Justia Intellectual Property Opinion Summaries

A musician and songwriter alleged that another composer copied his liturgical song, “Emmanuel,” in creating her own work, “Christ Be Our Light.” The plaintiff had published and performed “Emmanuel” widely in the 1980s and early 1990s, including at conventions attended by both the defendant and her publisher. The defendant, a British musician, composed “Christ Be Our Light” in 1993, and her publisher had received copies of “Emmanuel” from the plaintiff in the mid-1980s. The plaintiff claimed that the defendant had access to his work through these conventions, widespread dissemination, and her relationship with her publisher.The plaintiff initially filed suit in the Northern District of Indiana, but after a procedural dismissal and re-filing, the case was transferred to the United States District Court for the District of Oregon. During discovery, the plaintiff disclosed, after the deadline, letters from the publisher acknowledging receipt of “Emmanuel.” The district court, adopting a magistrate judge’s recommendation, excluded these letters and the related access theory as a sanction for late disclosure, finding the failure to disclose was neither substantially justified nor harmless. The court then granted summary judgment to the defendants, concluding that, without the excluded evidence, the plaintiff could not show access or striking similarity, and thus could not proceed with his copyright claim.On appeal, the United States Court of Appeals for the Ninth Circuit affirmed the exclusion of the late-disclosed evidence and the related access theory, holding that the discovery sanction was not claim-dispositive and was within the district court’s discretion. However, the Ninth Circuit reversed the grant of summary judgment, holding that, even without the excluded evidence, there were triable issues of fact as to whether the defendant had access to “Emmanuel” and whether the two works were substantially or strikingly similar. The case was remanded for further proceedings. View "AMBROSETTI V. OREGON CATHOLIC PRESS" on Justia Law

Two employees of a debt-collection firm, one of whom was out sick with COVID-19, collaborated to resolve an urgent licensing issue for their employer. The employee at home, unable to access her work computer, asked her colleague to log in using her credentials and retrieve a spreadsheet containing passwords for various company systems. The colleague, with express permission, accessed the computer and emailed the spreadsheet to the employee’s personal and work email accounts. Both actions violated the employer’s internal computer-use policies. Separately, the employee at home had, over several years, moved accounts into her workgroup to receive performance bonuses, believing she was eligible for them. Both employees also alleged persistent sexual harassment at work, which led to internal complaints, one employee’s resignation, and the other’s termination.After these events, the employer, National Recovery Agency (NRA), sued both employees in the United States District Court for the Middle District of Pennsylvania, alleging violations of the Computer Fraud and Abuse Act (CFAA), federal and state trade secrets laws, civil conspiracy, breach of fiduciary duty, and fraud. The employees counterclaimed for sexual harassment and related employment claims. On cross-motions for summary judgment, the District Court entered judgment for the employees on all claims brought by NRA, finding no violations of the CFAA or trade secrets laws, and stayed the employees’ harassment claims pending appeal.The United States Court of Appeals for the Third Circuit reviewed the case. It affirmed the District Court’s judgment in full. The Third Circuit held, first, that the CFAA does not criminalize violations of workplace computer-use policies by employees with authorized access, absent evidence of hacking or code-based circumvention. Second, it held that passwords protecting proprietary business information do not, by themselves, constitute trade secrets under federal or Pennsylvania law. The court also affirmed the dismissal of the state-law tort claims. View "NRA Group LLC v. Durenleau" on Justia Law

Oregon enacted a law requiring prescription drug manufacturers to report detailed information about certain drugs, including pricing, costs, and factors contributing to price increases, to the state’s Department of Consumer and Business Services. The law also directs the agency to post most of this information online, but prohibits public disclosure of information designated as a trade secret unless the agency determines that disclosure is in the public interest. Since the law’s enactment, manufacturers have claimed thousands of trade secrets, but the agency has not publicly disclosed any such information.A trade association representing pharmaceutical manufacturers sued the director of the Oregon agency in the United States District Court for the District of Oregon, raising several facial constitutional challenges. The district court granted summary judgment for the association on two claims: that the reporting requirement violated the First Amendment by compelling speech, and that any use of the public-interest exception to disclose trade secrets would constitute an uncompensated taking under the Fifth Amendment. The court declared the entire reporting requirement unconstitutional and held that any disclosure of trade secrets under the public-interest exception would violate the Takings Clause unless just compensation was provided.The United States Court of Appeals for the Ninth Circuit reviewed the case. It reversed the district court’s summary judgment for the association on both the First and Fifth Amendment claims. The Ninth Circuit held that the reporting requirement compels commercial speech and survives intermediate scrutiny under the First Amendment, as it directly advances substantial state interests in transparency and market efficiency and is not more extensive than necessary. On the takings claim, the court found the association’s challenge justiciable but concluded that, under the Penn Central regulatory takings framework, none of the factors supported a facial claim that every disclosure under the public-interest exception would constitute a taking. The court remanded with instructions to enter summary judgment for the state on these claims. View "Pharmaceutical Research and Manufacturers of America v. Stolfi" on Justia Law

Ripple Analytics Inc. operated a software platform for human resources functions and originally owned the federal trademark for the word “RIPPLE®” in connection with its software. In April 2018, Ripple assigned all rights, title, and interest in its intellectual property, including the trademark, to its Chairman and CEO, Noah Pusey. Meanwhile, People Center, Inc. began using the name “RIPPLING” for similar software, though it abandoned its own trademark registration effort. Ripple later sued People Center for trademark infringement and unfair competition, claiming ownership of the RIPPLE® mark.The United States District Court for the Eastern District of New York reviewed the case. During discovery, Ripple produced the assignment agreement showing that Pusey, not Ripple, owned the trademark. People Center moved to dismiss under Federal Rule of Civil Procedure 17, arguing Ripple was not the real party in interest. The district court dismissed Ripple’s trademark infringement claim with prejudice, dismissed its unfair competition claims without prejudice for lack of standing, and denied Ripple’s motion to amend its complaint, finding the proposed amendment futile because it did not resolve the standing issue.On appeal, the United States Court of Appeals for the Second Circuit affirmed the district court’s judgment. The appellate court held that Ripple was not the real party in interest for the trademark infringement claim, as ownership had been assigned to Pusey, who failed to ratify or join the action. The court also held that Ripple lacked standing to pursue unfair competition claims under federal and state law, as it no longer had a commercial interest in the trademark. The denial of Ripple’s motion to amend was upheld because the amendment would not cure the standing defect. The court further found that the district court’s interlocutory order allowing People Center to amend its answer was not properly before it on appeal. View "Ripple Analytics Inc. v. People Center, Inc." on Justia Law

Global Health Solutions LLC and Marc Selner each filed patent applications in August 2017 for a method of preparing a wound treatment ointment containing nanodroplets of an aqueous biocide suspended in petrolatum jelly without emulsifiers. Selner filed his application four days before GHS, making him the first-filer under the America Invents Act (AIA) “first-inventor-to-file” system. GHS alleged that its founder, Bradley Burnam, conceived the invention and communicated it to Selner, who then derived the invention and filed first. Both parties agreed that their applications claimed the same invention, and the dispute centered on who conceived the invention and when.The United States Patent and Trademark Office, Patent Trial and Appeal Board (the Board) instituted a derivation proceeding. After reviewing evidence, including contemporaneous emails, the Board found that Burnam communicated the invention to Selner by 4:04 p.m. on February 14, 2014, but also found that Selner had independently conceived the invention earlier that same day, by 12:55 p.m. The Board determined that Selner did not derive the invention from Burnam and ruled in favor of Selner. GHS appealed, arguing that the Board erred in its evidentiary rulings, burden of proof allocation, and failure to require reduction to practice for conception, and also requested that Burnam be named a co-inventor.The United States Court of Appeals for the Federal Circuit reviewed the Board’s legal conclusions de novo and factual findings for substantial evidence. The court held that the Board’s focus on “first-to-invent” was harmless error, as Selner’s independent conception was dispositive under the AIA. The court found no reversible error in the Board’s evidentiary rulings, burden allocation, or treatment of reduction to practice. The court also held that GHS failed to properly preserve its request for correction of inventorship. The Board’s judgment for Selner was affirmed. View "GLOBAL HEALTH SOLUTIONS LLC v. SELNER " on Justia Law

Erik Brunetti applied to register the word “FUCK” as a trademark for various goods and services, including sunglasses, jewelry, bags, and retail store services. After initial refusals based on the mark being “immoral or scandalous”—a ground later found unconstitutional by the Supreme Court in Iancu v. Brunetti—the United States Patent and Trademark Office (PTO) reexamined the applications. The PTO’s examining attorney refused registration, finding that the term was a widely used, commonplace word that failed to function as a trademark because consumers would not perceive it as identifying the source of the goods or services.The Trademark Trial and Appeal Board (TTAB) affirmed the refusals, concluding that the mark did not serve as a source indicator. The Board reasoned that “FUCK” is an “all-purpose word” with many recognized meanings and is commonly used on similar goods by various sources, so it would not be seen by consumers as distinguishing Brunetti’s products from others. The Board also rejected Brunetti’s constitutional arguments and his reliance on other registered marks, stating that each application must be considered on its own merits.On appeal, the United States Court of Appeals for the Federal Circuit reviewed the Board’s decision under the standards of the Administrative Procedure Act. The court rejected most of Brunetti’s arguments but found that the Board failed to articulate a clear and rational standard for when an “all-purpose word” like “FUCK” can or cannot function as a trademark, especially given the existence of similar registered marks. The Federal Circuit vacated the Board’s decision and remanded for further proceedings, holding that the Board must provide a satisfactory explanation and coherent guidance for its actions. View "In Re BRUNETTI " on Justia Law

A graphic designer was commissioned in 2016 to create a room-sized artwork for a brewery’s exhibition at an annual fair produced by the defendant. The agreement specified that the designer would retain copyright ownership and that the installation could only be shown in person to paying patrons at the 2016 event. During the fair, the defendant created and widely disseminated marketing videos online featuring the designer’s work without attribution, despite the designer’s requests for credit. The designer applied for copyright registration in April 2017, and the work was eventually registered, though the exact date of registration is not in the record.The designer first filed a pro se copyright infringement suit in the United States District Court for the District of Massachusetts in early 2018, but the court dismissed it without prejudice for failure to allege copyright registration. Instead of amending, the designer filed a second action in state court, which was removed to federal court. After amending her complaint, the district court again dismissed the copyright claims, this time with prejudice, for failure to state a plausible claim and failure to allege registration. The designer did not respond to the motion to dismiss. In December 2020, now represented by counsel, she filed the present suit in federal court, which was dismissed with prejudice on claim preclusion grounds. On appeal, the United States Court of Appeals for the First Circuit reversed and remanded for further consideration.On remand, the district court again dismissed the case, this time on both claim preclusion and statute of limitations grounds. The United States Court of Appeals for the First Circuit affirmed the dismissal, holding that the copyright infringement claims were untimely under the three-year statute of limitations, as the plaintiff knew or should have known of the alleged infringement by early 2017. The court also found no basis for equitable tolling. View "Foss v. Eastern States Exposition" on Justia Law

Several former members of the rock band Supertramp entered into a 1977 publishing agreement with their bandmates and manager, allocating specific percentages of songwriting royalties among themselves. These royalties were distributed according to the agreement for decades. In 2018, two of the principal songwriters and their publishing company stopped paying royalties to the plaintiffs, prompting the plaintiffs to file a breach of contract action. The dispute centered on whether the agreement could be unilaterally terminated or whether the obligation to pay royalties continued as long as the songs generated income.After the case was removed to the United States District Court for the Central District of California, the court ruled as a matter of law that the defendants could terminate the agreement after a “reasonable time,” finding no express or implied duration in the contract. The case proceeded to a jury trial, which found in favor of the defendants, concluding that the contract had been terminated after a reasonable time. The plaintiffs appealed this decision.The United States Court of Appeals for the Ninth Circuit reviewed the case and applied California contract law, which requires courts to first look for an express duration in the contract, then to determine if a duration can be implied from the contract’s nature and circumstances, and only if neither is found, to construe the duration as a reasonable time. The Ninth Circuit agreed there was no express duration but held that the contract’s nature implied a duration: the obligation to pay royalties continues as long as the songs generate publishing income, ending only when the copyrights expire and the works enter the public domain. The court reversed the district court’s judgment and remanded with instructions to enter judgment for the plaintiffs on liability. View "Thompson v. Hodgson" on Justia Law

Capstone Studios Corp., a copyright holder, sought to identify 29 subscribers of CoxCom LLC, an Internet service provider, whose IP addresses were allegedly used to share pirated copies of Capstone’s movie via the BitTorrent peer-to-peer protocol. Capstone petitioned the clerk of the United States District Court for the District of Hawaii to issue a subpoena under § 512(h) of the Digital Millennium Copyright Act (DMCA) to compel Cox to disclose the subscribers’ identities. Cox notified its subscribers, and one, identified as “John Doe,” objected, claiming he had not downloaded the movie and that his Wi-Fi had been unsecured.A magistrate judge treated John Doe’s letter as a motion to quash the subpoena. The magistrate judge found that Cox’s involvement was limited to providing Internet access, qualifying it for the safe harbor under 17 U.S.C. § 512(a), which covers service providers acting solely as conduits for data transmission. The magistrate judge concluded that, as a matter of law, a § 512(h) subpoena cannot issue to a § 512(a) service provider. The district court adopted these findings and quashed the subpoena. Capstone’s motion for reconsideration was denied, and Capstone appealed.The United States Court of Appeals for the Ninth Circuit reviewed the case. It held that the DMCA does not permit a § 512(h) subpoena to issue to a service provider whose role is limited to that described in § 512(a), because such providers cannot remove or disable access to infringing content and thus cannot receive a valid notification under § 512(c)(3)(A), which is a prerequisite for a § 512(h) subpoena. The court also found no clear error in the district court’s factual finding that Cox acted only as a § 512(a) service provider. The Ninth Circuit affirmed the district court’s order quashing the subpoena. View "In re Subpoena Internet Subscribers of Cox Communications, LLC" on Justia Law

A state port authority and a group of related companies entered into a series of letters of intent (LOIs) regarding the possible expansion and operation of a port facility. The final LOI, signed in December 2019, included provisions for confidentiality, exclusivity, and certain legally binding terms, but also stated that it was not a binding agreement to consummate the potential transaction. The port authority’s board approved the LOI and several subsequent extensions, but the board minutes did not include the terms or conditions of the LOI. After negotiations failed, the port authority terminated the LOI. The companies claimed significant losses and alleged the port authority had breached the LOI and misused confidential information.The Harrison County Circuit Court found that the LOI was unenforceable under Mississippi’s “minutes rule,” which requires that public board contracts be sufficiently detailed in the board’s official minutes. The court dismissed all claims based on the LOI, including breach of contract and quantum meruit, but allowed claims for unjust enrichment and misappropriation of trade secrets to proceed. Both parties sought interlocutory appeal, and the appeals were consolidated.The Supreme Court of Mississippi affirmed the lower court’s ruling that the LOI was unenforceable because the board minutes did not contain enough terms to determine the parties’ obligations, and held that the minutes rule was not superseded by the Open Meetings Act. The court also held that unjust enrichment, as an implied contract claim, was barred by the minutes rule and reversed the trial court’s denial of summary judgment on that claim. However, the court affirmed that the companies’ notice of claim regarding misappropriation of trade secrets was sufficient under the Mississippi Tort Claims Act. The case was remanded for further proceedings on the remaining claim. View "The Mississippi State Port Authority at Gulfport v. Yilport Holding A.S." on Justia Law