Justia Intellectual Property Opinion Summaries

Warner filed suit claiming that AVELA infringed their trademarks and engaged in unfair competition by licensing iconic pictures and phrases from films. On appeal, AVELA challenges a permanent injunction prohibiting them from licensing images from the films Gone with the Wind and The Wizard of Oz, as well as the animated short films featuring cat-and-mouse duo Tom and Jerry. The court concluded that AVELA’s Seventh Amendment claim is not properly before the court and thus the court declined to consider it; the court rejected AVELA's alternative claim that the $2,570,000 statutory damages award is disproportionate to the offense, insufficiently reasoned, and in violation of this court’s ruling in the previous appeal; the doctrine of judicial admissions does not bar Warner’s trademark claims; likewise, judicial estoppel does not apply; Dastar Corp. v. Twentieth Century Fox Film Corp. does not bar Warner's trademark claims; AVELA has waived the functionality and fair use defenses; the likelihood of confusion does not always require a jury trial and, on the merits, the district court did not err by rendering summary judgment on the likelihood of confusion; the court rejected AVELA's challenges to the permanent injunction; and the district court’s order is not inconsistent with the court's ruling in the prior appeal. Accordingly, the court affirmed the judgment. View "Warner Bros. Entertainment v. X One X Productions" on Justia Law

This reverse-confusion trademark dispute involves Wreal and Amazon over the mark "FyreTV." Wreal describes its own FyreTV service as the “Netflix of Porn.” Amazon Fire TV is a hardware device used for streaming “mainstream” “general interest” video via Amazon’s own streaming service, “Instant Video,” or third-party streaming services such as Netflix. In this interlocutory appeal, Wreal challenges the district court's denial of a preliminary injunction. The court concluded that the district court did not abuse its discretion in determining that Wreal’s unexplained five month delay in seeking a preliminary injunction, by itself, fatally undermined any showing of irreparable injury. Because Wreal cannot establish reversible error with respect to the injury prong, the court need not consider whether the district court correctly analyzed the likelihood of success, the balance of harms, or the public interest. Accordingly, the court affirmed the judgment. View "Wreal, LLC v. Amazon.com, Inc." on Justia Law

Plaintiffs filed a copyright infringement suit against MP3tunes and its founder and CEO, alleging that two internet music services created by MP3tunes infringed their copyrights in thousands of sound recordings and musical compositions. The district court granted partial summary judgment to defendants, holding that MP3tunes had a reasonably implemented repeat infringer policy under section 512 of the Digital Millennium Copyright Act (DMCA), 17 U.S.C. 512. A jury returned a verdict in favor of plaintiffs, but the district court partially overturned the verdict. The court vacated the district court's grant of partial summary judgment to defendants based on its conclusion that MP3tunes qualified for safe harbor protection under the DMCA because the district court applied too narrow a definition of “repeat infringer”; reversed the district court's grant of judgment as a matter of law to defendants on claims that MP3tunes permitted infringement of plaintiffs’ copyrights in pre‐2007 MP3s and Beatles songs because there was sufficient evidence to allow a reasonable jury to conclude that MP3tunes had red‐flag knowledge of, or was willfully blind to, infringing activity involving those categories of protected material; remanded for further proceedings related to claims arising out of the district court's grant of partial summary judgment; and affirmed the judgment in all other respects. View "EMI Christian Music Group, Inc. v. MP3tunes, LLC" on Justia Law

In this copyright infringement suit, plaintiffs challenged the district court's determination that defendants’ verbatim use of a portion of Abbott and Costello’s iconic comedy routine, "Who’s on First?," in the recent Broadway play "Hand to God," qualified as a non‐infringing fair use. The court concluded that defendants’ entitlement to a fair use defense was not so clearly established on the face of the amended complaint and its incorporated exhibits as to support dismissal. In this case, defendants' verbatim use of the routine was not transformative, defendants failed persuasively to justify their use of the routine, defendants' use of some dozen of the routine’s variations of “who’s on first” was excessive in relation to any dramatic purpose, and plaintiffs alleged an active secondary market for the work, which was not considered by the district court. The court concluded, however, that the dismissal is warranted because plaintiffs failed to plausibly plead ownership of a valid copyright. The court found plaintiffs' efforts to do so on theories of assignment, work‐for‐hire, and merger all fail as a matter of law. Accordingly, the court affirmed the judgment. View "TCA Television Corp. v. McCollum" on Justia Law

Plaintiff, the widow of Louis K. Smith, who authored and copyrighted a book entitled "The Hardscrabble Zone," filed suit alleging direct and contributory copyright infringement by Barnes & Noble. Barnes & Noble, under license, uploads books and book samples to digital “lockers” that it maintains for its individual customers. When the license granted by Smith was terminated, Barnes & Noble did not delete a sample of Smith’s book. The court concluded that, because the agreement does not provide for the license in the sample to terminate after the sample has been distributed, plaintiff cannot sustain her burden to prove that providing cloud‐based access to validly obtained samples is beyond the scope of the license agreement. Therefore, the court concluded that the conduct at issue was authorized by the relevant contracts between the parties and affirmed the judgment. View "Smith v. Barnesandnoble.com, LLC" on Justia Law

FN filed a trademark infringement action against Clyde Armory over the use of the marks "SCAR" and "SCAR-Stock" in the firearms industry. On appeal, Clyde Armory challenges the district court's partial grant of summary judgment for FN, its grant of FN's motion to strike Clyde Armory’s jury demand, its denial of Clyde Armory’s motion to amend the proposed pretrial order, and its entry of judgment against Clyde Armory following a bench trial. The court rejected Clyde Armory's contention that the district court erred by: (1) finding that FN used SCAR as a mark in commerce before Clyde Armory began using SCAR-Stock; (2) finding that FN’s SCAR mark acquired distinctiveness through secondary meaning before Clyde Armory began using SCAR-Stock; and (3) finding that Clyde Armory used the SCAR-Stock mark in bad faith to take advantage of the popularity of FN’s SCAR mark, thus divesting it of any rights in the mark that it otherwise might have obtained. Accordingly, the court affirmed the district court on all issues raised on appeal. View "FN Herstal SA v. Clyde Armory Inc." on Justia Law

Plaintiff entered an original song and music video to a variety of companies affiliated with Sony Music Entertainment (Sony) as part of a songwriting contest sponsored by Sony. Plaintiff later sued Sony alleging contract and intellectual property claims. The district court entered an order compelling arbitration and dismissed Plaintiff’s case with prejudice, concluding that the claims were subject to mandatory arbitration under the Federal Arbitration Act and that Plaintiff failed to make a cognizable claim under Fed. R. Civ. P. 12(b)(6). Plaintiff appealed, arguing that the district court erred in ruling that he failed to allege sufficient facts to support his claims. The First Circuit affirmed, holding that because the district court’s rulings that Plaintiff’s claims were subject to mandatory arbitration provided an independent basis for dismissing his claims, the Court did not need to address Plaintiff’s challenge to the district court’s decision to dismiss his complaint on factual sufficiency grounds. View "Cortes-Ramos v. Sony Corp. of America" on Justia Law

After GlobeRanger, a software maker, obtained a $15 million judgment in a trade secret misappropriation trial against competitor Software AG, Software AG appealed. The court found that the trade secret claim is not preempted but that a dismissed conversion claim was preempted and supports federal jurisdiction. In this case, GlobeRanger’s trade secret misappropriation claim requires establishing an additional element than what is required to make out a copyright violation: that the protected information was taken via improper means or breach of a confidential relationship. Because the state tort provides substantially different protection than copyright law, it is not preempted. As the complaint alleged only conversion of intangible property for which there is equivalency between the rights protected under that state tort and federal copyright law, complete preemption converted the conversion claim into one brought under the Copyright Act, 17 U.S.C. 101 et seq., that supported federal question jurisdiction at the time of removal and supplemental jurisdiction after it was dismissed. On the merits, the court concluded that GlobeRanger’s evidence is sufficient to show that Software AG used the Navy Solution in developing its own product. Therefore, the court upheld the jury's finding of trade secret use. Finally, the court rejected Software AG's claims of error in regard to the damages award and affirmed the award. View "GlobeRanger Corp. v. Software AG" on Justia Law

EA, creator of The Sims, contracted with a production company called Lithomania to produce a USB flash drive shaped like a “PlumbBob,” a gem-shaped icon from the computer game, to promote a “Collector’s Edition” of The Sims. Lithomania in turn contracted with DT to produce a prototype of the PlumbBob-shaped flash drive. After DT settled breach of contract claims with Lithomania, DT sued EA under the federal Copyright Act, 17 U.S.C. 101 et seq., and the California Uniform Trade Secrets Act (CUTSA), Cal. Civ. Code 3426–3246.11. The district court granted summary judgment to EA. The court held that the district court erred by concluding as a matter of law that the flash drive was not copyrightable, and that there is a genuine issue of material fact as to whether DT’s cut-away design for removing the USB flash drive from the PlumbBob object is sufficiently non-functional and non-trivial to warrant copyright protection. In this case, a reasonable jury could decide these questions in either party’s favor. Therefore, the court reversed as to this claim. The court affirmed the district court's grant of summary judgment to EA as to the CUTSA claim and held that DT's design for the flash drive's removal from the PlumbBob object does not derive independent economic value from not being generally known to the public. The court rejected EA's cross appeal and held that the district court did not clearly err or otherwise abuse its discretion in denying attorneys’ fees for this claim. View "Direct Tech. v. Electronic Arts" on Justia Law

Plaintiff, the composer of a song called "Bright Red Chords," filed suit alleging that defendant, publicly known as Jessie J, and a team of high-profile songwriters led by Dr. Luke, stole a two-measure melody from Bright Red Chords. Plaintiff alleged that defendants used the melody in their hit song "Domino." The district court granted defendants' motion for summary judgment. The court concluded that plaintiff’s arguments in this case tell a story that, if adequately substantiated, might have survived summary judgment. The problem is that it was not supported by potentially admissible evidence. The court concluded that, at bottom, the record consists primarily of plaintiff's speculations of access unsupported by personal knowledge. The other evidence did not fill the breach. Accordingly, the court affirmed the judgment. View "Loomis v. Cornish" on Justia Law