Justia Intellectual Property Opinion Summaries

SMI filed suit against BCS and ARGO, alleging violations of various Texas state law claims related to defendants' alleged theft of trade secrets in connection with a software program developed and sold by SMI. After removal to federal court, the district court denied SMI's motion to remand and subsequently granted defendants' motion for summary judgment. The court concluded that the district court was correct to consider only the Original Petition when deciding SMI’s motion to remand; held that state law claims based on ideas fixed in tangible media are preempted by section 301(a) of the Copyright Act, 17 U.S.C. 301(a), and that the technical trade secrets found within VaultWorks fall within the subject matter of copyright; affirmed the district court’s denial of SMI’s motion to remand and held that it properly exercised jurisdiction over this action as a result of complete preemption by the Copyright Act; concluded that it would not be reasonable for a jury to infer that defendants used SMI’s trade secrets and therefore, the court affirmed the district court’s dismissal of SMI’s claim of misappropriation of trade secrets; and concluded that SMI has waived its remaining claims. Accordingly, the court affirmed the judgment. View "Spear Marketing, Inc. v. BancorpSouth Bank" on Justia Law

IPG, representative of several copyright owners in the 2000-03 royalty fee distribution proceeding, alleged that the Board erred in determining IPG's royalty fees in the sports programming and program suppliers categories. As a preliminary matter, the court concluded that the orders at issue are subject to judicial review as part of the Board’s final determination and therefore, the court has jurisdiction to review the merits of the appeal. The court concluded that an evidentiary sanction that the Board imposed during the preliminary evidentiary hearing is not arbitrary and capricious where the Board reasonably responded to a blatant discovery violation by IPG; no basis exists for overturning the Board’s reasoned decision to reject IPG’s sports programming claims on behalf of FIFA and the U.S. Olympic Committee; and the court rejected IPG's contentions that the Board improperly relied on the MPAA's methodology for calculating the relative marketplace value of their claims and allocating royalty fees within the program suppliers category. Accordingly, the court affirmed the judgment. View "Independent Producers Group v. Library of Congress" on Justia Law

Defendant, a film director, producer, and editor, appealed the district court's grant of summary judgment in favor of plaintiff, a film production company, on its copyright and state-law claims related to the film entitled "Heads Up." At issue was whether a contributor to a creative work whose contributions are inseparable from, and integrated into, the work maintain a copyright interest in his or her contributions alone. Determining that the court had jurisdiction over the merits of the appeal, the court concluded that, on the facts of the present case, the Copyright Actʹs, 17 U.S.C. 102, terms, structure, and history support the conclusion that defendantʹs contributions to the film do not themselves constitute a ʺwork of authorshipʺ amenable to copyright protection. The court concluded that a directorʹs contribution to an integrated ʺwork of authorshipʺ such as a film is not itself a ʺwork of authorshipʺ subject to its own copyright protection. Therefore, defendant did not obtain and does not possess a copyright in his directorial contributions to the finished film. The court agreed with the district court that in this case, plaintiff was the dominant author of the film and concluded that plaintiff owns the copyright in the finished film and its prior versions, including the disputed ʺraw film footage.ʺ Finally, the court disagreed with the district court's conclusion that defendant's interference with plaintiff's planned screening and post-screening reception constituted tortious interference under New York law. Rather, the court concluded that the undisputed material facts require judgment as a matter of law in defendantʹs favor. Accordingly, the court affirmed in part, reversed in part, and remanded with instructions and for the district court to reexamine its award of costs and attorneyʹs fees, and for such other proceedings as are warranted. View "16 Casa Duse, LLC v. Merkin" on Justia Law

Bell, a lawyer and photographer, alleged that three small Indianapolis business owners violated federal copyright laws and an Indiana theft statute by publishing on the internet a photo that he took of the Indianapolis skyline without his authorization. In August 2013, the district court set a deadline for filing motions for leave to amend the pleadings. Bell sought to amend his complaint (for a fourth time) eight months after the cut-off after learning that defendant Taylor had not actually used the photo at issue but had displayed a different photo belonging to Bell. The district court denied Bell’s motion, citing undue delay and his own carelessness. The district court granted defendants summary judgment on the damages issue, finding that Bell cannot demonstrate how they caused him financial harm and was not entitled to monetary recovery. The Seventh Circuit dismissed for lack of jurisdiction. Although the court purported to issue a “final judgment” after ruling on the summary judgment motion, it did so in error; the issue of injunctive relief was never adjudicated. Because Bell’s copyright claim was not entirely disposed of by the ruling, the judgment was not final. View "Bell v. Taylor" on Justia Law

HPA filed suit against Lessard, Clark, Penrose, and Northwestern, alleging that the design, development, ownership, and construction of Two Park Crest, an apartment building in McLean, Virginia, infringed HPA’s architectural copyright embodied in Grant Park, a condominium building in Minneapolis, Minnesota. The district court granted summary judgment to defendants, primarily because no reasonable jury could find that the Grant Park and Two Park Crest designs are substantially similar. The court concluded that the district court did not err in considering expert reports where the reports were were sworn to in declarations; at bottom, HPA failed to carry its burden of identifying a specific similarity between the Two Park Crest design and the protected elements of its Grant Park design; because HPA failed to present nonconclusory evidence that the designs are extrinsically similar, the court rejected HPA’s claim that the district court failed to credit its extrinsic-similarity evidence; and the court rejected HPA's claims that the district court misapplied relevant copyright law. Accordingly, the court affirmed the judgment. View "Humphreys & Partners Architects v. Lessard Design, Inc." on Justia Law

Marvel Entertainment’s corporate predecessor agreed to purchase Kimble’s patent for a Spider-Man toy in exchange for a lump sum plus a 3% royalty on future sales. The agreement set no end date for royalties. As the patent neared the end of its statutory 20-year term, Marvel discovered Brulotte v. Thys Co., in which the Supreme Court held that a patentee cannot continue to receive royalties for sales made after his patent expires and sought a declaratory judgment that it could stop paying Kimble royalties. The district court granted relief. The Ninth Circuit and Supreme Court affirmed, adhering to Brulotte. A patent typically expires 20 years from its application date. 35 U S.C. 154(a)(2). At that point, the unrestricted right to make or use the article passes to the public. The Brulotte rule may prevent some parties from entering into deals they desire, but parties can often find ways to achieve similar outcomes. Congress, moreover, has had multiple opportunities to reverse Brulotte and has even rejected bills that would have replaced Brulotte’s per se rule with the rule of reason standard. Congress, not the Court, gets to make patent policy. View "Kimble v. Marvel Entertainment, LLC" on Justia Law

DRI filed suit against LIA and Ashley under the Lanham Act, 15 U.S.C. 1125(a), alleging that an advertisement placed in a trade magazine by Ashley, and two statements made by the director of LIA's research laboratory, which ran in articles in the same publication, were false and misleading. On appeal, DRI challenged the district court's grant of summary judgment for LIA and Ashley on DRI's false advertising claim. The court agreed with the district court that DRI failed to substantiate a claim that the Ashley Ad is either literally false or impliedly false; that DRI failed to provide sufficient support for a false advertising claim with respect to the director’s statement in the Gunin Article; and that DRI failed to provide sufficient evidence to demonstrate that the director's statement in the Andrews Article was a false or misleading representation of fact. Accordingly, the court affirmed the judgment. View "Design Resources, Inc. v. Leather Indus." on Justia Law

Devin Copeland, a musician, filed suit under the Copyright Act of 1976, 17 U.S.C. 101 et seq., against Justin Bieber and Usher Raymond IV, alleging that three recorded songs by defendants, each titled "Somebody to Love," infringe upon Copeland's copyright over his own, earlier song of the same name. On appeal, Copeland challenged the dismissal of his claim. The district court concluded that no reasonable jury could find that Copeland's song and defendants' songs sufficiently similar to give rise to liability for infringement. At issue was whether the songs at issue, assessed from the perspective of the intended audience - here, the general public - and taking into account their “total concept and feel,” are sufficiently intrinsically similar to give rise to a valid infringement claim. After listening to the Copeland song and the Bieber and Usher songs as wholes, the court concluded that their choruses are similar enough and also significant enough that a reasonable jury could find the songs intrinsically similar. Further, the choruses of the Copeland song and the Bieber and Usher songs are sufficiently important to the songs’ overall effect that they may be the basis for a finding of intrinsic similarity. The court declined to reach Copeland’s other arguments. Accordingly, the court vacated and remanded for further proceedings. View "Copeland v. Bieber" on Justia Law

Sorensen is the CEO of Inhibitor Technology, which produces rust-inhibiting products containing volatile corrosion inhibitor (VCI), branded with the federally registered trademark THE INHIBITOR. That word mark is owned by Sorensen; he also claims common law trademark rights in a design mark associated with his products, an orange-and-black crosshair. The WD-40 Company, maker of the spray lubricant, introduced the new WD-40 Specialist product line. Sorensen claimed that the branding for those products infringed upon his marks. WD-40 Specialist Long-Term Corrosion Inhibitor, which contains VCI and has a purpose similar to that of Sorensen’s products, contains on its packaging both the word “inhibitor” and an orange crosshair. The district court granted summary judgment, finding that WD-40’s use of the word “inhibitor” was a non-trademark descriptive fair use of the word. As to the crosshair mark, the court found that Sorensen had not presented sufficient evidence to demonstrate a genuine issue of material fact as to a likelihood of confusion. The Seventh Circuit affirmed. The most important factors: similarity of the marks, bad faith intent, and evidence of actual confusion, weigh in favor of WD-40. No consumer would think that the marks are similar. The court noted the” clear weakness of Sorensen’s marks,” which appear inconsistently on his products. View "Sorensen v. WD-40 Co." on Justia Law

Berger manufactures, imports, and sells watches, clocks, and personal care products. It filed an intent-to-use application at the Patent and Trademark Office, to register the mark “iWatch” for 30 different goods in the general categories: watches, clocks, and goods related to watches or clocks. Berger declared “a bona fide intention to use or use through [Berger’s] related company or licensee the mark in commerce on or in connection with the identified goods and/or services.” The PTO approved the application for publication. Swatch filed an opposition, claiming that “iWatch” is confusingly similar to its mark, “Swatch,” and that Berger lacked a bona fide intent to use the mark in commerce (15 U.S.C. 1051(b)(1)). The Trademark Trial and Appeal Board considered the testimony of Berger’s owner and CEO that he did not expect the iWatch mark to be used for clocks and personal care products. His paralegal testified that she was told that the list was intended to “leave all doors open.” The Board concluded that Berger lacked intent to use the mark on clocks and related goods and lacked a genuine plan to commercialize the mark on watches, but only intended to reserve a right in the mark. The Federal Circuit affirmed, finding the conclusion supported by substantial evidence. View "M.Z. Berger & Co., Inc. v. Swtch AG" on Justia Law