Justia Intellectual Property Opinion Summaries

The Digital Millennium Copyright Act of 1998 (DMCA), 17 U.S.C. 512(c), establishes a safe harbor which gives qualifying Internet service providers protection from liability for copyright infringement when their users upload infringing material on the service provider’s site and the service provider is unaware of the infringement. Plaintiffs filed suit against Vimeo alleging that Vimeo is liable for copyright infringement by reason of 199 videos posted on the Vimeo website, which contained allegedly infringing musical recordings for which plaintiffs owned the rights. In this interlocutory appeal on certified questions from rulings of the district court interpreting the DMCA, the court concluded that the safe harbor of section 512(c) does apply to pre-1972 sound recordings, and therefore protects service providers against liability for copyright infringement under state law with respect to pre-1972 sound recordings, as well as under the federal copyright law for post-1972 recordings. Therefore, the district court’s grant of partial summary judgment to plaintiffs with respect to Vimeo’s entitlement to the safe harbor for infringements of pre-1972 recordings is vacated. The court also concluded that various factual issues that arise in connection with a service provider’s claim of the safe harbor are subject to shifting burdens of proof. Because, on a defendant’s claim of the safe harbor, the burden of showing facts supporting a finding of red flag knowledge shifts to the plaintiff, and the district court appears to have denied Vimeo’s motion for summary judgment as to a number of videos on this issue based on a test that would improperly deny service providers access to the safe harbor, the court vacated the denial of Vimeo’s motion for summary judgment on that issue. The court remanded for reconsideration and further proceedings. Finally, the court rejected plaintiff's argument that the district court erred in its ruling in Vimeo’s favor as to plaintiffs’ reliance on the doctrine of willful blindness. Accordingly, the court affirmed in part, vacated in part, and remanded for further proceedings. View "Capitol Records, LLC v. Vimeo, LLC" on Justia Law

Plaintiff filed suit alleging trademark infringement in violation of the Lanham Act, 15 U.S.C. 1114, and other claims on the basis that defendant's trademark logo was confusingly similar to plaintiff's trademark. The district court granted permanent injunctive relief, prohibiting defendant from using its marks within plaintiff’s geographic service area (Guthrie Service Area), but held that defendant may continue to use its marks everywhere outside the Guthrie Service Area, as well as without restriction in Internet transmissions, on defendant’s websites and on social media. The court agreed with the district court’s liability determination that there is a likelihood of confusion between plaintiff’s and defendant’s trademarks. The court concluded, however, that, in restricting the scope of the injunction, the district court misapplied the law, and failed to adequately protect the interests of plaintiff and the public from likely confusion. The court concluded that it is correct that a senior user must prove a probability of confusion in order to win an injunction. But it does not follow that the injunction may extend only into areas for which the senior user has shown probability of confusion. Accordingly, the court affirmed in part, vacated in part, and expended the scope of the injunction, remanding for further consideration. View "Guthrie Healthcare Sys. v. ContextMedia, Inc." on Justia Law

Plaintiffs and volunteers built the La Contessa, a replica of a 16th-century Spanish galleon, from a used school bus for use at the Burning Man Festival. Defendant intentionally burned the wooden structure of the La Contessa so that a scrap metal dealer could remove the underlying school bus from his property. Plaintiffs filed suit alleging that defendant violated the Visual Artists Rights Act (VARA), 17 U.S.C. 106(A), and committed common law conversion when he destroyed the La Contessa. The trial court granted summary judgment on their VARA claim and awarded attorneys' fees. The court held that an object constitutes a piece of “applied art”- as opposed to a “work of visual art”- where the object initially served a utilitarian function and the object continues to serve such a function after the artist made embellishments or alterations to it. Conversely, “applied art” would not include a piece of art whose function is purely aesthetic or a utilitarian object which is so transformed through the addition of artistic elements that its utilitarian functions cease. In this case, the court concluded that the La Contessa plainly was "applied art," and thus was not a work of visual art under the VARA and not eligible for its protection. Therefore, the trial court properly granted summary judgment to defendant on the VARA claim. The court also concluded that the trial court did not abuse its discretion by excluding the testimony of two of plaintiffs' expert witnesses, nor did the trial court err in its jury instructions on abandoned property and abandonment. Furthermore, the trial court did not abuse its discretion by failing to include jury instructions on lost profits and punitive damages resulting from the destruction of the La Contessa; in admitting evidence of drug paraphenalia surrounding the La Contessa as it sat on defendant’s property; and in denying plaintiffs' motion for partial summary judgment on their conversion claim. Finally, the trial court did not err in awarding attorneys' fees. Accordingly, the court affirmed the judgment. View "Cheffins v. Stewart" on Justia Law

VMG filed a copyright infringement suit against Madonna and others, alleging that the producer of the song "Vogue," copied a 0.23-second segment of horns from an earlier song, known as "Love Break," and used a modified version of that snippet when recording "Vogue." The district court granted summary judgment to defendants and awarded them attorney's fees under 17 U.S.C. 505. VMG appealed. The court agreed with the district court's application of the longstanding legal rule that de minimus copying does not constitute infringement and that a general audience would not recognize the brief snippet in "Vogue" as originating from "Love Break." The court rejected VMG's argument that Congress eliminated the de minimis exception to claims alleging infringement of a sound recording. The court recognized that the Sixth Circuit held to the contrary in Bridgeport Music, Inc. v. Dimension Films, but found Bridgeport's reasoning unpersuasive. The court held that the de minimus exception applies to infringement actions concerning copyrighted sound recordings, as it applies to all other copyright infringement actions. Accordingly, the court affirmed the district court's grant of summary judgment to defendants. In regard to the attorney's fees, the court concluded that the district court abused its discretion. A claim premised on a legal theory adopted by the only circuit court to have addressed the issue is, as a matter of law, objectively reasonable. The district court’s conclusion to the contrary constitutes legal error. View "VMG Salsoul, LLC v. Ciccone" on Justia Law

From 2003-2014, Bornmann directed a research laboratory that synthesized cancer drugs at University of Texas MD Anderson Cancer Center. In 2013, Bornmann’s team apparently discovered an antibiotic with the potential to treat cancer and type-2 diabetes. Bornmann signed an invention disclosure report (IDR) describing the antibiotic and listing Bornmann among several contributors, including DePinho, President of MD Anderson, who was credited with providing laboratory space and supervision. Later MD Anderson decided not to renew Bornmann's contract and to close his lab. Bornmann filed a petition to take Rule 202 depositions of DePinho and Dennis. Rule 202 of the Texas Rules of Civil Procedure allows a court to authorize a deposition “to investigate a potential claim or suit.” Bornmann theorized that “his lab [was being] closed to benefit the personal interests of Dr. DePinho,” that an IDR without his signature would be filed, and that a provisional patent would be filed and licensed to a company owned by DePinho or his wife.Bornmann sought to depose Depinho concerning the IDR signatures and Dennis on timing and filing, in order to “investigate a potential tortious interference claim against Dr. DePinho as well as other potential causes of action.” The Texas Supreme Court vacated an order authorizing the discovery. A court may not order Rule 202 depositions to investigate unripe claims View "In re: DePinho and Dennis" on Justia Law

DTC filed suit against JPMC and others, alleging willful patent infringement relating to electronic check-processing systems. JPMC was the first bank to reach a settlement agreement with DTC in 2005. As part of the settlement, JPMC entered into a consent judgment in which it admitted the patents were valid and enforceable and that JPMC had infringed them. It also entered into a license agreement permitting JPMC unlimited use of DTC’s patented technology going forward. At issue in this appeal is the district court’s interpretation of a most favored licensee (MFL) clause in the license agreement allowing JPMC to use DTC's patented check processing technology. JPMC invoked its rights under the MFL clause based on DTC’s granting a similar unlimited license to another entity for a lesser lump sum than JPMC paid. The court agreed with the district court that after comparing these two lump-sum license agreements, the later agreement is indeed more favorable, and JPMC therefore is entitled to a refund from DTC for the difference between the amount it paid for its license and the lesser amount bargained for in the later license agreement. Accordingly, the court affirmed the judgment. View "JP Morgan Chase Bank, N.A. v. Datatreasury Corp." on Justia Law

ISC filed suit against SU and Sondra Schneider, alleging that SU's use of ISC's certification mark violated the Lanham Act, 15 U.S.C. 1051 et seq., and constituted infringement under 15 U.S.C. 1114, false designation of origin and false advertising under 15 U.S.C. 1125(a), and trademark dilution under 15 U.S.C. 1125(c), and that SU’s use of the mark constituted unfair competition under the Connecticut Unfair Trade Practices Act (CUTPA), Conn. Gen. Stat. 42–110a et seq. The district court granted summary judgment to defendants. The court held that nominative fair use is not an affirmative defense to a claim of infringement under the Lanham Act. In cases involving nominative use, in addition to considering the Polaroid factors, courts are to consider (1) whether the use of the plaintiff’s mark is necessary to describe both the plaintiff’s product or service and the defendant’s product or service, that is, whether the product or service is not readily identifiable without use of the mark; (2) whether the defendant uses only so much of the plaintiff’s mark as is necessary to identify the product or service; and whether the defendant did anything that would, in conjunction with the mark, suggest sponsorship or endorsement by the plaintiff holder, that is, whether the defendant’s conduct or language reflects the true or accurate relationship between plaintiff’s and defendant’s products or services. When considering these factors, courts must be mindful of the different types of confusion relevant to infringement claims. Because the district court failed to consider the Polaroid factors and because its consideration of the relevant nominative fair use factors was based on incorrect assumptions, the court vacated the district court’s grant of summary judgment on the infringement claims. The court vacated the grant of summary judgment as to the false designation of origin and false advertising claims, and the CUTPA claims. The court affirmed as to the dilution claims and remanded for further proceedings. View "Int'l Info. Sys. Sec. Certification Consortium, Inc. v. Security Univ., LLC" on Justia Law

Albert Brumley, author of the gospel song “I’ll Fly Away,” assigned the song’s 1932 copyright to a company. The company subsequently became the property of his son, Robert. Albert died in 1977. Albert’s widow also executed an assignment to Robert. During the term of a copyright, an author may use, assign, sell, or license the copyright, 17 U.S.C. 201(d), but songwriters and their descendants may terminate the songwriter’s assignment of a copyright to another party, Sections 203, 304(c). In 2008, four of Brumley’s six children filed notice to terminate the assignment to their brother, Robert. The copyright was then generating about $300,000 per year. The district court and Sixth Circuit affirmed their right to terminate the assignment, rejecting arguments that the song was a “work made for hire,” which is not eligible for termination, 17 U.S.C. 304(c); and that Albert’s widow relinquished any termination rights. View "Brumley v. Brumley & Sons, Inc." on Justia Law

Cordua owns and operates five restaurants branded as “Churrascos,” the first of which opened in 1988. The restaurants serve South American dishes, including grilled meats; the menu describes chargrilled “Churrasco Steak” as “our signature.”.Cordua obtained the 321 registration for the service mark CHURRASCOS (in standard character format) in 2008, for use in connection with “restaurant and bar services; catering.” In 2011, Cordua filed a trademark application, seeking protection of the stylized form of CHURRASCOS for use in connection with “Bar and restaurant services; Catering.” The trademark examiner rejected the application as merely descriptive and on the basis that “the applied-for mark is generic for applicant’s services,” barring registration under Lanham Act, 15 U.S.C. 1052(e)(1).. The examiner concluded that the term “churrascos” “refer[s] to beef or grilled meat more generally” and that the term “identifies a key characteristic or feature of the restaurant services, namely, the type of restaurant.” The Trademark Trial and Appeal Board agreed and held that Cordua’s underlying 321 Registration had no bearing on whether the stylized form of CHURRASCOS was generic. The Federal Circuit affirmed, finding that the stylized form of CHURRASCOS generic as applied to restaurant services and, therefore, trademark-ineligible View "In re: Cordua Restaurants, Inc." on Justia Law

Consumer Health Information sued Amylin Pharmaceuticals,alleging copyright infringement. 17 U.S.C. 101, concerning patient-education materials Consumer Health developed for Amylin’s use in marketing its diabetes drug Byetta. The parties’ contract, executed in 2006, unambiguously assigns the copyright to Amylin. Consumer Health alleged that the contract was induced by fraud or economic distress and sought rescission. The district court dismissed the suit as untimely. The Seventh Circuit affirmed. Consumer Health assigned the copyright to Amylin in 2006 but did not file this suit until 2013, several years too late under either a four-year limitations period that applies to claims for contract rescission under California law, or under the Copyright Act’s three-year statute of limitations, 17 U.S.C. 507(b). Consumer Health’s cause of action accrued when the contract was executed; at that point Consumer Health knew that Amylin owned the copyright, and the limitations clock on a suit to reclaim ownership started ticking. View "Consumer Health Info. Co v. Amylin Pharma., Inc." on Justia Law