Justia Intellectual Property Opinion Summaries

A manufacturer of battery chargers, which owns the registered trademarks “Battery Tender” and “Deltran Battery Tender,” discovered that a competitor began advertising its own similar chargers using those terms. The competitor used the marks in multiple ways: purchasing them as keywords to trigger ads on Amazon, including the marks in the text of its Amazon ads and product descriptions, and referring to its own products as “battery tenders” in communications with marketing firms and consumers. The trademark owner sent several cease-and-desist letters, but the conduct continued. The company then sued the competitor for trademark infringement, unfair competition, false designation of origin, and related state law claims.In the United States District Court for the Middle District of Florida, a jury found in favor of the trademark owner on all counts, including trademark infringement and false advertising, and awarded damages. The district court denied the competitor’s motions for judgment as a matter of law and for a new trial, and later ordered disgorgement of profits and issued a permanent injunction prohibiting the competitor from using the marks, as well as the term “tender,” in connection with its products. The competitor appealed, challenging the jury’s findings, the district court’s legal rulings, and the scope of the injunction and damages.The United States Court of Appeals for the Eleventh Circuit held that the “Battery Tender” marks were not generic, but at least descriptive with secondary meaning, and affirmed the finding of trademark infringement for visible uses of the marks. However, the court held that purchasing the marks as keywords alone does not constitute infringement, reversed the jury’s verdict on false advertising, and vacated the damages award for a new trial, as the amount could not be separated from improper theories. The court affirmed the injunction and disgorgement order. View "Deltona Transformer Corporation v. The Noco Company" on Justia Law

A company that owns the trademarks and trade dress for a well-known whiskey product objected to a dog toy produced by another company that parodied its bottle and labeling. The toy, named “Bad Spaniels,” mimicked the whiskey’s visual design and replaced references to the whiskey with scatological humor, including phrases like “Old No. 2 On Your Tennessee Carpet.” The whiskey company demanded the toy’s removal from the market, but the toy company instead filed a lawsuit seeking a declaration of non-infringement and non-dilution. The whiskey company responded with counterclaims for trademark infringement and dilution under federal and state law.The United States District Court for the District of Arizona initially found in favor of the whiskey company after a bench trial, concluding the dog toy infringed and diluted its trademarks and trade dress. On appeal, the United States Court of Appeals for the Ninth Circuit reversed on the dilution claim and vacated the finding of infringement. After further appeals, including a remand from the Supreme Court, the district court again found the toy company liable for dilution by tarnishment and entered a permanent injunction in favor of the whiskey company. The toy company appealed, arguing the whiskey company failed to establish dilution and that the federal dilution law was unconstitutional as applied.The United States Court of Appeals for the Ninth Circuit held that the whiskey company did not meet its burden to show dilution by tarnishment under the Federal Trademark Dilution Act. The court found that only “Jack Daniel’s” and its trade dress were proven famous, and the parody toy’s marks and trade dress, though similar, did not facially tarnish the famous marks or portray them in an unsavory context likely to damage their reputation. The court vacated the district court’s injunction and remanded for judgment in favor of the toy company. View "VIP PRODUCTS, LLC V. JACK DANIEL'S PROPERTIES, INC." on Justia Law

Socket Solutions, LLC owns a patent covering an indoor electrical wall outlet cover that allows continued use of the outlet while concealing the outlet’s contact openings. The company alleged that Import Global, LLC’s Neat Socket product infringed claim 19 of this patent. Socket Solutions filed suit in the United States District Court for the Southern District of Florida and sought a preliminary injunction to prevent Import Global from manufacturing, using, selling, or importing the accused product in the United States.A magistrate judge in the district court issued reports and recommendations regarding both claim construction and the preliminary injunction motion. The district court adopted these recommendations, with minor modifications not relevant on appeal, and granted Socket Solutions the preliminary injunction. This order barred Import Global from engaging in activities related to the allegedly infringing product, as well as any products not more than colorably different from it, and from inducing others to do so.The United States Court of Appeals for the Federal Circuit reviewed the district court’s grant of the preliminary injunction. The appellate court found that the district court erred in its construction of the patent claim terms “backplate” and “pin” during its analysis of the likelihood of success on the merits. The Federal Circuit held that “backplate” should be construed as the component forming the cover with the frontplate, such that the maximum thickness of the cover is the distance, at the central portion of the cover, between the frontplate and that component, and that “pin” should be given its plain and ordinary meaning as understood by a skilled artisan. The Federal Circuit vacated the preliminary injunction and remanded the case for further proceedings consistent with its opinion. Costs were awarded to Import Global. View "SOCKET SOLUTIONS, LLC v. IMPORT GLOBAL, LLC " on Justia Law

Two software development companies became involved in a dispute after a UK bank, Metro Bank PLC, hired one company, Arkeyo LLC, to create software for its coin-counting machines. Years later, as Arkeyo’s product became outdated, Metro Bank engaged Saggezza UK (a subsidiary of Saggezza, Inc.) to build replacement software. During development, Metro Bank provided Saggezza with an Arkeyo-operated touchscreen computer for reference. Arkeyo later alleged that Saggezza, Inc. infringed its copyrights and trade secrets, interfered with its contract and business relationship with Metro Bank, and converted Arkeyo’s property.The United States District Court for the Northern District of Illinois granted summary judgment for Saggezza, Inc. on all claims, ruling that Arkeyo did not show Saggezza, Inc. was responsible for the alleged infringement or tortious acts—these, if they occurred, were committed by Saggezza UK, which was not a defendant. The district court also denied Arkeyo’s motions for sanctions and for reconsideration based on purportedly new evidence, and it awarded attorney’s fees to Saggezza, Inc. under federal statutes.The United States Court of Appeals for the Seventh Circuit reviewed the case and affirmed the district court’s decisions. The appellate court held that Arkeyo’s copyright claims failed because there was no evidence of copying. The trade secret claims failed due to Arkeyo’s public disclosure of its software and the generic nature of the alleged secrets. The tortious interference claims were rejected because Saggezza’s competitive conduct was not “wrongful” under Illinois law, and the conversion claim failed since Arkeyo did not own or demand the property. The appellate court also affirmed the denial of sanctions, the denial of reconsideration, and the award of attorney’s fees. View "Arkeyo LLC v Saggezza, Inc." on Justia Law

Two companies manufacture and market water hoses. One company, after registering a trademark for the color chartreuse as applied to the body of its hoses, sued its competitor, claiming trademark infringement under the Lanham Act and related Iowa common law. The competitor responded by arguing that the chartreuse color was a functional feature, not eligible for trademark protection, and requested that the trademark registration be canceled and the claims dismissed.The United States District Court for the Northern District of Iowa held a bench trial and found in favor of the defendant. The court concluded that the chartreuse color served a functional purpose by making the hoses more visible and thus safer, which is a utilitarian advantage. The court also found that the color had not acquired the distinctiveness required for trademark protection, but determined that either ground was sufficient for cancellation. The district court canceled the trademark registration, dismissed all claims, and awarded the defendant more than three million dollars in attorneys’ fees, finding the case “exceptional” due to the plaintiff’s lack of candor before the USPTO, trial conduct, and continued misapplication of the functionality standard.The United States Court of Appeals for the Eighth Circuit reviewed the district court’s factual finding of functionality for clear error and its award of attorneys' fees for abuse of discretion. The appellate court affirmed the district court’s determination that the chartreuse color was functional and thus unregistrable as a trademark. It also upheld the attorneys’ fees award, finding no abuse of discretion in the lower court’s assessment of the plaintiff’s conduct and the exceptional nature of the case. View "Weems Industries, Inc. v. Teknor Apex Company" on Justia Law

The dispute involved a university and its licensee, who hold a patent describing a biodegradable polymer fiber containing a therapeutic agent, which can be used in medical implants such as drug-eluting stents. The patent claims compositions where the fiber is composed of two immiscible phases: a polymer portion and discrete regions containing the drug. The defendant, a medical device company, manufactured and sold stents with a drug-containing biodegradable coating, which the plaintiffs alleged infringed several claims of the patent.After the lawsuit was transferred to the United States District Court for the District of Delaware, the court construed key claim terms and the case proceeded to a jury trial. The jury found that the defendant infringed the asserted patent claims and did so willfully, rejected the defendant’s invalidity defense based on anticipation by a prior patent (the “Song” reference), and awarded damages. The district court later set aside the willfulness finding but otherwise upheld the verdict and entered judgment for the plaintiffs.On appeal, the United States Court of Appeals for the Federal Circuit reviewed the district court’s denial of the defendant’s motions for judgment as a matter of law de novo. The appellate court concluded that the Song patent anticipated all asserted claims, finding that it expressly disclosed every limitation at issue, including the specific structure of the fiber, drug-containing regions, and release characteristics. The court also determined that no reasonable jury could have found infringement, as the defendant’s stent coating did not meet the “fiber” limitation under the district court’s construction. Accordingly, the Federal Circuit reversed the judgment for the plaintiffs and did not reach the plaintiffs’ cross-appeal regarding willfulness. The court awarded costs to the defendant. View "BOARD OF REGENTS OF THE UNIVERSITY OF TEXAS v. BOSTON SCIENTIFIC CORP. " on Justia Law

A technology company developed a healthcare revenue management software platform and, in 2014, licensed a white-labeled version to a bank. The bank branded this software as its own and used it to provide services to its customers. The licensing agreement gave the bank access to confidential software and data, while prohibiting reverse engineering, copying, or creating derivative works. In 2018, the bank began developing its own software that performed similar functions. The technology company later noticed a decline in users of its platform and suspected the bank had breached the contract by reverse engineering and copying its software. The company then sought a preliminary injunction to stop the bank from using its new platform and from misusing the information gained through the contract.The United States District Court for the Western District of Missouri reviewed the request for a preliminary injunction. The district court found that the technology company failed to show that it would suffer irreparable harm absent injunctive relief, ruling that any potential financial losses could be compensated with money damages and that claims of reputational harm were too speculative. The court also determined that the contract’s clause permitting injunctive relief was not, by itself, sufficient to require an injunction.On appeal, the United States Court of Appeals for the Eighth Circuit affirmed the district court’s decision. The appellate court held that the district court did not clearly err in finding the alleged harms compensable with money damages or too speculative, nor did it abuse its discretion by giving limited weight to the contract’s injunctive relief provision. The court emphasized that failure to demonstrate likely irreparable harm is, by itself, a sufficient ground to deny a preliminary injunction. Accordingly, the denial of the preliminary injunction was affirmed. View "RMS v. Commerce Bank" on Justia Law

An American artist created a Styrofoam sculpture in Italy in the late 1980s and sold it to a production company owned by a well-known Italian adult film star and politician. About a year later, another artist, internationally recognized for his “appropriation” style, used the sculpture as a set for a series of photographs with the film star, which were subsequently incorporated into several pieces of art. These works were widely exhibited and publicized in Italy and internationally beginning around 1989. The sculptor claims he did not become aware of the alleged infringement until he saw a news article about the works in 2019. He obtained a U.S. copyright registration for the sculpture in 2020 and filed suit against the appropriation artist and his company in December 2021, later adding the artist’s LLC as a defendant.The United States District Court for the Southern District of New York considered cross-motions for summary judgment. It granted the defendants’ motion, holding that the copyright infringement claim was time-barred because the plaintiff, given his immersion in Italian culture and proximity to the events, should have discovered the alleged infringement well before 2019. The court further ruled that, because the copyright claim was untimely, the related Digital Millennium Copyright Act (DMCA) claim and a request for reconsideration of the damages period were moot.On appeal, the United States Court of Appeals for the Second Circuit reviewed the district court’s decision de novo. The Second Circuit affirmed the lower court’s judgment, holding that the copyright infringement claim was time-barred under the discovery rule, as a reasonably diligent copyright holder in the plaintiff’s position would have discovered the alleged infringement more than three years before filing suit. The appellate court also declined to consider the plaintiff’s argument regarding the independent accrual of the DMCA claim, as it was neither properly preserved nor adequately presented on appeal. View "Hayden v. Koons" on Justia Law

The dispute centers on the government’s use of TETRA® software, developed by 4DD Holdings, LLC. The Department of Defense and Department of Veterans Affairs sought to improve data interoperability for healthcare records and decided to purchase commercial software. After a competitive process, Systems Made Simple (SMS), the government’s contractor, selected TETRA. The government acquired licenses for specific numbers of TETRA’s components through an authorized reseller, Immix Technology, Inc., with explicit restrictions on copying. However, SMS exceeded license limits by making thousands of unauthorized copies during development and testing. 4DD discovered these excess copies and initiated negotiations, ultimately settling for payment for additional cores at the previously agreed license rate. The government later ended its use of TETRA.The United States Court of Federal Claims reviewed the case after 4DD filed suit for copyright infringement. During discovery, evidence destruction by the government led to sanctions. Following a bench trial, the court found the government had significantly exceeded its licenses and assessed damages using a hypothetical negotiation approach, considering factors like the existence of alternative software and the nature of the use, instead of defaulting to the rates in the licensing agreements. The court awarded $12,683,065.86 in damages, including compensatory and non-compensatory (statutory) damages.The United States Court of Appeals for the Federal Circuit examined whether damages should be calculated by reference to the license rates or through a hypothetical negotiation. The court held that neither statute nor precedent compels using the license agreement rates for damages; courts may use hypothetical negotiations when material differences exist between licensed and infringing uses. However, the trial court erred by considering unforeseeable future events (like TETRA’s cancellation) in its damages analysis and by awarding non-compensatory statutory damages against the government. The Federal Circuit affirmed in part, vacated in part, and remanded for further proceedings. View "4DD HOLDINGS, LLC v. US " on Justia Law

Senior engineers left their positions at a technology company to join a competitor, bringing with them thousands of confidential documents related to product development, research strategies, and technical know-how. Within days, the competitor was able to deliver complete designs for new product lines using this information. The original employer soon discovered the transfer of trade secrets and filed suit, alleging violations under the federal Defend Trade Secrets Act (DTSA) and initially, the California Uniform Trade Secrets Act (UTSA). Before trial, the case was narrowed to focus on five specific trade secrets, and the plaintiff ultimately dropped the state law claims, proceeding only under the DTSA.The United States District Court for the Northern District of California presided over a jury trial. The jury found that the defendant had misappropriated three trade secrets, awarding $20 million in compensatory damages and $20 million in punitive damages. The court also granted a permanent injunction against the defendant’s use of the trade secrets and awarded over $17 million in attorney fees. However, the court had instructed the jury that the defendant bore the burden of proving that the trade secrets were readily ascertainable by proper means, an element relevant under the California UTSA but not under the DTSA.The United States Court of Appeals for the Ninth Circuit reviewed the case. It held that the district court erred by instructing the jury that the defendant bore the burden of disproving that the trade secrets were readily ascertainable, a burden that should have remained with the plaintiff under the DTSA. The appellate court found that this error was neither invited by the defendant nor harmless, given conflicting evidence and the potential impact on the verdict and damages calculation. The Ninth Circuit reversed the district court’s judgment and remanded for a new trial on liability and damages for the trade secrets the jury found had been misappropriated. View "COMET TECHNOLOGIES USA, INC. V. XP POWER, LLC" on Justia Law