Justia Intellectual Property Opinion Summaries

This dispute involves two Tejano songs: "Triste Aventurera" and "Cartas de Amor." Plaintiff filed suit against Hacienda alleging, inter alia, that Hacienda's release of "Cartas" infringed upon his "Triste" copyright. The district court ruled in favor of Hacienda as to each of plaintiff's claims. The court rejected plaintiff's contention that the district court erred in finding no reasonable possibility of access. In this case, the court concluded that plaintiff failed to show that the district court's access finding was clearly erroneous. The court also concluded that, absent evidence of uniqueness or complexity, and in light of the expert testimony at trial describing differences in the lyrics and music of the songs, the district court’s finding that "Cartas" and "Triste" are not strikingly similar was not clearly erroneous; the court rejected plaintiff's invitation to apply a novel "sliding-scale" analysis that would have lowered his access burden; and plaintiff waived his Digital Millennium Copyright Act (DMCA), 17 U.S.C. 1202(a), claim. Accordingly, the court affirmed the judgment. View "Guzman v. Hacienda Records and Recording" on Justia Law

Allied, founded in 1973 by Ramun, competes with Genesis in the field of industrial dismantling and scrap processing, including the design, development, and manufacture of related specialized equipment. From 1992-2001, Ramun’s son Mark worked at Allied. By 1999, Allied developed innovative multi-use demolition machine attachments, called MT. Various sizes and types of jawsets, including a steel beam cutter and a concrete crusher, were available, allowing the MT operator to perform different tasks with just one tool. The jawset could be changed without removing the main pin, saving time and enhancing productivity. Mark had detailed information regarding the design and function of the attachment, which was highly confidential. In 2001 Mark left Allied, taking a laptop containing 15,000 pages of Allied documents, including detailed technical information about the MT. Mark joined Genesis in 2003. Genesis later released its own multiuse tool. Genesis brought trade secret claims, based on similarity to the MT. A jury rendered a verdict in favor of Allied. The court awarded damages but refused to enter an injunction. The Sixth Circuit affirmed dismissal of a subsequent suit under the Ohio Uniform Trade Secrets Act, alleging misappropriation after that verdict, citing issue preclusion. View "Allied Erecting & Dismantling Co. Inc. v. Genesis Equip. & Mfg., Inc." on Justia Law

In 2012 Navajo Nation sued for trademark infringement, alleging that Urban Outfitters “advertised, promoted, and sold goods under the ‘Navaho’ and ‘Navajo’ names and marks” on the Internet and in retail stores “[s]ince at least March 16, 2009.” Urban Outfitters tendered the complaint to its insurers. OneBeacon provided commercial general and umbrella liability coverage to Urban Outfitters until July 7, 2010, with “personal and advertising injury” coverage. On July 7, 2010, Hanover became the responsible insurer under a “fronting policy.” On July 7, 2011 Hanover issued separate commercial general liability and umbrella liability policies to Urban Outfitters. The “fronting policy” and Hanover-issued policies excluded coverage for “personal and advertising injury” liability “arising out of oral or written publication of material whose first publication took place before the beginning of the policy period.” After providing a reservation of rights letter, informing Urban Outfitters of Hanover and OneBeacon’s joint retention of defense counsel, Hanover obtained a judicial a declaration that it was not responsible for defense or indemnification. The Third Circuit affirmed.The “prior publication” exclusion of liability insurance contracts prevents a company from obtaining ongoing insurance coverage for a continuing course of tortious conduct. Urban Outfitters engaged in similar liability-triggering behavior both before and during Hanover’s coverage period. View "Hanover Ins. Co v. Urban Outfitters Inc" on Justia Law

Plaintiffs, authors of published books under copyright, filed suit against Google for copyright infringement. Google, acting without permission of rights holders, has made digital copies of tens of millions of books, including plaintiffs', through its Library Project and its Google books project. The district court concluded that Google's actions constituted fair use under 17 U.S.C. 107. On appeal, plaintiffs challenged the district court's grant of summary judgment in favor of Google. The court concluded that: (1) Google’s unauthorized digitizing of copyright-protected works, creation of a search functionality, and display of snippets from those works are non-infringing fair uses. The purpose of the copying is highly transformative, the public display of text is limited, and the revelations do not provide a significant market substitute for the protected aspects of the originals. Google’s commercial nature and profit motivation do not justify denial of fair use. (2) Google’s provision of digitized copies to the libraries that supplied the books, on the understanding that the libraries will use the copies in a manner consistent with the copyright law, also does not constitute infringement. Nor, on this record, is Google a contributory infringer. Accordingly, the court affirmed the judgment. View "Authors Guild v. Google, Inc." on Justia Law

This appeal stems from an intellectual property dispute between two religious organizations. Plaintiff filed suit alleging that defendant is infringing its registered service marks in violation of the Lanham Act, 15 U.S.C. 1114, and Florida law. The district court granted judgment for defendant. In the first appeal, the court reversed in part and remanded for reconsideration of whether the parties' marks are likely to be confused. The court was also critical of disparaging comments that the district judge made about the parties. On remand, the court concluded that the district court misapplied several factors in its analysis of likely confusion, incorrectly assessed the Florida Priory’s defense of prior use, relied on historical testimony that the court previously deemed inadmissible, and misinterpreted the court's instructions about consulting facts outside the record. The court declined to order reassignment after balancing the three factors in United States v. Torkington. Accordingly, the court vacated and remanded. View "Sovereign Military Hospitaller v. The Florida Priory of the Knights Hospitallers" on Justia Law

In 1997 Seagate recruited Dr. Shukh, a native of Belarus, to move to the U.S. Shukh executed Seagate’s standard Employment Agreement, assigning to Seagate all “right, title, and interest in and to any inventions” made while at Seagate. Seagate prohibited employees from filing patent applications for their inventions. During his employment, Shukh was named as an inventor on 17 patents. Shukh’s time at Seagate was tumultuous. His performance evaluations indicated that he did not work well with others due to his confrontational style. In 2009, Seagate terminated Shukh and 178 others. Shukh has not yet secured employment and claims that he was told that he would never find employment at certain companies with his reputation. Shukh alleges that Seagate wrongfully omitted him as an inventor from several patents relating to semiconductor technologies; that Seagate discriminated against and terminated him based national origin and in retaliation for complaining about discrimination. He sought correction of inventorship of the disputed patents under 35 U.S.C. 256. The district court held that Shukh had no interest in the patents based on the assignment; dismissed claims for rescission of his Employment Agreement, breach of contract, breach of fiduciary duty, and unjust enrichment; and rejected claims of reputational harm, retaliation, fraud, and discrimination on summary judgment. The Federal Circuit vacated with respect to correction of inventorship, but otherwise affirmed. There is a genuine dispute of material fact as to whether Shukh’s negative reputation is traceable to Seagate’s omission of Shukh as an inventor from disputed patents. View "Shukh v. Seagate Tech., LLC" on Justia Law

R+L claimed infringement of the 078 patent, which generally relates to an improved method of consolidating freight into trailers to optimize delivery efficiencies for the loads in each trailer. While the case was pending, R+L filed for ex parte reexamination of the patent. Although the patent survived, R+L added language to all of the claims at issue. Because the district court determined that the new claims were not substantially identical to the initial claims of the 078 patent, and because there was no dispute that Qualcomm ceased its allegedly infringing activity before the reexamination certificate issued, R+L stipulated to final judgment, dismissing its infringement claim against Qualcomm. R+L appealed the determination that the amendments made during reexamination resulted in a substantive change in claim scope. The Federal Circuit affirmed, finding that amended claim 1 is not “substantially identical” to original claim under 35 U.S.C. 252, so R+L is not entitled to infringement damages prior to issuance of the reexamination certificate. View "R+L Carriers, Inc.. v. Qualcomm, Inc." on Justia Law

Norbero Colon Lorenzana (Colon) was working for South American Restaurant Corporation (SARCO), a franchisee and operator of Church’s Chicken locations in Puerto Rico, when he suggested to his superiors the concept for a new chicken sandwich that could be included on Church’s menu. Church’s subsequently began selling the item, which it called the “Pechu Sandwich.” SARCO subsequently received a certificate of registration from the Puerto Rico Department of State trademarking the name “Pechu Sandwich” and also received a federal trademark registration for the name “Pechusandwich.” Colon brought suit alleging violations of the Lanham Act and Copyright Act. SARCO filed a motion to dismiss under Fed. R. Civ. P. 12(b)(6), which the district court granted. The First Circuit affirmed, holding (1) the district court properly determined that neither the name “Pechu Sandwich” nor the recipe are eligible for copyright protection; and (2) that Colon failed to sufficiently plead that SARCO committed fraud in the procurement of a federal trademark for the Pechu Sandwich. View "Colon-Lorenzana v. South American Restaurants Corp." on Justia Law

Varsity manufactures cheerleading and athletic apparel. Its designers sketch concepts: “original combinations, positionings, and arrangements of elements which include V’s (chevrons), lines, curves, stripes, angles, diagonals, inverted V’s, coloring, and shapes,” but do not consider functionality or the ease of actually producing a uniform. Varsity decides whether to implement the completed design concept. Varsity advertises in catalogs and online, inviting customers to choose a design concept before selecting the shape, colors, and braiding for the uniform. Varsity received copyright registration for “two-dimensional artwork” for some designs. Star sells sports and cheerleading uniforms and advertised cheerleading uniforms that looked similar to five of Varsity’s registered designs. Varsity sued, alleging violation of the Copyright Act, 17 U.S.C. 101. The court entered summary judgment in Star’s favor, concluding that Varsity’s designs were not copyrightable because their graphic elements are not physically or conceptually separable from the utilitarian function of a uniform because the “colors, stripes, chevrons, and similar designs” make the garment “recognizable as a cheerleading uniform.” The court did not address whether Varsity’s designs were unprotectable as unoriginal. The Sixth circuit reversed, finding that the graphic features of Varsity’s designs are more like fabric design than dress design, and are protectable subject matter under the Copyright Act View "Varsity Brands, Inc. v. Star Athletica, LLC" on Justia Law

Konig’s SRI Employment Agreement, stated: I agree ….To promptly disclose… all discoveries, improvements, and inventions, including software … during … my employment, and … to effect transfer of ownership … to SRI . . . . I understand that termination of this employment shall not release me from my obligations. While employed by SRI, Konig started generating documents relating to a personalized information services idea called “Personal Web” and formed a company, Utopy. Konig left SRI and filed a provisional patent application in 1999; the 040 patent issued in 2005. In 2001, Konig asked an SRI scientist to test the Utopy products. The 040 patent was eventually assigned to PUM. Konig filed another patent application in 2008. PUM was the assignee; the 276 patent issued in 2010. In 2009, PUM sued Google, asserting infringement. PUM provided interrogatory responses that asserted that the conception of the inventions was while Konig was still at SRI. Google had acquired “any rights” that SRI had and counterclaimed breach of contract. The court stated that no reasonable juror could have found that the injury was “inherently unknowable,” applied the three-year limitations period for contracts claims, and granted PUM judgment on the counterclaim. The court also entered judgment of invalidity and noninfringement. The Federal Circuit affirmed, noting that the claim construction had no effect on the outcome and declining to issue an advisory opinion. View "Personalized User Model, LLP v. Google, Inc." on Justia Law