Justia Intellectual Property Opinion Summaries

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

Slep-Tone has filed more than 150 suits under the Lanham Act, 15 U.S.C. 1051, challenging the unauthorized copying and performance of its commercial karaoke files. In addition to the registered Sound Choice trademark, Slep-Tone claims ownership of distinctive trade dress, consisting of typeface, style, and visual arrangement of the song lyrics displayed in the graphic component of the accompaniment tracks; a display version of the Sound Choice mark; and the style of entry cues that are displayed to signal when singers should begin to sing. Slep-Tone alleges that it has used this trade dress for decades and that it is sufficiently recognizable to enable customers to distinguish a Slep-Tone track from a track produced by a competitor. The pub operators own hard drives containing allegedly illegitimate “bootleg” copies of Slep-Tone tracks and, allegedly, are improperly “passing off” the copies as genuine Slep-Tone tracks. The district court dismissed claims of trademark infringement, reasoning that the complaint did not plausibly suggest that the unauthorized use of Slep-Tone’s trademark and trade dress is likely to cause confusion among customers as to the source of any tangible good containing the tracks, a prerequisite to relief under either cited section of the Lanham Act. The Seventh Circuit affirmed. Slep-Tone’s real complaint concerns theft, piracy, and violation of Slep-Tone’s media policy rather than trademark infringement. View "Phoenix Ent. Partners, LLC v. Rumsey" on Justia Law

JL Beverage filed suit against Jim Beam, alleging trademark infringement, false designation of origin, and unfair competition. The district court granted summary judgment for Jim Beam. In its summary judgment ruling, the district court used the standard applicable to preliminary injunctions instead of the standard for summary judgment rulings. Balancing the Sleekcraft factors as a whole, the court concluded that there is a genuine dispute of material fact as to the likelihood of consumer confusion. In this case, a reasonable fact-finder could conclude that: the JLV Mark has conceptual strength because the Mark’s salient feature, the color-coordinated lips, requires consumers to use their imagination to connect the color to the vodka flavor; the Lips Mark has conceptual strength because the lips have no commonly understood connection to the vodka product; Johnny Love Vodka does or does not have commercial strength (because a finding of either would support one of JL Beverage’s theories of confusion–reverse or forward); Johnny Love and Pucker Vodka are related flavored-liquor products sold to the same customers and distributors; the products are similar given their use of color-coordinated, puckered human lips as the focal point of their bottle designs; consumers purchasing the vodka products are not likely to exercise a high degree of care in distinguishing between the two; and Jim Beam was aware of JL Beverage’s trademarks prior to rolling out its Pucker Vodka line. Accordingly, the court reversed and remanded. View "JL Beverage v. Jim Beam Brands" on Justia Law

Bell sued several defendants for copyright infringement, alleging that they impermissibly displayed a photo of the Indianapolis skyline that belongs to Bell on websites promoting their respective businesses. With respect to one defendant, Bell misidentified the photograph. As for the other defendants, the court concluded that although Bell had established ownership of the photo, he had failed to prove damages: Bell had not demonstrated the photo’s fair market value, nor had he shown that defendants profited from their use of his photo. The district court granted summary judgment for defendants on both damages and injunctive and declaratory relief. Bell filed a second copyright infringement lawsuit against some of the defendants in the same court. The district court dismissed the second case based on res judicata. The Seventh Circuit affirmed both decisions, noting that the photographs were removed from the websites long ago and that the websites no longer exist. The second lawsuit involved a common core of operative facts. View "Bell v. Taylor" on Justia Law

Flo & Eddie, a California corporation, filed suit against Sirius, a satellite and internet radio provider, claiming that Sirius violated Flo & Eddie’s rights as owner of sound recordings of musical performances that were fixed before February 15, 1972. Because the issues in this case have not been addressed by the Supreme Court of Florida, the court certified the following questions to that state court: 1. Whether Florida recognizes common law copyright in sound recordings and, if so, whether that copyright includes the exclusive right of reproduction and/or the exclusive right of public performance? 2. To the extent that Florida recognizes common law copyright in sound recordings, whether the sale and distribution of phonorecords to the public or the public performance thereof constitutes a “publication” for the purpose of divesting the common law copyright protections in sound recordings embedded in the phonorecord and, if so whether the divestment terminates either or both of the exclusive right of public performance and the exclusive right of reproduction? 3. To the extent that Florida recognizes a common law copyright including a right of exclusive reproduction in sound recordings, whether Sirius’s back-up or buffer copies infringe Flo & Eddie’s common law copyright exclusive right of reproduction? 4. To the extent that Florida does not recognize a common law copyright in sound recordings, or to the extent that such a copyright was terminated by publication, whether Flo & Eddie nevertheless has a cause of action for common law unfair competition/misappropriation, common law conversion, or statutory civil theft under FLA. STAT. 772.11 and FLA. STAT. 812.014? View "Flo & Eddie v. Sirius SM Radio" on Justia Law

Plaintiffs filed suit alleging that defendant fraudulently obtained his federal trademark registration for the PUDGIE’S mark in connection with restaurants that principally serve pizza, pasta, and submarine sandwiches. The district court granted summary judgment to plaintiffs. In this case, the district court correctly concluded that no material issue of fact existed as to whether defendant knowingly made false, material representations in his application where the specimen he included with his application exhibited that the PUDGIE'S mark originally came from another source. The court concluded that no genuine issue of material fact exists as to whether defendant knew that other entities had rights to use the mark in the very manner in which he sought to use the mark, and whether he intended to mislead the PTO by attesting otherwise in his trademark application. Accordingly, the court affirmed the judgment. View "MPC Franchise, LLC v. Tarntino" on Justia Law

Home Design filed suit against Turner for copyright infringement on Home Design’s architectural floor plan HDS-2089. A jury returned a verdict in favor of Home Design, awarding $127,760 in damages. Turner moved for judgment notwithstanding the jury’s verdict under Rule 50(b) and the district court granted the motion. The court held that architectural floor plans are not protected by copyright to the extent that they portray ideas, rather than expressions of ideas. The Copyright Act, 17 U.S.C. 10, restricts which elements of architectural floor plans are protectable through its definition of a copyrightable “architectural work.” The court concluded that Intervest Construction, Inc. v. Canterbury Estate Homes, Inc. and Zalewski v. Cicero Builder Dev., Inc. control this case. In light of the constraints imposed by a four–three split style home, the court concluded that the differences between HDS-2089 and the Turner plans demonstrate the absence of copyright infringement. The differences between HDS-2089 and the Turner plans are differences in dimensions, wall placement, and the presence, arrangement, and function of particular features around the house. Because the same sorts of differences indicated no infringement in Intervest, that result follows in this case as well. Accordingly, the court affirmed the judgment. View "Home Design Serv., Inc. v. Turner Heritage Homes Inc." on Justia Law