Justia Intellectual Property Opinion Summaries

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

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