Justia Intellectual Property Opinion Summaries

Steve "Wild Thing" Ray wrestled in the Universal Wrestling Federation (UWF) from 1990 to 1994. His matches were filmed. Ray specifically agreed that the films would be "sold and used." Since his retirement from the UWF, Ray has promoted healthcare products and weightlifting supplements. ESPN obtained films of his wrestling matches and re-telecast them throughout North America and Europe without obtaining his "consent to use [his] identity, likeness, name, nick name, or personality to depict him in any way." Ray does not allege that ESPN obtained the films unlawfully. Ray filed suit, asserting, under Missouri state law: invasion of privacy, misappropriation of name, infringement of the right of publicity, and interference with prospective economic advantage. The Eighth Circuit affirmed dismissal on the grounds of preemption by the Copyright Act, 17 U.S.C. 101. Ray's wrestling performances were part of the copyrighted material, and his likenesses could not be detached from the copyrighted performances contained in the films. Ray has not alleged that his name and likeness were used to promote or endorse any type of commercial product. His complaints are based solely on ESPN airing video recordings depicting him in a "work of authorship," which is plainly encompassed by copyright law. View "Ray v. ESPN, Inc." on Justia Law

Smart Candle sells light-emitting diode flameless candles and commercial lighting systems internationally. Excell sued under the LanhamAct alleging that Smart Candle’s use of the trade name and trademark “Smart Candle” infringed rights that Excell had over use of that name and trademark. Selective insured Smart Candle during the period in which the Excell suit commenced, but disclaimed coverage, based on exclusion any injury “arising out of the infringement of copyright, patent, trademark, trade secret or other intellectual property rights” that “does not apply to infringement in your ‘advertisement’ of copyright, trade dress or slogan.” Excell won its suit. Selective sought a declaration that it owed no duty to defend or indemnify. Smart Candle counterclaimed breach of contract, arguing that Selective had not conducted “reasonable investigation of Excell’s Claims” including “a review of Smart Candle’s website . . . or any of Smart Candle’s advertising before denying coverage.” The district court granted Selective summary judgment. The Eighth Circuit affirmed, agreeing that no reasonable jury would conclude that Excell was suing for slogan infringement and that Selective had no duty to investigate “beyond the four corners of the complaint” to determine whether other facts could trigger Selective’s duty to defend or indemnify. View "Selective Ins. Co. v. Smart Candle, LLC" on Justia Law

Buckminster Fuller, “Bucky,” a designer, author, and inventor, well known for popularizing the geodesic dome, died in 1983. Beginning around 2009, Maxfield manufactured and distributed products under the Buckyball and related trademarks. According to its press release, Buckyballs, “the world’s best-selling desktoy,” were “inspired and named after famous … inventor, R. Buckminster Fuller.” Buckyballs are round magnets packaged in a cube shape, which can be formed into various shapes. The Big Book of Bucky, which provides instructions, states: Buckyballs were named for Buckminster Fuller. Fuller’s Estate sued, alleging: unfair competition, 15 U.S.C. 1125(a) (Lanham Act); invasion of privacy (appropriation of name and likeness); unauthorized use of name and likeness, Cal. Civil Code 3344.1; and violation of Cal. Business & Professions Code 17200. Alterra had issued an insurance policy to Maxfield, effective June 2010. Alterra agreed to defend under a reservation of rights, then sought a declaration that Alterra’s policy did not provide coverage. The Estate agreed to be bound by the outcome in return for being dismissed. Because of Maxfield’s stipulation to the allegations in the coverage action and acting without leave, the Estate later responded to Alterra’s complaint. The court of appeal affirmed a holding that Alterra had no duty to defend and no duty to indemnify, based on the “intellectual property” exclusion. View "Alterra Excess & Surplus Ins. Co. v. Estate of Buckminster Fuller" on Justia Law

Marcel filed suit against Lucky Brand, seeking damages and injunctive relief based on claims of trademark infringement, false designation of origin, and unfair competition under 15 U.S.C. 1114, 1116, and 1125, as well as common law trademark infringement and unfair competition under Fla. Stat. 495.151. On appeal, Marcel challenged the district court's judgment in favor of Lucky Brand. The court concluded that a prior judgment in Marcel's favor awarding damages and an injunction did not bar Marcel from instituting a second suit seeking relief for alleged further infringements that occurred subsequent to the earlier judgment. Accordingly, the court vacated the grant of summary judgment and the denial of leave to amend the complaint. The court affirmed the district court's denial of Marcel's motion to hold Lucky Brand in contempt for violation of an injunction in the prior litigation because Marcel did not show that Lucky Brand's conduct violated the terms of the injunction. View "Marcel Fashions v. Lucky Brand Dungarees" on Justia Law

This dispute over a commercial relationship stemmed from an agreement between Pennzoil and Miller Oil where Pennzoil agreed to loan Miller Oil equipment for use at Pit Stop. After Pennzoil discovered that Pit Stop was using mislabeled bulk oil that Pit Stop claimed was a Pennzoil product, Pennzoil filed a trademark infringement lawsuit. The district court concluded that Pennzoil's marks are valid and protectable, and that there was a likelihood of confusion between Miller Oil's marks and Pennzoil's marks, such that the use of the latter by defendants constituted trademark infringement. The district court considered Miller Oil's affirmative defense of acquiescence and ruled that Pennzoil had implicitly and explicitly assured Pit Stop that the use of the Pennzoil trademarks and trade dress were allowed, and that Miller Oil relied upon Pennzoil's assurances. The court concluded that, given Miller Oil did not establish undue prejudice, the district court's legal conclusion that Pennzoil had acquiesced was error. Allowing Miller Oil to continue to display Pennzoil's marks in light of an unchallenged determination of trademark infringement would be the type of "unjustified windfall" the court previously condemned. Accordingly, the court reversed the district court's finding of acquiescence and vacated the elements of the injunction allowing Miller Oil to use Pennzoil's marks. View "Pennzoil-Quaker State v. Miller Oil and Gas" on Justia Law

Hope Road, an entity owned by Bob Marley's children, granted Zion an exclusive license to design, manufacture, and sell t-shirts and other merchandise bearing Marley's image. Hope Road and Zion filed suit against multiple defendants who were involved in the sale of competing Marley merchandise, alleging claims arising from defendants' use of Marley's likeness. The court concluded that the district court did not err by denying defendants' post-trial motion for judgment as a matter of law on the Lanham Act, 15 U.S.C. 1125(a), false endorsement claim where defendants waived several defenses to plaintiffs' claims by failing to properly raise them in the district court; the district court did not abuse its broad discretion in determining the profits for Defendants A.V.E.L.A., Freeze, and Jem where there was sufficient evidence to find Freeze willfully infringed plaintiffs' rights because Freeze's vice president of licensing testified that she knew that plaintiffs had the right to merchandising Marley's image before Freeze began selling similar goods; the Seventh Amendment does not require that a jury calculate these profits because juries have not traditionally done so, and a claim for profit disgorgement is equitable in nature; the district court did not abuse its discretion by ordering A.V.E.L.A. defendants to pay attorneys' fees; the court affirmed the district court's grant of summary judgment to defendants on the right of publicity claim; there was sufficient evidence to support the jury's finding that A.V.E.L.A. defendants interfered with prospective economic advantage; and the district court did not err in granting defendants' motion for judgment as a matter of law on the issue of punitive damages. View "Fifty-Six Hope Road Music v. A.V.E.L.A." on Justia Law

Mason Mauldin, an employee of Central Flying Service, Inc. (CFS), was killed when the plane he was flying during the course of his employment crashed. Mauldin’s estate (the Estate) filed a wrongful-death complaint against CFS and Mauldin’s supervisor (collectively, Petitioners), alleging intentional misconduct, respondeat superior, wrongful death, and survival. The Estate then amended its complaint to raise a claim challenging the constitutionality of the Arkansas Workers’ Compensation Act. Petitioners moved to dismiss the Estate’s complaint because of a lack of subject-matter jurisdiction, asserting that the Estate’s exclusive remedy was provided by the Act. The circuit court denied the motion to dismiss. Petitioners petitioned the Supreme Court for a writ of prohibition to prohibit the circuit court from continuing to exercise jurisdiction over the complaint. The Supreme Court granted the petition, holding that the circuit court was wholly without jurisdiction over the Estate’s complaint, as (1) Petitioners were entitled to immunity from tort liability for the Estate’s claims against them; and (2) in order to challenge the constitutionality of the act, the Estate must demonstrate that the Act applies to it, and the Arkansas Workers’ Compensation Commission has exclusive, original jurisdiction to determine the applicability of the Act. View "Central Flying Serv. Inc. v. Circuit Court" on Justia Law

Rex Woodard entered into a written agreement to ghostwrite the autobiography (the "Work") of Thomas DeVito, one of the original members of the "Four Seasons" band later known as "Jersey Boys." After Woodward passed away, DeVito registered the Work with the U.S. Copyright Office solely under his own name in 1991. DeVito and another former "Four Seasons" band member, Nicholas Macioci, executed an agreement with two of their former bandmates, Frankie Valli and Bob Gaudio, which granted Valli and Gaudio the exclusive rights to use aspects of their lives to develop a musical stage performance (the "Play") about the "Four Seasons." Plaintiff, Woodward's widow, subsequently filed suit alleging that the Play constitutes, at least in part, a "derivative work" of the DeVito autobiography, the right to create which resides exclusively in the copyright-holders of the underlying work, and their lawful successors, assignees, and licensees. The court concluded that the 1999 Agreement constitutes a transfer of ownership of DeVito's derivative-work right in the Work to Valli and Gaudio; Sybersound Records, Inc. v. UAV Corp. presents no obstacle to DeVito's exclusive transfer of his derivative-work right to Valli and Gaudio under the 1999 Agreement; copyright co-owners must account to one another for any profits earned by exploiting that copyright; and, therefore, the district court erred in rejecting plaintiff's claims for accounting and declaratory relief. Further, defendants have necessarily failed to establish the existence of a license as an affirmative defense to plaintiff's infringement action. The court also concluded that summary judgment for defendants on plaintiff's claims of infringement under foreign law grounds must be reversed. Accordingly, the court reversed the district court's grant of summary judgment in favor of defendants, vacated its assessment of costs against plaintiff, and remanded for further proceedings. View "Corbello v. Valli" on Justia Law

Helferich Patent Licensing, LLC, which owns several United States patents that cover a range of related wireless-communication technologies, filed this lawsuit against New York Times Co., G4 Media LLC, CBS Corporation, Bravo Media LLC, and J.C. Penney Corporation, Inc. (collectively, Defendants), alleging infringement of various claims of seven patents. The claims generally addressed systems and methods for storing and updating information and sending it to wireless devices such as mobile-phone handsets. Defendants jointly moved for summary judgment of non-infringement, asserting the affirmative defense of patent exhaustion. The federal district court ruled in Defendants’ favor, concluding that, because Helferich had conferred broad authority on mobile-phone manufacturers to sell handsets under its license agreements, its ability to assert its claims had been exhausted not only against handset acquirers but also against the defendant content providers who use presumptively distinct inventions to manage content and deliver it to handset users. The Federal Circuit reversed, holding that patent exhaustion should not be expanded to hold that authorized sales to persons practicing the handset claims exhaust the patentee’s rights to enforce the asserted content claims against different persons. View "Helferich Patent Licensing v. New York Times Co." on Justia Law

Gaylord, a renowned sculptor, created The Column, consisting of stainless steel statues depicting soldiers on patrol, as the center of the Korean War Veterans Memorial on the National Mall in Washington, D.C. Gaylord was paid $775,000. In 1996, an amateur photographer, Alli , visited the Memorial during a heavy snowstorm and photographed The Column. The U.S. Postal Service issued a stamp to commemorate the fiftieth anniversary of the Korean War armistice, selected Alli’s photograph of The Column for the stamp face, and paid Alli a one-time fee of $1,500. The Postal Service did not seek Gaylord’s consent, reasoning that the photograph was a “derivative work,” 17 U.S.C. 106(2). Gaylord sued for copyright infringement. The Federal Circuit held that the government was liable for infringement; that The Column was not a “joint work” (whose joint authors individually might grant permission); and that its use was not protected as fair use. On remand, the Claims Court considered: stamps used to send mail; commercial merchandise featuring an image of the stamp; and unused stamps purchased by collectors, for which the court assigned a 10% per-unit royalty, resulting in an award of $540,000 for the unused stamps, plus prejudgment interest. The Federal Circuit affirmed. View "Gaylord v. United States" on Justia Law