Justia Intellectual Property Opinion SummariesArticles Posted in U.S. Court of Appeals for the Sixth Circuit
Progressive Distribution Services, Inc. v. United Parcel Service, Inc.
Sixth Circuit finds little likelihood of confusion between the trademarks “OrderLink” and “UPS OrderLink.” Progressive, located in Michigan, provides logistical services to online businesses. Under the trademark “OrderLink,” Progressive develops clients’ websites and handles deliveries. Progressive registered the OrderLink trademark in 2004, but alleges that it has used the mark for at least 19 years and spent $2.5 million dollars advertising the mark. UPS also serves small volume shippers who operate businesses on Amazon and eBay. In 2012, UPS developed a new interface to enable those customers to import their orders directly into UPS’s shipping application. UPS initially concluded that the name “orderlink” was not available, but determined that the terms “order” and “link” were commonly used together by other companies. UPS concluded that Progressive’s services differed substantially from tits application UPS and chose the name “UPS OrderLink.” Its USPTO application was rejected based on a likelihood of confusion with Progressive’s mark. Nonetheless, UPS launched UPS OrderLink as a free service, accessible only through UPS’s website. Progressive sent a cease-and-desist letter. UPS changed the name of its service to “Ship Marketplace Orders.” Progressive alleged violations of the Lanham Act, 15 U.S.C. 1051, the Michigan Consumer Protection Act, and the common law. The district court granted UPS summary judgment. The Sixth Circuit affirmed. The balance of eight factors, particularly the strength of the mark and the similarity of the marks, indicate little likelihood of customer confusion. View "Progressive Distribution Services, Inc. v. United Parcel Service, Inc." on Justia Law
Kibler v. Hall
Kibler, a disc jockey, uses turntables and others’ vocals to produce music containing jazz and funk elements. He released several albums under the name “DJ LOGIC” since 1999, but currently has no record deal. Kibler registered “DJ LOGIC” as a trademark in 2000, allowed the registration to lapse, and re-registered it in 2013. He has also been known as “LOGIC.” Hall has performed under the name “LOGIC” since 2009. In 2012, Kibler’s attorney sent Hall’s management company and booking agent an email ordering them to stop using the name “LOGIC” and to recall any product or advertisement that did, claiming infringement on Kibler’s mark. Hall’s company applied to register “LOGIC” as a trademark. Kibler sued, alleging trademark infringement, 15 U.S.C. 1125(a); breach of the Michigan Consumer Protection Act; unfair competition under Michigan law; and trademark dilution under the Lanham Act. In 2014, defendants delayed Hall’s tour and first album release due to ongoing settlement negotiations that ultimately collapsed. Defendants then released the album, which sold over 170,000 copies. The Sixth Circuit affirmed summary judgment in favor of the defendants. Kibler did not provide evidence sufficient to find that relevant consumers are likely to confuse the sources of his and Hall’s products or that Hall diluted Kibler’s mark. View "Kibler v. Hall" on Justia Law
Brumley v. Brumley & Sons, Inc.
Albert Brumley, author of the gospel song “I’ll Fly Away,” assigned the song’s 1932 copyright to a company. The company subsequently became the property of his son, Robert. Albert died in 1977. Albert’s widow also executed an assignment to Robert. During the term of a copyright, an author may use, assign, sell, or license the copyright, 17 U.S.C. 201(d), but songwriters and their descendants may terminate the songwriter’s assignment of a copyright to another party, Sections 203, 304(c). In 2008, four of Brumley’s six children filed notice to terminate the assignment to their brother, Robert. The copyright was then generating about $300,000 per year. The district court and Sixth Circuit affirmed their right to terminate the assignment, rejecting arguments that the song was a “work made for hire,” which is not eligible for termination, 17 U.S.C. 304(c); and that Albert’s widow relinquished any termination rights. View "Brumley v. Brumley & Sons, Inc." on Justia Law
LFP IP, LLC v. Hustler Cincinnati, Inc.
In 1969, the Flynt brothers opened “Hustler Club” nightclub, in Cincinnati. Larry later created the Hustler conglomerate, producing sexually explicit magazines. Jimmy opened his retail store, Hustler Cincinnati, in 2000, using the “HUSTLER” trademark (owned by Larry’s corporation) and began paying licensing in 2004. Jimmy and Larry had a falling out. Larry's Hustler fired Jimmy in 2009. Jimmy’s Hustler stopped paying fees, but continued to use the mark. Larry sued. The court enjoined Jimmy from “using in commerce any HUSTLER trademark” and “using any trademark or any variation thereof owned by” Larry or his corporations. Later, Larry complained that Jimmy had opened a new store in Florence, Kentucky, “FLYNT Sexy Gifts.” The court denied the contempt motion because the injunction did not directly prohibit Jimmy’s conduct. but modified the injunction, reasoning that Jimmy’s use of “FLYNT Sexy Gifts” was “likely to cause confusion with the LARRY FLYNT trademark.” The Sixth Circuit affirmed a modification that prohibits Jimmy from “[u]sing the name ‘Flynt’ in connection with the sale, promotion or advertising of adult entertainment products or services unless it is accompanied by the first name ‘Jimmy’ in the same font size, color, and style and on the same background color,” and required Jimmy, when using the name “Flynt” anywhere except on “store signage,” to incorporate “a conspicuous disclaimer stating that the goods or services are not ‘sponsored, endorsed by, or affiliated with Larry Flynt or Hustler, or any business enterprise owned or controlled by Larry Flynt.’” View "LFP IP, LLC v. Hustler Cincinnati, Inc." on Justia Law
Allied Erecting & Dismantling Co. Inc. v. Genesis Equip. & Mfg., Inc.
Allied, founded in 1973 by Ramun, competes with Genesis in the field of industrial dismantling and scrap processing, including the design, development, and manufacture of related specialized equipment. From 1992-2001, Ramun’s son Mark worked at Allied. By 1999, Allied developed innovative multi-use demolition machine attachments, called MT. Various sizes and types of jawsets, including a steel beam cutter and a concrete crusher, were available, allowing the MT operator to perform different tasks with just one tool. The jawset could be changed without removing the main pin, saving time and enhancing productivity. Mark had detailed information regarding the design and function of the attachment, which was highly confidential. In 2001 Mark left Allied, taking a laptop containing 15,000 pages of Allied documents, including detailed technical information about the MT. Mark joined Genesis in 2003. Genesis later released its own multiuse tool. Genesis brought trade secret claims, based on similarity to the MT. A jury rendered a verdict in favor of Allied. The court awarded damages but refused to enter an injunction. The Sixth Circuit affirmed dismissal of a subsequent suit under the Ohio Uniform Trade Secrets Act, alleging misappropriation after that verdict, citing issue preclusion. View "Allied Erecting & Dismantling Co. Inc. v. Genesis Equip. & Mfg., Inc." on Justia Law