Justia Trademark Opinion Summaries

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

Experience Hendrix filed suit against Pitsicalis alleging that Pitsicalis was infringing trademarks in violation of the Lanham Act, 15 U.S.C. 1051-1127, and that the trademark infringement also amounted to an unfair or deceptive trade practice proscribed by Washington's Consumer Protection Act (WCPA), Wash. Rev. Code 19.86.010-19.86.920. Determining that Pitsicalis had Article III standing, the court concluded, inter alia, that the WPRA was constitutional as applied to the narrow set of non-speculative circumstances at issue in this case; Pitsicalis was liable under the Lanham Act for using domain names that infringed Experience Hendrix's trademark "Hendrix"; and Paragraph 5 of the permanent injunction failed to state clearly the terms of the injunction and did not describe in reasonable detail the acts that were and were not restrained. Accordingly, the court reversed the district court's determination that the Washington statute was unconstitutional and remanded Pitsicalis's declaratory judgment claims pertaining to the WPRA with instructions to enter judgment on those claims in favor of Experience Hendrix; affirmed the grant of partial summary judgment on Experience Hendrix's claim that Pitsicalis's use of domain names infringed Experience Hendrix's mark; vacated the permanent injunction and remanded so the district court could revise the language at issue; reversed the Rule 50(b)(3) decision to strike most of the jury's award of damages under both the Lanham Act and the WPRA; affirmed the district court's order granting a new trial on damages under both statutes; remanded for a new trial on such damages; vacated the district court's award of attorney's fees under the WCPA; and remanded the fee request for further proceedings. View "Experience Hendrix v. HendrixLicensing.com" on Justia Law

Former starting quarterback for Arizona State University, Samuel Keller, filed a putative class action suit against EA, alleging that EA violated his right of publicity under California Civil Code 3344 and California common law by using Keller's likeness as part of the "NCAA Football" video game series. EA moved to strike the complaint as a strategic lawsuit against public participation (SLAPP) under California's anti-SLAPP statute, Cal. Civ. Proc. Code 425.16. The court concluded that EA could not prevail as a matter of law based on the transformative use defense where EA's use did not qualify for First Amendment protection because it literally recreated Keller in the very setting in which he had achieved renown. The court also concluded that, although there was some overlap between the transformative use test and the Rogers v. Grimaldi test, the Rogers test should not be imported wholesale to the right-of-publicity claims. Finally, the court concluded that state law defenses for reporting of information did not protect EA's use. Accordingly, the court affirmed the district court's denial of the motion to strike the complaint. View "In re: NCAA Licensing Litig." on Justia Law

Retired Hall of Fame football player, James "Jim" Brown, filed suit against EA, alleging that EA violated section 43(a) of the Lanham Act, 15 U.S.C. 1125(a), through the use of Brown's likeness in EA's "Madden NFL" series of football video games. The court rejected the "likelihood of confusion" test and the "alternative means" test, concluding that the only relevant legal framework for balancing the public's right to be free from consumer confusion about Brown's affiliation with "Madden NFL" and EA's First Amendment rights in the context of Brown's section 43(a) claim was the Rogers v. Grimaldi test. Applying the Rogers test, the court concluded that the use of Brown's likeness was artistically relevant to the "Madden NFL" games and that there were no alleged facts to support the claim that EA explicitly mislead consumers as to Brown's involvement with the games. In this case, the public interest in free expression outweighed the public interest in avoiding consumer confusion. Accordingly, the court affirmed the district court's grant of EA's motion to dismiss. View "Brown v. Electronic Arts, Inc." on Justia Law

Plaintiff, a religious order of the Roman Catholic Church that undertook charitable work internationally, filed suit against defendant, a charitable organization with an expressly ecumenical association, asserting infringement and false advertising claims under the Lanham Act, 15 U.S.C. 1051 et seq., as well as state law claims for unfair competition and violation of the Florida Deceptive and Unfair Trade Practices Act (FDUTPA), Fla. Stat. 501.201 et seq. The infringement claims were based on defendant's alleged use of marks that were confusingly similar to those for which plaintiff had obtained federal registrations. In the false advertising claim, plaintiff charged that defendant falsely claimed a historic affiliation with plaintiff going back to the eleventh century. The state law claims derived from these same litigations. Defendant counterclaimed, alleging that plaintiff committed fraud on the U.S. Patent and Trademark Office (PTO) in applying for its service marks due to plaintiff's failure to disclose its knowledge of the domestic presence of other organizations that used similar marks in commerce. The court concluded that the district court clearly erred in evaluating the claim that plaintiff committed fraud on the PTO and reversed the cancellation of the four word marks. Because the court was not presented with sufficient findings to review the Lanham Act infringement claims, the court vacated the district court's ruling on that issue and remanded. The court vacated the district court's ruling on the state law claims and affirmed the district court's finding on the Lanham Act false advertising claim in favor of defendant. View "Sovereign Military Hospitaller v. Knights Hospitallers" on Justia Law

Suntree appealed from the district court's order denying its motion for summary judgment and granting the motions for summary judgment filed by Ecosense and George Dussich with regard to Suntree's claims of false designation of origin and false advertising under Section 43(a) of the Lanham Act, 15 U.S.C. 1051-1127, common law trademark infringement and unfair competition, and deceptive and unfair trade practices pursuant to the Florida Deceptive and Unfair Trade Practices Act (FDUPTA), Fla. Stat. 501.201 et seq. Both Suntree and Ecosense manufacture baffle boxes, a filtration product. Suntree contended that the district court erred in concluding that Suntree failed to establish that Ecosense and Dussich directly or contributorily infringed on their trademark because it failed to present evidence of actual or of a likelihood of confusion. The court disagreed and affirmed the judgment. View "Suntree Technologies, Inc. v. Ecosense International, Inc., et al." on Justia Law

Skydive Arizona sued SKYRIDE for false advertising, trademark infringement, and cybersquatting. SKYRIDE subsequently appealed the district court's grant of partial summary judgment, the jury's actual damages and profits awards, and the district court's damages enhancement. Skydive Arizona cross-appealed the district court's limitation of the permanent injunction to Skydive Arizona, and sought a nationwide injunction against SKYRIDE. The court reversed with regard to the district court's doubling of actual damages, and reinstated the jury's original actual damages award for false advertising, and for trademark infringement. The court affirmed the district court on all other claims. Thus, as modified in actual damages for false advertising, $2.5 million in actual damages for trademark infringement, $2,500,004 in lost profits for trademark infringement, and $600,000 in statutory damages for cybersquatting. Accordingly, the court affirmed in part and modified in part.View "Skydive Arizona, Inc. v. Quattrochi, et al." on Justia Law

Appellants filed suit against Rearden Commerce, asserting numerous claims related to a conflict between the parties' marks and names. The district court granted Rearden Commerce's motion for summary judgment as to Appellants' trademark-related claims. Specifically, the district court found Rearden Commerce was entitled to judgment as a matter of law on Appellants' claims of false designation of origin under the Lanham Act, violations of the Anticybersquatting Consumer Protection Act, common law trademark infringement, and violations of the California Unfair Competition Law. The Ninth Circuit Court of Appeals vacated the district court, holding that genuine issues of material fact existed, which precluded summary judgment in favor of Rearden Commerce. Remanded for further proceedings. View "Rearden LLC v. Rearden Commerce, Inc." on Justia Law

FICO brought suit against three credit bureaus: Experian, Equifax, and Trans Union, as well as against VantageScore, the credit bureaus' joint venture. The suit alleged antitrust, trademark infringement, false-advertising, and other claims. FICO, Experian, and VantageScore appealed from the district court's judgment. The court held that FICO failed to demonstrate that it had suffered any antitrust injury that would entitle it to seek damages under section 4 of the Clayton Act, 15 U.S.C. 12-27, and FICO failed to demonstrate the threat of an immediate injury that might support injunctive relief under section 16. The court also held that there was no genuine issue of material fact that consumers in this market immediately understood "300-850" to describe the qualities and characteristics of FICO's credit score and therefore, the district court did not err in finding the mark to be merely descriptive. The court further held that there was sufficient evidence for a reasonable jury to determine that the U.S. Patent and Trademark Office (PTO) relied on FICO's false representation in deciding whether to issue the "300-850" trademark registration. The court agreed with the district court that VantageScore was not a licensee and therefore was not estopped from challenging the mark under either theory of agency or equity. The court finally held that FICO's false advertising claims were properly dismissed and the district court did not abuse its discretion in denying the motion for attorneys' fees. View "Fair Isaac Corp., et al. v. Experian Information Solutions, et al." on Justia Law