Justia Intellectual Property Opinion SummariesArticles Posted in US Court of Appeals for the Sixth Circuit
McKeon Products, Inc. v. Howard S. Leight & Associates, Inc.
McKeon has sold “MACK’S” earplugs to retail consumers since the 1960s. In the 1980s, Honeywell's predecessor began marketing and selling MAX-brand earplugs to distributors. The brand names are phonetically identical. In 1995, McKeon sued. The parties entered a settlement agreement that the district court approved by consent decree. To prevent customer confusion, Honeywell agreed not to sell its MAX-brand earplugs into the “Retail Market” but could continue to sell its earplugs in “the Industrial Safety Market and elsewhere." The agreement and the consent decree never contemplated the internet. In 2017, McKeon complained about sales of MAX-brand earplugs on Amazon and other retail websites.The district court ruled in favor of McKeon. The Sixth Circuit affirmed and remanded. Laches is available to Honeywell as an affirmative defense but does not apply to these facts. Parties subject to consent decrees cannot scale their prohibited conduct over time, using minor undetected violations to justify later larger infringements. Honeywell did not establish that McKeon should have discovered the breaching conduct before Honeywell drastically increased online sales. McKeon’s interpretation of the consent decree is the better reading. Concluding that Amazon is a “retail establishment” makes sense given the parties’ intent. View "McKeon Products, Inc. v. Howard S. Leight & Associates, Inc." on Justia Law
AWGI, LLC v. Atlas Trucking Co., LLC
Atlas Movers federally registered the “Atlas” mark for “transportation of household goods of others,” first using “Atlas” in 1948 when it formed Atlas Van Lines, providing transportation and logistics services, primarily moving household goods. Since 1970, its division, STG, has provided logistics services for non-household goods shipments. Atlas Movers eventually focused more on logistics, forming Atlas Relocation Services in 1995. In 2007, Atlas Movers began marketing its service as “Atlas Logistics.” and renamed its logistics company Atlas Logistics, which can ship, or arrange the shipment of, any commodity.Eaton manufactures and distributes steel. Eaton created Atlas Trucking in 1999, then expanded to ship goods other than steel and metal for companies in addition to its own. It developed Atlas Logistics in 2003 as an adjunct to Atlas Trucking. Eaton knew of Atlas Van Lines. Atlas Movers sued in 2017 for infringement. Eaton answered and counterclaimed that it owned the Atlas Logistics mark.The Sixth Circuit affirmed a judgment in favor of Atlas Movers, upholding findings that Atlas Movers marketed “Atlas” to an extent that the public recognized it, that the parties’ services are related because they engage in at least some of the same transportation services, that the marks were functionally identical, and that there was actual confusion. View "AWGI, LLC v. Atlas Trucking Co., LLC" on Justia Law
The Ohio State University v. Redbubble, Inc.
Redbubble operates a global online marketplace. Around 600,000 independent artists, not employed by Redbubble, upload images onto Redbubble’s interface. Consumers scroll through those images and order customized items. Once a consumer places an order, Redbubble notifies the artist and arranges the manufacturing and shipping of the product with independent third parties. Redbubble never takes title to any product shown on its website and does not design, manufacture, or handle these products. The shipped packages bear Redbubble's logo. Redbubble handles customer service, including returns. Redbubble markets goods listed on its website as Redbubble products; for instance, it provides instructions on how to care for “Redbubble garments.” Customers often receive goods from Redbubble’s marketplace in Redbubble packaging.Some of Redbubble’s artists uploaded trademark-infringing images that appeared on Redbubble’s website; consumers paid Redbubble to receive products bearing images trademarked by OSU. Redbubble’s user agreement states that trademark holders, and not Redbubble, bear the burden of monitoring and redressing trademark violations. Redbubble did not remove the offending products from its website. OSU sued, alleging trademark infringement, counterfeiting, and unfair competition under the Lanham Act, and Ohio’s right-of-publicity law. The district court granted Redbubble summary judgment. The Sixth Circuit reversed. Redbubble’s marketplace involves creating Redbubble products and garments that would not have existed but for Redbubble’s enterprise. The district court erred by entering summary judgment under an overly narrow reading of the Lanham Act. View "The Ohio State University v. Redbubble, Inc." on Justia Law
OverDrive Inc. v. Open E-Book Forum
OverDrive, a digital reading platform, belonged to International Digital Publishing Forum, a trade association dedicated to the development of electronic publishing standards. International’s members developed EPUB, the leading eBook format. International's intellectual-property policy, approved by all its members, states that International’s members retain any copyrights in their independent contributions to EPUB but grants International a license to “reproduce, adapt, distribute, perform, display, and create derivative works” of any copyrighted contributions to EPUB. International may sublicense others to do the same. By a vote of 88% to 12%, International agreed to transfer its assets to the Consortium and to grant the Consortium a license to use International's intellectual property to carry out Internationa;'s digital publishing activities. International would commence dissolution, after which its intellectual property rights would be owned by the Consortium. The Consortium began developing improvements to EPUB. A second agreement affirmed the first, explaining that the license included International’s sub-licensable rights to any copyrights its members retained.OverDrive sought a declaratory judgment that International had violated, and would violate in the future, its copyrights in EPUB. The district court granted International summary judgment. The Sixth Circuit affirmed. International validly licensed its intellectual property and it would be premature to resolve any claim about future transfers. Under the Copyright Act, 17 U.S.C. 106, OverDrive granted International the right to use any copyrights OverDrive had in EPUB. International an unrestricted right to grant sublicenses with respect to those copyrights. View "OverDrive Inc. v. Open E-Book Forum" on Justia Law
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