharmacy's 122nd Annual Meeting on the illegal importation of pharmaceuticals by alternative funding programs for employer-sponsored health plans. He will open a panel presentation titled "The Increasing Complexity of the Supply Chain: Shining a Light on Alternative Funding Programs and Prescription Drug Facilitators/Non-Dispensing 'Pharmacies.'" He will speak about how millions of insured workers and their families are forced to use dangerous and illegal misbranded medications paid for by their healthcare plans and what pharmacy boards can do to stop it. To learn more, please click here.

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Last week, the Ninth Circuit issued a published decision striking down California’s Assembly Bill 290 (“AB 290”) on First Amendment grounds. See Fresenius Med. Care Orange Cnty., LLC v. Bonta, No. 24-3654 (9th Cir. Apr. 7, 2026). Its central holding was that providers of medical services have a protected First Amendment right to make donations to patient assistance charities that engage in expressive activity, even if those donations are driven by commercial self-interest. Although the case did not directly involve the federal Anti-Kickback Statute (“AKS”)—or any federal statute—it arguably calls into question the constitutionality of AKS proceedings often brought against pharmaceutical manufacturers that make analogous donations to patient assistance charities out of alleged self-interest. AB 290, the California statute at issue...

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Judge Eric Komitee recently denied a motion to dismiss patent infringement claims accusing flood prevention products sold pursuant to a contract that was entered into before the patent issued but delivered and installed after issuance. In 2013, plaintiff FloodBreak, LLC filed its patent application for a device that prevents flooding in subway systems. In 2016, while that application was pending, defendants T. Moriarty & Son, Inc. and James P. Moriarty, Jr. (collectively, “TMS”) contracted with the Metropolitan Transportation Authority (“MTA”) to supply flood-mitigation devices for the New York City subway. After the patent issued in 2017, FloodBreak sued TMS’s supplier and obtained a stipulated judgment that its devices infringe. FloodBreak then filed suit against TMS alleging infringement by TMS’s offer...