Hana Financial, Inc. v. Hana Bank – What You Need to Know

Yesterday, the U.S. Supreme Court held that whether two trademarks may be tacked for purposes of determining priority is a question for the jury, because tacking is a factual inquiry based on the perspective of a consumer.

Background on the Case

Hana Financial sued Hana Bank for infringing the “Hana Financial” mark. Hana Bank denied infringement by claiming it had priority based on its earlier and continuous use of the mark “Hana Overseas Korean Club.” Although Hana Bank later operated under the marks “Hana World Center” and “Hana Bank,” it argued that it still had priority because the two later marks created the same, continuing commercial impression as the earlier mark such that the tacking doctrine applies. The jury returned a verdict in favor of Hana Bank based on tacking. The Ninth Circuit affirmed. The Supreme Court granted certiorari on the issue of whether trademark tacking should be determined by a jury and affirmed the Ninth Circuit’s decision.


The Supreme Court began by stating the general rule that when the question is how an ordinary person or community would make an assessment, a jury is generally the decision maker. Tacking is just such an issue because the relevant question is whether the two marks create the same, continuing commercial impression so that consumers consider both as the same mark. Thus, in a case where a jury trial has been requested and the facts do not warrant entry of a summary judgment or judgment as a matter of law, tacking should be decided by a jury.

The Supreme Court then addressed Hana Financial’s four arguments in turn. First, the Supreme Court observed the application of a legal standard by a jury is common, and tacking is no different than any other mixed question of law and fact. Carefully crafted jury instructions may address concerns about improper applications of legal standards by a jury. Second, the Supreme Court did not agree that a tacking determination will create new law to warrant reserving the issue for judges any more than a jury verdict in a tort, contract, or criminal case would. Third, the Supreme Court did not agree the predictability required for a functioning trademark system would be absent if tacking were decided by juries. The Supreme Court stated that juries have often made dispositive applications of legal standards to facts in tort, contract, and criminal cases, and there is no reason to treat trademark tacking differently. Finally, regarding the argument that judges have historically resolved tacking disputes, the Supreme Court determined Hana Financial had pointed to cases arising in the context of bench trials and summary judgments, but these cases did not change the Court’s conclusion that, when a jury is empaneled and when the facts warrant neither summary judgment nor judgment as a matter of law, tacking is a question for the jury.

Read the full opinion here.

Fox Broadcasting Co. v. Dish Network LLC – What You Need to Know

Yesterday, the District Court for the Central District of California held that the U.S. Supreme Court’s recent decision in ABC, Inc. v. Aereo, 134 S. Ct. 2498 (2014), does not preclude users from using Dish Network’s DVR features to record preset blocks of prime-time programming, remove commercials, and watch recorded shows on another device when the users have legitimate access to such programming content.

Background on the Case

Fox initially brought copyright infringement and breach of contract claims against Dish over four key features in Dish’s Hopper DVR: (1) “Dish Anywhere” technology, which allows users to access the DVR remotely, on computers and mobile devices, programming recorded on their DVRs; (2) “Primetime Anytime” technology, which allows users to record primetime programming shown on any of the four major broadcast networks; (3) “AutoHop” technology, which allows users to automatically skip commercials while playing back recorded shows; and (4) “Hopper Transfer” technology, which allows users to copy recordings on their DVR to a mobile device, to be later transferred and played-back on another device.

Fox and Dish both filed motions for summary judgment, with Fox urging the district court to consider the Supreme Court’s recent Aereo decision as new precedent on the copyright infringement claims, making Dish’s streaming technologies illegal. That decision held Aereo’s transmission of television content to subscribers to be unauthorized “public performance” of copyrighted works.


The district court identified key differences between the Aereo and Dish services: Dish’s service was not an unauthorized “public performance,” and Dish and its users already have a legal right to possess the material. In particular, Dish had a license to transmit the programming to users via satellite, and that programming could only be accessed by subscribers through their own home DVRs. Dish did not receive programs publically released over the air and then carry those programs by private channels to additional viewers in the same sense that Aereo did.

The district court ruled that Dish did not engage in direct or secondary copyright infringement, because Dish had not engaged in volitional conduct needed for direct liability. It was the subscribers, not Dish, who selected, made, and transferred content using Dish’s equipment. In addition, Dish was not liable for secondary infringement, as the subscribers either had rightful possession to the content (for the “Dish Anywhere” feature) or were engaging in fair use (for the “Primetime Anytime,” “AutoHop,” and “Hopper Transfer” features).

The district court granted summary judgment in favor of Dish for the copyright infringement claims, but left open Fox’s breach of contract claims relating to “Dish Anywhere” and found Dish liable on certain claims relating to copies made by Dish for quality assurance.