Justia Intellectual Property Opinion Summaries

Plaintiff TLOC Senior Living, LLC, owned and operated a senior living community in Middlebury, Vermont, doing business as “The Lodge at Otter Creek.” In July 2013, defendant Albert Bingham registered the name “The Lodge at Otter Creek” under his own name with the Vermont Secretary of State’s Office after plaintiff lapsed in its re-registration of the name. In December 2013, plaintiff filed a complaint alleging slander of title, trade infringement, unfair competition, and tortious interference with contract. Plaintiff claimed that despite Bingham’s actions, his registration of the name did not bestow him with any rights to actually use it as a trade name. Rather, plaintiff contended that it retained the exclusive common law rights to the continued use of “The Lodge at Otter Creek” as its trade name. Bingham filed several counterclaims. He argued in relevant part that by registering the name “The Lodge at Otter Creek” as his business name, he effectively foreclosed any right that plaintiff had to the name. The court concluded that although Bingham had been able to register “The Lodge at Otter Creek,” plaintiff’s failure to re-register the name did not allow Bingham to use it. Defendant appealed, and finding no reversible error, the Supreme Court affirmed. View "TLOC Senior Living, LLC v. Bingham" on Justia Law

Halo, a Hong Kong company that designs and sells high-end modern furniture, owns two U.S. design patents, 13 U.S. copyrights, and one U.S. common law trademark, all relating to its furniture designs. Halo’s common law trademark, ODEON, is used in association with at least four of its designs. Halo sells its furniture in the U.S., including through its own retail stores. Comptoir, a Canadian corporation, also designs and markets high-end furniture that is manufactured in China, Vietnam, and India. Comptoir’s furniture is imported and sold to U.S. consumers directly at furniture shows and through distributors, including in Illinois. Halo sued, alleging infringement and violation of Illinois consumer fraud and deceptive business practices statutes. The district court dismissed on forum non conveniens grounds, finding that the balance of interests favored Canada and that Canada, where the defendants reside, was an adequate forum. The Federal Circuit reversed. The policies underlying U.S. copyright, patent, and trademark laws would be defeated if a domestic forum to adjudicate the rights they convey was denied without a sufficient showing of the adequacy of the alternative foreign jurisdiction; the Federal Court of Canada would not provide any “potential avenue for redress for the subject matter” of Halo’s dispute. View "Halo Creative & Design, Ltd. v. Comptoir des Indes Inc." on Justia Law

Two appeals involved U.S. Patent No. 6,349,291, which named Samir Varma as the inventor and was owned by InvestPic LLC (collectively, Varma). The ’291 patent stated that many “conventional financial information sites” on the World Wide Web furnish information derived from “rudimentary statistical functions [that] are not useful to investors in forecasting the behavior of financial markets because they rely upon assumptions that the underlying probability distribution function (‘PDF’) for the financial data follows a normal or Gaussian distribution, which is generally false.” The Patent Trial and Appeal Board of the Patent and Trademark Office cancelled certain claims of the ’291 patent in two related reexamination proceedings: one initiated by International Business Machines Corp. and SAS Institute Inc.; the other by SAS alone. Varma’s appeals centered on two claim phrases: (1) a “bias parameter” that “determines a degree of randomness in sample selection in a resampling process”; and (2) “a statistical analysis request corresponding to two or more selected investments.” The Federal Circuit Court of Appeals agreed with Varma that the Board erred regarding both claim phrases. Correcting the first error, the Court reversed the cancellation of claims 1–5, 8–16, 19–21, and 24. Correcting the second error, the Court vacated the cancellation of claims 22, 23, 25, and 29–31 and remanded for further proceedings on those claims. View "In re Varma" on Justia Law

Applicants Ray and Amanda Tears Smith appealed a final decision of the Patent Trial and Appeal Board which affirmed the rejection of claims 1–18 of U.S. Patent Application No. 12/912,410 for claiming patent-ineligible subject matter under 35 U.S.C. 101. Applicants filed the ’410 patent application, titled “Blackjack Variation.” According to the application, “[t]he present invention relates to a wagering game utilizing real or virtual standard playing cards.” The examiner concluded that the claims represented “an attempt to claim a new set of rules for playing a card game,” which “qualifies as an abstract idea.” Because the claims covered only the abstract idea of rules for playing a wagering game and use conventional steps of shuffling and dealing a standard deck of cards, the Federal District Court of Appeals affirmed. View "In re: Smith" on Justia Law

Appellants Ulf Bamberg, Peter Kummer, and Ilona Stiburek (collectively, "Bamberg") appealed the Patent Trial and Appeal Board’s consolidated interference proceeding decision refusing to allow their claims to four patent applications because the specification failed to meet the written description requirement of 35 U.S.C. 112. The involved claims disclose a method for the transfer of printed images onto dark colored textiles by ironing over a specialty transfer paper. During the interference proceeding, Appellees Jodi Dalvey and Nabil Nasser (collectively, "Dalvey") filed a motion alleging that Bamberg’s claims were unpatentable for lack of written description. Dalvey alleged that the claims recited a white layer that melted at a wide range of temperatures, but Bamberg’s specification only disclosed a white layer that did not melt at ironing temperatures (i.e., below 220°C). Therefore, Dalvey argued that Bamberg’s specification failed to meet the written description requirement because it did not disclose an invention in which the white layer melted at temperatures below 220°C. The Federal Circuit Court of Appeal concluded that the Board properly construed the claims, and substantial evidence supported the Board’s determination that Bamberg failed to meet the written description requirement, and because it was not an abuse of discretion to deny Bamberg’s motion to amend. View "Bamberg v. Dalvey" on Justia Law

Hugunin first sold fishing tackle in Land O’ Lakes, Wisconsin, in 1997. Hugunin’s manufacturing enterprise now sells fishing tackle to retailers in several states. In 2000 the U.S. Patent and Trademark Office registered LAND O LAKES as the trademark of his fishing tackle. A large agricultural cooperative named Land O’ Lakes is based in Minnesota and sells dairy products throughout the United States. It has used LAND O LAKES trademark since the 1920s. In 1997 the dairy company became the official dairy sponsor of a sport-fishing tournament and began advertising its products in fishing magazines. Three years later, having learned that Hugunin had registered LAND O LAKES as a trademark, the dairy company wrote him that he was infringing its trademark. He refused either to apply for a license or to give up the trademark. The Trademark Trial and Appeal Board proceeding was suspended pending the outcome of litigation. The Seventh Circuit affirmed dismissal of Hugunin’s suit, stating “It’s hard to believe that a giant dairy company wants to destroy or annex Hugunin’s tiny fishing-tackle business, or that Hugunin’s tackle sales are being kept down by Land O’ Lakes’ having an identical trademark.” View "Hugunin v. Land O'Lakes, Inc." on Justia Law

Plaintiffs, twenty-three professional football players, filed a putative class action against the NFL, claiming that films produced by NFL-affiliate NFL Films violated the players’ rights under the right-of-publicity laws of various states as well as their rights under the Lanham Act, 15 U.S.C. 1125. Twenty plaintiffs settled, but appellants elected to opt out of the settlement and pursued individual right-of-publicity and Lanham Act claims. The district court granted summary judgment for the NFL. Applying the three Porous Media Corp. v. Pall Corp., factors, the court agreed with the district court’s conclusion that the films are expressive, rather than commercial, speech and that the Copyright Act, 17 U.S.C. 301(a), therefore preempts appellants’ claims. The court also concluded that appellants' claim of false endorsement under the Lanham Act fails as a matter of law because appellants provide no evidence that the films contain misleading or false statements regarding their current endorsement of the NFL. Accordingly, the court affirmed the judgment. View "Dryer v. National Football League" on Justia Law

In 1969, the Flynt brothers opened “Hustler Club” nightclub, in Cincinnati. Larry later created the Hustler conglomerate, producing sexually explicit magazines. Jimmy opened his retail store, Hustler Cincinnati, in 2000, using the “HUSTLER” trademark (owned by Larry’s corporation) and began paying licensing in 2004. Jimmy and Larry had a falling out. Larry's Hustler fired Jimmy in 2009. Jimmy’s Hustler stopped paying fees, but continued to use the mark. Larry sued. The court enjoined Jimmy from “using in commerce any HUSTLER trademark” and “using any trademark or any variation thereof owned by” Larry or his corporations. Later, Larry complained that Jimmy had opened a new store in Florence, Kentucky, “FLYNT Sexy Gifts.” The court denied the contempt motion because the injunction did not directly prohibit Jimmy’s conduct. but modified the injunction, reasoning that Jimmy’s use of “FLYNT Sexy Gifts” was “likely to cause confusion with the LARRY FLYNT trademark.” The Sixth Circuit affirmed a modification that prohibits Jimmy from “[u]sing the name ‘Flynt’ in connection with the sale, promotion or advertising of adult entertainment products or services unless it is accompanied by the first name ‘Jimmy’ in the same font size, color, and style and on the same background color,” and required Jimmy, when using the name “Flynt” anywhere except on “store signage,” to incorporate “a conspicuous disclaimer stating that the goods or services are not ‘sponsored, endorsed by, or affiliated with Larry Flynt or Hustler, or any business enterprise owned or controlled by Larry Flynt.’” View "LFP IP, LLC v. Hustler Cincinnati, Inc." on Justia Law

This case stemmed from rival claims to the “Stolichnaya” trademarks. FTE and Cristall alleged that defendants unlawfully misappropriated and commercially exploited the Stolichnaya trademarks related to the sale of vodka and other spirits in the United States. Control over the marks in the United States is currently exercised by defendants as successors in interest to a Soviet state enterprise. In a prior suit, FTE brought claims against SPI under section 32(1) of the Lanham Act, 15 U.S.C. 1114, and the court dismissed the claims on the grounds that the Russian Federation itself retained too great an interest in the marks for FTE to qualify as an "assign" with standing to sue. FTE's non-section 32(1) claims were either dismissed or dropped during the course of that litigation. At issue principally in this appeal is whether FTE, an agency of the Russian Federation, has been endowed by that government with rights and powers that give it standing to pursue claims under section 32(1) of the Lanham Act. The court concluded that the district court erred in determining whether FTE’s asserted basis for standing was valid under Russian law. However, the court concluded that the district court correctly dismissed all of FTE's other claims as barred by both res judicata and laches. Accordingly, the court affirmed in part, vacated in part, and remanded for further proceedings. View "Fed. Treasury Enter. Sojuzplodoimport v. Spirits Int’l B.V." on Justia Law

This appeal arose from a copyright dispute between Adobe and defendant and his software company, SSI. The court affirmed the district court's dismissal of both Adobe's copyright and trademark claims. Although a copyright holder enjoys broad privileges protecting the exclusive right to distribute a work, the first sale doctrine serves as an important exception to that right. Under this doctrine, once a copy of a work is lawfully sold or transferred, the new owner has the right “to sell or otherwise dispose of” that copy without the copyright owner’s permission. In this case, the court concluded that the district court correctly held that Adobe established its registered copyrights in the disputed software and that defendant carried his burden of showing that he lawfully acquired genuine copies of Adobe’s software, but that Adobe failed to produce the purported license agreements or other evidence to document that it retained title to the software when the copies were first transferred. The district court did not abuse its discretion in granting defendant’s motion to strike and excluding evidence purporting to document the licenses. Finally, the court concluded that the district court properly analyzed the trademark claim under the nominative fair use defense to a trademark infringement claim instead of under the unfair competition rubric. Accordingly, the court affirmed the judgment. View "Adobe Systems, Inc. v. Christenson" on Justia Law