Zioness Movement v. Lawfare Project: Joint Trademark Ownership Upheld

Introduction

Zioness Movement, Inc. and The Lawfare Project, Inc. were involved in a dispute over who owned the ZIONESS trademark. The United States Court of Appeals for the Second Circuit reviewed the development of the mark, the events leading to trial, and the issues raised after the jury reached its verdict. The appellate court described how the parties’ relationship evolved, how the mark was created, and how the case progressed through federal court before addressing the questions presented on appeal.

Development of the ZIONESS Mark

In 2017, The Lawfare Project created a new initiative intended to address certain concerns within political spaces. To separate that effort from its own organizational identity, the group developed the Zioness movement as a distinct project. Using its own funding, The Lawfare Project arranged for the design of the ZIONESS mark, produced related branding materials, secured a website domain, created merchandise bearing the mark, and coordinated events under the Zioness name. Public promotion occurred through Amanda Berman, who was then serving as Director of Legal Affairs for the organization.

Over the following months, the relationship between the Zioness initiative and The Lawfare Project changed. In November 2017, the organization stopped providing financial support. In February 2018, while still employed by The Lawfare Project, Berman incorporated Zioness Movement, Inc. as a nonprofit entity using her own funds. In April 2018, Zioness Movement, Inc. submitted an application to the United States Patent and Trademark Office to register the ZIONESS mark. The mark was officially registered in 2020, listing Zioness Movement, Inc. as the sole owner.

Litigation in the District Court

A dispute arose in August 2020 when The Lawfare Project petitioned the USPTO to cancel the ZIONESS registration. Zioness Movement, Inc. responded by filing suit seeking confirmation of sole ownership and asserting trademark infringement claims. The Lawfare Project countersued, asserting that it owned the mark and raising copyright infringement claims against both Zioness Movement, Inc. and Berman.

The case proceeded to an eight-day trial. The jury reviewed evidence concerning the creation of the mark, the early development of the initiative, the incorporation of Zioness Movement, Inc., and the registration of the trademark. The jury found that Zioness Movement, Inc. and The Lawfare Project were co-owners of the ZIONESS mark.

After trial, Zioness Movement, Inc. filed several post-trial motions. These included motions for judgment as a matter of law, a new trial, an amended judgment, and reconsideration. The filings focused on the co-ownership verdict and on certain rulings made during trial. The district court denied the motions, finding that the record contained sufficient evidence supporting the jury’s determination.

Issues Presented on Appeal

On appeal, Zioness Movement, Inc. challenged the co-ownership verdict, the denial of its post-trial motions, the district court’s decision regarding discovery sanctions, and the denial of attorneys’ fees under the Copyright Act. The appellate court reviewed each issue in turn.

The court first addressed the jury’s verdict. It noted that the record contained evidence showing that The Lawfare Project funded and developed the mark in its early stages, while Zioness Movement, Inc. later formalized the organization and completed the trademark registration process. The appellate court held that this evidence was sufficient to support the jury’s conclusion of joint ownership. It also observed that Zioness Movement, Inc. had not objected to the verdict form or jury instructions before deliberations, which limited the scope of review.

The court then examined the district court’s discovery sanctions. The district court had previously awarded sanctions related to delays in producing witnesses and records. After reviewing the documentation submitted, the district court found that the expenses claimed were not supported and limited the award to $20,000. The appellate court affirmed that decision, finding no abuse of discretion.

The court next reviewed the denial of attorneys’ fees. Because The Lawfare Project voluntarily dismissed its copyright claims with prejudice before trial, the appellate court held that Zioness Movement, Inc. and Berman were prevailing parties for purposes of fee eligibility. It vacated the district court’s denial of fees and remanded the case to determine whether fees should be awarded under the applicable factors.

Final Ruling

The appellate court affirmed the judgment in part and vacated and remanded in part. The jury’s finding of co-ownership remained in place. The issue of attorneys’ fees was returned to the district court for further consideration.

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