Articles Posted in U.S. 11th Circuit Court of Appeals

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Unique filed a complaint against Ferrari for trademark infringement and false designation of origin under federal law; for deceptive trade practices under state law; and for violation of a final judgment. The district court held that Unique's light blue trademark was valid and enforceable but that Ferrari's blue gauze had not infringed upon that trademark. The clerk entered judgment for Unique on Ferrari's affirmative defense but for Ferrari on Unique's original charge of infringement. Ferrari appealed. At issue was whether a party could appeal on the merits from a decision in its favor, where a district court found against him as to one issue, nondispositive of the case. The court concluded that, although he may not challenge the district court's findings on the merits, he was entitled to vacatur of the portion of the district court's order adverse to him. Accordingly, on the facts of this case, the Supreme Court in Electrical Fittings Corp. v. Thomas & Betts Co. clearly prescribed vacatur of the district court's judgment on the question of validity as the legal consequence of an appeal by an otherwise-successful defendant in an infringement suit on the merits of that question. View "Unique Sports Products, Inc. v. Ferrari Importing Co." on Justia Law

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This case involved disputes over licensing agreements for, inter alia, the RS 3400 blood irradiation device. At issue was whether the Federal Circuit has exclusive jurisdiction to hear an appeal of a breach of contract claim that would require the resolution of a claim of patent infringement for the complainant to succeed. The court concluded that it did not have appellate jurisdiction and resolved dispositive issues in favor of Rad Source, leaving a single dispositive issue for certification: When a licensee enters into a contract to transfer all of its interests in a license agreement for an entire term of a license agreement, save one day, but remains liable to the licensor under the license agreement, is the contract an assignment of the license agreement, or is the contract a sublicense? View "MDS (Canada) Inc., et al. v. Rad Source Technologies, Inc." on Justia Law

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Miller's is a restaurant with a location in Boynton Beach, Florida, and Boynton Carolina is its competitor. At issue was whether Miller's has common law trademark rights in the term "ale house" and trade dress rights in the interior decoration of its restaurant, and if so, whether Boynton Carolina violated Section 43 of the Trademark Act of 1946 (Lanham Act), 15 U.S.C. 1125(a), and the Copyright Act, 17 U.S.C. 106, when it adopted a name, decor, and a floor plan similar to Miller's own. The court held that the district court did not err in finding Miller's trademark infringement claim barred by issue preclusion, in finding Miller's trade dress not to be inherently distinctive, and in finding Miller's and Boynton Carolina's floor plans not to be substantially similar. View "Miller's Ale House, Inc. v. Boynton Carolina Ale House" on Justia Law

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Plaintiff appealed the district court's order granting defendants' motion for summary judgment, and denying as moot plaintiff's motion for summary judgment. Plaintiff alleged that defendants infringed its copyright of "Acidjazzed Evening," a Sound Interface Device (SID) file. The court concluded that the district court erred by granting Defendant Mosley's motion for summary judgment. However, because plaintiff failed to produce substantially probative evidence that it complied with statutory prerequisites prior to filing this action, the court affirmed. View "Oy v. Mosley, et al" on Justia Law

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Plaintiff, a religious order of the Roman Catholic Church that undertook charitable work internationally, filed suit against defendant, a charitable organization with an expressly ecumenical association, asserting infringement and false advertising claims under the Lanham Act, 15 U.S.C. 1051 et seq., as well as state law claims for unfair competition and violation of the Florida Deceptive and Unfair Trade Practices Act (FDUTPA), Fla. Stat. 501.201 et seq. The infringement claims were based on defendant's alleged use of marks that were confusingly similar to those for which plaintiff had obtained federal registrations. In the false advertising claim, plaintiff charged that defendant falsely claimed a historic affiliation with plaintiff going back to the eleventh century. The state law claims derived from these same litigations. Defendant counterclaimed, alleging that plaintiff committed fraud on the U.S. Patent and Trademark Office (PTO) in applying for its service marks due to plaintiff's failure to disclose its knowledge of the domestic presence of other organizations that used similar marks in commerce. The court concluded that the district court clearly erred in evaluating the claim that plaintiff committed fraud on the PTO and reversed the cancellation of the four word marks. Because the court was not presented with sufficient findings to review the Lanham Act infringement claims, the court vacated the district court's ruling on that issue and remanded. The court vacated the district court's ruling on the state law claims and affirmed the district court's finding on the Lanham Act false advertising claim in favor of defendant. View "Sovereign Military Hospitaller v. Knights Hospitallers" on Justia Law

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Suntree appealed from the district court's order denying its motion for summary judgment and granting the motions for summary judgment filed by Ecosense and George Dussich with regard to Suntree's claims of false designation of origin and false advertising under Section 43(a) of the Lanham Act, 15 U.S.C. 1051-1127, common law trademark infringement and unfair competition, and deceptive and unfair trade practices pursuant to the Florida Deceptive and Unfair Trade Practices Act (FDUPTA), Fla. Stat. 501.201 et seq. Both Suntree and Ecosense manufacture baffle boxes, a filtration product. Suntree contended that the district court erred in concluding that Suntree failed to establish that Ecosense and Dussich directly or contributorily infringed on their trademark because it failed to present evidence of actual or of a likelihood of confusion. The court disagreed and affirmed the judgment. View "Suntree Technologies, Inc. v. Ecosense International, Inc., et al." on Justia Law

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This case arose when the University told Daniel A. Moore, an artist who painted famous football scenes involving the University since 1979, that he would need permission to depict the University's uniforms because they were trademarks. Moore contended that he did not need permission because the uniforms were being used realistically to portray historic events. The parties could not reach a resolution and the University subsequently sued Moore for breach of contract, trademark infringement, and unfair competition. The court held that, as evidenced by the parties' course of conduct, Moore's depiction of the University's uniforms in his unlicensed paintings, prints, and calendars was not prohibited by the prior licensing agreements. Additionally, the paintings, prints, and calendars did not violate the Lanham Act, 15 U.S.C. 1125(a), because these artistically expressive objects were protected by the First Amendment. Accordingly, the court affirmed the grant of summary judgment by the district court with respect to the paintings and prints, and reversed with respect to the prints as replicated on calendars. With respect to the licensing agreements' coverage of the mugs and other "mundane products," the court reversed the district court's grant of summary judgment because disputed issues of fact remained. Accordingly, the court affirmed in part, reversed in part, and remanded. View "University of Ala. Bd of Trustees v. New Life, Inc" on Justia Law

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This case involved a type of patent litigation settlement known as a "pay for delay" or "reverse payment" agreement. In this type of settlement, a patent holder paid the allegedly infringing generic drug company to delay entering the market until a specified date, thereby protecting the patent monopoly against a judgment that the patent was invalid or would not be infringed by the generic competitor. This case began when the FTC filed a complaint in district court alleging that the reverse payment settlements between the holder of a drug patent and two generic manufacturers of the drug were unfair restraints on trade that violated federal antitrust laws. The court's precedent established the rule that, absent sham litigation or fraud in obtaining the patent, a reverse payment settlement was immune from antitrust attack so long as its anticompetitive effects fell within the scope of the exclusionary potential of the patent. The court rejected the FTC's claims to the contrary and affirmed the judgment. View "FTC v. Watson Pharmaceuticals, Inc., et al." on Justia Law

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Optical Systems Technology, Inc. (OSTI) and Knights Armament Company (KAC), and its owner, dispute the ownership of two trademarks used in the manufacturing and marketing of clip-on night vision devices: "Universal Night Sight" and "UNS." At issue was the district court's entry of partial summary judgment in favor of KAC on OSTI's misappropriation of trade secrets counterclaim. Also at issue was OSTI's pending motion for summary judgment on all counts of KAC's complaint. The court held that the district court was correct in concluding as a matter of law that OSTI's trade secret misappropriation claim was barred by the statute of limitations and the district court correctly granted summary judgment to KAC on OSTI's Count IV, based upon undisputed facts in the record. The court also held that the district court committed no clear error when it determined that OSTI owned the mark; the mark was descriptive, without secondary meaning; and OSTI had no protectable rights in the mark. Therefore, the court held that KAC could not be liable for trademark infringement based on rights to a mark that OSTI could not enforce. View "Knights Armament Co. v. Optical Sys. Tech., Inc." on Justia Law

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This appeal stemmed from a judgment against an entertainment company, plaintiffs, that sued the current members of "Expose," an American girl dance band, about the trademark name of the band. At issue was whether the district court erred when it found that plaintiffs failed to prove that it had enforceable rights in the Expose mark at common law. The court held that the district court did not err when it determined that the individual band members were the common law owners of the Expose mark where the record supported findings that plaintiffs had no enforceable rights in the mark and where the court need not reach the issue of consumer confusion because plaintiffs had no enforceable rights. The court further held that the remaining grounds for relief asserted by plaintiffs were without merit. Accordingly, the court affirmed the judgment of the district court. View "Crystal Entertainment & Filmworks, Inc., et al. v. Jurado, et al." on Justia Law