Justia Intellectual Property Opinion SummariesArticles Posted in US Court of Appeals for the Sixth Circuit
RJ Control Consultants, Inc. v. Multiject, LLC
Rogers owned RJ Control. Elder owns Multiject, which engineers and sells accessories for plastic injection molding. In 2008, the parties entered into an oral agreement. Rogers developed a control system for injection molding. RJ updated that system design in 2013 (Design 3). The parties dispute the invoicing for Design 3. In 2014, Elder asked for copies of Design 3’s diagrams and software source code. Rogers disclosed that information. Days later, Elder indicated that Multiject would no longer need Rogers’s services and would instead use RSW for the assembly and wiring of the control systems. RSW's quote explicitly referenced Design 3’s software code and technical drawings without any changes. RSW apparently believed Multiject had permission to use the software and technical drawings.Almost two years later, Rogers obtained Copyright Certificates of Registration for the software code and the technical drawings. RJ filed suit. The district court granted the defendants summary judgment. The Sixth Circuit affirmed in part. The use of the Design 3 drawing to manufacture a control system is not an act of copyright infringement. Copyright protection extends to the drawing itself, 17 U.S.C. 106, but does not extend to the use of those drawings to create the described useful article. Patent law, with stricter standards requiring novelty, governs use protection. The court reversed with respect to the software code, finding that material questions of fact remain concerning whether the complex technology is properly protected under the Copyright Act. View "RJ Control Consultants, Inc. v. Multiject, LLC" on Justia Law
Hiller, LLC v. Success Group International Learning Alliance, LLC
In 1999, Hiller, the largest home-services company in Tennessee, became a paying “member” of Success Group, which offers management advice and customer-service training to home-services companies. Clockwork owned Success, which conducted training courses using manuals copyrighted by Clockwork. Hiller sent its employees to those courses; they had access to the Manuals. In 2014, Clockwork sold Success to Aquila. Clockwork retained ownership of the Manual copyrights but granted Aquila a perpetual license. In 2015, Hiller hired the Pike Group to create the Guide for use in place of the Manuals to train its technicians. Pike had no expertise in the home-services industry; to learn what Hiller wanted, Pike conducted a workshop attended by Hiller employees and representatives of Aquila and Success. The participants referred to at least one of the Manuals.The resulting Guide included some content taken directly from the Manuals. In 2016, Success conducted a class using a workbook that closely resembled the Guide. Hiller ended its Success membership, demanded that Success stop using the workbook, registered its copyright in the Guide, and sued Success for copyright infringement. Clockwork was allowed to intervene.A jury concluded that Hiller had a valid copyright in the Guide and that the Success workbook copied protected elements of the Guide. Clockwork’s request for declaratory relief invalidating Hiller’s copyright was rejected. The Third Circuit affirmed. The jury reasonably concluded that Hiller created enough original material to gain copyright protection and the jury was correctly instructed that the Guide’s incorporation of some Clockwork-copyrighted content did not invalidate Hiller’s copyright in the Guide’s original parts. View "Hiller, LLC v. Success Group International Learning Alliance, LLC" on Justia Law
Royal Truck & Trailer Sales & Service, Inc. v. Kraft
Royal employed Kraft and Matthews (Defendants) in its sales team. Royal’s employee handbook prohibited using company equipment for personal activities; unauthorized use, retention, or disclosure of any of Royal’s resources or property; and sending or posting trade secrets or proprietary information outside the organization. Royal’s “GPS Tracking Policy” stated, “[e]mployees may not disable or interfere with the GPS (or any other) functions on a company-issued cell phone,” nor may employees “remove any software, functions or apps.” The Defendants resigned to become employed with one of Royal’s competitors. Royal discovered that, shortly before his resignation, Kraft forwarded from his Royal email account to his personal one quotes for Royal customers and Royal paystubs; contacted a Royal customer through Royal’s email server to ask the customer to send “all the new vendor info” to Kraft’s personal email account; then deleted and reinstalled the operating system on his company-issued laptop, rendering its data unrecoverable. Matthews did much the same and announced her resignation on social media, sharing a link to the song, “You Can Take This Job and Shove It.”Royal sued, citing the Computer Fraud and Abuse Act (CFAA), 18 U.S.C. 1030, which refers to one who “intentionally accesses a computer without authorization or exceeds authorized access, and thereby obtains . . . information from any protected computer.” The district court concluded that the Defendants did not “exceed” their “authorized access,” under CFAA. The Sixth Circuit affirmed. While their conduct might violate company policy, state law, perhaps another federal law, the employees were authorized to access the information in question. View "Royal Truck & Trailer Sales & Service, Inc. v. Kraft" on Justia Law
ECIMOS, LLC v. Carrier Corp.
Carrier manufactures residential Heating, Ventilation, and Air Conditioning (HVAC) systems. ECIMOS produced the quality-control system that tested completed HVAC units at the end of Carrier’s assembly line. ECIMOS alleged that Carrier infringed on its copyright on its database-script source code—a part of ECIMOS’s software that stores test results. ECIMOS alleges that Carrier improperly used the database and copied certain aspects of the code to aid a third-party’s development of new testing software that Carrier now employs in its Collierville, Tennessee manufacturing facility.ECIMOS won a $7.5 million jury award. The court reduced Carrier’s total damages liability to $6,782,800; enjoined Carrier from using its new database, but stayed the injunction until Carrier could develop a new, non-infringing database subject to the supervision of a special master; and enjoined Carrier from disclosing ECIMOS’s trade secrets while holding that certain elements of ECIMOS’s system were not protectable as trade secrets (such as ECIMOS’s assembled hardware). The Sixth Circuit affirmed in part and reversed in part. There are sufficient reasons to conclude that Carrier did infringe on ECIMOS’s copyright, but Carrier’s liability to ECIMOS based on its copyright infringement and its breach of contract can total no more than $5,566,050. The district court did not err when it crafted its post-trial injunctions. View "ECIMOS, LLC v. Carrier Corp." on Justia Law
Enchant Christmas Light Maze & Market, Inc. v. Glowco LLC
Enchant produces a holiday-themed light show, which it exhibits across the U.S. and Canada. “Enchant Christmas,” features large three-dimensional sculptures fitted with lights, including sculptures of polar bears, deer, and ice crystals. Enchant obtained copyright registrations for several sculptures. Wallain worked with Enchant and had access to design files used to construct Enchant’s light sculptures. Wallain and Glowco discussed producing an Enchant Christmas light show in Nashville. The parties could not strike an agreement. Wallain and Glowco decided to pursue a Nashville light show without Enchant, purchased some sculptures from Enchant, and solicited manufacturers in China to produce additional light sculptures. Wallain sent two-dimensional images of Enchant’s sculptures, obtained from Enchant’s files, to solicit bids.Enchant sued, alleging copyright infringement, misappropriation of trade secrets, and violation of the Tennessee Personal and Commercial Computer Act. The district court concluded, after comparing the designs of the disputed sculptures, that any copyright-protected interest in Enchant’s sculptures was “very thin” and that numerous differences between the sculptures would be clear to an ordinary observer. The Sixth Circuit affirmed. Qualities of Enchant’s sculptures that are inherent in the chosen subject—animal sculpture—are not subject to copyright protection. To the extent that Enchant’s sculptures contained some original work warranting protection, Enchant had "thin copyright at best." Most of the similarities identified by Enchant are inherent to the subject matter, including animal features and naturally occurring poses. View "Enchant Christmas Light Maze & Market, Inc. v. Glowco LLC" on Justia Law
Everly v. Everly
In 1960, the Everly Brothers (Don and Phil) recorded, released, and copyrighted "Cathy’s Clown" and two other songs (the Compositions), granting the copyrights to Acuff-Rose. The original copyrights listed Phil and Don as authors; both received royalties. They were both credited as authors of Cathy’s Clown in 1961 and 1975 awards. They took joint credit for authoring the song in a 1972 television interview. In a 1980 “Release and Assignment,” Phil agreed to release to Don all of his rights to the Compositions, including “every claim of every nature by him as to the compositions of said songs.” Don subsequently received all royalty payments and public credit as the author; Acuff-Rose changed its business records to reflect Don as sole author. Licenses and credits for Cathy’s Clown and a 1988 copyright renewal listed Don as the only author. Both brothers nonetheless made public statements continuing to credit Phil as a co-author. In 2011, Don sought to execute his 17 U.S.C. 304(c) right to termination to regain copyright ownership from Acuff-Rose, claiming exclusive copyright ownership. Phil exercised termination rights as to other compositions, in 2007 and 2012, but never attempted to terminate any grant related to the 1960 Compositions.After Phil’s 2014 death, his children filed notices of termination as to the 1960 Grants, seeking to regain Phil’s rights to Cathy’s Clown. In 2016, they served a notice of termination as to Phil’s 1980 Assignment to Don. The district court granted Don summary judgment, finding that the claim of Phil’s co-authorship was barred by the statute of limitations. The Sixth Circuit reversed, finding a genuine factual dispute as to whether Don expressly repudiated Phil’s co-authorship, and thus triggered the statute of limitations, no later than 2011. View "Everly v. Everly" on Justia Law
Parker v. Winwood
In 1965, in Memphis, Tennessee, Plaintiffs wrote the song Ain’t That a Lot of Love and registered it with the U.S.Copyright Office. The following year, in London, England, brothers Mervyn and Steve Winwood, members of the Spencer Davis Group, wrote the song Gimme Some Lovin’, which was also registered with the Copyright Office. "Ain’t" fell flat. "Gimme" reached the second spot in the U.K. and the seventh spot in the U.S. Fifty-one years later, Plaintiffs sued the Winwoods for copyright infringement, 17 U.S.C. 504, claiming the Winwoods lifted the bass line from Ain’t That a Lot of Love. The defendants claimed no one in the Group had heard the song before writing Gimme Some Lovin’. Plaintiffs argued that the Group could have copied the bass line during a 21-day window between "Ain’t That’s" debut and the commercial release of Gimme. The court ruled that documents Plaintiffs sought to rely on to show direct evidence of copying were inadmissible under the rule against hearsay and that Mervyn did not have enough of a connection with Tennessee to exercise jurisdiction over him. The Sixth Circuit affirmed. Plaintiffs presented no admissible evidence that created a genuine issue of material fact over whether Winwood copied "Ain’t That." Exercising jurisdiction over Mervyn would conflict with due process because he has not purposely availed himself of the privilege of acting in Tennessee. View "Parker v. Winwood" on Justia Law
Smith v. Thomas
In 2012, Smith, a recording artist called Bigg Robb, wrote and recorded “Looking for a Country Girl” and registered his copyright. Thomas, called Bishop Bullwinkle, another Southern Soul musician, used the first 12 seconds of "Looking" as the beat for a new song, Hell 2 Da Naw Naw, without Smith’s permission or giving Smith credit. When the two were performing at the same venue, Smith, in his dressing room, “heard one of [his] songs playing” and rushed out to see Thomas performing Hell 2. Smith confronted Thomas, who admitted to sampling. As the two negotiated, Hell 2 went viral. Thomas uploaded a music video, which got millions of views, and articles were written about his “meteoric rise.” Eventually, Thomas stopped acknowledging Smith’s contribution. He publicly accused Smith of being a liar. Smith sued. Both parties represented themselves. Thomas did not appear at trial: he only filed a two-page answer to Smith’s complaint and two short conclusory letters. He ignored discovery requests. Smith gave a thorough presentation with supporting exhibits and played both songs. Smith explained that he had only a “guesstimation” of damages based on Hell 2’s YouTube views and Thomas’s public performances. The court awarded him 50% ownership rights in Hell 2 (and any derivatives) and enjoined Thomas from further infringement; found that Smith had not presented sufficient evidence to show actual damages but had “elected” statutory damages, 17 U.S.C. 504(c), and awarded Smith $30,000, substantially less than he requested. The Sixth Circuit affirmed. Smith made multiple statements that clearly indicated his intent to seek statutory damages. View "Smith v. Thomas" on Justia Law
AuSable River Trading Post v. Dovetail Solutions, Inc.
Every winter for about 60 years, Tawas, Michigan has been the home of the “Perchville” festival, including a polar bear swim and a fishing contest. The Chamber of Commerce organizes the event and registered the name Perchville as a trademark. While dues-paying members of the Chamber may use the Perchville mark, non-members must pay a ($750) licensing fee to use it. A local company, AuSable, wants to make Perchville-branded tee-shirts, and sued the Chamber to invalidate its mark. The district court declined. The Sixth Circuit affirmed. “Perchville” is a distinctive term eligible for protection under the Lanham Act, which protects “any word, name, symbol, or device, or any combination thereof” that a person uses “to identify and distinguish his or her goods” in the marketplace, 15 U.S.C. 1127. “No matter how you slice it, the term ‘Perchville’ is inherently distinctive. The name does not refer to a place. It serves only ‘to identify a particular’ event, namely the annual winter festival in Tawas. … The word almost certainly counts as fanciful, and at the very least is sufficiently suggestive to qualify as an inherently distinctive trademark.” View "AuSable River Trading Post v. Dovetail Solutions, Inc." on Justia Law
Sterling Jewelers, Inc. v. Artistry Ltd.
Artistry, a jewelry wholesaler, sells its products to retailers across the country. Sterling is the largest specialty jewelry retailer in the country. It operates in all 50 States in roughly 1,300 stores, including Kay Jewelers and Jared. Sterling began marketing a line of jewelry under the name “Artistry Diamond Collection.” Artistry accused Sterling of infringing its trademark. The district court granted Sterling summary judgment, concluding that its mark was not likely to confuse consumers in the distinct market in which it operated. The Sixth Circuit affirmed. The word “artistry,” like the word “artisan,” is not an innovation when it comes to craft goods and is not likely to distinguish one product from another. The evidence suggested that at least 23 other jewelry companies used the word in some way, which diminishes the likelihood that a consumer who comes across Artistry, Ltd.’s name would think of Kay’s Artistry Diamond Collection and become confused. The companies use the marks differently: one to brand products and the other to brand a company and the wholesale services it provides. The court also noted the distinct nature of the consumers targeted by each company’s set of products. View "Sterling Jewelers, Inc. v. Artistry Ltd." on Justia Law