Mechanical Doping: The Running War on Super Shoes

Ever since Pheidippides ran from Marathon to Athens, athletes of all levels have marveled at the pursuit of running a marathon.1 26.2 miles is an incredibly daunting task, and professionals to amateurs alike have learned to respect the distance – the race does not owe anyone anything. The allure of competitive racing is the act of accomplishing something that many others cannot, as well as breaking personal barriers and records. For years, feats in professional distance running saw few advances and many runners were reaching unbreakable plateaus using the same shoes they’ve been wearing for years (with very minor advances in shoe technology). However, in recent years, many big players in sportswear have begun to develop what are now being called “super shoes.”2 Basically, this category of running footwear is inclusive of any shoe that is meant to be fast and lightweight with enough cushion and bounce to propel your next step to the finish.3 However, it is the implementation of a few more specific attributes that has garnered attention from runners, coaches, and sports journalists worldwide – carbon plates and engineered mesh upper.4 The addition of this plate, along with lightweight yet stable uppers, allows for a greater energy return during a runner’s stride and was marketed to have increased running economy by roughly over 4%, hence Nike’s naming of their shoe to be the “Vaporfly 4%.”5

Runners in Nike's Vaporfly & Alphafly

Runners in Nike’s Vaporfly & Alphafly

Super shoes are highly controversial by their very nature, and many consider them to be a form of “mechanical doping.”6 Mechanical doping has been at the subject of controversy in other endurance sports like swimming and cycling, as products in production have been banned for the unfair advantages that they offer the athletes who use them.7 Further, many regulations have needed to be put into place to prevent and monitor this form of “doping” by sports and rules federations around the globe.8 The advantages these super shoes offer to runners are no exception, as they seem highly unfair to runners who compete without them and almost appear illegal. In fact, Nike’s original Vaporfly model was banned from competition initially.9 Professional marathon runner and motivational athlete Eliud Kipchoge broke the all-time world record for his sub 2-hour marathon time in one of Nike’s super shoes, the Alphafly Next%10, and many athletes and critics were quick to discredit his time and overlook his race as a result almost entirely obtained because of his shoes.11 The reasoning adopted by these critics, albeit flawed12, does have roots in a serious issue regarding those shoes. The main reason for this argument was because, at the time, Nike was the only player in the sport making sneakers at this caliber and with this level of new technology.13 Their running shoe technology was groundbreaking, and non-Nike sponsored athletes were surely paying the price.14 Athletes at all levels that were not sponsored by Nike could not seem to catch a break, as, until recently, athletes at the podium were all sporting Nike running shoes alongside their medals and accolades. But now, seemingly every competing sportswear company that produces high-level running shoes is releasing models that can compete with Nike’s. Nike is still considered the mecca of running shoe producers to many, yet various athletes are breaking records and out-running Nike athletes in non-Nike shoes.15 Now, Nike is fighting back to remain at the top of the super shoe food chain.16

Eliud Kipchoge with Alphafly Next%'s

Eliud Kipchoge with Alphafly Next%’s

To very little surprise, the most popular competitor for Nike in this running shoe arms race is Adidas. The Checks vs. Stripes feud seems to date back nearly as far as Nike’s inception itself.17 You can imagine Adidas’ frustration when a company decades younger has soared to the top of nearly every sports market.18 But Adidas has been able to rival Nike’s Vaporfly and Alphafly models with the introduction of the Adidas Adios Pro line.19 These Adidas shoes are made using Primeknit technology, while Nike’s are made using patented Flyknit technology, and this is where the issue lies.20 Nike claims that Adidas has stolen their “game-changing” technology for various product designs, seeking injunctive relief as well as monetary damages.21 Before this complaint filed by Nike, Adidas lost in the U.S. Court of Appeals for the Federal Circuit to Nike after alleging that Nike violated two patents owned by Adidas.22 As part of their request for injunctive relief, Nike has further requested that the U.S International Trade Commission block all imports of various Adidas shoe models that allegedly infringe on Nike’s patented designs and technology.23 These patents that Nike seeks to protect are some of the most crucial aspects to the Vaporfly and Alphafly designs, as they allow the shoe to be extremely lightweight and comfortable, which in turn increases running performance in users.24 This technology is constantly being improved upon and changed, so it is uncertain whether these patent disputes are worth it for these companies in the long term, but for now they do not appear to be going away. Nike will attempt to protect their designs to stay on top, while Adidas will fight to remain as competitive as they can be as a late player to the game. While many other running brands, like Asics25, have developed a more unique model of super shoe, it is notable that Nike and Adidas are seemingly the only players that wish to compete not only with the entire market, but with each other in a separate battle to the finish.

Nike Alphafly Next% vs. Adidas Adios Pro

Nike Alphafly Next% vs. Adidas Adios Pro

It is difficult to deny the extent and breadth of Nike’s impact on sportswear and the running world.26 While their competitive edge remains prevalent, many new players in the game of elite super shoe production seem to be startling the industry leader. It will be very interesting to see how this case ultimately plays out, as it will set important precedents in running shoe technology advances as super shoes only seem to be getting better and better with each new model. Moreover, it will be just another landmark case in the ongoing battle between Nike and Adidas to see who truly reigns supreme as the top sportswear brand.27

As this case continues, and as progressively more people pick up competitive racing as a result of the Covid-19 pandemic28, it is likely for us to see many similar complaints and cases regarding running shoe technology begin to develop. And it makes sense – superpower companies will always try to protect technology and products that they believe to be proprietary and top-notch, and smaller corporations will always fight to remain competitive in a market dominated by only a fraction of the total players. As of July 2022, Adidas and Nike are both set to release brand new models of their super shoes, the Adizero Adios Pro 3 and the Alphafly Next% 3 respectively, before the Fall 2022 marathon season.29 This will indeed make for a very interesting sneaker battle come time for the results of the fall circuit, and possibly the king of super shoes will be crowned once and for all.

1See Dean Karnazes, The Real Pheidippides Story, Runner’s World (Dec. 6, 2016),

2Jonathon Taylor, Super shoes: Explaining athletics’ new technological arms race, The Conversation (Mar. 2, 2021, 7:47 AM),

3See Jonathon Taylor, Super shoes: Explaining athletics’ new technological arms race, The Conversation (Mar. 2, 2021, 7:47 AM),; Bryce Dyer, Nike Vaporfly ban: why World Athletics had to act against the high-tech shoes, The Conversation (Feb. 6, 2020, 6:50 AM),

4E.g. Jonathon Taylor, Super shoes: Explaining athletics’ new technological arms race, The Conversation (Mar. 2, 2021, 7:47 AM),


6E.g. THE CURIOUS CASE OF MECHANICAL DOPING, Sneaker Speculation (May 7, 2020),

7See id.

8See id.

9E.g. Stuart Greenwood, Kicking up a storm – a breakdown of Nike’s ground-breaking and controversial range of running shoes, AA Thornton (Feb. 2020),; Wall Street Journal, The Controversy Behind Nike’s Vaporfly Running Shoe, Explained | WSJ, YouTube (Jan. 23, 2020),

10Luis Torres, How Eliud Kipchoge and the Nike AlphaFly Made History, Nice Kicks (Oct. 14, 2019),

11See James Witts, Technological doping: The science of why Nike Alphaflys were banned from the Tokyo Olympics, Science Focus (Sept. 4, 2021, 4:00 PM),

12See Brian Metzler, Banning Kipchoge’s Shoes Is the Dumbest Take in Running Right Now, Runner’s World (Oct. 21, 2019),

13E.g. Running shoe tech: The Emperor’s clothes, and the issues for the integrity of running, The Science of Sport (Feb. 6, 2020),

14THE CURIOUS CASE OF MECHANICAL DOPING, Sneaker Speculation (May 7, 2020),

15See Tony Owusu, Adidas Runs Into Nike FlyKnit Patent Lawsuit, TheStreet (Dec. 10, 2021, 9:18 AM),

16E.g. Rachel Bernardo, How Adidas Develops Adizero For World Record Performances, Believe In The Run (Apr. 21, 2022),



19See Brandon Law, Comparison: Nike Alphafly Next% vs Adidas Adizero Adios Pro, Running Shoes Guru (last visited July 6, 2022),



22See Blake Britian, Nike asks U.S. agency to block Adidas shoe imports, citing patents, Reuters (Dec. 9, 2021, 12:16 PM),; Brendan Pierson, IN BRIEF: Nike prevails in shoe patent dispute with Adidas, Reuters (June 25, 2020, 6:57 PM),


24Tony Owusu, Adidas Runs Into Nike FlyKnit Patent Lawsuit, TheStreet (Dec. 10, 2021, 9:18 AM),

25Cory Smith, ASICS Challenges Nike Super Shoe With ‘MetaSpeed Sky’: Review, Gear Junkie (Mar. 29, 2021),

26E.g. id.

27See Nike vs Adidas Case Study: Who Is Winning? All You Need To Know, 440 Industries (Sept. 23, 2021),

28Wings for Life World Run, Running becoming increasingly popular, Red Bull (Jan 2, 2021),

29See Taylor Willson, NIKE VS ADIDAS: BATTLE OF THE “SUPER SHOE”, Highsnobiety (June 15, 2022),

NFT-based Trademark Infringements: Trends and Risk Mitigation Strategies

    1.   NFTs and Trademarks: General Overview
    2. Interest in blockchain technologies, cryptocurrencies, and particularly non-fungible tokens (NFTs) is steadily increasing. According to Eric Anziani, COO of, “NFTs really started initially with the digital art side. But it’s going to be a lot more powerful. It will be the tool that represents any digital type of assets in virtual worlds going forward. So the applications are tremendous1.”

      Basically, an NFT is a (i) cryptographic on the blockchain; (ii) representing an asset; (iii) that is unique and non-interchangeable. For instance, Finzer D. describes NFTs as: “unique, digital items with blockchain-managed ownership2.” Indeed, NFTs, powered by blockchain, have unique qualities which can be applied in different industries and businesses including fine arts, gaming, digital identity, certification, licensing, etc. In this respect, the sudden economic growth of the NFT market is understandable. Businesses also tend to use NFTs as marketing tools and as a creative way for building the brand’s image.

      In the meantime, the rise of the NFT market poses new legal challenges, including those in the realm of intellectual property and especially trademark law. Two main trends are worth highlighting. First, there is a significant increase of trademark filing activity around NFT brands. Second, the number of new NFT-related enforcement cases is constantly increasing, including a number of high-profile litigation cases.

    3.   Prosecution: How to Trademark your NFT and Avoid Infringing Third-Parties Trademarks
    4. With increased media coverage and popularity, U.S. NFT trademark applications skyrocketed during the past year.

      According to open sources, there was a 552% increase in NFT trademark applications with the U.S. patent agency between August 2021 and January 20223. In January alone, about 450 filings for NFT-related trademarks were received4. [Graphical representation of the data is below.]

      NFT-based Trademark Infringements: Trends and Risk Mitigation Strategies


      Some of the latest examples of NFT-related trademark applications include:


      Monster Energy Company
      February 18, 2022
      IC 009 (e.g., virtual goods, software enabling users to experience virtual reality and augmented reality visualization, manipulation, and immersion…) IC 035 (e.g., retail store and online retail store services) IC 041 (entertainment services) IC 042 (providing on-line non-downloadable software; platform as a service (PaaS) and software as a service (SaaS))

      New York Stock Exchange (NYSE Group, Inc.)
      February 10, 2022
      IC 009 (e.g., virtual goods, software enabling users to experience virtual reality and augmented reality visualization, manipulation, and immersion) IC 035 (e.g., provision of an online marketplace) IC 036 (e.g., financial exchange of virtual currency in the field of digital currency) IC 042 (e.g., computer services, electronic storage of cryptocurrency)

      Brooklyn Nets, LLC
      January 19, 2022
      IC 025 (Clothing)

      NFT Starter
      NFT Starter Inc.
      January 28, 2022
      IC 009 (Downloadable image files containing artwork, video clips, writings, and multimedia authenticated by non-fungible tokens (NFTs))

      NFT BEER
      Columbia Craft, LLC.
      February 3, 2022
      IC 032 (Beer) IC 036 (Financial exchange of crypto assets; Financial services) IC 041 (Entertainment services)

      McDonald’s Corporation
      February 04, 2022
      IC 043 (operating a virtual restaurant)

      Victoria's Secret Stores Brand Management, LLC
      Victoria’s Secret Stores Brand Management, LLC
      February 14, 2022
      IC 009 (e.g., downloadable virtual goods) IC 035 (e.g., retail store services featuring virtual goods) IC 041 (entertainment services)

      Jan. 06, 2022
      IC 009 (Downloadable virtual goods) IC 035 (e.g., retail store and online retail store services) IC 041 (Providing an interactive website for virtual reality game services; Entertainment services)

      Nike, Inc.
      Nike, Inc.
      October 27, 2021
      IC 009 (downloadable virtual goods) IC 035 (retail store services featuring virtual goods) IC 041 (entertainment services)

      The Andy Warhol Foundation for the Visual Arts, Inc.
      March 25, 2021(Published on February 22, 2022)
      IC 009 (downloadable image and multimedia files containing artwork, text, audio, video, games relating to art, collectables, and Non-Fungible Tokens) IC 041 (providing on-line digital publications in the nature of blogs, articles, e-books, podcasts, and videos in the fields of art, artwork, and NFTs (non-fungible tokens) via the Internet (not downloadable)) IC 042 (e.g., providing temporary use of online non-downloadable simulation software for trading non-fungible tokens used with blockchain technology)

      Considering this increased focus on obtaining trademark protection for NFTs, it is essential to note that all general trademark registration requirements apply to NFT-related trademarks. In particular, trademarks are always registered for specific classes of goods and services (their intended use). In most cases, NFT-related trademarks are registered for the following classes:

      • International Class 009 (downloadable virtual goods)
      • International Class 035 (online retail store, business services)
      • International Class 036 (financial, banking services)
      • International Class 041 (entertainment services)

      Trademarkers must make a preliminary assessment of what classes and services to specify, form an accurate description of services/goods involved, and analyze descriptiveness and potential consumer confusion. According to the USPTO, registering a trademark usually takes about 12-18 months.

    5.   Enforcement: Unauthorized Use of Trademarks in the NFT-based Projects
    6. Obtaining a trademark registration can be essential to prohibit third parties from unauthorized use of the trademarked designations in their NFT-based projects. However, since NFTs are so new, most brands have not established comprehensive trademark protections specifically for NFT-related goods and services.

      In the meantime, many NFT-based projects started to use famous trademarked brands without any consent from their owners. For example, a collection of 100 virtual versions of Hermès handbags appeared as NFTs created by Mason Rothschild at his website. The name “METABIRKIN” was used for the project. This project inevitably implicated trademark rights and triggered a trademark lawsuit. On January 14, 2022, the rights holder of BIRKIN trademarks, Hermès, filed a trademark infringement and dilution lawsuit against Mason Rothschild.

      According to the complaint, Hermès alleges that Rothschild is trying to “get rich quick by appropriating the brand MetaBirkins for use in creating, marketing, selling, and facilitating the exchange of digital assets known as non-fungible tokens” and “make his fortune” by swapping out Hermès’ “real life” rights for “virtual rights5.” Hermès specifically asserts the following causes of action:

      1. Trademark Infringement (unauthorized use of the BIRKIN Mark resulted in Rothschild unfairly benefiting from Hermès’ advertising and promotion and profiting from Hermès’ reputation and the BIRKIN Mark).

      2. False Designations of Origin (falsely or misleadingly describe and/or represent the METABIRKINS NFTs as those of Hermès)

      3. Trademark Dilution (Rothschild intentionally and willfully utilized the BIRKIN Mark to trade on Hermès’ reputation and goodwill)

      4. Cybersquatting (registration and use of the Infringing Domain cause consumers to falsely believe that the METABIRKINS Website and the infringing METABIRKINS NFTs are affiliated with, endorsed or approved by Hermès)

      5. Injury to Business Reputation and Dilution (New York General Business Law)

      6. Common Law Trademark Infringement

      7. Misappropriation and Unfair Competitionunder New York Common Law

      In particular, according to Hermès, the “METABIRKINS brand simply rips off Hermès’ famous BIRKIN trademark by adding the generic prefix ‘meta’ to the famous trademark BIRKIN.” At the same time, Rothschild claimed, “I’m not creating or selling fake Birkin bags. I’ve made artworks that depict imaginary, fur-covered Birkin bags6.” Rothschild appealed to First Amendment rights and the prevalent “Rogers test” which helps to determine the balance between protecting artistic expression and avoiding potential confusion with a famous mark.

      Currently, multiple versions of the test exist, but a decision in this case could make applications more uniform and create a new standard for use of trademarks in expressive work. On such a possibility, Susan Scafidi, the director of Fordham University’s Fashion Law Institute, opined that “[this case] has the potential to provide guidance on how art and fashion will coexist in the digital world.”

      Another relevant high-profile case is Nike, Inc. v. StockX7. Nike filed a complaint against StockX, the operator of an online resale platform for various brands of sneakers, apparel, luxury handbags, electronics, and other collectible goods that purports to provide authentication services to its customers. According to Nike, “without Nike’s authorization or approval, StockX is “minting” NFTs that prominently use Nike’s trademarks, marketing those NFTs using Nike’s goodwill, and selling those NFTs at heavily inflated prices to unsuspecting consumers who believe or are likely to believe that those “investible digital assets” (as StockX calls them) are, in fact, authorized by Nike when they are not8.”

      Nike asserts the following causes of action:

      1. Trademark Infringement (StockX’s unauthorized use of Nike’s Asserted Marks constitutes trademark infringement of Nike’s federally registered trademarks, which has caused damage to Nike and the substantial business and goodwill embodied in Nike’s trademarks in violation of Section 32 of the Lanham Act)

      2. False Designations of Origin / Unfair Competition (StockX’s unauthorized use of Nike’s Asserted Marks and/or confusingly similar marks constitutes a false designation of origin that is likely to cause consumer confusion, mistake, or deception as to the origin, sponsorship, or approval of

      3. Trademark Dilution (Nike’s Asserted Marks have become distinctive and “famous”… StockX’s use of Nike’s Asserted Marks and/or confusingly similar marks has been intentional and willful)

      4. Injury to Business Reputation (New York General Business Law)

      5. Common Law Trademark Infringement and Unfair Competition (that StockX acted knowingly, willfully, wantonly, oppressively, fraudulently, maliciously, and in conscious disregard of Nike’s rights).

      The overlap between this lawsuit and the MetaBirkin case is apparent and StockX will likely also claim fair use and First Amendment protection.

      In this respect, these cases may be landmarks which will influence future cases involving allegations of trademark infringements by NFT-based projects.

    7.   Enforcement: NFTs and Cybersquatting
    8. As a related but separate issue, the recent increase in NFT-related domain name disputes has given rise to a new wave of arbitral litigation using the Uniform Domain-Name Dispute-Resolution Policy (UDRP). This is in no small part due to “cybersquatters” registering NFT-related domain names using well-known trademarks.

      For instance, an UDRP dispute arose involving the domain name “” unrelated to the actual Morgan Stanley financial services firm9. Upon the complaint of Morgan Stanley, the UDPR panel considered the registered domain name confusingly similar to the trademark owned by the firm.

      The UDRP panel found that the registrant of the domain name had no rights or legitimate interests in it and that the domain name was registered and used in bad faith. The panel in part determined that the use of competing pay-per-click links indicated bad faith. Due to this, the panel ordered the domain name transferred to Morgan Stanley.

      WhatsApp also faces unauthorized registration of several NFT-related domain names (,,,, and Such domain names were registered on the name of Turkish individuals and organizations. WhatsApp filed the respective complaint with the WIPO Arbitration and Mediation Center. The Panel considered the complaint and stated the following: “The incorporation of a well-known trademark into a domain name by a registrant having no plausible explanation for doing so may be, in and of itself, an indication of bad faith10” The Panel ordered that the disputed domain names be transferred to the complainant.

      From these examples, the addition of the descriptive NFT acronym does not prevent a finding of confusing similarity and subsequent transfer of a domain name to the actual trademark holder. As in all cybersquatting cases, demonstration of a lack of the registrant’s rights or legitimate interests in the disputed domain names and evidence of bad faith registration can be informative in decision-making processes.

      Overall, the UDRP is a valuable instrument that can be used against “crypto-squatters” trying to capitalize on the registration of NFT-related domain names.

    9.   Conclusions and Further Implications
    10. The growth of the NFT market has spurred the increase of NFT-related trademark applications as well as new trademark infringements including those brought under UDPR litigation and fair use / first amendment protections.

      It seems reasonable to expect more high profile NFT-related trademark cases in the future. In addition to analyzing infringement and cybersquatting cases, we can expect NFT-related disputes in the Trademark Trial and Appeal Board (TTAB) as well as contracts arising from trademark licensing and assignment.

      In the meantime, both right-holders and owners of NFT-based projects can mitigate their legal risks associated with the possible trademark infringements in a variety of ways. In particular, right-holders and owners can:

        1. Register trademarks specifically for NFT-related goods and services

        2. Register domain names with the acronym “nft.”

        3. For trademark holders, monitor the use of trademarks in NFT-based projects and registration of relevant trademarks and domain names in the name of third parties. In case of potential violations, immediately take appropriate action (e.g., sending cease-and-desist letters)

        4. For NFT-based projects, make a risk assessment with regards to the used designations/logos used as part of their projects

        5. Carefully form and articulate enforcement/litigation strategy and respective argumentation.

1 NFTs: The metaverse economy. Financial Times (2022). Available at: URL:

2 Finzer D. (2021) The Non-Fungible Token Bible: Everything you need to know about NFTs. Available at: URL:

3 Sujha Sundararajan. U.S. NFT Trademark Filings Soared 400X Since 2021. Available at:

4 Justinas Baltrusaitis. U.S. NFT trademarks applications skyrocketed 400x in 2021 with 15 registrations daily in 2022. Available at:

5 Hermes Complaint, 1. Available at: URL:

6Agence France-Presse, Hermès suing American artist over NFTs inspired by its Birkin bags. Jan 22, 2022. Available at: URL:,but%20ownership%20cannot%20be%20forged.

7Nike, Inc. v. StockX. Available at: URL:

8Nike Complaint, 2. Available at:

StockX’s Vault NFTs by creating the false and misleading impression StockX’s Vault NFTs are produced by, authorized by, or otherwise associated with Nike)

9 Morgan Stanley v. Joseph Masci. Available at:

10 WhatsApp, LLC v. Domain Admin, / / Mohammed Alkurdy, Evan Digital Technology Group. Available at:

TransUnion Case Law in Privacy-related Cases: Comment on the Article “Statutory Violations Not Enough to Give Rise to a Cause of Action for Class Actions says U.S. Supreme Court”

TransUnion Case Law in Privacy-related Cases


In the recent article “Statutory Violations Not Enough to Give Rise to a Cause of Action for Class Actions says U.S. Supreme Court“, we have analyzed the high-profile case TransUnion v. Ramirez and, specifically, the Supreme Court’s reasoning on the standard of proving tort damages in class actions.  The full article with a detailed analysis of the case is available via the link above.


In this comment, we would like to elaborate on the privacy implications of TransUnion v. Ramirez and, in particular, analyze the post-TransUnion case law of the Second Circuit from the perspective of privacy laws.


  • The Factual Analysis


To briefly summarize the facts of the case1: A credit reporting agency, TransUnion, was sued by Sergio Ramirez who was denied from buying a car because he was on a “terrorist list” according to the consumer report provided by TransUnion.


The issue is that TransUnion’s software aimed to facilitate the compilation of personal and financial information about individual consumers (OFAC Name Screen Alert) generated many false positives because many consumers shared names with those included in the OFAC list.


In this respect, Ramirez filed a class-action lawsuit alleging TransUnion’s alleging that it violated the Fair Credit Reporting Act (FCRA) by failing to follow reasonable procedures to ensure the accuracy of

the credit report information, disclose the inaccurate terrorist list match upon request, and include a notice of their rights under FCRA.


The class-action was filed on behalf of a class of 8,185 people all suffering from TransUnion’s matching practices.  However, only 1,853 of the class, including Ramirez, had their false reports containing OFAC alerts provided to the third-party companies.


privacy policy



  • Decision and Analysis: A Privacy Law Perspective


The Supreme Court held that members of the class-action lawsuit whose credit files were provided to third-party businesses suffered concrete harm from TransUnion’s actions.  However, those whose files were not transferred lacked standing to sue under Article III.  In our earlier article, we have discussed important procedural and policy issues and considerations related to this case.  In the meantime, this case also has significant privacy implications because the Supreme Court significantly shaped the enforcement landscape for many privacy laws.


Specifically, from the privacy perspective, the Supreme Court restricted private rights of action in privacy actions by introducing a “concrete harm” for Article III standing to seek damages.  According to the Supreme Court, “[c]entral to assessing concreteness is whether the asserted harm has a ‘close relationship’ to a harm traditionally recognized as providing a basis for a lawsuit in American courts.” TransUnion LLC v. Ramirez, 141 S. Ct. 2190, 210 L. Ed. 2d 568, 2200 (2021).  In other words, a mere statutory violation does not give a plaintiff a cause of action against a defendant.


Taking into account the essence of many privacy violations and the notion of privacy harms2, determining what constitutes concrete harm exactly can be very challenging.  In particular, as mentioned in the dissenting opinion of Justice Thomas, “even setting aside everything already mentioned— the Constitution’s text, history, precedent, financial harm, libel, the risk of publication, and actual disclosure to a third party—one need only tap into common sense to know that receiving a letter identifying you as a potential drug trafficker or terrorist is harmful.”  TransUnion LLC v. Ramirez, 141 S. Ct. 2190, 210 L. Ed. 2d 568, 2223 (2021).


In this respect, the Supreme Court’s decision is highly criticized by leading privacy scholars as “undermining the effectiveness of many privacy laws” and being “wrong and troubling on many levels.” Id.  According to Keats Citron & Daniel J. Solove, “the Court’s test for recognizing concrete injuries is severely flawed.  The Court’s application of its test is also marred by an inadequate understanding of privacy harms”. Id.


These conclusions are based on the detailed analysis of the notion of “privacy harm” in the broad sense (including “emotional distress harm” and “data quality harm”).  Indeed, it seems reasonable to argue that “a credit report with inaccurate information like denoting someone as a terrorist as in TransUnion poses a significant risk of economic and reputational harm” and “[i]t can be hard for individuals to find out about errors, and when they do, third parties will ignore requests to correct them without the real risk of litigation costs.”.  Id.


However, despite the risk of future harm was not recognized as sufficiently concrete to satisfy Article III standing, the Supreme Court recognized that “a person exposed to a risk of future harm may pursue forward-looking, injunctive relief to prevent the harm from occurring, at least so long as the risk of harm is sufficiently imminent and substantial.”. TransUnion LLC v. Ramirez, 141 S. Ct. 2190, 210 L. Ed. 2d 568, 2210 (2021).  Specifically, the Supreme Court clarified that when it is impossible to prove a “concrete harm,” there is still an opportunity to enforce statutory rights through the injunctive relief.  In practice, this means that those whose credit reports contain inaccurate information could request TransUnion to amend this information, prohibit it from transferring with third parties, or undertake other measures aimed to prevent the harm from occurring.


Thus, from a privacy perspective, it provides guidance for courts and parties on how to assess intangible harms. In the meantime, the TransUnion case imposes significant limitations on the enforcement of privacy violations and, as mentioned in Thome v. Sayer L. Grp., P.C., “questions remain about how to implement TransUnion’s guidance.”.  Thome v. Sayer L. Grp., P.C., No. 20-CV-3058-CJW-KEM, 2021 WL 4690829, 7 (N.D. Iowa Oct. 7, 2021).


  • Post-TransUnion Case Law


Interestingly, since the decision was delivered on June 25, 2021, courts actively applied and analyzed the TransUnion decision.  As for February 2022, there are more than 300 decisions that, in their reasoning, referred to the TransUnion case4.


These cases include both those directly related to privacy violations, including privacy of communications as part of the debt collection litigation under FDCPA6 as well as a wide range of other class actions including antitrust, labor, First Amendment rights and specific state law statutes.


Despite the TransUnion decision only addressed federal court standing under Article III, courts tend to use TransUnion guidance in actions arising under state law.


For instance, it seems insightful to analyze the recent case considered in the Court of Appeals of the Second Circuit – Maddox v. Bank of New York Mellon Trust Company, N.A.  Maddox v. Bank of New York Mellon Trust Co., No. 19-1774 (2d Cir. 2021)10.  In this case, mortgagors (the “Maddoxes”) brought an action against the mortgagee, alleging that mortgagee’s failure to timely record mortgagors’ satisfaction of mortgage.  The district court stated that mortgagors had Article III standing to seek statutory damages from the Bank for its violation of New York’s mortgage-satisfaction-recording statutes (the “statutes”).


The District Court denied the Maddoxes’ motion for judgment on the pleadings.  Mortgagors filed an interlocutory appeal claiming to have Article III standing to seek statutory damages.  The appeal was certified.


However, on rehearing in light of the intervening authority of TransUnion LLC v. Ramirez, which was held after the TransUnion decision, the Court of Appeals of the Second Circuit held that mortgagors did not satisfy a test of “concrete harm”, and thus, they lacked Article III standing to pursue claims for statutory penalties in federal court.  As part of its analysis, the Court of Appeals of the Second Circuit noted the following:


“In sum, TransUnion established that in suits for damages plaintiffs cannot establish Article III standing by relying entirely on a statutory violation or risk of future harm: “No concrete harm; no standing.”


“Our original opinion observed that a statutory right is considered “substantive” if it protects against a harm that has a close relationship to a harm traditionally regarded as providing a basis for a lawsuit in American courts. The violation of a substantive right, the opinion explained, constitutes a concrete injury in fact sufficient to establish Article III standing without any additional showing. TransUnion clarified, however, that the type of harm that a statute protects against is of little (or no) import; what matters is “whether the alleged injury to the plaintiff has a ‘close relationship’ to a harm ‘traditionally’ recognized as providing a basis for a lawsuit in American courts.” 141 S. Ct. at 2204 (emphasis added) (quoting Spokeo, 578 U.S. at 341, 136 S.Ct. 1540).  In other words, plaintiffs must show that the statutory violation caused them a concrete harm, regardless of whether the statutory rights violated were substantive or procedural.”.  Id.


As for the privacy-related post-TransUnion cases, the illustrative example is the recent case Bohnak v. Marsh & McLennan Cos., Inc.  Bohnak v. Marsh & McLennan Cos., 2022 WL 158537 (S.D.N.Y. 2022).

In this case, plaintiffs (Bohnak and Smith) brought a nationwide class action complaint against defendants (specifically, companies Marsh & McLennan Companies, Inc. and Marsh & McLennan Agency, LLC) for alleged injuries arising from a data breach compromising plaintiffs’ personally-identifiable information in defendants’ possession. Plaintiffs bring state-law claims for: (1) negligence, (2) breach of implied contract, and, (3) breach of confidence.


In its analysis, the United States District Court (S.D. New York) made several references to the TransUnion case. In particular, the court noticed the following:


“Although TransUnion foreclosed Plaintiffs’ reliance on the mere future risk of harm, it did not foreclose Plaintiffs’ second theory. Plaintiffs may have Article III standing, so long as they plausibly allege that the exposure to identity theft itself “causes a separate concrete harm.”  Bohnak, 2022 WL at 5.  I hold that they do. Certain types of intangible harms have long been judicially cognizable, and are therefore, concrete.  These include reputational harm and privacy-related harms that form the basis for the common-law torts of defamation, public disclosure of private information (“PDPF”), and intrusion upon seclusion.”


“In light of the TransUnion Court’s admonition that common-law analogs need not provide “an exact duplicate,” as well as its explicit reference to PDPF as an example of traditionally judicially cognizable intangible harm, I find the fit sufficiently close.  Accordingly, I hold that Plaintiffs have alleged an intangible concrete injury, analogous to that associated with the common-law tort of public disclosure of private information, and therefore have Article III standing.”.  Bohnak, 2022 WL at 5.


Thus, the Court applied the TransUnion decision to determine the criteria for public disclosure of private information. Interestingly, despite the claim was overall dismissed for failure to state a claim11, the Complaint managed to satisfy the requirements of Article III, as prescribed by the TransUnion decision, and shed light on the application of the TransUnion “concrete harm” test in privacy-related cases considered in the Second Circuit.


TransUnion Case Law



  • Trends and Conclusions


Overall, TransUnion v. Ramirez is a landmark case that has debatable, but definitely strong influence on Article III standing regarding concrete harm, including enforcement in privacy-related cases. In particular, the TransUnion “concrete” harm test is adapted by courts of the Second Circuit.


In practice, this means that now plaintiffs, including those who are willing to enforce their privacy rights in the Second Circuit and, specifically, recover damages, should take into account the necessity to show the evidence of “concrete” harm as defined by the Supreme Court in TransUnion v. Ramirez.  Otherwise, plaintiffs may consider pursuing an alternative course of action (e.g., injunctive relief).


1 TransUnion LLC v. Ramirez, 141 S. Ct. 2190, 210 L. Ed. 2d 568 (2021); Statutory Violations Not Enough to Give Rise to a Cause of Action for Class Actions says U.S. Supreme Court.


2 Citron, Danielle Keats and Solove, Daniel J., Privacy Harms (February 9, 2021). GWU Legal Studies Research Paper No. 2021-11, GWU Law School Public Law Research Paper No. 2021-11, Available at SSRN: or


3 Solove, Daniel J. and Citron, Danielle Keats, Standing and Privacy Harms: A Critique of TransUnion v. Ramirez (July 28, 2021). 101 Boston University Law Review Online 62 (2021), Available at SSRN:


4 Specifically, based on the Westlaw search, as for February 01, 2022, there are 312 cases where courts referred to TransUnion v. Ramirez.


5 See e.g., In re American Medical Collection Agency, Inc. Customer Data Security Breach Litigation, Slip Copy (D.N.J., 2021), Wadsworth v. Kross, Lieberman & Stone, Inc., 12 F.4th 665 (7th Cir. 2021), 12 F.4th 665, 668–69 (7th Cir. 2021); JOSE AVINA, Plaintiff, v. RADIUS GLOBAL SOLUTIONS, LLC, Defendant., No. 21 CV 295, 2021 WL 6752293 (N.D. Ill. Nov. 4, 2021); Bohnak v. Marsh & McLennan Cos., Inc., No. 21 CIV. 6096 (AKH), 2022 WL 158537 (S.D.N.Y. Jan. 17, 2022).


6 In re FDCPA Mailing Vendor Cases, No. CV 21-2312, 2021 WL 3160794, at *1 (E.D.N.Y. July 23, 2021), Lupia v. Medicredit, Inc., 8 F.4th 1184 (10th Cir. 2021), Kola v. Forster & Garbus LLP, No. 19-CV-10496 (CS), 2021 WL 4135153 (S.D.N.Y. Sept. 10, 2021); Sputz v. Alltran Fin., LP, No. 21-CV-4663 (CS), 2021 WL 5772033 (S.D.N.Y. Dec. 5, 2021).


7 See e.g., In re EpiPen (Epinephrine Injection, USP) Marketing, Sales Practices and Antitrust Litigation, Slip Copy (D.Kan., 2021)


8 Ellsworth v. Schneider National Carriers, Inc., Slip Copy (C.D.Cal., 2021); Rosario v. Icon Burger Acquisition LLC, No. 21-CV-4313(JS)(ST), 2022 WL 198503 (E.D.N.Y. Jan. 21, 2022).


9 CARLOS VICTORINO & ADAM TAVITIAN, individually, & on behalf of other members of the general public similarly situated, Plaintiffs, v. FCA US LLC, a Delaware limited liability company, Defendant., No. 16CV1617-GPC(JLB), 2021 WL 4124245, at *4–5 (S.D. Cal. Sept. 9, 2021); Ass’n of Am. Physicians & Surgeons v. United States Food & Drug Admin., 13 F.4th 531 (6th Cir. 2021)


10 Maddox v. Bank of New York Mellon Tr. Co., N.A., 19 F.4th 58, 59 (2d Cir. 2021).


11 As mentioned by the Court, “it [the Complaint] ultimately falls short in establishing that Plaintiffs have suffered legally cognizable injury to support their substantive claims.”

Shrouded in Secrecy: LLCs and High-End Real Estate

The LAW FIRM OF DAYREL SEWELL, PLLC is pleased to announce its latest publication, “Shrouded in Secrecy: LLCs and High-End Real Estate”, appearing on the front page of the September 2016 issue of the Brooklyn Barrister.  The Brooklyn Barrister is the official publication of the Brooklyn Bar Association.

LLCs, partnership, corporation

You are encouraged to comment and receive free updates by subscribing to the firm’s Blog and Press Release sections.

Piece of Cake: What’s Behind Supreme Court Opinions?

Piece of Cake: What’s Behind Supreme Court Opinions?

On June 4, 2018 the United States Supreme Court issued a decision in the controversial case, Masterpiece Cakeshop, Ltd. v. Colorado Civil Rights Commission. The case concerned a baker, Mr. Jack Phillips, a devout Christian, who in 2012 declined to create a wedding cake for a same-sex wedding on the basis that doing so would require him to express himself artistically in a way that was inconsistent with his religious beliefs. At the time, gay marriage was not legally recognized in Colorado. However, the state had an anti-discrimination act regarding goods and services available to the public. See C.R.S. 24-34-601. The Commission determined that Mr. Phillips violated the anti-discrimination act. On review, the Supreme Court held that the Commission violated the First Amendment’s Free Exercise Clause by egregiously treating Mr. Phillips’ case with hostility towards his religious beliefs. The Free Exercise Clause requires that states not base regulations and laws on hostility towards a religious belief, but that they remain neutral. The Supreme Court reversed the lower court’s decision stating that Mr. Phillips had been “entitled to a neutral decisionmaker who would give full and fair consideration to his religious objection as he sought to assert it . . . ” Masterpiece Cakeshop, Ltd. v. Colo. Civil Rights Comm’n, 201 L. Ed. 2d 35, 46 (U.S. 2018).

Critical to the effect of this decision on similar future cases is that the Court did not decide for the states the limits and boundaries between anti-discrimination and freedom of speech. Rather, the Court narrowly held that these disputes “must be resolved with tolerance, without undue disrespect to sincere religious beliefs . . . ” while avoiding “subjecting gay persons to indignities when they seek goods and services in an open market.” Id at 50. In other words, the Supreme Court simply held that state courts must be neutral decisionmakers who faithfully uphold the entire Constitution.

Nevertheless, the case was not decided without much disagreement among the nine Supreme Court Justices, despite the final 7-2 decision. With three concurring opinions (one such written and joined by two of the four liberal Justices) and one dissenting opinion, it is no wonder why the case has caused such controversy. What might cause even more shock is that Justice Kennedy, who wrote the majority opinion, also wrote the 2015 landmark decision which legalized gay marriage nationwide. Because of the different opinions, this case becomes an effective model for answering the following questions. How do Supreme Court Justices decide who writes each opinion? Why do they write concurring and dissenting opinions? What precedential value do concurring and dissenting opinions have?

The Majority Opinion is Assigned by the Chief Justice

After oral arguments, the Justices convene in a conference to express how each of them would decide the case; the conference is followed by a vote. Once the votes have been counted, the Chief Justice assigns a Justice in the majority to write the opinion of the Court or does so himself. However, if the Chief Justice is not in the majority, the most senior Justice in the majority has the authority to assign writing the opinion of the court. In Masterpiece Cakeshop, Chief Justice Roberts was a part of the majority and assigned writing the opinion of the court to Justice Kennedy. They were joined by Justices Breyer, Alito, Kagan, and Gorsuch. Often, a Justice in the majority will agree with the outcome of the case, but not with the majority’s reasoning for it. That Justice may write a concurring opinion, which can be joined by other Justices. Here, Justice Kagan filed a concurring opinion in which Justice Breyer joined. Justice Gorsuch filed another concurring opinion, joined by Justice Alito. Justice Thomas wrote an opinion concurring in the judgment, but only concurring in part as to the majority’s rationale. Any Justice who disagrees with the majority judgment can write a separate dissenting opinion. Here Justice Ginsberg, who was joined by Justice Sotomayor, filed a dissenting opinion.

Often, the opinions reference each other, each Justice arguing their reasoning in comparison to another’s. The following sections briefly describe the main points of each opinion and illustrate how the Justices agree and disagree with each other.

Majority Opinion:

Written by J. Kennedy; Joined by JJ. Roberts, Breyer, Alito, Kagan, Gorsuch

“While it is unexceptional that Colorado law can protect gay persons in acquiring products and services on the same terms and conditions as are offered to other members of the public, the law must be applied in a manner that is neutral toward religion.” Id at 37. The commissioners made hostile comments about Mr. Phillips’ faith, casting doubt on the fairness and impartiality of the Commission’s adjudication of the case. Justice Kennedy compared this case to another where other bakers prevailed before the Commission despite refusing to create a cake for a client (because it depicted anti-gay messages, which the bakers opposed) while being willing to sell other products with a different message to the same customers. The cases are all too similar, he argues, and yet the Commission reached opposite decisions.


Written by J. Kagan; Joined by J. Breyer

“[A] proper basis for distinguishing the cases was available—in fact, it was obvious.” Id. at 50. The three bakers, Justice Kagan argues, would have denied making the anti-gay cake for any customer, regardless of his religious beliefs. However, Mr. Phillips would have created a wedding cake for an opposite-sex couple, but refused to create one for the same-sex couple. Nevertheless the commission made their decision with hostility and bias.


Written by J. Gorsuch; Joined by J. Alito

Pushing back against the Kagan and Ginsberg opinions, Justice Gorsuch argues that the different bakers’ cases were legally almost identical and should have resulted in the same determinations. He argues that the Commission treated them differently because they deemed Mr. Phillips’ beliefs offensive. The courts should not be deciding what is offensive. “[T]he place of secular officials isn’t to sit in judgment of religious beliefs, but only to protect their free exercise. Just as it is the ‘proudest boast of our free speech jurisprudence’ that we protect speech that we hate, it must be the proudest boast of our free exercise jurisprudence that we protect religious beliefs that we find offensive.” Id. at 55.


Written by J. Thomas; Joined by J. Gorsuch

Justice Thomas addresses the freedom of speech argument that Mr. Phillips made. He believes creating a custom wedding cake for a couple is “expressive conduct” and should therefore be protected by the First Amendment. “States cannot punish protected speech because some group finds it offensive, hurtful, stigmatic, unreasonable, or undignified.” Id at 65.


Written by J. Ginsberg; Joined by J. Sotomayor

Justice Ginsberg argues that neither the commissioners’ statements about religion nor the commission’s prior treatment of other bakers amounts to hostility towards religion. The Court’s decision is therefore unjustified. She argues that the other bakers refused to make an offensive cake because of the cake itself, but that Mr. Phillips refused to bake the wedding cake because of their sexual orientation.

Precedential Value of Concurring and Dissenting Opinions

While lower courts must follow the Supreme Court’s majority opinion (under stare decisis), there are times when a concurring opinion, and even a dissenting opinion, can influence future decisions and the development of law. Overtime, the view of the courts might therefore shift drastically.

As for the Masterpiece Cakeshop case, it will take careful consideration by lower courts of the decision as they apply it to similar cases. Courts will need to balance applying the law in a manner that is neutral towards religion while protecting people from discrimination.

Columbia Law Publication: The Increasing Intellectual Property Value of the .COM to Businesses

The LAW FIRM of DAYREL SEWELL, PLLC is pleased to announce that Mr. Dayrel S. Sewell, Esq., MPH, and Ms. Ariel Friedman penned an article entitled, “The Increasing Intellectual Property Value of the .COM to Businesses” that is now published in the Columbia Science and Technology Law Review (STLR).  Mr. Sewell is a proud alumnus of Columbia University and Ms. Friedman is currently a Columbia University Law School student interning at our law firm.

STLR deals with the exciting legal issues surrounding science and technology and is ranked #6 among all tech law journals. Furthermore, STLR is the first Columbia journal to become formally open access, eliminating unnecessary barriers to readership.

The publication represents the continuation of our firm’s commitment to providing value to a wide audience and to providing excellent service to our clients. As always, we encourage your thoughtful comments and insights on our publication. Thank you.

Statutory Violations Not Enough to Give Rise to a Cause of Action for Class Actions says U.S. Supreme Court

Supreme Court Says Statutory Violations Not Enough to Give Rise

Supreme Court Says Statutory Violations Not Enough to Give Rise


The Supreme Court’s recent decision in TransUnion v. Ramirez has narrowed Article III standing by making it more difficult for plaintiffs to initiate class action lawsuits against corporate defendants who violate federal statutes.  Here, the Court found that violation of a federal statute alone does not give rise to the level of a “concrete injury” for a plaintiff’s Article III standing.  The plaintiff must have suffered a “concrete injury” to have Article III standing in order to seek relief in a court of law.  This decision has serious consequences for tort class action lawsuits and corporate activities in general.


Details of the case

TransUnion is a credit reporting agency that compiles personal and financial information about individual consumers and creates a consumer report that is sent to third party companies to determine the consumer’s creditworthiness.  TransUnion had an add-on to their product called the OFAC Name Screen Alert that was available for third party businesses to order.  This add-on would compare the name of the consumer against a list maintained by the United States Treasury Department’s Office of Foreign Assets Control (OFAC).1  This list denotes known terrorists, drug traffickers, and other serious criminals.2  If a consumer’s first and last name appeared on the OFAC list, TransUnion would place an alert on the credit report, stating that the person is a potential match.  Unfortunately, this product generated many false positives, as many consumers shared names with those on the OFAC list.3  Plaintiff Sergio Ramirez was one such consumer, as he discovered at a Nissan Dealership in California.4  The dealership refused to sell him the car because the credit report they ran on Ramirez falsely indicated that he was a suspected terrorist.5  


Ramirez brought suit against TransUnion, alleging that it violated the Fair Credit Reporting Act by failing to follow reasonable procedures to ensure the accuracy of the credit report information.6  Ramirez obtained a class action for his suit, with a class of 8,185 people all suffering from same or similar harms by TransUnion’s alleged violation of the statute.  Only 1,853 of the class, including Ramirez, had their false reports containing OFAC alerts provided to the third-party companies.7  The other 6,332 did not have their reports sent to the third-party companies.


Writing for the majority in a split 5-4 decision, Justice Kavanaugh found that while the 1,853 class members whose reports were sent did suffer a harm, the same was not true for the remaining 6,332.8  In his reasoning, Justice Kavanaugh stated that to have a claim for tort damages, a plaintiff must have standing by the standards set in Article III of the Constitution.9   The plaintiff must have a “personal stake” in their case.10  The plaintiff must show a “concrete” harm that was caused by the defendant and can be redressed by judicial relief.11  In defining “concrete harm”, the Court cited its decision in Spokeo v. Robins, 578 U.S. ____ (2016), stating that the harm must have a close relationship to a harm traditionally recognized in American courts.12  However, a mere violation of a federal statute does not give a plaintiff a cause of action against a defendant.13  The plaintiff must have suffered a concrete harm as well.14 


Reputational harms, as in this case, bear a close relationship to the traditional tort of defamation.  This was the case for the 1,853 class members whose reports were sent to third-party companies.15  A misleading statement that deems a consumer a terrorist bears a close relationship to defamation, especially when it is made available to a third-party company.  Statements like these had an adverse effect on these 1,853 class members.16  However, the remaining 6,332 class members suffered no harm by TransUnion’s violation of the statute, as their false reports were never sent to any third-party company.17 he inaccuracy of the statements themselves, nor the violation of the statute, were not enough to give these 6,332 class members a cause of action.18 


Reasoning and Future Implications

Justice Kavanaugh justified his reasoning by highlighting the separation of powers between Congress and the judiciary.  Justice Kavanaugh mused that without Article III’s concrete harm requirement, Congress could hypothetically allow plaintiff to sue a corporate defendant over a statutory violation without that plaintiff having any personal stake in the case.19 


In reality, this ruling could eliminate a potential check that corporations had against them from corporate malfeasance.  Such a ruling will surely impact future class action suits against corporate defendants, as every individual class member must now have suffered a harm by the defendant’s actions.  This will make attorneys who handle class actions much more careful with who they add into a class when suing in federal court.20  Furthermore, corporations could now have more freedom to violate statutes that do not necessarily harm plaintiffs directly in a “concrete way”, like the FDCPA, or the TCPA.21  Rulings like this reflect the U.S. Supreme Court’s continuing conservative shift since former President Trump’s appointment of three conservative justices on the bench during his presidency.  


In his dissent, however, Justice Thomas noted that this might be a pyrrhic victory for TransUnion, as state courts are not bound by the limitations set by Article III as stated by Justice Kavanaugh.22  States like Illinois and New York have more lenient standing requirements than federal courts, and include more liberal judges who are friendlier to “no-injury” class action lawsuits.23  Furthermore, half of the states have adopted measures that recognize statutory violations as a harm that can give rise to a cause of action.24  This could encourage plaintiff attorneys to go “jurisdiction shopping”, as they can pick out plaintiffs who reside in more liberal states and bring suit there, maybe even in multiple states.  This could provide an incentive to credit reporting agencies like TransUnion to maintain accurate reporting, lest they deal with multiple lawsuits in multiple forums.  However, this would also clog up the courts even more, with multiple lawsuits being filed over the same cause of action.  


1 TransUnion LLC v. Ramirez, 594 U.S. . ____, 1 (2021). 


2 Id.


3 Id. at 8.


4 Id.


5 Id.


6 Id. 


7 Id. at 9.


8 Id. at 20.


9 Id. at 11.


10 Id. (citing Reins v. Byrd, 521 U.S. 811 (1997)).


11 Id. 


12 Id. at 12.


13 Id. at 14.


14 Id.


15 Id. at 20.


16 Id.


17 Id. at 22.


18 Id. at 26.


19 Id. at 17.


20 John Ryan, Barbara Fernandez & David Schultz, TRANSUNION V. RAMIREZ: WHAT DOES IT MEAN? ACA INTERNATIONAL (2021), (last visited Jul 1, 2021).


21 TransUnion v. Ramirez: The Supreme Court Further Narrows Article III Standing And Rejects “No Injury” Class Actions, JD SUPRA (2021), (last visited Jul 1, 2021).


22 TransUnion 594 U.S. at 49. 


23 TransUnion v. Ramirez: The Supreme Court Further Narrows Article III Standing And Rejects “No Injury” Class Actions, JD SUPRA (2021), (last visited Jul 1, 2021).


24 Thomas R. Bennett, The Paradox of Exclusive State-Court Jurisdiction Over Federal Claims, 105 Minn. Law Review, 121, 1233. (2021).


PepsiCo: Serial Trademark Infringer or Coincidence?

On June 15, 2021, a food startup named Rise Brewing filed suit against PepsiCo in the U.S. District Court for the Northern District of Illinois. The startup has begun to make a name for itself by selling canned cold-brew coffee. Rise Brewing has alleged that the well-known company PepsiCo has infringed on their trademark with their recent launch of a Mountain Dew-branded energy drink called Rise.1


History of Infringement

According to Forbes, the notorious food, snack, and soda company, PepsiCo, is valued at an astounding $18.2 billion.2 PepsiCo has had its fair share of trademark infringement cases in the past, where they have been sued by brands such as VitaminWater, Polar seltzer, and Simply Orange Juice.


A more recent lawsuit was filed in the United States District Court for the Southern District of Texas, where a temporary nationwide restraining order had halted PepsiCo’s release of a Gatorade product called Gatorlyte. The order had been issued due to a sports beverage named Electrolit made by a Mexican company.


According to Laboratorios Pisa S.A. de C.V. v. PepsiCo, Inc., PepsiCo allegedly copied the Mexican companies’ product packaging. Before the issuance of the restraining order, PepsiCo shipped roughly $1.7 million worth of Gatorlyte after spending $1.3 million on media and $18 million of product development. 3 The Court considered three facts in determining whether recall of the product, which was already rolled out nationwide, was justified. These three factors were “(1) the willful or intentional infringement by the defendant; (2) whether the risk of confusion to the public and injury to the trademark owner is greater than the burden of the recall to the defendant; and (3) substantial risk of danger to the public due to the defendant’s infringing activity.”4


The Court reasoned that “recall is an extreme remedy” and “therefore they did not find sufficient indicia of willful infringement, confusion to the public that outweighs the onerousness of a recall, or a sufficient risk of danger to the public to justify a full recall of GATORLYTE” at the time of the case.5


The Court then turned to the balancing of the parties’ hardships. The Court stated that although PepsiCo’s investments were significant, the Court did not find that a temporary restraining order would affect the investments to such a degree that would be problematic. Additionally, PepsiCo decided to release their product line despite the initial issuance of a Temporary Restraining Order and the then-pending hearing on another Temporary Restraining Order. The Court turned to the Mexican companies’ argument that PepsiCo was aware of the rights in the Electrolit trade dress, so PepsiCo, therefore, accepted all risks of infringement. Trade dress is the look or feel of the product, in this case, Electrolit’s trade dress was their companies protected product packaging.


The two companies reached a confidential settlement earlier this spring, ending the case permanently and, therefore, lifting the temporary restraining order.


U.S. District Court for the Northern District of Illinois


On June 15, 2021, Rise Brewing Company (hereinafter “Rise Brewing”) filed a trademark infringement lawsuit against PepsiCo, alleging that PepsiCo has infringed on their trademark with their recent launch of a Mountain Dew-branded energy drink called Rise.6 The issue in the complaint arose out of the energy drinks use of the word “Rise,” written horizontally across the top of the can, in a fashion almost identical to Rise Brewing.


Rise Brewing created a canned caffeine drink that lacks the chemicals, dairy, fat, and sugar commonly associated with traditional energy and coffee drinks. The brand features the words RISE horizontally across the can, with Brewing Co. located just underneath. Shortly before the complaint was filed, PepsiCo released its own RISE-branded caffeine drink. Rise Brewing alleged the PepsiCo brand marketed itself as a morning caffeinated beverage to replace ready-to-drink coffee drinks such as RISE.


Rise Brewing alleges that PepsiCo’s actions are causing “reverse confusion” in violation of the Lanham Act. Traditionally, in a trademark infringement case, the defendant is the “junior user” of the mark, and the plaintiff is the “senior user.” This type of trademark infringement causes consumers to believe the defendant or its products are associated with the plaintiff or its products. Here, Rise Brewing alleges that it is the opposite. In a reverse confusion case, the consumer confusion for association goes the other way. Meaning, due to PepsiCo’s size, reputation, and power, consumers are confused into thinking that Rise Brewing’s RISE drinks are associated with PepsiCo.


The concept of reverse confusion was established in Big O Tire Dealers, Inc. v. Goodyear Tire & Rubber Co.7 In that case, the Court stated that it was essential to recognize something other than traditional confusion to prevent “anyone with adequate size and resources [from] adopt[ing] any trademark and develop[ing] a new meaning for that trademark as identification of the second user’s products.”8 Rise Brewing alleges this case is a classic case of reverse confusion, demonstrating what the Big O court was trying to prevent.


Rise Brewing owns multiple valid registered trademarks with the United States Patent and Trademark Office (“USPTO”), as shown below.


 pepsiCo case header pepsiCo case details pepsiCo case full case


Chart demonstrating Rise Brewing’s registered trademarks


Rise Brewing’s trademark registrations are valid and in full force and effect. It claims to use its RISE Marks through extensive advertising, marketing, and sale of goods bearing the marks. Because of this, Rise Brewing claims that the RISE Marks have become invaluable assets of the Rise Brewing Company, serving as a symbol of their high-quality product.


Rise Brewing would like the court to enter preliminary and permanent injunctions restraining PepsiCo and all of its affiliates from the continued use of its trademark, to recover its costs and reasonable attorneys’ fees, in an amount to be determined, and various amounts of awards for damages and profits.


Following the guidance of previous cases involving PepsiCo’s trademark infringement, Rise Brewing will likely be granted a preliminary injunction and/or grant damages sought. Rise Brewing has built its company from the ground up, creating and protecting their ideas through the use of registered trademarks. PepsiCo’s power in the market is far greater than Rise Brewing’s. The ability for large companies to prey on the hard work of smaller companies should be carefully monitored and regulated by the courts. This fact pattern is remarkably similar to previous cases filed by smaller companies, like Gatorlyte, against PepsiCo, where the smaller company has almost regularly been granted an injunction. The timing of this case makes it quite difficult for Rise Brewing because of the sheer amount of money that was put into the launch by PepsiCo. Because of this, it is more likely that the court will grant damages from this case, or in the chance PepsiCo would like to settle, Rise Brewing could possibility recover at least a small portion of the money PepsiCo will have made from their product launch. In the event of a settlement, like previous cases, the terms will likely remain confidential. If PepsiCo would like to continue to use the word Rise, Rise Brewing could also offer license to PepsiCo. This case is another example that reverse confusion is still present, despite the Big O court’s precedent.



As the case continues, it is essential to remember how valuable intellectual property (patents, trademarks, copyrights, trade secrets) is. Intellectual property, and its protections, foster growth and discovery, allowing for expanding new technology and resources worldwide.


1 See RiseandShine Corp. v. PepsiCo Inc., Case No. 1:21-cv-03198.


2 FORBES (Jun. 29, 2021),


3 CASETEXT (Jun. 29, 2021),


4 Id.


5 Id.


6 See RiseandShine Corp. v. PepsiCo Inc., Case No. 1:21-cv-03198.


7 Big O Tire Dealers, Inc. v. Goodyear Tire & Rubber Co., 561 F.2d 1365 (10th Cir. 1977).


8 Id. at 1372.

eSports Contracts

The electronic sports industry (“eSports”) has skyrocketed since the early 2000s thanks in part to gaming dominant streaming services like Twitch. It is estimated that the number of US digital gamers will jump by around five percent in 2020 to 174.7 million. 1It is also estimated that eSports will garner an audience of 495 million viewers in 2020 and reach over $1 billion in revenue for the first time ever. 2This unprecedented increase in popularity has given rise to professional gamers, gaming personalities, and content creators (“professional gamers”). With professional gamers being paid from as low as $1,000 a month to as high as $6 million a year, one has to examine how eSports contracts are managed. 3eSports contracts are a complicated issue because of the relative newness and unpredictability of the eSports market.


U.S. digital gamers graph
Graph showing the growth projection of internet users and U.S. digital gamers


Since eSports is a fairly new market, it functions in a largely unregulated space where “there is a lack of standardized contracts, no collective bargaining, and unestablished standard working conditions.”4 In addition, there is a general imbalance in the levels of commercial sophistication of contracting parties. Many times, eSports contracts are agreed upon between unrepresented young gamers with little commercial experience and large media companies with large amounts of resources. As a result, eSports contracts may end up being unfair and unethical. Back in December 2019, an anonymous professional gamer (“Player 1”) leaked a contract that illustrates the unfair and unethical working conditions that gamers may be subjected to.5 The contract in question stated that if Player 1 was transitioned to a substitute player then he or she must live stream games for 120 hours per month without receiving any salary for his or her efforts6.


Perhaps more alarmingly, an exclusivity clause in the contract prevents the player in question from working elsewhere – despite being an independent contractor, not an employee – and they only receive income that’s earned from solo live streams. If streaming in collaboration with the organisation or a sponsor, then the organisation retains 100 percent of the revenue generated by the player. There’s nothing stopping the organisation from forcing a sponsored stream upon the player, creating a potentially turbulent and unpredictable schedule in which they’re unable to earn any sort of income7.


Although it is impossible to know for sure, it is highly possible that other professional gamers may be locked into similar unfair contracts.8


Recently, Turner Tenney, popularly known online as “Tfue” found himself in a contract dispute with Faze Clan, his former eSports team. On May of 2019, Tfue filed a lawsuit against Faze Clan in California State Court arguing that the contract (“Gamer Agreement”) that he signed with the team back in 2018 was “oppressive, onerous, and one-sided in favor of Faze Clan.9” They claimed that the Gamer Agreement allowed Faze Clan to collect up to 80 percent of what he earned from third parties.10 Tfue also claimed that the Gamer Agreement hindered his ability to obtain his own sponsorship deals without the prior written consent of Faze Clan.11 Faze Clan denied all allegations made by Tfue, and released a Twitter statement claiming that it has not collected any of Tfue’s tournament winnings, Twitch revenue, YouTube revenue, or revenue from any special platforms. Faze Clan added that it has only received $60,000 in relation to the Gamer Agreement, while Tfue has experienced an “incredible growth” in popularity from his affiliation with Faze.12To make things even more complicated, Tfue classified himself as an “artist” and also alleged that Faze Clan violated California’s Talent Agency Act (“TAA”) because it was not a licensed talent agency. The TAA protects artists and prevents unlicensed talent agencies from making “binding promises on behalf of a performer.” As a result, artists’ contracts with unlicensed talent agencies are non-binding and the artists can recover all fees earned by an unlicensed talent agency.13


Turner Tenney (“Tfue”)
Turner Tenney (“Tfue”) wearing his Faze Clan team uniform


Based on a “forum selection clause” in the Gamer Agreement, Faze Clan brought a countersuit in New York Federal Court alleging that Tfue disparaged the team in violation of his contract, stole its confidential information, and interfered with business contracts and relationships in order to start his own rival eSports team. As a result of the New York case, the California court offered to either dismiss its case and let the case move forward in New York with California’s TAA applied or stay its case until the New York case is completed.14 After summary motions were rejected, Faze Clan and Tfue decided to settle and Tfue was released from the Gamer Agreement. Although, Tfue’s lawsuit was never settled in court, it sheds light on some eSports contract issues that have to be resolved.


The first issue it sheds light on is what constitutes an “oppressive, onerous, and one-sided” contract? A court may find a contract unconscionable and refuse to enforce it if is “unfair or oppressive to one party in a way that suggests abuses during its formation.15


A contract is most likely unconscionable if it is substantively unfair and unfairly bargained for. “An absence of meaningful choice by the disadvantaged party is often used to prove unfair bargaining.16” In Tfue’s case, he already had an established brand and most likely had options to sign with other companies. Additionally, Faze Clan argued that he was an adult when he agreed to the contract and that they took a risk by signing him. It could be argued that the terms of the Gamer Agreement were fair when it was first signed and Tfue simply wanted to get out of the contract once his popularity skyrocketed. Allowing Tfue out of his contract creates a slippery slope. It opens up the door to other professional gamers who may want out of their contracts once they are no longer favorable to them. This will likely result in eSports companies not wanting to take risks on less established gamers. For example, companies will not want to spend time, money, and resources to help popularize professional gamers if said gamers can easily dishonor their contracts. Since eSports is a relatively new field there are no standards for what constitutes a fair eSports contract. Only time will tell when such standards will be set.


The next issue that needs to be tackled is if professional gamers should fall under the scope of “artists” in the TAA. Under California’s labor code, “artists” include actors, actresses, radio artists, musical artists, musical organizations, directors, writers, cinematographers, composers, lyricists, arrangers, models, and “other artists and persons rendering professional services in motion picture, theatrical, radio, television and other entertainment enterprises.17” It could be argued that professional gamers fall under this category because many of them write, direct, and act in their own videos on social media platforms. Additionally, what is considered to be “rendering professional services . . . in other entertainment enterprises” is vague and could be stretched to encompass playing video games for the entertainment of others. If professional gamers gain recognition as artists somewhere down the line, eSports companies will then have to register as talent agencies in order to properly conduct business within California.


Turner Tenney (“Tfue”)'s gaming seup
Turner Tenney (“Tfue”) showing off his game streaming setup


As time goes on, more eSports contract disputes will probably arise. Because of this, the eSports world must find a way to deal with or prevent these disputes. The World Esports Association (WESA), an eSporting organization created by different eSports companies, tried to tackle this issue by creating an arbitration court for eSports matters.18 Although this is a step in the right direction, the arbitration court has its issues. Unlike normal courts of law, the arbitration courts set up right now do not have a way to enforce their verdicts.19 Additionally, all arbitration decisions are final and cannot be appealed.20 These factors combined with the fact that the arbitration court was created by eSports companies will likely turn some players away due to fear of impartiality.21 Esports contracts will no doubt be a hot button issue in the near future. Before contract disputes become a crisis, the eSports community as a whole must set standards and guidelines for eSports contracts and disputes. Additionally, eSports companies need to protect themselves from lawsuits when drafting new contracts and professional gamers need to protect themselves from signing bad contracts.


1 eMarketer Editors, US Twitch Usage Accelerates amid Lockdowns eMarketer adds 4 million US users to 2020 forecast, EMARKETER (September 3, 2020),


2 NEWZOO, Newzoo Global Esports Market Report 2020 | Light Version (2020),


3 Alexander Lee, When work is play: A look at the financial lives of professional gamers, POLICYGENIUS (September 11, 2019),; ESPORTS EARNINGS, Top 100 Highest Overall Earnings (Accessed September 13, 2020),


4 Josh Hunt, Esports contract dispute: Seeking to set an industry standard, LEXOLOGY (July 3, 2019),


5 Adam Fitch, Player contract illustrates unfair and unethical conditions,


6 Id


7 Id


8 Id


9 Christina Settimi, Fortnite Star Tfue Settles Dispute With FaZe Clan, Ending Esports’ First Major Employment Lawsuit, FORBES (August 26, 2020),


10 Id


11 Jordan Crook, Pro gamer Tfue files lawsuit against esports org over ‘grossly oppressive’ contract, TECH CRUNCH (May 21, 2019),


12 Id


13 Anthony Zaller, Tfue v. Faze Clan – Esports lawsuit raises many California employment legal issues, CALIFORNIA UNEMPLOYMENT LAW REPORT (May 24, 2019),


14 Jordan Benson, Op Ed: Tfue v. FaZe – a dip into the case and its impact on esports, EFUSE (March 23, 2020),


15 Cornell Law School, Unconscionability, LEGAL INFORMATION INSTITUTE (Accessed September 13, 2020),


16 Id


17 Cal. Lab. Code § 1700.4 (West)


18 Hans Oelschlägel, Announcing the founding of WESA – the World Esports Association, ESL (May 13, 2016),; Sam Cooke, WESA announces esports’ first arbitration court, ESPORTS INSIDER (November 3, 2016),


19 Ryan Boonstra, Player 3 Has Entered the Game: Arbitration Comes to the eSports Industry, 10, 1 ARB. LAW REV. 102, 115 (2018).


20 Id


21 Id

Publication: Graffiti – Legal Copyright or Illegal Vandalism?

The LAW FIRM of DAYREL SEWELL, PLLC is pleased to announce that Mr. Dayrel S. Sewell, Esq. penned an article entitled, “Graffiti: Legal or Illegal?” that is now published in the Brooklyn Bar Association’s Fall 2020 Journal.  The article explores the legal distinction between permanent graffiti and art, and the legal interpretation of the Visual Artists Rights Act as applied to the 5Pointz case.


This publication represents the continuation of our firm’s commitment to providing value to the greater NYC community and service excellence to our clients.


Established in 1872, the Brooklyn Bar Association’s primary purpose is to promote professional competence among attorneys and increased respect for the legal system.


In the rapidly changing world of Intellectual Property Law, street art protection is less commonly discussed than that of other innovative creations. Street art is somewhat ambiguous in its meaning. It is common to associate street art with
the graffiti spray-painted tags on a building or subway. However, actual street art is something created with more depth. Legally, the distinction between permanent graffiti and art is permission. Street art becomes vandalism when that permission to publicly paint is not granted.i Because of the complexity of public art, the amount of protection afforded to street art is unclear. Graffiti law is not yet a legal practice; however, graffiti-related disputes have been stirring across the country.ii Given the recent racial inequality protests around the country regarding the Black Lives Matter movement, the issue only grows in scope and importance with the amount of street art replete across the country.iii

graffiti, graffiti: legal, copyright, vandalism, VARA, 5Pointz, artist, Notorious B.I.G.
Brooklyn Bar Association