Justia Trademark Opinion Summaries

Janssen spent 10 years and over half a billion dollars developing an injectable version of the cancer drug trabectedin and patented some of the manufacturing processes. The data, specifications, and manufacturing methods were kept confidential as trade secrets. In 2015, the FDA approved the drug, Yondelis, for use in certain cancer patients. Two years later, two competitors—a Chinese corporation, and its U.S. subsidiary, eVenus—sought FDA approval to sell a generic version of Yondelis. Janssen sued for patent infringement. During discovery, Janssen obtained documents that indicated the defendants misappropriated trade secrets. Janssen filed another lawsuit under the Defend Trade Secrets Act, 18 U.S.C. 1836 (DTSA), became convinced that the defendants had spoliated evidence, and filed an ex parte application, asking that U.S. Marshals seize eVenus’s network servers and stored data, and certain laptops and cell phones.The district court denied the application, concluding that Janssen had not shown that eVenus was in actual possession of the property or that eVenus’s property was at the location of the proposed seizure. It also found an insufficient showing of immediate and irreparable harm or immediate concern for spoliation and that the seizure would encompass company information not limited to the matters at issue. The Third Circuit dismissed an appeal for lack of jurisdiction. A DTSA seizure order is directed to law enforcement—not a party against whom the order could be enforced by threat of contempt–so the order did not effectively deny an injunction. View "Janssen Products LP v. Evenus Pharmaceuticals Laboratories Inc" on Justia Law

Seven years ago, A.D. was hired to create a PVT (“pressure volume temperature”) simulation software program. Sah was hired by A.D. to develop a PVT software program in exchange for a stake in one of A.D.’s companies, IPSS. Eight months later, a product called InPVT hit the market. Plaintiff Calsep started looking into InPVT. In Calsep’s assessment, A.D. didn’t have the technical skills or resources to develop a PVT product. Calsep filed another motion to compel, alleging that A.D. still hadn’t adequately disclosed his source code control system. Although A.D. had “produced [a] purported source code system” in April and July, Calsep claimed that these productions were “undoubtedly incomplete” and “had been manipulated.” Believing the deletions to be intentional, Calsep filed a motion for sanctions. Afterward, A.D. filed a motion for reconsideration based on newly discovered forensic images that “vindicated” him. The magistrate judge recommended denying the motion, and the district court agreed, denying the motion for reconsideration of the sanctions order. A.D. appealed.   The Fifth Circuit affirmed the district court’s decision on A.D.'s motion for reconsideration. The court explained that A.D. cannot offer any reason—other than mere forgetfulness—why he couldn’t acquire the images sooner. Further, A.D. hasn’t shown that he acted with diligence during the case to locate these images. Moreover, the court explained that although A.D. argues that the images change the game, Calsep’s expert insists that too much data is still missing from the source code control system, rendering a proper review impossible. The court noted that there was no reason to question the district court’s judgment crediting Calsep’s expert testimony. View "Calsep v. Dabral" on Justia Law

Impossible X, now a Texas LLC, is a one-person company run by Joel Runyon, a self-described “digital nomad” who for two years operated his business from San Diego. Impossible X sells apparel, nutritional supplements, diet guides, and a consulting service through its website and various social media channels. Impossible Foods sued Impossible X in federal court in California, seeking a declaration that Impossible Foods’ use of the IMPOSSIBLE mark did not infringe on Impossible X’s trademark rights. The district court dismissed the case for lack of personal jurisdiction.   The Ninth Circuit reversed the district court’s dismissal. The panel held that Impossible X was subject to specific personal jurisdiction in California because it previously operated out of California and built its brand and trademarks there, and its activities in California were sufficiently affiliated with the underlying trademark dispute to satisfy the requirements of due process. First, Impossible X purposefully directed its activities toward California and availed itself of the privileges of conducting activities there by building its brand and working to establish trademark rights there. Second, Impossible Foods’ declaratory judgment action arose out of or related to Impossible X’s conduct in California. The panel did not confine its analysis to Impossible X’s trademark enforcement activities, but rather concluded that, to the extent the Federal Circuit follows such an approach for patent declaratory judgments, that approach is not justified in the trademark context. Third, the panel concluded that there was nothing unreasonable about requiring Impossible X to defend a lawsuit based on its trademark building activities in the state that was its headquarters and Runyon’s home base. View "IMPOSSIBLE FOODS INC. V. IMPOSSIBLE X LLC" on Justia Law

Plaintiff alleged that Valeant fraudulently obtained two sets of patents related to a drug and asserted these patents to stifle competition from generic drugmakers. Plaintiff further alleged that Defendants defrauded the federal government by charging an artificially inflated price for the drug while falsely certifying that its price was fair and reasonable. Dismissing Plaintiff’s action under the False Claims Act’s public disclosure bar, the district court concluded that his allegations had already been publicly disclosed, including in inter partes patent review (“IPR”) before the Patent and Trademark Office.   The Ninth Circuit reversed the district court’s dismissal. The panel held that an IPR proceeding in which the Patent and Trademark Office invalidated Valeant’s “‘688” patent was not a channel (i) disclosure because the government was not a party to that proceeding, and it was not a channel (ii) disclosure because its primary function was not investigative. The panel held that, under United States ex rel. Silbersher v. Allergan, 46 F.4th 991 (9th Cir. 2022), the patent prosecution histories of Valeant’s patents were qualifying public disclosures under channel (ii). The panel assumed without deciding that a Law360 article and two published medical studies were channel (iii) disclosures. The panel held that the “substantially the same” prong of the public disclosure bar applies when the publicly disclosed facts are substantially similar to the relator’s allegations or transactions. None of the qualifying public disclosures made a direct claim that Valeant committed fraud, nor did they disclose a combination of facts sufficient to permit a reasonable inference of fraud. View "ZACHARY SILBERSHER, ET AL V. VALEANT PHARMACEUTICALS INT'L, ET AL" on Justia Law

Herbal Brands, Inc., which has its principal place of business in Arizona, brought suit in Arizona against New York residents that sell products via Amazon storefronts. Herbal Brands alleged that Defendants’ unauthorized sale of Herbal Brands products on Amazon to Arizona residents and others violated the Lanham Act and state law. The district court dismissed for lack of personal jurisdiction over Defendants.   The Ninth Circuit reversed. The panel held that if a defendant, in its regular course of business, sells a physical product via an interactive website and causes that product to be delivered to the forum, then the defendant has purposefully directed its conduct at the forum such that the exercise of personal jurisdiction may be appropriate. The panel applied the Arizona long-arm statute, which provides for personal jurisdiction co-extensive with the limits of federal due process. Due process requires that a nonresident defendant must have “certain minimum contacts” with the forum such that the exercise of personal jurisdiction does not offend traditional notions of fair play and substantial justice.   The panel held that Herbal Brands met its initial burden of showing that Defendants purposefully directed their activities at the forum because, under the Calder effects test, Defendants’ sale of products to Arizona residents was an intentional act, and Herbal Brands’ cease-and-desist letters informed defendants that their actions were causing harm in Arizona. The court held that Defendants had sufficient minimum contacts with Arizona, Herbal Brands’ harm arose out of those contacts, and the exercise of personal jurisdiction would be reasonable in the circumstances. View "HERBAL BRANDS, INC. V. PHOTOPLAZA, INC., ET AL" on Justia Law

Plaintiff-Appellant M Welles and Associates, Inc. (“Welles”) appealed a district court's decision concluding that Defendant-Appellee Edwell, Inc. was not liable for trademark infringement, thereby granting granted final judgment for Edwell. "The marks at issue are undoubtedly similar:" Welles used the mark "EDWEL," whereas Edwell uses the mark "EDWELL." Similarity notwithstanding, the magistrate judge found that consumers were unlikely to be confused by the marks because Edwell never intended to copy Welles’s mark, the parties operated in different markets, consumers were likely to exercise a high degree of care in selecting the parties’ services, and there was almost no evidence of actual confusion. On appeal, Welles argued the magistrate judge applied an erroneous legal standard in analyzing likelihood of confusion, urged the Tenth Circuit Court of Appeals to adopt a presumption of confusion for cases like this one, and contended that the magistrate judge clearly erred in finding no likelihood of confusion. The Tenth Circuit rejected each of Welles’s arguments and affirmed final judgment for Edwell. View "M Welles & Associates v. Edwell" on Justia Law

Microsoft Corporation offers email security software to shield users from cyber threats. TocMail, Inc. is a relative newcomer to the cybersecurity scene and offers a product geared towards a specific type of threat called Internet Protocol (IP) evasion. TocMail sued Microsoft for false advertising—all within two months. In its complaint, TocMail alleged that Microsoft misled the public into believing that Microsoft’s product offered protection from IP evasion. And TocMail—who had been selling its product for two months, spent almost nothing on advertising and had not made a single sale—alleged billions of dollars in lost profits. TocMail brought two counts: false and misleading advertising under the Lanham Act (count one); and contributory false and misleading advertising under the Lanham Act. The district court entered summary judgment for Microsoft.   The Eleventh Circuit vacated the district court’s summary judgment order and remanded to the district court with instructions to dismiss this case without prejudice for lack of standing. The court explained that to establish an injury, in fact, a plaintiff must show “an invasion of a legally protected interest which is (a) concrete and particularized; and (b) actual or imminent, not conjectural or hypothetical.” The court wrote that TocMail failed to meet this standard because TocMail has offered no evidence from which a reasonable jury could find that it suffered any injury. TocMail didn’t offer testimony from any witness saying that he or she would have purchased TocMail’s product if not for Microsoft’s advertising. TocMail didn’t offer any expert testimony calculating TocMail’s lost sales from consumers who went with Microsoft. View "TocMail Inc. v. Microsoft Corporation" on Justia Law

Defendant Citizens Equity First Credit Union (CEFCU) petitioned the Trademark Trial and Appeal Board (TTAB) to cancel a trademark registration belonging to Plaintiff San Diego County Credit Union (SDCCU). SDCCU procured a stay to the TTAB proceedings by filing an action seeking declaratory relief to establish that it was not infringing either of CEFCU’s registered and common-law marks and to establish that those marks were invalid. The district court granted SDCCU’s motion for summary judgment on noninfringement. After a bench trial, the district court also held that CEFCU’s common-law mark was invalid and awarded SDCCU attorneys’ fees.   The Ninth Circuit filed (1) an order amending its opinion, denying a petition for panel rehearing, and denying on behalf of the court a petition for rehearing en banc; and (2) an amended opinion affirming in part and vacating in part the district court’s judgment and award of attorneys’ fees. The panel held that SDCCU had no personal stake in seeking to invalidate CEFCU’s common-law mark because the district court had already granted summary judgment in favor of SDCCU, which established that SDCCU was not infringing that mark. The panel held that the district court correctly exercised personal jurisdiction over CEFCU regarding SDCCU’s noninfringement claims, which sought declaratory relief that SDCCU was not infringing CEFCU’s registered mark or common-law mark. View "SAN DIEGO COUNTY CREDIT UNION V. CEFCU" on Justia Law

Springboards for Education (“Springboards”) brought trademark infringement claims against McAllen Independent School District (“MISD”), a public school district in Texas, and IDEA Public Schools (“IDEA”), a nonprofit organization operating charter schools in Texas. The district court dismissed the suit against IDEA, concluding it was an arm of the state and therefore shared Texas’s sovereign immunity. As for MISD, the court found that it did not have sovereign immunity but ultimately granted summary judgment in MISD’s favor.   The Fifth Circuit affirmed the district court’s judgment for MISD. The court explained that while it disagrees with the district court’s conclusion that IDEA has sovereign immunity, the court affirmed the judgment for IDEA on alternate grounds. The court reasoned that in determining whether an entity is an arm of the state, the court balances the so-called “Clark factors,” which our court first articulated decades ago in Clark v. Tarrant County. Those factors are: (1) whether state statutes and case law view the entity as an arm of the state; (2) the source of the entity’s funding; (3) the entity’s degree of local autonomy; (4) whether the entity is concerned primarily with local, as opposed to statewide, problems; (5) whether the entity has the authority to sue and be sued in its own name; and (6) whether it has the right to hold and use property. The court held that factors one and three favor sovereign immunity while factors two, four, five, and six do not. The court concluded that IDEA is not an arm of the state and does not share in Texas’s sovereign immunity. View "Springboards v. IDEA Public Schools" on Justia Law

Defendant Citizens Equity First Credit Union (CEFCU) petitioned the Trademark Trial and Appeal Board (TTAB) to cancel a trademark registration belonging to plaintiff San Diego County Credit Union (SDCCU). SDCCU procured a stay to the TTAB proceedings by filing an action seeking declaratory relief to establish that it was not infringing either of CEFCU’s registered and common-law marks and to establish that those marks were invalid. The district court granted SDCCU’s motion for summary judgment on noninfringement. After a bench trial, the district court also held that CEFCU’s common-law mark was invalid and awarded SDCCU attorneys’ fees.   The Ninth Circuit affirmed in part and vacated in part the district court’s judgment and award of attorneys’ fees in favor of Plaintiff and remanded. The panel held that SDCCU had no personal stake in seeking to invalidate CEFCU’s common-law mark because the district court had already granted summary judgment in favor of SDCCU, which established that SDCCU was not infringing that mark. Hence, there was no longer any reasonable basis for SDCCU to apprehend a trademark infringement suit from CEFCU. After it granted summary judgment in favor of SDCCU, the district court was not resolving an actual “case” or “controversy” regarding the validity of CEFCU’s common-law mark; thus, it lacked Article III jurisdiction to proceed to trial on that issue. The panel therefore vacated the district court’s judgment and its award of attorneys’ fees, which was based, in part, on the merits of the invalidity claim over which the district court lacked Article III jurisdiction. View "SAN DIEGO COUNTY CREDIT UNION V. CEFCU" on Justia Law