Justia Trademark Opinion SummariesArticles Posted in Contracts
Arborjet, Inc. v. Rainbow Treecare Scientific Advancements, Inc.
Arborjet, Inc. (Plaintiff), which manufactures and sells an emamectin benzoate solution used to protect trees from pests called TREE-age, granted Rainbow Treecare Scientific Advancements, Inc. (Defendant) an exclusive right to distribute TREE-age pursuant to a sales agency contract. After termination of this agreement, Defendant began marketing and distributing ArborMectin, another emamectin benzoate combination meant to compete directly with TREE-age. Plaintiff sued Defendant seeking to enjoin Defendant’s sales of ArborMectin and alleging several claims. The district court granted Plaintiff a preliminary injunction to run during the litigation that was meant to enforce the contractual agreement and prohibit a trademark violation. The First Circuit affirmed in part and reversed in part the order comprising the preliminary injunction, holding (1) it was not clear error to find a likely showing that Defendant contributed to the creation of ArborMectin; (2) the district court did not err in entering the portion of the preliminary injunction based on Arborjet’s contract claim; but (3) ordering proper attribution of “Arborjet” and “TREE-age” was improper given the district court’s rulings on the Lanham Act claims. View "Arborjet, Inc. v. Rainbow Treecare Scientific Advancements, Inc." on Justia Law
Burford v. Accounting Practice Sales, Inc
Burford agreed to facilitate the purchase and sale of accounting practices for APS. The parties initially signed a contract assigning Louisiana to Burford. They later orally agreed that Burford should also cover Alabama, Mississippi, Tennessee, and Kentucky. APS terminated the contract. Burford sued for breach of contract; APS filed a counterclaim under the Lanham Act, 15 U.S.C. 1051, claiming that Burford started a rival business, “American Accounting Practice Sales,” after APS terminated his contract. APS obtained summary judgment on the contract claim, arguing that the contract was terminable at will. APS voluntarily dismissed its counterclaim with prejudice. As the prevailing party on the Lanham Act claim, Burford sought attorney fees. The district court denied the motion, reasoning that APS’s Lanham Act claim could have been pursued by a rational party seeking to protect its trademark. The Seventh Circuit reversed grant of summary judgment on the contract claim, but affirmed the denial of attorney fees. The contract provided that it could be terminated by APS only if Burford violated the terms of the agreement; even if it was indefinite in duration, the parties contracted around the default rule making such contracts terminable at will. View "Burford v. Accounting Practice Sales, Inc" on Justia Law
Derma Pen v. 4EverYoung Limited
Two companies, Derma Pen, LLC and 4EverYoung, entered a sales distribution agreement. Under the agreement, Derma Pen, LLC obtained the exclusive right to use the DermaPen trademark in the United States. 4EverYoung had a contractual right of first refusal, allowing purchase of Derma Pen, LLC’s U.S. trademark rights upon termination of the distribution agreement. Derma Pen, LLC terminated the agreement, and 4EverYoung wanted to exercise its contractual right of first refusal. The parties reached an impasse, and 4EverYoung started using the DermaPen trademark in the United States. Derma Pen, LLC sued and requested a preliminary injunction to prevent 4EverYoung’s use of the trademark. The district court declined the request, concluding that 4EverYoung was likely to prevail. This appeal to the Tenth Circuit followed, presenting the question: whether Derma Pen, LLC was likely to prevail on its claims of trademark infringement and unfair competition by proving a protectable interest in the trademark. The Court concluded Derma Pen, LLC was likely to prevail by satisfying this element. The district court was reversed and the case remanded for further proceedings. View "Derma Pen v. 4EverYoung Limited" on Justia Law
Automated Solutions Corp. v. Paragon Data Sys., Inc.
In 2001, ASC and Paragon entered into a contract to develop and support computer software for the Chicago Tribune. This software, called the “Single Copy Distribution System” (SCDS) would allow the Tribune to manage and track newspaper deliveries and subscriptions. Tensions emerged and Paragon terminated the contract in 2003. ASC successfully sued Paragon in Ohio state court, obtaining a declaration that ASC was the sole owner of the SCDS. In federal court, ASC alleged copyright infringement, trademark infringement, breach of contract, conversion, tortious interference with a business relationship, unjust enrichment, and unfair competition based on Paragon’s alleged copying of the SCDS software to use in its DRACI software, developed in 2004 for another newspaper. After eight years of litigation, the district court granted summary judgment to Paragon on all claims. The Sixth Circuit affirmed, stating that ASC had never submitted any evidence identifying the unique protectable elements of SCDS, and that there was insufficient evidence to generate even an implication that DRACI is substantially similar to SCDS. View "Automated Solutions Corp. v. Paragon Data Sys., Inc." on Justia Law
Bose Corp. v. Ejaz
Defendant sold home theater systems manufactured by Plaintiff, Bose Corporation, for use in the U.S. to customers abroad. Defendant, who was not an authorized reseller or distributor of Bose products, sold the systems across international markets to take advantage of high retail prices in other countries. Plaintiff filed this action against Defendant for breach of contract and trademark infringement, asserting that Defendant sold its American products in Australia without Plaintiff's consent even though he had signed a settlement agreement promising not to make such sales after he had made similar sales in Europe. The First Circuit Court of Appeals affirmed, holding (1) the settlement agreement was a valid contract; and (2) summary judgment on the trademark infringement claim was appropriate. View "Bose Corp. v. Ejaz" on Justia Law
Gary Friedrich Enters., LLC v. Marvel Characters, Inc.
Plaintiff sued Marvel, contending that he conceived the comic book character "Ghost Rider," the related characters, and the origin story. Plaintiff also claimed that he owned the renewal term copyrights in those works. On appeal, plaintiff challenged the district court's grant of summary judgment in favor of Marvel, holding that plaintiff had assigned any rights he had in the renewal term copyrights to Marvel when he executed a form work-for-hire agreement (the Agreement), six years after the initial publication of the issue in question. The court, by applying the "strong presumption against the conveyance of renewal rights," concluded that the district court erred in holding as a matter of law that plaintiff had assigned his renewal rights to Marvel by signing the Agreement; plaintiff's claim was not untimely as a matter of law because there were genuine disputes regarding whether plaintiff should have known about Marvel's repudiation of his claim of ownership; and there were genuine disputes of material fact that precluded granting summary judgment on the issue of authorship. Accordingly, the court vacated and remanded for trial. View "Gary Friedrich Enters., LLC v. Marvel Characters, Inc." on Justia Law
Daniels Health Sciences, L.L.C v. Vascular Health Sciences, L.L.C.
DHS sued VHS for misappropriation of trade secrets, breach of contract, and trademark violations. DHS engaged VHS to market and sell the drug Provasca. After that relationship ended, VHS began to manufacture, market, and sell Arterosil, a product similar in many respects to Provasca. The court held that the district court granted DHS's request for a preliminary injunction after making sufficient findings of fact to support each element of the analysis and applying the correct legal standard to those facts. Therefore, the court affirmed the district court's grant of the preliminary injunction in full and lifted the stay of the injunction. The court remanded and directed the district court to expedite the trial on the permanent injunction and to attempt to narrow the breadth of its preliminary injunction. View "Daniels Health Sciences, L.L.C v. Vascular Health Sciences, L.L.C." on Justia Law
Yellowbook Inc. v. Brandeberry
In 2002 Brandeberry sold his phonebook business, AMTEL, to White, who in turn sold the business to Yellowbook, a national publisher of yellow-pages directories. In 2009, Brandeberry started a rival phonebook under the AMTEL name. Yellowbook brought a trademark-infringement suit. The district court found that when Brandeberry initially purchased the rights to the AMTEL mark the rights were transferred to both him individually and his corporation; since the sale to White did not involve Brandeberry in an individual capacity, Brandeberry retained his individual rights, and White received only a non-exclusive right to use the mark. The Sixth Circuit reversed, holding that the contract transferred exclusive ownership of the mark and, even if it did not, Brandeberry’s rights were abandoned. The initial contract cannot be read to create joint ownership, and trademark law would not permit joint ownership under the facts in this case. View "Yellowbook Inc. v. Brandeberry" on Justia Law
Creative Playthings Franchising Corp. v. Reiser
Plaintiff Creative Playthings Ltd., a Massachusetts corporation, entered into a franchising agreement with Defendant under which Defendant agreed to operate a Creative Playthings franchise store in Florida. Plaintiff later terminated its agreement with Defendant and commenced this action against Defendant in the U.S. district court for breach of contract and associated claims. Defendant filed several counterclaims against Creative. Creative moved for summary judgment on Defendant's counterclaims, asserting they were time barred under the limitations provision in the franchise agreement. The federal district court judge declined to decide Creative's motion and instead certified the question of whether contractually shortened statutes of limitations are generally enforceable under Massachusetts law. The Supreme Court answered by holding that, in a franchise agreement governed by Massachusetts law, a limitations period in the contract shortening the time within which claims must be brought is valid and enforceable under Massachusetts law if the claim arises under the contract and the agreed-upon limitations period is subject to negotiation by the parties, is not otherwise limited by controlling statute, is reasonable, is not a statute of repose, and is not contrary to public policy. View "Creative Playthings Franchising Corp. v. Reiser" on Justia Law
H-D MI, LLC v. Hellenic Duty Free Shops, S.A.
Harley-Davidson had a licensing agreement with a subsidiary of DFS and received notice that the companies had merged. Harley-Davidson did not exercise its right to terminate, but later discovered that DFS had sold unauthorized products bearing the trademark to an unapproved German retailer. Harley-Davidon sent an e-mail saying that it believed DFS was in breach of contract and that it was suspending approval of products. DFS responded in kind. Harley-Davidson then attempted to recover unpaid royalties and to secure from DFS information required under the agreement. DFS refused these attempts, but submitted production samples for a new collection. Harley-Davidson reminded DFS of the termination. DFS advised Harley-Davidson that it had “wrongfully repudiated the License Agreement” and that DFS planned to act unilaterally in accordance with its own views of rights and obligations. The district court granted injunctive relief against DFS, which was attempting to litigate the dispute in Greece. The Seventh Circuit affirmed. Harley-Davidson made strong showings that DFS was deliberately breaching a licensing agreement and “has tried numerous legal twists and contortions to try to avoid the legal consequences.” The court rejected an argument that the agreement provision consenting to personal jurisdiction in Wisconsin was not binding on DFS. View "H-D MI, LLC v. Hellenic Duty Free Shops, S.A." on Justia Law