Justia Intellectual Property Opinion Summaries

Plaintiff, the developer of the computer code for the original John Madden Football game for the Apple II computer, filed a diversity action against EA, seeking contract damages in the form of unpaid royalties for Sega Madden and Super Nintendo Madden. The court concluded that the district court properly granted judgment as a matter of law (JMOL) to EA under the "intrinsic test" because the jury had no evidence of Apple II Madden or Sega Madden as a whole to enable it to make a subjective comparison. In this case, plaintiff's claims rest on the contention that the source code of the Sega Madden games infringed on the source code for Apple II Madden. But, none of the source code was in evidence. The jury therefore could not compare the works to determine substantial similarity. The court rejected plaintiff's argument that EA’s post-verdict Rule 50(b) motion for JMOL regarding the intrinsic test should not have been considered. The court also concluded that the district court did not err in dismissing the Super Nintendo derivative work claims where the Apple II and Super Nintendo processors have different instruction sizes and data word sizes; the court agreed with the district court that the jury could not have determined plaintiff's damages from the alleged breach to a reasonable certainty; and even if the district court erred, there was no harm because plaintiff's failure to introduce any source code precluded a finding that Super Nintendo Madden was a Derivative Work. Finally, the court concluded that the district court correctly dismissed the claim that EA used development aids to create non-derivative works because the claim is unsubstantiated. Accordingly, the court affirmed the judgment. View "Antonick v. Electronic Arts, Inc." on Justia Law

MOVA technology can capture an actor’s facial performance for use in motion picture special effects and video games; it is secured by trademarks, copyrights, and patents, and is reflected in hardware, source code, and physical assets. VGHL claims that Perlman, the head of Rearden, declined to acquire the MOVA assets from OL2 and proposed OL2 sell to a Rearden employee, LaSalle. Perlman introduced LaSalle to Rearden’s corporate attorney who helped LaSalle establish his own company, MO2, and negotiated with OL2. Perlman later demanded that LaSalle convey the MOVA assets to Rearden and terminated LaSalle’s employment when LaSalle refused. MO2 sold the MOVA assets to SHST, which hired LaSalle, and began selling the technology. The Rearden parties claimed that SHST never obtained ownership and that LaSalle was simply hired to handle the acquisition on Rearden’s behalf. SHST sued, alleging that Rearden had made “false or misleading representations ... concerning the ownership of the MOVA Assets ... to mislead the public and actual and prospective users and licensees” and had falsely recorded assignments of the MOVA patents. During discovery, SHST moved to compel Rearden to produce documents exchanged between MO2 and Rearden’s corporate attorney. The district court granted the request, concluding that Rearden had not shown entitlement to assert attorney-client privilege on behalf of MO2 and that LaSalle waived privilege when he shared documents. The Federal Circuit denied a petition for mandamus. Rearden's arguments failed to carry the high burden required on mandamus to overturn the court’s discovery determination. View "In re: Rearden, LLC" on Justia Law

In 2005, the Church, within five miles of the Illinois–Wisconsin border, began selling caps and shirts, emblazoned with the phrase “ADD A ZERO” as part of a fundraising campaign. The Church obtained two federal trademarks for the “ADD A ZERO” mark, based on actual use of the marks in commerce, not intent to use the marks in commerce. In 2009, Adidas sought a clothing trademark for the phrase “ADIZERO.” The Trademark Office refused the application for likelihood of confusion with the Church’s “ADD A ZERO” marks. Adidas brought an action; the Trademark Trial and Appeal Board cancelled the marks, based on the Church’s failure to use the marks in commerce before registration. The Board considered the Church’s proffered evidence of a cancelled check with a printed Wisconsin address for the sale of two “ADD A ZERO”-marked hats for $38.34 in February 2005, before the Church applied for its marks, but concluded that the “de minimis” sale did not evidence the requisite “use in commerce” under the Lanham Act. The Federal Circuit reversed. The Lanham Act defines commerce as all activity regulable by Congress; the Church’s sale to an out-of-state resident fell within Congress’s power to regulate under the Commerce Clause. View "Christian Faith Fellowship Church v. Adidas AG" on Justia Law

CI owns the registered marks ʺCollective Network,ʺ ʺCollective Video,ʺ and ʺC Collective The Audience Engine,ʺ a stylized mark in which the word ʺCollectiveʺ appears most prominently. CCM operates under the name ʺCollective[i].ʺ This appeal arises from the software companies' dispute over trademarks containing the word "collective." In a series of three orders, the district court granted summary judgment to CCM on virtually all points in dispute and awarded attorneyʹs fees under the Lanham Act, 15 U.S.C. 1051 et seq. The court reversed or vacated all contested portions of the March Order, August Order, and December Order because: (1) the unregistered mark ʺcollectiveʺ is suggestive, not descriptive; (2) there is a genuine dispute of material fact as to whether CI used the unregistered mark ʺcollectiveʺ in commerce before CCM introduced its allegedly infringing marks; (3) the district court prematurely granted summary judgment as to CIʹs counterclaim for infringement of the registered marks, an action that neither party requested and the district court did not explain; and (4) there is a genuine dispute of material fact as to whether CI abandoned its registered marks ʺCollective Networkʺ and ʺCollective Video.ʺ Accordingly, the court reversed in part, vacated in part, and remanded for further proceedings. View "Cross Commerce Media, Inc. v. Collective, Inc." on Justia Law

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