Justia Intellectual Property Opinion SummariesArticles Posted in US Court of Appeals for the Eleventh Circuit
D.H. Pace Company, Inc. v. OGD Equipment Company, LLC
Pace (a company that sells and services garage doors) sued a competitor, Overhead Garage Door (“OGD”) (a company that also offers garage door services), alleging a host of federal and state law violations relating to OGD’s trade practices. Pace and Overhead Door Corporation (a garage door manufacturer that is not a party to this case but that has a name noticeably similar to Defendant OGD, its competition) have a licensing agreement in which Pace is the licensee, and Overhead Door Corporation is the licensor. As part of this agreement, Pace uses Overhead Door Corporation’s marks. The district court granted summary judgment to OGD on all of Pace’s claims, concluding in large part that Pace could not bring suit because Pace was a nonexclusive licensee that lacked sufficient ownership rights in Overhead Door Corporation’s marks and because OGD and Overhead Door Corporation’s settlement agreement extinguished Pace’s claims. Pace timely appealed. The Eleventh Circuit vacated. The court concluded that Pace may bring its federal and state law claims. The court concluded that the licensing agreement, Pace’s status as a nonexclusive licensee, and the settlement agreement do not bar Pace from bringing its claims under the Lanham Act, state law, or common law. The court explained that although the agreement may prevent OGD and Overhead Door Corporation from suing each other, the settlement agreement is “not . . . binding on . . . current and future licensees.” As such, the settlement agreement is not binding on licensees like Pace and does not prevent Pace from suing View "D.H. Pace Company, Inc. v. OGD Equipment Company, LLC" on Justia Law
Nuvasive, Inc. v. Absolute Medical, LLC, et al.
NuVasive, Inc. manufactures medical products and equipment to treat spinal diseases. In central Florida, NuVasive sold its products through an exclusive distribution agreement with Absolute Medical, LLC. Under the agreement, Absolute Medical employed independent-contractor sales representatives who marketed and sold NuVasive’s products to doctors and medical practices in the region. NuVasive sued Absolute Medical, Soufleris, AMS, and two of Absolute Medical’s sales representatives who began working for AMS for breaching the exclusive. The district court enforced a dispute resolution clause in the agreement, ordering NuVasive and Absolute Medical to arbitrate NuVasive’s breach-of-contract claim seeking money damages. Absolute Medical, Soufleris, AMS, and the sales representatives appealed the district court’s order granting NuVasive’s motion to vacate the arbitration panel’s final award. The Eleventh Circuit affirmed. The court held that the district court did not err by equitably tolling the three-month filing deadline and considering NuVasive’s motion as timely. The court explained that the district court’s findings of fact were not clearly erroneous, and they supported the district court’s conclusion that NuVasive satisfied both prongs of the equitable tolling analysis. Defendants’ conduct presented extraordinary circumstances, and NuVasive was diligent once it learned that there was reason to pursue vacatur. Further, the court held that the district court did not err by vacating the final award. The district court correctly concluded that the fraud was materially related to that issue. Finally, the court held that the district court did not abuse its discretion by declining to direct a rehearing by the arbitration panel. View "Nuvasive, Inc. v. Absolute Medical, LLC, et al." on Justia Law
TocMail Inc. v. Microsoft Corporation
Microsoft Corporation offers email security software to shield users from cyber threats. TocMail, Inc. is a relative newcomer to the cybersecurity scene and offers a product geared towards a specific type of threat called Internet Protocol (IP) evasion. TocMail sued Microsoft for false advertising—all within two months. In its complaint, TocMail alleged that Microsoft misled the public into believing that Microsoft’s product offered protection from IP evasion. And TocMail—who had been selling its product for two months, spent almost nothing on advertising and had not made a single sale—alleged billions of dollars in lost profits. TocMail brought two counts: false and misleading advertising under the Lanham Act (count one); and contributory false and misleading advertising under the Lanham Act. The district court entered summary judgment for Microsoft. The Eleventh Circuit vacated the district court’s summary judgment order and remanded to the district court with instructions to dismiss this case without prejudice for lack of standing. The court explained that to establish an injury, in fact, a plaintiff must show “an invasion of a legally protected interest which is (a) concrete and particularized; and (b) actual or imminent, not conjectural or hypothetical.” The court wrote that TocMail failed to meet this standard because TocMail has offered no evidence from which a reasonable jury could find that it suffered any injury. TocMail didn’t offer testimony from any witness saying that he or she would have purchased TocMail’s product if not for Microsoft’s advertising. TocMail didn’t offer any expert testimony calculating TocMail’s lost sales from consumers who went with Microsoft. View "TocMail Inc. v. Microsoft Corporation" on Justia Law
Sherman Nealy, et al. v. Warner Chappell Music, Inc., et al.
Plaintiffs in this case—Sherman Nealy and Music Specialist, Inc.—filed this copyright action seeking, among other things, damages for infringement they allege occurred more than three years before they filed this lawsuit. The defendants—Warner Chappell Music, Inc. and Artist Publishing Group, LLC—contend that Plaintiffs cannot recover damages for anything that happened more than three years before they filed suit. The district court certified the following question for interlocutory appellate review: whether damages in this copyright action are limited to a three-year lookback period as calculated from the date of the filing of the complaint. The Eleventh Circuit answered that question in the negative. The court wrote that given that the plain text of the Copyright Act does not support the existence of a separate damages bar for an otherwise timely copyright claim, the court held that a copyright plaintiff with a timely claim under the discovery rule may recover retrospective relief for infringement that occurred more than three years prior to the filing of the lawsuit. View "Sherman Nealy, et al. v. Warner Chappell Music, Inc., et al." on Justia Law
GSE Consulting, Inc. v. L3Harris Technologies, Inc.
Under the terms of a consulting agreement between GSE Consulting, Inc. (“GSE”) and Harris Corporation (“Harris”), GSE is entitled to a payment of up to four million dollars in the event that certain intellectual property owned by Harris is “sold, merged or transferred” but did not form “the primary basis of the sale.” GSE contends that the relevant intellectual property, held by a subsidiary of one of Harris’s subsidiaries, necessarily “merged” when Harris used a different subsidiary to effectuate a comprehensive reverse triangular merger with an outside company and thus triggered Harris’s payment obligation under the parties’ agreement. L3Harris, however, maintained that Harris’s participation in the reverse triangular merger did not cause the relevant intellectual property to “merge” and has accordingly refused to make the demanded payment. The district court agreed with L3Harris and dismissed GSE’s breach of contract claim on summary judgment. The Eleventh Circuit affirmed. The court reasoned that the reverse triangular merger at issue did not “merge,” i.e., combine, the relevant intellectual property in any ordinary way. The Plan contains assurances regarding the validity, right to continued use, and maintenance of each party’s intellectual property. And, given its broad definitions of “Company Intellectual Property” and “Intellectual Property,” the Plan certainly reaches the intellectual property held by Eagle as subsidiary of one of Harris’s subsidiaries. The Plan neither blends, pools, nor otherwise combines the intellectual property held by Eagle with any other intellectual property. Therefore, the intellectual property discussed in the Consulting Agreement was not “merged” as a result of the reverse triangular merger. View "GSE Consulting, Inc. v. L3Harris Technologies, Inc." on Justia Law
FCOA LLC v. Foremost Title & Escrow Services LLC
FIC was founded and started using FOREMOST branded marks to market and sell its insurance products. After FIC operated independently for several decades, Farmers Insurance Group acquired FIC in 2000. Now a subsidiary of Farmers, FIC continues to sell insurance in the United States and Florida under its FOREMOST-branded marks. At issue is whether parties’ FOREMOST trademarks at issue could confuse consumers into thinking that a relationship exists between the parties. The district court found at summary judgment that there was no likelihood of confusion (and thus no trademark infringement) between the FOREMOST marks of Foremost Insurance Company (“FIC”), a multi-billion dollar insurance company, and Foremost Title and Escrow (“FT&E”), a shell company set up to sell title insurance for a law firm. The Eleventh Circuit reversed the grant of summary judgment on FIC’s trademark infringement claim. The court explained that while the district court implicitly decided this case under the Nunez framework, it never actually decided whether all the material facts had been “incontrovertibly proved.” A district court may not ignore the traditional summary judgment standard merely by invoking the specter of Nunez. The court wrote, in this case, the parties should have eschewed moving for summary judgment, informed the court that discovery was complete and that the case was ready for trial, and then held a bench trial. Thus because the court held a reasonable factfinder could determine that a likelihood of confusion exists, the court reversed grant of summary judgment as to Count I of FIC’s complaint and remanded the case for trial on the merits. View "FCOA LLC v. Foremost Title & Escrow Services LLC" on Justia Law
MGFB Properties, Inc., et al. v. 495 Productions Holdings LLC, et al.
Plaintiffs sued Defendants, alleging that the title of Defendants’ series, MTV Floribama Shore, infringes on Plaintiffs’ Flora-Bama trademarks. The district court granted summary judgment to Defendants. Plaintiffs timely appealed. The Eleventh Circuit affirmed the district court’s judgment for Defendants. The court explained that the titles are not being used as trademarks to identify and distinguish the source of the artistic works. Plaintiffs have presented no evidence that any of these titles to the third parties’ artistic works have any source-identifying function. Because these titles are not being used as trademarks, this is not a title-versus-title case for purposes of the Rogers footnote. Further, Plaintiffs have not provided any evidence that they own interests in those artistic works as trademarks for Plaintiffs’ own goods or services—the foundation of trademark rights. Indeed, nothing in the record would allow a reasonable jury to conclude that the public views Plaintiffs as the source of these artistic works. Moreover, Plaintiffs’ claims are premised on alleged confusion with Plaintiffs’ commercial establishments, not with any artistic works purportedly owned by Plaintiffs. As Defendants note, Plaintiffs’ complaint did not claim rights in or allege any confusion relating to any artistic work, and Plaintiffs’ cease-and-desist letter did not mention any artistic works. View "MGFB Properties, Inc., et al. v. 495 Productions Holdings LLC, et al." on Justia Law
Anthony Campbell v. June James
Plaintiff wrote and recorded the song “Everything Be Lit,” which he later copyrighted. Then Plaintiff filed suit against several parties and Think It’s a Game Records (TIG) for copyright infringement based on one of Defendant’s recordings and release of a similar song “Everyday We Lit.” Two co-defendants failed to respond to the initial complaint and the district court entered a default against them. Plaintiff later filed an amended complaint, requesting among other forms of relief, actual profits, jointly and severally, from Defendants. One Defendant raised several issues on appeal, including that the district court erred in using Plaintiff’s amended complaint as the basis for the default judgment because the amended complaint stated a new claim for relief, and Plaintiff failed to serve the amended complaint on Defendant as required by the Federal Rules of Civil Procedure. The Eleventh Circuit agreed that the amended complaint stated a new claim for relief, and therefore, the district court erred in concluding that Plaintiff did not have to serve the amended complaint on Defendant. Accordingly, the court vacated the default judgment and remanded for further proceedings. The court explained that the Copyright Act did not put Defendant on notice that he could be subject to joint and several liability for actual damages and profits. Thus, Plaintiff’s claim for actual damages plus profits, jointly and severally, constituted a new claim for relief. View "Anthony Campbell v. June James" on Justia Law
Acrylicon USA, LLC v. Silikal GMBH
AcryliCon USA, LLC (“AC-USA”) and Silikal GmbH (“Silikal”) have been fighting for years over a trade secret. The last time they were before this Court, a panel erased some of the relief awarded to AC-USA after a jury trial. On remand, the district court basically entered the same amount of attorney’s fees it had originally awarded. The district court also entered a “permanent” injunction barring the use of the trade secret at issue, concluding that it was obliged to do so. The Eleventh Circuit found that the district court misread the court’s holdings, including the court’s unambiguous determination in AcryliCon II that no permanent injunction had been entered because the district court’s original final judgment did not include one. The court explained that the district court could not simply “reenter” a permanent injunction against Silikal without first making the appropriate findings pursuant to Rule 65 of the Federal Rules of Civil Procedure. The court further concluded that the district court abused its discretion when it awarded AC-USA nearly its full attorney’s fees even after the court reversed, in AcryliCon II, significant portions of the relief AC-USA had been previously awarded. Thus, the court vacated and remanded. View "Acrylicon USA, LLC v. Silikal GMBH" on Justia Law
Victor Elias Photography, LLC v. Ice Portal, Inc.
Plaintiff, a commercial photographer, discovered infringing uses of his copyrighted images on the internet. Instead of pursuing the infringing parties, Plaintiff brought a lawsuit against Ice Portal, Inc. – now a division of Shiji (US), Inc. (“Shiji”) – which acts as an intermediary between the hotels that licensed Plaintiff’s photographs and online travel agents (“OTAs”) like Expedia and Travelocity.In optimizing the photographs for use by the OTAs, Shiji’s software allegedly removed certain copyright-related information that Plaintiff had embedded within the metadata of the photographs. Defendant claimed that Shiji, therefore, violated the Digital Millennium Copyright Act (“DMCA”). The district court correctly granted summary judgment to Shiji because Plaintiff did not show an essential element of its claim – namely, that Shiji knew, or had reasonable grounds to know, that its actions would induce, enable, facilitate, or conceal a copyright infringement. The Eleventh Circuit affirmed. The court held that Plaintiff did not meet its burden of coming forward with sufficient evidence demonstrating Section 1202(b)’s second scienter requirement, and judgment in Shiji’s favor was therefore appropriate. The court explained that the statute’s plain language requires some identifiable connection between the defendant’s actions and the infringement or the likelihood of infringement. To hold otherwise would create a standard under which the defendant would always know that its actions would “induce, enable, facilitate, or conceal” infringement because distributing protected images wrongly cleansed of CMI would always make infringement easier in some general sense. View "Victor Elias Photography, LLC v. Ice Portal, Inc." on Justia Law