Justia Intellectual Property Opinion Summaries

In the 1980s, a wilderness guide, Maine developed and bottled an all-natural bug repellant under the mark “BUG OFF.” She did not conduct trademark searches. Maine sold BUG OFF at craft fairs, by catalog and website, and at trade shows. From 1992-1998, she took orders for BUG OFF from every state. In 1994, Smith & Hawken began carrying BUG OFF in its catalog and stores. In 1998 Chervitz, who later assigned to Kaz, filed an application for the BUG OFF trademark, which was registered in 2000. In 1999, Kaz sold millions of BUG OFF wristbands. In 2002, Maine sought to register the BUG OFF mark. The PTO refused, based on the Chervitz-Kaz registrations; Maine did not then assert pre-dating rights. In 2003, S.C. Johnson filed an intent-to-use application for the BUG OFF mark. Maine’s attorney communicated that she had used the mark since at least 1992. The PTO refused S.C. Johnson’s application. In 2007 Kaz assigned its rights to S.C. Johnson. In 2010, S.C. Johnson began using the mark. In 2011 Maine sold to Nutraceutical; S.C. Johnson’s application advanced to registration. S.C. Johnson sued Nutraceutical. Afte the bench trial, S.C. Johnson asserted that Nutraceutical had not shown continuous use after 2012. The court found that while Nutraceutical had proved that it was the senior user and was using the mark nationally from 1995-1998 and continued sales through 2012, it did “not demonstrate continued sales after 2012, which constitutes non-use for more than one year.” The Seventh Circuit reversed. The district court abused its discretion in considering the post-trial argument. Trademark ownership is not acquired by registration, but from prior appropriation and actual use in the market. View "S.C. Johnson & Son, Inc. v. Nutraceutical Corp." on Justia Law

Leonard takes photographs of stem cells using electron microscopes. Only a few photographers engage in this highly technical type of photography. The images first appear in black and white, and Leonard uses his “artistic judgment” to enhance the photos in color. Leonard created the images at issue in the 1990s but did not register them with the Copyright Office until 2007, when he planned to file suit. Stemtech “formulates” and sells nutritional supplement products through thousands of distributors. In 2006, Stemtech contacted Leonard about using Image for its internal magazine and its website. Stemtech declined to license the image for website use because the price was too high but used the image twice in its magazine. Leonard billed Stemtech $950 but was only paid $500. Stemtech then used the images without a license in its other promotional materials, including websites, In 2007, Leonard discovered his images on numerous Stemtech-affiliated websites. He took screenshots of and archived the webpages and retained copies of emails he sent to the contacts on various sites. When Stemtech refused Leonard’s requests, Leonard filed suit for copyright infringement. A jury returned a $1.6 million verdict in Leonard’s favor. The Third Circuit affirmed, rejecting challenges to various rulings, but vacated the district court’s denial of Leonard’s request for pre-judgment interest. View "Leonard v. Stemtech Int'l, Inc" on Justia Law

Plaintiff suit against Live Nation asserting claims for copyright infringement under 17 U.S.C. 101 et seq., and removal of copyright management information (CMI) under 17 U.S.C. 1202. Live Nation stipulated in the district court that it infringed plaintiff's copyrights when it used his photos of Run-DMC without his authorization on t-shirts and a calendar. The district court granted summary judgment for Live Nation on plaintiff's claims. The court concluded that, drawing all inferences in plaintiff’s favor, the evidence in the record gave rise to a triable issue of fact as to Live Nation’s willfulness. Therefore, the court reversed the grant of summary judgment as to this issue. The court also reversed the district court's dismissal of plaintiff's claim under section 1202(b) of the Digital Millennium Copyright Act, 17 U.S.C. 1202(b). In this case, the court concluded that the record creates a triable issue of fact as to whether Live Nation distributed plaintiff's photographs with the requisite knowledge. How Live Nation came to possess plaintiff's photographs - and thus whether it had knowledge that the CMI had been removed - is a fact “particularly within” Live Nation’s knowledge. It would be unfair to burden plaintiff at the summary judgment stage with proving that knowledge with greater specificity than he did. Finally, the court held that the provision, in Section 504(c)(1) of the Copyright Act, of separate statutory damage awards for the infringement of each work “for which any two or more infringers are liable jointly and severally” applies only to parties who have been determined jointly and severally liable in the course of the liability determinations in the case for the infringements adjudicated in the action. Because plaintiff did not join any of his alleged downstream infringers as defendants in this case, the district court correctly held that he was limited to one award per work infringed by Live Nation. View "Friedman v. Live Nation Merchandise" on Justia Law

SnoWizard and Southern Snow, sellers of flavored shaved ice confections, have been involved in litigation for the past ten years in state court, federal district court, and before the Patent and Trademark Office in the Federal Circuit. In this appeal, Southern Snow challenges the district court’s dismissal of its claims under Rule 12(b)(6) and SnoWizard cross-appeals the district court’s denial of its motions for sanctions against Southern Snow. Because the claims against SnoWizard are precluded, and because the claims against Morris and Tolar fail to satisfy the requirements for conspiracy, obstruction of justice, or malicious prosecution, the court affirmed the dismissal of all the claims. Given that Southern Snow advanced arguments that, although creative, were not “ridiculous,” the court affirmed the district court’s denials of sanctions. View "Snow Ingredients, Inc. v. SnoWizard, Inc." on Justia Law

EIP filed suit against PI, alleging claims related to the PAKSTER mark under the Lanham Act, 15 U.S.C. 119, 1120, and 1125(a). PI filed counterclaims for trademark infringement and unfair competition under the Lanham Act. The district court then issued findings of fact and conclusions of law. As relevant to this appeal, the district court cancelled PI’s two federal trademark registrations and found that EIP was the prevailing party. PI now appeals the grant of attorney's fees. The court concluded that the district court lacked jurisdiction to cancel the federal registrations of PI’s trademarks, and vacated the cancellation. Having obtained no damages, injunction, or cancellation from its section 38 claim, there is no basis for concluding that EIP was the prevailing party on that claim, which EIP agrees is a precondition to receiving attorney’s fees. As a result, the court need not reach PI’s argument that attorney’s fees are not available under section 38 of the Lanham Act. The court also concluded that, because EIP was not the “prevailing party” with respect to PI’s trademark infringement and unfair competition counterclaims, it is not entitled to attorney’s fees under section 35 of the Lanham Act. Finally, the court remanded the case for further consideration of the issue of whether EIP should obtain attorney's fees because it successfully obtained a declaration that it owned the PAKSTER trademark. Accordingly, the court vacated in part, reversed in part, and remanded. View "East Iowa Plastics, Inc. v. PI, Inc." on Justia Law

In 1984, Jesus Muhammad‐Ali painted a portrait of the leader of the Nation of Islam, Louis Farrakhan. Ali later testified that his agreement with Farrakhan included only the portrait, not lithographs, and that Farrakhan never asked him to produce lithographs. In 2013, Ali sued Final Call, a newspaper that describes itself as the “propagation arm of the Nation of Islam,” for copyright infringement. Final Call admittedly had sold 115 copies of a lithograph of Ali’s Farrakhan portrait, but claimed it had authority to do so. The Seventh Circuit reversed the district court’s judgment in favor of Final Call. The law places the burden of proof on the party asserting license or authorization. Ali proved all he was required to prove, a prima facie case of infringement. A plaintiff is not required to prove that the defendant’s copying was unauthorized in order to state a prima facie case of copyright infringement. View "Ali v. Final Call, Inc." on Justia Law

Plaintiff, a composer and music producer, filed a copyright suit against Sony, Razor Sharp Records, and Dennis Coles, a/k/a Ghostface Killah, to enforce plaintiff's claimed ownership rights in the "Iron Man" theme song. The district court determined that plaintiff failed to present sufficient evidence to rebut the presumption that Marvel was, in fact, the copyright owner. Therefore, the district court dismissed plaintiff's New York common law claims for copyright infringement, unfair competition, and misappropriation on the basis that those claims were preempted by the Copyright Act, 17 U.S.C. 101 et seq. The court held that, although the district court properly determined that defendants had standing to raise a “work for hire” defense to plaintiff’s copyright infringement claim, the district court erred in concluding that plaintiff failed to raise issues of material fact with respect to his ownership of the copyright; the district court properly dismissed plaintiff’s state law claims as preempted by the Copyright Act; the court vacated the district court’s summary judgment ruling with respect to plaintiff’s Copyright Act claim and remanded for further proceedings; and the court affirmed the district court's dismissal of plaintiff's state law claims. View "Urbont v. Sony Music Entm't" on Justia Law

FIU filed suit against FNU for infringement of FIU’s trademarks, asserting six claims for relief: (1) federal trademark infringement under the Lanham Act, 15 U.S.C. 1114; (2) federal unfair competition, also under the Lanham Act, 15 U.S.C. 1125(a); (3) Florida trademark dilution and injury to business reputation, Fla. Stat. 495.151; (4) Florida trademark infringement, Fla. Stat. 495.131; (5) Florida common law trademark infringement and unfair competition; and (6) cancellation of State of Florida trademark registration, Fla. Stat. 495.101. The district court entered final judgment in favor of FNU and FIU timely appealed. The court concluded that it was more accurate and better to view the district court’s decision in this case as the entry of judgment after conducting a bench trial. The court affirmed the district court's denial of FIU’s federal trademark claim where the district court reasonably concluded that FNU’s adoption of its new name and acronym did not and would not likely cause consumer confusion; FIU's federal unfair competition claim and false association theory of liability fail; the court affirmed the district court’s denial of its dilution claim for the same reasons as the likelihood of confusion claim; and the court affirmed the district court's denial of the Florida trademark infringement, common law infringement, and unfair competition claim as well. View "FIU v. FNU" on Justia Law

Illumina’s 794 patent, covering DNA assay optimization techniques, issued in 2011. In 2010-2011, Ariosa provided Illumina, as a prospective investor, with information on its efforts to develop a noninvasive prenatal diagnostic test. Seven months after the 794 patent issued, Illumina agreed to supply consumables, hardware, and software to Ariosa for three years, providing Ariosa with a non-exclusive license to Illumina’s “Core IP Rights in Goods,” specifically excluding “Secondary IP Rights … that pertain to the Goods (and use thereof) only with regard to particular field(s) or application(s), and are not common to the Goods in all applications and fields.” The agreement’s arbitration clause excluded “disputes relating to issues of scope, infringement, validity and/or enforceability of any Intellectual Property Rights.” Illumina never indicated that Ariosa needed to license the 794 patent . Ariosa launched the Harmony Prenatal Test, using materials supplied by Illumina. Verinata and Stanford sued, alleging that the Test infringed other patents. Illumina later acquired Verinata and accused Ariosa of breaching the supply agreement by failing to license Secondary Rights. Ariosa filed counterclaims, asserting invalidity and non-infringement; breach of contract; and breach of the covenant of good faith and fair dealing. The district court concluded that the counterclaims were not subject to compulsory arbitration. The Federal Circuit affirmed. The counterclaims depend on the scope determination of licensed intellectual property rights, which is expressly exempt from arbitration. View "Verinata Health, Inc. v. Ariosa Diagnostics, Inc." on Justia Law

The mark “Crazy Horse” has been associated with adult entertainment since the 1950's. In this appeal, at issue is whether Russell Road’s use of the mark “Crazy Horse III” for its Las Vegas strip club infringes defendants Frank Spencer and Crazy Horse Consulting’s rights to the trademark “Crazy Horse.” The district court granted summary judgment to Russell Road. The court agreed with the district court that Russell Road has the right to use the mark because it is the assignee of a valid trademark co-existence agreement entered into with the former owner of the registered Crazy Horse mark. Accordingly, the court affirmed the judgment. View "Russell Road Food & Beverage v. Spencer" on Justia Law