Justia Intellectual Property Opinion Summaries

Articles Posted in US Court of Appeals for the Eleventh Circuit
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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

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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

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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

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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

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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

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Miami Velvet operated as a swingers’ nightclub in Miami, Florida. The appellants, in this case, Yorkies and Mrs. Dorfman were Miami Velvet’s managers. Appellants appealed the district court’s final judgment, which awarded over 30 plaintiffs damages for false advertising and false endorsement under the Lanham Act, following the entry of summary judgment on liability and a jury award of damages. The Eleventh Circuit reversed the district court’s judgment, set aside the jury’s award of damages to Appellants, and remanded for trial. The court explained that there was not enough evidence to support the entry of summary judgment. Here the advertisements with Plaintiffs’ images were created for and used by Velvet Lifestyles. But Plaintiffs did not just sue Velvet Lifestyles; they also sued Yorkies and Mrs. Dorfman. To prevail on their false advertising and false endorsement claims against Appellants, Plaintiffs had to show that Yorkies itself engaged in or participated in the prohibited conduct along with Velvet Lifestyles (direct liability) or that the corporate veil between Yorkies and Velvet Lifestyles should be pierced (indirect liability).Plaintiffs did not satisfy their burden of showing the absence of a genuine issue of material fact regarding whether Yorkies and Mrs. Dorfman were responsible for the Lanham Act violations. Rather than making the necessary showing in their motion for summary judgment, Plaintiffs simply treated Velvet Lifestyles, Yorkies, and Mrs. Dorfman as one and the same. They exclusively discussed Defendants collectively in the argument section of their motion, presumably operating on the mistaken assumption that if Velvet Lifestyles was liable for violating the Act, so were Yorkies and Mrs. Dorfman. View "Jaime Faith Edmondson, et al. v. Velvet Lifestyles, LLC, et al." on Justia Law

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Fintech, a seller of software that processes alcohol-sales invoices within 24 hours, filed suit against its competitor, iControl, alleging misappropriation of trade secrets. After the jury found in favor of Fintech, iControl sought a new trial on liability and judgment as a matter of law on damages. Fintech then sought a permanent injunction broadly prohibiting iControl from using either company's software. The district court denied all motions and both parties appealed.The Eleventh Circuit concluded that the district court correctly denied iControl's new trial motion on liability where there is no "absolute absence of evidence" to set aside the jury's findings; erred in denying iControl's judgment as a matter of law motion on damages because Fintech did not deduct marginal costs in calculating lost profits; and correctly refused Fintech's requested injunction, which sweeps too broadly. Accordingly, the court affirmed in part, reversed in part, and remanded for further proceedings. The court noted that, on remand, the district court should require an accounting of marginal costs to enable a proper lost-profits calculation. View "Financial Information Technologies, LLC v. iControl Systems, USA, LLC" on Justia Law

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EWC, which runs a nationwide beauty brand European Wax Center and holds the trademark "European Wax Center," filed suit under the Anti-Cybersquatting Consumer Protection Act (ACPA), against defendant, who used GoDaddy.com to register the domain names "europawaxcenter.com" and "euwaxcenter.com." EWC alleged that defendant registered his domain names with a bad faith intent to profit from their confusing similarity to EWC's "European Wax Center" mark.The Eleventh Circuit affirmed the district court's grant of summary judgment in favor of EWC, concluding that no reasonable juror could conclude that "europawaxcenter" and "euwaxcenter" are not confusingly similar to "European Wax Center" -- they are nearly identical to the mark in sight, sound, and meaning. View "Boigris v. EWC P&T, LLC" on Justia Law

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This appeal arose out of a trademark dispute between two advertising and marketing companies—both of which operate under the name Pinnacle Advertising and Marketing Group. Pinnacle Illinois filed suit, and then Pinnacle Florida filed a counterclaim seeking to cancel Pinnacle Illinois's trademark registrations under the Lanham Act, 15 U.S.C. 1119.The Eleventh Circuit concluded that the district court erred by disregarding the jury's findings that Pinnacle Illinois's marks were distinctive and protectable and misapplying the presumption of validity given to registered marks. Accordingly, the court vacated and remanded the district court's order cancelling Pinnacle Illinois's registrations. Although the court affirmed the district court's finding that Pinnacle Illinois's claims for monetary damages were barred by laches, the court remanded for the district court to consider whether to grant Pinnacle Illinois injunctive relief to protect the public's interest in avoiding confusion. View "Pinnacle Advertising and Marketing Group, Inc. v. Pinnacle Advertising and Marketing Group, LLC" on Justia Law

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After a blog operator filed suit against a content aggregator for copyright infringement after the aggregator copied and published the blog's content, the jury ruled in favor of the blog operator. At issue is whether the district court should have allowed the jury to decide whether the aggregator had an implied license to copy and publish the blog's content.The Eleventh Circuit concluded that, although the district court employed a too narrow understanding of an implied license, a jury could not have reasonably inferred that the blog impliedly granted the aggregator a license to copy and publish its content. In this case, the district court erred by granting judgment as a matter of law against the aggregator on its implied-license defense; the district court did not err by instructing the jury that it could consider unregistered articles in its calculation of statutory damages; the district court did not abuse its discretion by denying the aggregator's motion for a new trial on the basis of the jury's statutory-damages award; the district court did not err by failing to consult with the register of copyrights about the alleged fraud on the copyright office; and the aggregator is not entitled to judgment as a matter of law on its fair-use defense. Accordingly, the court affirmed the judgment against the aggregator. View "MidlevelU, Inc. v. ACI Information Group" on Justia Law