Justia Intellectual Property Opinion SummariesArticles Posted in US Court of Appeals for the Sixth Circuit
Bliss Collection, LLC v. Latham Companies, LLC
In 1999, Latham, McLean, and Vernooy formed Bliss to sell children’s clothing under the name “bella bliss.” In 2003, Shannon left Bliss and started Latham to sell her own children’s clothing under the name “little english.” Bliss’s logo is a lowercase “b” drawn out as if stitched in thread. Bliss has registered trademarks for this logo. Bliss has several designs that it claims as signature looks of the bella bliss brand that have “become famous and widely known and recognized as symbols of unique and high-quality garments.” There has been previous litigation between the parties.In 2020, Bliss filed federal claims for copyright, trademark, and trade dress infringement; false designation of origin and misappropriation of source; and unfair competition. The district court dismissed Bliss’s claims and granted Latham attorney’s fees for defending the copyright claim but found that Bliss filed its action in good faith and that the trademark and trade dress claims were not so “exceptionally meritless” that Latham merited a rare attorney’s fees award under 15 U.S.C. 1117. The Sixth Circuit affirmed in part. Bliss stated claims for federal and state trademark infringement but has not stated a claim for trade dress infringement. The district court did not err in denying attorney’s fees to Latham for defending the trademark and trade dress infringement claims. View "Bliss Collection, LLC v. Latham Companies, LLC" on Justia Law
La Bamba Licensing, LLC v. La Bamba Authentic Mex. Cuisine, Inc.
La Bamba Licensing operates Mexican restaurants in the Midwest under the name “La Bamba.” In 1998, La Bamba registered “LA BAMBA” as a trademark for restaurant services and for various food items. Nearly two decades later, La Bamba Authentic Mexican Cuisine opened a Mexican restaurant under the name “La Bamba Authentic Mexican Cuisine” with one location in Lebanon, Kentucky—about 65 miles from one of La Bamba’s restaurants in Louisville. In May 2016, La Bamba sent Cuisine a cease-and-desist letter, citing La Bamba’s federal trademark registrations. La Bamba subsequently sued, alleging trademark infringement and unfair competition under the Lanham Act and Kentucky common law. In October 2017, Cuisine changed the name of its restaurant to “La Villa Rica Authentic Mexican Cuisine, Inc.”The district court granted La Bamba summary judgment and awarded La Bamba $50,741.76 ($22,907.26 in profits; $27,309.50 for attorneys’ fees; and $525.00 for court costs. The Sixth Circuit affirmed, Under the Lanham Act, a plaintiff who succeeds on an infringement claim “shall be entitled” subject to equitable principles, to recover a defendant’s profits, any damages sustained by the plaintiff, and the costs of the action, 15 U.S.C. 1117(a). The district court did not abuse its discretion in considering the relevant factors and making the awards. View "La Bamba Licensing, LLC v. La Bamba Authentic Mex. Cuisine, Inc." on Justia Law
Novus Group, LLC v. Prudential Financial, Inc.
Columbus-based financial advisors developed a financial product seemingly unique to the annuities market: the Transitions Beneficiary Income Rider, which would guarantee that, following a life insurance policyholder’s death, an insurance company would pay death-benefit proceeds to beneficiaries throughout their lifetimes. They founded Novus to launch the product. Novus contracted with Genesis and Annexus, financial product developers, to handle the eventual pitch to Novus’s target customer, Nationwide. Each agreement contained a confidentiality provision. Nationwide would not sign a nondisclosure agreement (NDA) and cautioned Novus not to disclose any confidential information about the Rider. An Annexus executive shared the Rider concept by email with Nationwide VP Morrone. Nationwide chose not to pursue the concept. After Novus’s unsuccessful pitch, Branch, Morrone’s supervisor, left Nationwide to join its competitor, Prudential. Branch convinced Ferris, also in Branch’s chain-of-command, and who had allegedly attended the in-person pitch, to leave Nationwide for Prudential. Prudential subsequently launched Legacy “eerily similar to” Rider.In Novus’s suit, alleging that Prudential engaged in trade secrets misappropriation, in violation of Ohio’s Uniform Trade Secrets Act, the district court granted summary judgment to Prudential. The Sixth Circuit affirmed. There is no reference to a confidential relationship through which Prudential acquired information about the Rider concept. View "Novus Group, LLC v. Prudential Financial, Inc." on Justia Law
DayCab Co, Inc. v. Prairie Technology, LLC
DayCab designs, manufactures, and sells conversion kits that convert a sleeper tractor cab into a tractor that does not have a sleeper unit (a daycab). DayCab’s founder, Wagers, started his conversion kit business in 1997 and created the first Peterbilt extended-cab conversion kits on the market, the “Fat Albert” models. Wagers stated that he “carefully selected” the “angles, curves, tapers, lines, profile and appearance” of the DayCab conversion kit “with the aim of making a very distinctive and attractive kit,” but “any number of other angles, curves, tapers, lines, profile and appearance” would have also served as a Peterbilt conversion product.Osman began making conversion kits in 1998 and obtained a utility patent for a panel used to convert a sleeper truck cab into a day cab. Each kit is manufactured and sold with an identification card with Osman’s company’s logo embedded in the fiberglass. Those companies named their conversion-kit products: “Cousin Albert,” “Uncle Albert,” and “Fat Boy.”DayCab sued, asserting claims under the Lanham Act, 15 U.S.C. 1125(a), for trade dress infringement. The district court entered summary judgment for the defendants. The Sixth Circuit reversed. Genuine issues of material fact remain regarding the non-functionality element of DayCab’s trade dress claim as well as on the elements of secondary meaning and the likelihood of confusion. View "DayCab Co, Inc. v. Prairie Technology, LLC" on Justia Law
Garza v. Everly
The Everly Brothers (Phil and Don) are known for many musical hits, including Cathy’s Clown, recorded, released, and copyrighted in 1960. The copyrights listed both brothers as authors; both were credited as co-authors and received royalties. In 1980, Phil signed notarized documents titled “Release and Assignment,” related to Cathy’s Clown and other works: “Phil Everly desires to release, and transfer, to the said Don Everly all of his rights, interests and claim in and to [‘Cathy’s Clown’], including rights to royalties and his claim as co-composer. In 2017, Don sued Phil’s estate for a declaratory judgment that Don was the sole author of Cathy’s Clown. There was contradictory evidence of Phil’s factual authorship, particularly a 1984 television interview.The district court found that Don repudiated Phil’s authorship of Cathy’s Clown, which triggered a three-year window for Phil to make an authorship claim under the Copyright Act. Phil did not do so. The district court rejected Phil’s estate’s argument that the three-year limitations period should not apply to the defense that Phil is a co-author. The Sixth Circuit affirmed. Don’s estate may rely on the statute of limitations. The district court did not clearly err in finding that Phil failed to exercise his rights after Don repudiated his authorship. View "Garza v. Everly" on Justia Law
Caudill Seed & Warehouse Co. Inc. v. Jarrow Formulas, Inc.
Caudill's subsidiary develops nutritional supplements. Jarrow, a dietary-supplement company, solicited Ashurst, Caudill’s Director of Research, who had extensively researched the development of broccoli-seed derivatives at issue. Ashurst had signed Non-Disclosure, Non-Competition, and Secrecy Agreements, and annually signed Caudill’s employee handbook, which barred him from disclosing Caudill’s trade secrets or other confidential information. In April 2011, Ashurst, still a Caudill employee, emailed Jarrow confidential Caudill documents. Days later, Jarrow requested a file of the pertinent data. Ashurst sent a physical disc. On May 1, Ashurst began to work for Jarrow. Ashurst then submitted his resignation to Caudill. Ashurst’s Agreement with Jarrow indicated that Jarrow hired him to mimic his work for Caudill, Ashurst proposed that Jarrow adopt the process that Caudill used to manufacture the raw materials for its BroccoMax supplement. Jarrow brought an activated broccoli product into commercial production four months after hiring Ashurst. From 2012-2019, Jarrow earned $7.5 million in sales of their BroccoMax-type product.In a suit under the Kentucky Uniform Trade Secrets Act, the Sixth Circuit affirmed a judgment of $2,427,605 in damages awarded by the jury, $1,000,000 in exemplary damages, $3,254,303.50 in attorney fees, and $69,871.82 in costs against Jarrow. The court rejected arguments that Caudill failed to define one of its Trade Secrets adequately, failed to show that Jarrow acquired that Trade Secret; and did not introduce sufficient evidence attributing its damages to that misappropriation, as well as challenges to the awards of damages. View "Caudill Seed & Warehouse Co. Inc. v. Jarrow Formulas, Inc." on Justia Law
Joe Hand Promotions, Inc. v. Griffith
A world-famous boxer and a famous MMA fighter faced one another in a legendary fight, produced by Showtime, which allowed individuals to live-stream the fight from Showtime’s website for $99.99. Showtime granted Mayweather the exclusive right to exhibit and distribute, and authorize the exhibition and distribution of, the fight. Mayweather enlisted JHP to issue commercial licenses. JHP sold commercial licenses to broadcast the event at bars and restaurants and collected fees, ranging from $3,700-$15,700. The fight was not registered as a copyrighted work when it first aired on August 26, 2017. Two months later, Showtime applied to register its copyright, as the sole author and claimant. Showtime later signed the Copyright Agreement, giving JHP the exclusive right to distribute and publicly perform the fight live and the exclusive right to sue anyone who live-streamed the fight without paying the licensing fee. JHP sued several restaurants and bars that aired the fight without paying.In an action for copyright infringement, 17 U.S.C. 106, 501, the district court granted the defendants summary judgment, finding that JHP did not own the copyright to the fight on the day it aired and that the “retroactive transfer" was ineffective. The Sixth Circuit reversed. The Copyright Agreement merely codified earlier transfers in the wake of the post hoc registration, there is no retroactivity issue. JHP owned the exclusive right to distribute and publicly display the fight on the day it aired. View "Joe Hand Promotions, Inc. v. Griffith" on Justia Law
ACT, Inc. v. Worldwide Interactive Network, Inc.
ACT publishes “WorkKeys”—“a system of workforce-development assessments that measure skills affecting job performance” and “Skill Definitions,” descriptions of the skills tested by each assessment. ACT collaborated with WIN to promulgate those assessments, from 1997-2011. The contractual relationship ended in 2011. WIN developed and promoted its own career-readiness-assessment materials. In 2017, ACT contracted with the South Carolina Department of Education and Workforce to provide its WorkKeys assessments to state employers. The state later solicited competing bids for new assessments, ultimately awarding the contract to WIN. WIN’s “Learning Objectives” for Applied Mathematics, Locating Information, and Reading for Information assessments were virtually indistinguishable from ACT’s Skill Definitions. ACT sued.The district court granted ACT partial summary judgment on copyright claims. When the COVID-19 pandemic caused prolonged delays in the litigation, WIN enlisted an education consultant to revise its product. The court ordered ACT to amend its complaint to include allegations about the revised Learning Objectives. WIN then unsuccessfully tried to assert a new defense: derivative sovereign immunity. The district court entered a preliminary injunction, restraining WIN from knowingly infringing ACT’s copyrights in its Skill Definitions, 17 U.S.C. 106, barring WIN from distributing the original and revised Learning Objectives and WIN’s corresponding assessments. The Sixth Circuit affirmed the imposition (and scope) of that preliminary injunction and the rejection, as untimely, of WIN’s argument that because WIN designed the Learning Objectives to bid on state contracts, it was entitled to assert state sovereign immunity. View "ACT, Inc. v. Worldwide Interactive Network, Inc." on Justia Law
Max Rack, Inc. v. Core Health & Fitness, LLC
Skilken, the owner of Max Rack, Inc., invented a piece of gym equipment that he named the “Max Rack.” For years, his company sold Max Racks through a licensing agreement with Core. When Max Rack’s last patent expired, Core decided to sell an identical machine under a new name, “Freedom Rack.” Max Rack alleged that Core continued to sell “Max Racks” without authorization, and attempted to sell Freedom Racks by free-riding off the “Max Rack” name, Lanham Act, 15 U.S.C. 1114(1), 1117(a), 1125(a)(1)(A). A jury awarded Max Rack $1 million in damages and $250,000 in Core’s profits. The district court doubled the profits award to $500,000, and granted Max Rack attorney’s fees but overturned Max Rack’s damages award.The Sixth Circuit affirmed the $250,000 profits award as supported by sufficient evidence and the court’s rejection of the $1 million damages award, reversing the court’s decision to double the profits award and its decision to grant Max Rack attorney’s fees. This case does not qualify as “exceptional” and Core did not litigate in an “unreasonable manner.” Core’s unauthorized sales ended before trial. View "Max Rack, Inc. v. Core Health & Fitness, LLC" on Justia Law
NOCO Co. v. OJ Commerce, LLC
NOCO manufactures and sells battery chargers and related products. Although it sells these products itself, NOCO also authorizes resellers if they sign an agreement. NOCO discovered that OJC was selling NOCO’s products on Amazon without authorization. NOCO complained to Amazon that OJC was selling NOCO’s products in violation of Amazon’s policy. Around the same time, another company (Emson) also complained to Amazon about OJC. Amazon asked OJC for proof that it was complying with its policy concerning intellectual property rights. OJC did not provide adequate documents. Amazon temporarily deactivated OJC’s account.OJC claimed that NOCO submitted false complaints, and sued for defamation, tortious interference with a business relationship, and violation of the Ohio Deceptive Trade Practices Act. The Sixth Circuit affirmed the summary judgment rejection of OJC’s claims. To succeed on those claims, OJC must establish that NOCO was the proximate cause of its injury. It cannot do this because three intervening causes broke the causal chain, relieving NOCO of any liability: Emson’s complaint, Amazon’s independent investigation and decision, and OJC’s opportunity to prevent the harm to itself. View "NOCO Co. v. OJ Commerce, LLC" on Justia Law