Justia Intellectual Property Opinion Summaries
Articles Posted in US Court of Appeals for the Sixth Circuit
Libertarian National Committee, Inc. v. Saliba
In 2022, two top officers of the Libertarian Party of Michigan resigned, leading to a power struggle within the party. Andrew Chadderdon became the acting Chair, but his leadership was contested by the defendants, who then voted to remove him and elected themselves to committee positions. The Libertarian Party Judicial Committee later voided these elections, reinstating Chadderdon. The defendants, however, continued to use the Libertarian National Committee’s (LNC) trademark, claiming to be the rightful leaders of the Michigan affiliate.The United States District Court for the Eastern District of Michigan granted the LNC’s request for a preliminary injunction, barring the defendants from using the LNC’s trademark. The defendants appealed, arguing that the district court’s application of the Lanham Act to their noncommercial speech violated the First Amendment and that their use of the trademark was authorized and not likely to cause confusion.The United States Court of Appeals for the Sixth Circuit reviewed the case. The court found that the Lanham Act could apply to the defendants’ use of the LNC’s trademark because they used it as a source identifier for their political services, which falls within the scope of the Act. The court also determined that the defendants’ use of the trademark created a likelihood of confusion among potential voters, party members, and donors. However, the court found that the defendants’ use of the trademark for online solicitation, when accompanied by clear disclaimers, did not create a likelihood of confusion.The Sixth Circuit affirmed the preliminary injunction in part, except for the aspect concerning the defendants’ online solicitation with disclaimers, which it vacated. View "Libertarian National Committee, Inc. v. Saliba" on Justia Law
R.J. Control Consultants, Inc. v. Multiject, LLC
This case pertains to an alleged copyright infringement involving software code used in an industrial control system. The plaintiffs, RJ Control Consultants, Inc. and its sole shareholder, Paul Rogers, appealed the district court’s exclusion of their proposed expert and the granting of summary judgment to the defendants, Multiject, LLC; its sole owner, Jack Elder; and RSW Technologies, LLC. The U.S Court of Appeals for the Sixth Circuit held that the district court did not abuse its discretion in excluding the plaintiffs’ proposed expert or in granting summary judgment to the defendants. The plaintiffs had failed to properly disclose their expert as required and did not produce an expert report. Consequently, they could not offer expert evidence to rebut the defendants' evidence. Furthermore, they could not create a genuine dispute of fact about the protectability of the software code, a crucial factor in their copyright infringement claim. Therefore, the district court's judgment was affirmed. The court also vacated its prior decision in RJ Control Consultants, Inc. v. Multiject, LLC, 981 F.3d 446 (2020), due to lack of appellate jurisdiction at the time of that decision. View "R.J. Control Consultants, Inc. v. Multiject, LLC" on Justia Law
Premier Dealer Services, Inc. v. Allegiance Administrators, LLC
In a case before the United States Court of Appeals for the Sixth Circuit, Premier Dealer Services, a developer and administrator of automobile dealers’ aftermarket products, sued Allegiance Administrators for infringing its copyright. The issue stemmed from Premier's creation of a Lifetime Powertrain Loyalty Program, which included a loyalty certificate that set out the program's terms and conditions. Premier had registered this certificate for copyright protection. When Allegiance started working with a former Premier client, it used Premier’s Lifetime Powertrain Loyalty Program certificates in its own plan, with minor modifications in the contact information.In the lawsuit, the district court ruled that Allegiance had infringed Premier’s copyright, ordered Allegiance to give up any profits from using the certificates, and awarded Premier attorney’s fees. On appeal, the Sixth Circuit affirmed the decision of the lower court.The appellate court held that Premier's certificate was "original" and thus protected by copyright. The court clarified that originality in copyright law has a low threshold, requiring only that the author independently created a work with some minimal degree of creativity. The court rejected Allegiance's argument that the certificates were scenes a faire—stock or standard phrases that necessarily follow from a common theme or setting, which are not protectable by copyright. The court found that Allegiance had not provided sufficient evidence that industry standards or other external constraints dictated the content of the certificates.Regarding the disgorgement of profits, the court agreed with the lower court's calculations. It noted that Premier had successfully shown a reasonable relationship between Allegiance’s infringement and its gross revenues. The burden then shifted to Allegiance to demonstrate which part of its gross revenues did not result from the infringement, but Allegiance failed to fulfill this burden.Finally, the court upheld the award of attorney’s fees to Premier, finding that the lower court did not abuse its discretion in characterizing Allegiance's arguments as unreasonable and contrary to settled law. View "Premier Dealer Services, Inc. v. Allegiance Administrators, LLC" on Justia Law
Campfield v. Safelite Group, Inc.
In a dispute between Ultra Bond, Inc., and its owner, Richard Campfield (collectively "Ultra Bond"), and Safelite Group, Inc. and its affiliates (collectively "Safelite"), both parties operate in the vehicle glass repair and replacement industry. Ultra Bond alleges that Safelite violated the Lanham Act by falsely advertising that windshield cracks longer than six inches could not be safely repaired and instead required replacement of the entire windshield. Safelite counterclaims that Ultra Bond stole trade secrets from Safelite in violation of state and federal law.The United States Court of Appeals for the Sixth Circuit ruled that the district court was incorrect to grant summary judgment to Safelite on Ultra Bond’s Lanham Act claim. The court held that there was sufficient evidence to suggest that Safelite's allegedly false statements may have caused economic injury to Ultra Bond, and this issue should go to a jury.The court also affirmed the district court's decision that Safelite's claims for conversion, civil conspiracy, and tortious interference with contract were preempted by the Ohio Uniform Trade Secrets Act (OUTSA). However, the court reversed the district court's grant of summary judgment to Ultra Bond on Safelite’s claim under OUTSA, ruling that Safelite's claim was not time-barred and should be evaluated further in the lower court.Finally, the court affirmed the district court's grant of summary judgment to Ultra Bond on Safelite's unfair competition claim, finding that Safelite hadn't provided enough evidence to support its claim that Ultra Bond's statements were false or that they had led to a diversion of customers from Safelite to Ultra Bond. The case was remanded for further proceedings. View "Campfield v. Safelite Group, Inc." on Justia Law
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