Justia Intellectual Property Opinion Summaries

Tam, the “front man” for Asian-American rock band, The Slants, sought to register the mark THE SLANTS and attached specimens featuring the name set against Asian motifs. The examining attorney found the mark disparaging to people of Asian descent (15 U.S.C. 1052(a)) and denied registration. The Trademark Trial and Appeal Board dismissed for failure to file a brief. Tam filed another application, seeking to register the mark THE SLANTS for identical services and claiming use of the mark since 2006. Attached specimens did not contain Asian motifs. The examining attorney again found the mark disparaging and declined to register it. The Board affirmed. On rehearing, en banc, the Federal Circuit vacated, finding Section 2(a) of the Lanham Act unconstitutional. The government may not penalize private speech merely because it disapproves of the message, even when the government’s message-discriminatory penalty is less than a prohibition. “Courts have been slow to appreciate the expressive power of trademarks. Words—even a single word—can be powerful. With his band name, Tam conveys more about our society than many volumes of undisputedly protected speech.” The regulation at issue amounts to viewpoint discrimination; under strict scrutiny or intermediate scrutiny review, the disparagement proscription is unconstitutional, because the government has offered no legitimate interests to justify it. View "In Re:Tam" on Justia Law

In 1956, Ephrem, a Catholic nun, experienced apparitions of the Virgin Mary. Devotions to Our Lady of America was launched. Ephrem joined a cloistered house, approved by the Pope. Fuller entered the cloister in 1965. In 1979 its three members (including Fuller and Ephrem) formed a new congregation. In 1993 Ephrem founded Our Lady of America Center. Upon her death in 2000, she was succeeded by Fuller and willed her property to Fuller. Most had been created by Ephrem or donated to the cloister or the Center. Fuller registered trademarks for artifacts, including Ephrem’s diary, medallions, and statues. In 2005 McCarthy, a lawyer, and Langsenkamp, “a Papal Knight,” began helping Fuller promote devotions to Our Lady. Fuller gave them a statue and other artifacts. In 2007, the three had a disagreement that resulted in this lawsuit. The men claim to be the authentic promoters of devotions to Our Lady and the lawful owners of the artifacts. Another layman, Hartman, began a campaign to smear McCarthy’s and Langsenkamp’s reputations. Fuller is no longer a nun. A jury returned a verdict in favor of McCarthy and Langsenkamp. The Seventh Circuit affirmed awards: $150,000 in compensatory damages, $200,000 in punitive damages (against Hartman only), plus $295,000 in attorney’s fees and sanctions and $281,000 in costs, to be paid by Fuller, Hartman, and their lawyer. The court vacated an injunction concerning the defamation. View "McCarthy v. Fuller" on Justia Law

DiStefano’s patent application claims a method that enables an individual to design a web page without having to “learn HTML or to interact extensively with a web page designer.” Its primary embodiment includes a graphical user interface with a primary display screen and an overlaid design plate that has menu buttons to assist in editing and a design place to edit web assets, such as Java applets, scripts, stock art, background images, and textures. Web assets can come from a web asset database, be uploaded directly by users, or be obtained from independent websites. When the user finishes editing a web asset, it is dragged from the design plate onto the website. The Patent Trial and Appeal Board rejected claims under 35 U.S.C. 102, for anticipation. The Federal Circuit vacated, rejecting application of the printed matter analysis and a conclusion that “web assets’ origination from third party authors and the user cannot patentably distinguish (i.e., cannot breathe novelty into) the claimed method, particularly because the web assets’ origins have no functional relationship to the claimed method.” Although selected web assets likely communicate some information, the content of the information is not claimed; the information’s “origin,” is not part of informational content. Nothing in the claim calls for origin identification to be inserted into the content of the web asset. View "In re: DiStefano" on Justia Law

Defendant appealed the district court's grant of an injunction requiring defendant to transfer to defendant four domain names he had registered in his own name and grant of plaintiff's motion for summary judgment on defendant's counterclaims. The court concluded that it lacked jurisdiction to entertain defendant's appeal under 28 U.S.C. 1291, because there are still pending claims brought against defendant under sections 43(a) and (c) of the Lanham Act, 15 U.S.C. 1125(a) and (c), and state law. The court concluded, however, that it has jurisdiction to review the district court's injunction under 28 U.S.C. 1292(a)(1). The court held that the re-registration of bydesignfurniture.com constituted a registration under the Anticybersquatting Consumer Protection Act (ACPA), 15 U.S.C. 1125, and that plaintiff is likely to succeed on the merits of its ACPA claim. Accordingly, the court concluded that the issuance of the preliminary injunction did not constitute an abuse of discretion and affirmed the judgment of the district court. View "JYSK Bed'N Linen v. Dutta-Roy" on Justia Law

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