Justia Intellectual Property Opinion Summaries

Articles Posted in US Court of Appeals for the Ninth Circuit
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In a trademark dispute between two companies that used the word "Punchbowl" in their marks, the United States Court of Appeals for the Ninth Circuit reversed the district court's summary judgement in favor of AJ Press, LLC. The court held that AJ Press, LLC's use of the Punchbowl mark was not outside the scope of the Lanham Act under the "Rogers test". The Rogers test, which governs disputes over trademarks that are used in expressive works protected by the First Amendment, does not apply when the accused infringer uses a trademark to designate the source of its own goods. The court found that AJ Press, LLC was using the Punchbowl mark to identify and distinguish its news products. The court reversed the district court's judgement and remanded for further proceedings, instructing the district court to proceed to a likelihood-of-confusion analysis under the Lanham Act. View "Punchbowl, Inc. v. AJ Press, LLC" on Justia Law

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In the case before the United States Court of Appeals for the Ninth Circuit, Best Carpet Values, Inc. and Thomas D. Rutledge initiated a class action lawsuit against Google, LLC. The plaintiffs argued that Google, through its Search App on Android phones, displayed their websites in a way that occupied valuable space for which Google should have paid. They contended that Google received all the benefits of advertising from the use of that space. The plaintiffs made state-law claims for trespass to chattels, implied-in-law contract and unjust enrichment, and violation of California's Unfair Competition Law.The court reviewed questions certified by the district court for interlocutory review. In response to the first question, the court ruled that the website copies displayed on a user's screen should not be protected as chattel, concluding that a cognizable property right did not exist in a website copy. As a result, the plaintiffs’ trespass to chattels claim was dismissed.Addressing the third question, the court held that website owners cannot invoke state law to control how their websites are displayed on a user's screen without being preempted by federal copyright law. The court determined that the manner in which the plaintiffs’ websites were displayed fell within the subject matter of federal copyright law. It also found that the rights asserted by the plaintiffs’ implied-in-law contract and unjust enrichment claim were equivalent to the rights provided by federal copyright law. Thus, the plaintiffs’ state-law claim was preempted by federal copyright law.Given these findings, the court did not address the other certified questions. The Ninth Circuit concluded that the district court erred in denying Google’s motion to dismiss and remanded the case with instructions to dismiss. View "Best Carpet Values, Inc. v. Google LLC" on Justia Law

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In this case, Zachary Silbersher, a relator, filed a qui tam action under the False Claims Act against Valeant Pharmaceuticals International, Inc. and others. Silbersher alleged that Valeant fraudulently obtained patents related to a drug and asserted these patents to stifle competition from generic drugmakers. He also claimed that Valeant defrauded the federal government by charging an artificially inflated price for the drug while falsely certifying that its price was fair and reasonable.The district court dismissed Silbersher’s action under the False Claims Act’s public disclosure bar, ruling that his allegations had already been publicly disclosed. The United States Court of Appeals for the Ninth Circuit reversed the decision of the district court.The Court of Appeals held that an inter partes patent review proceeding, in which the Patent and Trademark Office invalidated one of Valeant's patents, did not qualify as a public disclosure under the False Claims Act because the government was not a party to that proceeding, and its primary function was not investigative. The Court of Appeals also held that the allegations in Silbersher's qui tam action were not "substantially the same" as the information that had been publicly disclosed. None of the qualifying public disclosures made a direct claim that Valeant committed fraud, nor did they disclose a combination of facts sufficient to permit a reasonable inference of fraud. Therefore, the public disclosure bar did not apply. The case was remanded for further proceedings. View "SILBERSHER V. VALEANT PHARMACEUTICALS INT'L" on Justia Law

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Choreographer Kyle Hanagami claimed that Epic Games, Inc., the creator of the videogame Fortnite, infringed the copyright of a choreographic work when the company created and sold a virtual animation, known as an “emote,” depicting portions of the registered choreography. The district court dismissed his action under the Copyright Act and remanded for further proceedings on claims of direct and contributory infringement of a choreographic work.   The Ninth Circuit reversed. The panel held that, under the “extrinsic test” for assessing substantial similarity, Hanagami plausibly alleged that his choreography and Epic’s emote shared substantial similarities. The panel held that, like other forms of copyrightable material such as music, choreography is composed of various elements that are unprotectable when viewed in isolation. What is protectable is the choreographer’s selection and arrangement of the work’s otherwise unprotectable elements. The panel held that “poses” are not the only relevant element, and a choreographic work also may include body position, body shape, body actions, transitions, use of space, timing, pauses, energy, canon, motif, contrast, and repetition. The panel concluded that Hanagami plausibly alleged that the creative choices he made in selecting and arranging elements of the choreography—the movement of the limbs, movement of the hands and fingers, head and shoulder movement, and tempo—were substantially similar to the choices Epic made in creating the emote. The panel held that the district court also erred in dismissing Hanagami’s claim on the ground that the allegedly copied choreography was “short” and a “small component” of Hanagami’s overall work. View "KYLE HANAGAMI V. EPIC GAMES, INC., ET AL" on Justia Law

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Impossible X, now a Texas LLC, is a one-person company run by Joel Runyon, a self-described “digital nomad” who for two years operated his business from San Diego. Impossible X sells apparel, nutritional supplements, diet guides, and a consulting service through its website and various social media channels. Impossible Foods sued Impossible X in federal court in California, seeking a declaration that Impossible Foods’ use of the IMPOSSIBLE mark did not infringe on Impossible X’s trademark rights. The district court dismissed the case for lack of personal jurisdiction.   The Ninth Circuit reversed the district court’s dismissal. The panel held that Impossible X was subject to specific personal jurisdiction in California because it previously operated out of California and built its brand and trademarks there, and its activities in California were sufficiently affiliated with the underlying trademark dispute to satisfy the requirements of due process. First, Impossible X purposefully directed its activities toward California and availed itself of the privileges of conducting activities there by building its brand and working to establish trademark rights there. Second, Impossible Foods’ declaratory judgment action arose out of or related to Impossible X’s conduct in California. The panel did not confine its analysis to Impossible X’s trademark enforcement activities, but rather concluded that, to the extent the Federal Circuit follows such an approach for patent declaratory judgments, that approach is not justified in the trademark context. Third, the panel concluded that there was nothing unreasonable about requiring Impossible X to defend a lawsuit based on its trademark building activities in the state that was its headquarters and Runyon’s home base. View "IMPOSSIBLE FOODS INC. V. IMPOSSIBLE X LLC" on Justia Law

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United Aeronautical Corporation and Blue Aerospace, LLC (collectively, Aero) filed suit against the United States Air Force and Air National Guard (collectively, USAF) in the U.S. District Court for the Central District of California. Aero alleges that USAF has for some time violated federal procurement regulations and the Trade Secrets Act by improperly using Aero’s intellectual property. The district court dismissed for lack of subject matter jurisdiction, concluding that the Contract Disputes Act (CDA), precludes jurisdiction over Aero’s action by vesting exclusive jurisdiction over federal-contractor disputes in the Court of Federal Claims.   The Ninth Circuit affirmed. The panel agreed with the district court that the Contract Disputes Act “impliedly forbids” jurisdiction over Aero’s claims by vesting exclusive jurisdiction over federal-contractor disputes in the Court of Federal Claims. A claim falls within the scope of the CDA’s exclusive grant of jurisdiction if (1) the plaintiff’s action relates to (2) a procurement contract and (3) to which the plaintiff was a party. Here, Aero’s claims that USAF improperly received and used MAFFS data (1) relate to the DRA, (2) the DRA is a procurement contract, and (3) Aero is a contractor for purposes of the DRA. The panel held that the test set forth in Megapulse, Inc. v. Lewis, 672 F.2d 959 (D.C. Cir. 1982), is limited to determining whether the Tucker Act—which grants exclusive jurisdiction to the Court of Federal Claims over breach-of-contract actions for money damages—“impliedly forbids” an ADA action because Megapulse addressed implied preclusion only pursuant to the Tucker Act, not pursuant to the CDA. View "UNITED AERONAUTICAL CORP., ET AL V. USAF, ET AL" on Justia Law

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Y.Y.G.M. SA, doing business as Brandy Melville, manufactures its own clothing, home goods, and other items. It owns several trademarks, including the Brandy Melville Heart Mark (Heart Mark) and the LA Lightning Mark (Lightning Mark). Redbubble owns and operates an online marketplace where artists can upload their artwork to be printed on various products and sold. After a jury found that Redbubble, Inc. had violated Brandy Melville’s trademarks, the district court granted partial judgment as a matter of law to Redbubble on one trademark claim. Both parties appealed.   The Ninth Circuit affirmed in part and vacated in part the district court’s judgment after a jury trial in an action brought under the Lanham Act against Red Bubble. Vacating the district court’s order granting in part and denying in part Redbubble’s motion for judgment as a matter of law, the panel held that a party is liable for contributory infringement when it continues to supply its product to one whom it knows or has reason to know is engaging in trademark infringement. A party meets this standard if it is willfully blind to infringement. Agreeing with other circuits, the panel held that contributory trademark liability requires the defendant to have knowledge of specific infringers or instances of infringement. The panel held that, in granting judgment as a matter of law to Redbubble on the claim for contributory trademark counterfeiting as to the Heart Mark, the district court further erred by failing to evaluate the evidence of likelihood of confusion under the correct legal standard. View "Y.Y.G.M. SA V. REDBUBBLE, INC." on Justia Law

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Plaintiff claimed Defendant infringed her copyrights in two charts depicting organizational change. The key question is whether the copyright in one of those charts was registered with the Copyright Office such that it will support a suit for copyright infringement.The Ninth Circuit reversed the district court’s partial grant of summary judgment in favor of Defendants, vacated a jury verdict, vacated an award of attorneys’ fees, and remanded an action alleging infringement of copyrights in two charts depicting organizational change. The court held that Plaintiff created a genuine issue of material fact on that question. The panel held that Plaintiff raised a genuine dispute about whether she registered the chart directly or whether she registered elements of that chart by later registering an “Aligning for Success” chart. Agreeing with other circuits on a matter of first impression, the panel held that by registering a derivative work, an author registers all of the material included in the derivative work, including that which previously appeared in an unregistered, original work created by the author. The panel, therefore, reversed the district court’s grant of summary judgment and also vacated the jury verdict because, as a result of the grant of summary judgment, the district court prevented Plaintiff from introducing any evidence and making any argument as to the Managinwg Complex Change chart at trial. The panel further held that the district court erred in instructing the jury that if it found that Defendant accessed and copied other work but did not copy the registered Aligning for Success chart, then Dfendant’s challenged work was an independent creation. View "ENTERPRISE MANAGEMENT LIMITED, INC., ET AL V. CONSTRUX SOFTWARE BUILDERS, INC., ET AL" on Justia Law

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Plaintiffs are photographers who sued Defendant Instagram for copyright infringement. Plaintiff alleged that Instagram violates their exclusive display right by permitting third-party sites to embed the photographers’ Instagram content. The district court held that Instagram could not be liable for secondary infringement because embedding a photo does not “display a copy” of the underlying images under Perfect 10.The Ninth Circuit affirmed the district court’s dismissal of an action brought by two photographers under the Copyright Act alleging that Instagram, LLC, violated their exclusive display right by permitting third-party sites to embed the photographers’ Instagram content. The panel held that, under Perfect 10 v. Amazon, 508 F.3d 1146 (9th Cir. 2007), Instagram could not be liable for secondary infringement because embedding a photo does not "display a copy" of the underlying image. Perfect 10 set forth the “Server Test,” which provides that a copy of a photographic image is not displayed when it is not fixed in a computer’s memory. The panel held that Perfect 10 did not restrict the application of the Server Test to a specific type of website, such as search engine. Arguments that Perfect10 is inconsistent with the Copyright Act are foreclosed by Perfect 10 outside of an en banc proceeding. And Perfect 10 was not effectively overturned by American Broadcasting Co. v. Aereo, 573 U.S. 431 (2014), which held that a streaming provider infringed broadcasters’ exclusive right to public performance. View "ALEXIS HUNLEY, ET AL V. INSTAGRAM, LLC" on Justia Law

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Thousands of copyrighted photos on Zillow’s site come from VHT, a professional real estate photography studio. Zillow used VHT’s photos on its real estate “Listing Platform,” which is the primary display of properties, and on a home design section of the website called “Digs.” Following summary judgment rulings, a jury trial, and various post-trial motions, the Ninth Circuit affirmed the district court in large part in prior appeal Zillow I. Essentially, the panel agreed with the district court that Zillow was not liable for direct, secondary, or contributory infringement.   Back on remand, the Ninth Circuit affirmed the district court’s decision in full. The panel held that the district court properly excused VHT’s failure to meet Section 411(a)’s non-jurisdictional exhaustion requirement because copyright registration was wholly collateral to whether Zillow infringed on VHT's copyright, dismissing VHT’s claim after the statute of limitations had already expired would cause irreparable harm, and excusal would not undermine the purpose of administrative exhaustion. The panel affirmed the district court’s ruling, on remand, that the 2,700 VHT photos remaining at issue were not a compilation, which would entitle VHT to only a single award of statutory damages under 17 U.S.C. Section 504(c), but rather, each individual photo constituted an infringement. The photos were part of VHT’s master photo database, and the VHT group registered its images as a “compilation.” But VHT also registered the underlying individual images and licensed these images on a per-image or per-property basis. The panel held that the photos had independent economic value separate from the database and did not qualify as “one work.” View "VHT, INC. V. ZILLOW GROUP, INC., ET AL" on Justia Law