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The Eleventh Circuit affirmed the district court's denial of Hard Candy's request for a jury trial in an action under the Lanham Act. In this case, Hardy Candy sought every remedy permitted by the Act besides actual damages: an injunction to prevent future infringement, an accounting and the disgorgement of profits that the defendant made from the allegedly infringing goods, and declaratory relief, along with fees and costs. The court held that the remedy of an accounting and disgorgement of profits for trademark infringement is equitable in nature and has long been considered that way, and thus a plaintiff seeking the defendant's profits in lieu of actual damages is not entitled to a jury trial. The panel also held that the district court did not err in its merits determinations on infringement and fair use. View "Hard Candy, LLC v. Anastasia Beverly Hills, Inc." on Justia Law

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VersaTop and Georgia Expo are competitors in the “drape and rod” industry. Both produce and sell systems of modular rod and pole structures, for assembly to form sectional spaces such as trade show booths and other drape-separated structures, as well as temporary barricades. VersaTop’s system for coupling structural components is the subject of the 027 patent and is called the “‘ball and crown’ coupler.” VersaTop alleged that since 2011 it has sold these systems with the trademarks PIPE & DRAPE 2.0™ and 2.0™ and that Georgia Expo distributed advertising and brochures that contained these VersaTop trademarks as well as pictures of the VersaTop coupler. The district court held that Georgia Expo did not infringe VersaTop’s patent, copyright, or trademark rights. Only the trademark issue was appealed. The Federal Circuit reversed. The district court incorrectly applied the definition of “use in commerce” and concluded that Georgia Expo’s use of the marks was not in commerce so that there was no infringement. Under the Trademark Act, 15 U.S.C. 1127, a trademark owner is entitled to summary judgment on a claim of likelihood of confusion where the marks were identical, the goods were related, and the marketing channels overlapped. View "VersaTop Support Systems, LLC v. Georgia Expo, Inc." on Justia Law

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Siny sought to register the mark CASALANA in standard characters for “Knit pile fabric made with wool for use as a textile in the manufacture of outerwear, gloves, apparel, and accessories” based on use in commerce under the Lanham Act, 15 U.S.C. 1051(a). Siny submitted a specimen consisting of a webpage printout. The examining attorney refused registration because the specimen “appear[ed] to be mere advertising material,” that did not include a means for ordering the goods. Siny submitted the same webpage with additional text stating, “For sales information:” followed by a phone number and email address. The examining attorney found that the text alone was insufficient for consumers to make a purchase, noting the absence of necessary ordering information, such as minimum quantities, cost, payment options, or shipping information. The Trademark Board and Federal Circuit affirmed. For a mark to be in use in commerce on goods, it may be “placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto.” The Webpage Specimen was not placed on the goods or their containers, tags, or labels and did not cross the line from mere advertising to an acceptable display associated with the goods. While some details must be worked out by telephone, if virtually all important aspects of the transaction must be determined from information extraneous to the webpage, the webpage is not a point of sale. View "In re: Siny Corp." on Justia Law

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The Eighth Circuit affirmed the district court's grant of summary judgment for Iowa Parts in a trademark secrets and intellectual property action brought by CMI. The court held that CMI could not establish its burden of proving that the discovery rule saves its statutory cause of action because it was on inquiry notice that Iowa Parts was making its component parts, possibly with its engineering documents and other trade secrets, starting in 2002 and continuing thereafter. The court also held that CMI was on notice of a possible problem as early as 2002 on the conversion claim. Finally, the district court properly granted summary judgment on the unjust enrichment claim where an equitable claim could not provide alternative relief. View "CMI Roadbuilding, Inc. v. Iowa Parts, Inc." on Justia Law

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The Eleventh Circuit affirmed the district court's grant of summary judgment based on its finding that Kroma EU lacked standing to enforce the KROMA trademark. By Lee Tillett, Inc. was the owner and registrant of the mark and had the rights to use the KROMA mark in the United States. Some time after Tillett granted an exclusive license to Kroma EU, defendants (the Kardashian sisters) endorsed a cosmetic line called "Khroma Beauty," that was sold and manufactured by Boldface. The California district court subsequently granted Tillett's motion for a preliminary injunction against Boldface, finding that Tillett had demonstrated a likelihood of success on the trademark infringement claim. On appeal here, the court adopted the position taken by the district courts in this circuit and held that a licensee's right to sue to protect the mark largely depends on the rights granted to the licensee in the licensing agreement. The court held that the licensing agreement at issue did not give Kroma EU sufficient rights in the name to sue under the Lanham Act. In this case, the plain language of the licensing agreement demonstrated that the parties' intent was for Tillett to retain all ownership and enforcement rights; the agreement plainly authorized Tillett to file suit against infringers; and Kroma EU was limited in its available recourse. View "Kroma Makeup EU, LLC v. Boldface Licensing + Branding, Inc." on Justia Law

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This case involved ten years of litigation regarding an attempt to simultaneously sell a restaurant and license associated intellectual property. The Fifth Circuit affirmed the district court's ruling that the Bill of Sale assigned all Camellia Grill Trademark rights to Hicham Khodr; affirmed the district court's ruling that the Bill of Sale assigned the trade dress associated with the Carrollton restaurant; affirmed the district court's finding that infringement damages were unwarranted; reversed the district court's denial of summary judgment on the trade-dress breach of contract claim and remanded for proceedings to determine if Khodr breached the License Agreement by using the alleged trade dress at the Chartres restaurant; and affirmed the district court's compensable damages ruling. View "Uptown Grill, LLC v. Camellia Grill Holdings, Inc." on Justia Law

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The Second Circuit affirmed the district court's judgment granting attorneys' fees and costs to defendants under section 505 of the Copyright Act and section 35(a) of the Lanham Act. These provisions authorized the district court to award fees to the prevailing party in a lawsuit. The court held that defendants met the definition of "prevailing party" under both fee-shifting provisions. Although defendants did not obtain a dismissal on the the Copyright and Lanham Acts claims, defendants have fulfilled their primary objective by obtaining dismissal of the complaint on collateral estoppel grounds. View "Manhattan Review, LLC v. Yun" on Justia Law

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In this trademark infringement action, the district court granted Alliance for Good Government summary judgment on its trademark infringement claim against Coalition for Better Government, enjoined Coalition from the use of both its logo and its trade name, and then awarded Alliance attorney's fees incurred in bringing the lawsuit. The Fifth Circuit affirmed in part and held that the district court did not abuse its discretion in finding that Alliance was entitled to fees. The court remanded for the district court to reassess the amount of fees, because the court has since modified the district court's injunction to permit Coalition to use its trade name. View "Alliance for Good Government v. Coalition for Better Government" on Justia Law

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Fourth Estate, a news organization that licensed works to Wall-Street.com, a news website. sued Wall-Street for copyright infringement of articles that Wall-Street failed to remove from its website after canceling the license agreement. Fourth Estate had applied to register the articles with the Copyright Office, but the Register had not acted on those applications. No civil infringement action “shall be instituted until . . . registration of the copyright claim has been made,” 17 U.S.C. 411(a). The Eleventh Circuit and a unanimous Supreme Court affirmed the dismissal of the suit. Registration occurs, and a copyright claimant may commence an infringement suit, upon registration; a copyright owner can then recover for infringement that occurred both before and after registration. In limited circumstances, copyright owners may file suit before undertaking registration. For example, an owner who is preparing to distribute a work that is vulnerable to predistribution infringement—e.g., a movie or musical composition—may apply for preregistration; an owner may also sue for infringement of a live broadcast before registration. The Court rejected Fourth Estate’s “application approach” argument that registration occurs when a copyright owner submits a proper application. In 1976 revisions to the Copyright Act, Congress both reaffirmed that registration must precede an infringement suit. The Act safeguards copyright owners by vesting them with exclusive rights upon creation of their works and prohibiting infringement from that point forward. To recover for such infringement, copyright owners must apply for registration and await the Register’s decision. An administrative lag in processing applications does not allow revision of section 411(a)’s congressionally-composed text. View "Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC" on Justia Law

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Sköld coined the name “Restoraderm” for a proprietary drug-delivery formulation that he developed for potential use in skin-care products. He entered into a 2001 letter of intent with CollaGenex, a skin-care company, stating that “[a]ll trademarks associated with the drug delivery system … shall be applied for and registered in the name of CollaGenex and be the exclusive property of CollaGenex.” Their 2002 contract reiterated those provisions and stated that termination of the agreement would not affect any vested rights. With Sköld’s cooperation, CollaGenex applied to register the Restoraderm mark. Under a 2004 Agreement, Sköld transferred Restoraderm patent rights and goodwill to CollaGenex, without mentioning trademark rights. After Galderma bought CollaGenex it used Restoraderm as a brand name on products employing other technologies. In 2009, Galderma terminated the 2004 Agreement, asserting that it owned the trade name and that Sköld should not use the name. Sköld markets products based on the original Restoraderm technology that do not bear the Restoraderm mark. Galderma’s Restoraderm product line has enjoyed international success. Sköld sued, alleging trademark infringement, false advertising, unfair competition, breach of contract, and unjust enrichment. Only Sköld’s unjust enrichment claim was successful. The Third Circuit reversed in part, absolving Galderma of liability. The 2004 agreement, rather than voiding CollaGenex’s ownership of the mark by implication, confirmed that CollaGenex owned the Restoraderm mark. Galderma succeeded to those vested rights. View "Skold v. Galderma Laboratories L.P." on Justia Law