Justia Intellectual Property Opinion Summaries

Articles Posted in US Court of Appeals for the Eighth Circuit
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This consolidated appeal stemmed from the trusts' motion for a temporary restraining order and preliminary injunction enjoining the use of Phyllis Schafly's intellectual property. The Eighth Circuit affirmed the denial of preliminary injunctive relief under 28 U.S.C. 1292(a)(1) and held that the trusts would not be entitled to the traditional presumption of irreparable harm in trademark cases because they did not promptly seek preliminary injunctive relief concerning the trademark infringement, regardless of whether the presumption survived recent Supreme Court decisions emphasizing the movant's burden to show that irreparable injury was likely in the absence of an injunction. The court dismissed the appeal of the order staying litigation for lack of appellate jurisdiction, because the order was temporary and did not effectively end the litigation. View "Phyllis Schlafly Revocable Trust v. Cori" on Justia Law

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The Eighth Circuit affirmed the district court's grant of summary judgment for Iowa Parts in a trademark secrets and intellectual property action brought by CMI. The court held that CMI could not establish its burden of proving that the discovery rule saves its statutory cause of action because it was on inquiry notice that Iowa Parts was making its component parts, possibly with its engineering documents and other trade secrets, starting in 2002 and continuing thereafter. The court also held that CMI was on notice of a possible problem as early as 2002 on the conversion claim. Finally, the district court properly granted summary judgment on the unjust enrichment claim where an equitable claim could not provide alternative relief. View "CMI Roadbuilding, Inc. v. Iowa Parts, Inc." on Justia Law

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The Eighth Circuit affirmed the district court's judgment in favor of Hargis in an action brought by B&B, alleging a trademark infringement claim involving B&B's SEALTIGHT mark and Hargis' SEALTITE mark. The court found no plain error in the district court's determination that B&B willfully failed to disclose a prior adverse decision and thus the district court did not err in its determination that B&B committed fraud on the PTO and that Hargis was therefore entitled to the affirmative defense of fraud under 15 U.S.C. 1115(b)(1). The court also held that B&B's claims were barred by collateral estoppel because B&B failed to present evidence of any significant intervening factual change from the date of the 2000 jury verdict. In regard to Hargis' cross-appeal, the court affirmed the district court's denial of Hargis' motion for attorney fees and nontaxable litigation costs. The court held that the district court did not abuse its discretion in finding this an unexceptional case. View "B&B Hardware, Inc. v. Hargis Industries, Inc." on Justia Law

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SMRI filed suit alleging that defendants, through their participation in the selling of Rushmore's unlicensed motorcycle rally-related products, had violated several provisions of the Lanham Act and related South Dakota statutes. The Eighth Circuit held that the district court did not err in declining to apply licensee estoppel against defendants; the trial record did not support a finding that SMRI owned the rally or its intellectual property, that SMRI and the Chamber before it have been the substantially exclusive users of the word "Sturgis" in relation to either the rally or rally-related goods and services, or that relevant consumers associate the word "Sturgis" with a single source of goods and services in any context; and thus the court reversed the jury's finding that defendants diluted the "Sturgis" mark and vacated the jury's finding that defendants engaged in cybersquatting. The court also held that defendants should have been granted judgment as a matter of law on the infringement claims relating to SMRI's unregistered marks, "Sturgis Motorcycle Rally" and "Sturgis Rally & Races," because the jury was not presented with sufficient evidence to find that the marks had acquired secondary meaning. Finally, the evidence at trial supported the jury's finding that SMRI's mark "Sturgis Bike Week" was valid; there was sufficient evidence to show that SMRI's "Monahan Composite Mark" was widely used in connection with the rally and that defendants' infringement of the mark was willful and intentional; the differences between the shot glass's design and the Monahan mark were so obvious that the jury did not have any basis in the record for its finding of a counterfeit; SMRI's claims for deceptive practices, false advertising and unfair competition were not time-barred; the district court did not err in granting judgment as a matter of law to JRE; the court vacated the district court's order granting defendants the defenses of laches and acquiescence; and the court reversed and remanded the permanent injunction. View "Sturgis Motorcycle Rally, Inc. v. Rushmore Photo & Gifts, Inc." on Justia Law

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Bruce Munro and his studio appealed the district court's dismissal of his complaint against Lucy and the denial of his motion to amend his complaint. Munro's claims stemmed from Lucy's "Light Forest" exhibition and advertising campaign that infringed on Munro's works. The Eighth Circuit affirm the district court's decision to dismiss Munro's trade dress, fraud, and tortious interference claims as well as its denial of Munro's motion to amend these claims because the proposed amendments were futile. The court held, however, that Munro sufficiently pleaded a trademark claim so as to survive a motion to dismiss for failure to state a claim. Accordingly, the court reversed in part, affirmed in part, and remanded for further proceedings. View "Munro v. Lucy Activewear, Inc." on Justia Law

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The Eighth Circuit considered this trademark dispute on remand. In the previous appeal, the court asked the district court to address state-law questions pertaining to the availability of attorney's fees and the ownership of a contested trademark. The district court entered orders on those questions and this appeal followed. The court held that the district court erred in determining plaintiff was entitled to attorney's fees under Iowa common law. In this case, defendant's misrepresentation to the patent office was improper, but its conduct did not rise to the level of being tyrannical, cruel, or harsh under Iowa common law. Finally, the briefs and oral arguments lead the court to conclude that defendant owned a license to use the PAKSTER mark in connection with injection-molded chicken coops, injection-molded egg baskets, and injection-molded egg flats. Accordingly, the court reversed and remanded with instructions. View "East Iowa Plastics, Inc. v. PI, Inc." on Justia Law

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The Eighth Circuit considered this trademark dispute on remand. In the previous appeal, the court asked the district court to address state-law questions pertaining to the availability of attorney's fees and the ownership of a contested trademark. The district court entered orders on those questions and this appeal followed. The court held that the district court erred in determining plaintiff was entitled to attorney's fees under Iowa common law. In this case, defendant's misrepresentation to the patent office was improper, but its conduct did not rise to the level of being tyrannical, cruel, or harsh under Iowa common law. Finally, the briefs and oral arguments lead the court to conclude that defendant owned a license to use the PAKSTER mark in connection with injection-molded chicken coops, injection-molded egg baskets, and injection-molded egg flats. Accordingly, the court reversed and remanded with instructions. View "East Iowa Plastics, Inc. v. PI, Inc." on Justia Law

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The Eighth Circuit affirmed the district court's grant of summary judgment to PWD on a trademark infringement claim filed by ZW, another company that sells plastic bags for picking up and disposing of dog waste. The court held that ZW failed to produce any evidence from which a jury could find that consumers were likely to confuse ZW's ONEPUL wicket bags with PWD's BagSpot "one-pull" wicket bags. In regard to PWD's counterclaim that ZW's marks were invalid, the court held that there was a fact dispute as to whether the ONEPUL mark was generic or descriptive. Therefore, the court reversed as to the validity claim and remanded for further proceedings. View "ZW USA, Inc. v. PWD Systems, LLC" on Justia Law