Justia Trademark Opinion Summaries

A South Korean entertainment company that owns trademarks for the popular “Baby Shark” song and related products brought a lawsuit in the United States District Court for the Southern District of New York against dozens of China-based businesses. The company alleged these businesses manufactured or sold counterfeit Baby Shark merchandise, violating trademark, copyright, and unfair competition laws. Seeking to stop the alleged counterfeiting, the company obtained temporary and preliminary injunctions and moved to serve the defendants by email, arguing that this method was appropriate under Federal Rule of Civil Procedure 4(f)(3).After the plaintiff served process by email, most defendants did not respond, leading to default judgments against many of them. However, two defendants appeared and challenged the court’s jurisdiction, arguing that service by email violated the Hague Service Convention, to which both the United States and China are parties. The district court agreed, finding that the Convention did not permit service by email on parties in China, and dismissed the claims against these defendants without prejudice for improper service. The plaintiff appealed to the United States Court of Appeals for the Second Circuit.The United States Court of Appeals for the Second Circuit affirmed the district court’s decision. The appellate court held that the Hague Service Convention does not allow email service on defendants located in China, as China has expressly objected to alternative methods such as those in Article 10 of the Convention. The court further held that neither Federal Rule of Civil Procedure 4(f)(2) nor any purported emergency exception permitted email service in these circumstances. The court also upheld the denial of a default judgment, finding no abuse of discretion. Accordingly, the dismissal of the claims against the two China-based defendants for lack of proper service was affirmed. View "Smart Study Co., LTD v. Shenzhenshixindajixieyouxiangongsi" on Justia Law

Two brothers, Tom and Robert Hoffmann, were formerly partners in a family heating and air conditioning business. After Robert bought out Tom’s interest, they settled their disputes in state court with an agreement that included a four-year prohibition on Tom’s use of the “Hoffmann” name in any HVAC business, as well as non-disparagement and non-solicitation clauses. After the four-year period, Tom started a new company, Hoffmann Air Conditioning & Heating, LLC, using the family name. Robert and his company, Hoffmann Brothers Heating and Air Conditioning, Inc., objected and filed suit in federal court, alleging copyright infringement, trademark infringement, unfair competition, and breach of contract.The United States District Court for the Eastern District of Missouri granted summary judgment to Tom and his company on the copyright claim, finding insufficient evidence of damages or a causal link between the alleged infringement and any profits. The remaining claims proceeded to a jury trial, which resulted in a mixed verdict largely favoring Tom and his company on the trademark and unfair competition claims. Both sides sought attorney fees, but the district court denied all requests.On appeal, the United States Court of Appeals for the Eighth Circuit reviewed the district court’s rulings. The appellate court affirmed the summary judgment on the copyright claim, holding that the evidence of damages and profits was too speculative. It also upheld the jury instructions and verdict on the trademark claims, finding the instructions properly reflected the law regarding customer sophistication and initial-interest confusion. The court agreed that ambiguity in the settlement agreement’s language about post-four-year use of the Hoffmann name was a factual question for the jury. Finally, the court affirmed the denial of attorney fees to Robert, as he had not personally incurred any fees. The judgment of the district court was affirmed in all respects. View "Hoffmann Bros. Heating & Air v. Hoffmann Air & Heating" on Justia Law

Yuga Labs, Inc. created the Bored Ape Yacht Club (BAYC) NFT collection, which became highly popular and valuable. Defendants Ryder Ripps and Jeremy Cahen created a nearly identical NFT collection called Ryder Ripps Bored Ape Yacht Club (RR/BAYC), using the same images and identifiers as Yuga's BAYC NFTs. Yuga sued for trademark infringement and cybersquatting, while Defendants countersued under the Digital Millennium Copyright Act (DMCA) and sought declaratory relief that Yuga had no copyright protection over the Bored Apes.The United States District Court for the Central District of California dismissed Defendants' declaratory-judgment counterclaims for lack of subject-matter jurisdiction and granted summary judgment for Yuga on its trademark infringement and cybersquatting claims, as well as on Defendants' DMCA counterclaim. The court then held a bench trial on remedies, enjoining Defendants from using the BAYC marks and awarding Yuga over $8 million in disgorgement of profits, statutory damages, attorney fees, and costs.The United States Court of Appeals for the Ninth Circuit reviewed the case. The court held that NFTs can be trademarked under the Lanham Act as they are considered "goods." However, the court reversed the district court's grant of summary judgment for Yuga on its trademark infringement and cybersquatting claims, concluding that Yuga did not prove as a matter of law that Defendants' actions were likely to cause consumer confusion. The court found that Defendants' use of Yuga's marks did not constitute nominative fair use and was not protected by the First Amendment. The court affirmed the district court's rejection of Defendants' DMCA counterclaim and the dismissal of their declaratory-judgment claims with prejudice. The case was remanded for further proceedings. View "Yuga Labs, Inc. v. Ripps" on Justia Law

Aquarian Foundation, Inc., a non-profit religious organization, alleged that Bruce Lowndes infringed on its copyrights by uploading spiritual teachings of its late founder, Keith Milton Rhinehart, to various websites. Lowndes claimed he had a license from Rhinehart, granted in 1985, to use the materials. Rhinehart passed away in 1999, bequeathing his estate, including the copyrights, to Aquarian.The United States District Court for the Western District of Washington granted partial summary judgment, confirming that Rhinehart's copyrights were properly transferred to Aquarian via his will. After a bench trial, the court ruled against Aquarian on its claims of copyright infringement, trademark infringement, and false designation of origin. The court found that Rhinehart created the works as his own, not as works for hire, and that he had validly licensed them to Lowndes. The court also determined that Lowndes did not breach the licensing agreement and that Aquarian could not terminate the license under 17 U.S.C. § 203(a). The court denied attorneys’ fees to both parties.The United States Court of Appeals for the Ninth Circuit affirmed the district court’s findings that Rhinehart’s works were not created as works for hire, that he validly licensed the works to Lowndes, and that Lowndes did not breach the licensing agreement. The court also affirmed the decision not to award Lowndes attorneys’ fees under the Lanham Act. However, the Ninth Circuit reversed the district court’s determination regarding the termination of the license, holding that Aquarian’s termination letter in May 2021 was effective. The case was remanded for further proceedings to address any infringement that may have occurred after the license termination, as well as the denial of injunctive relief and attorneys’ fees under the Copyright Act. View "AQUARIAN FOUNDATION, INC. V. LOWNDES" on Justia Law

Tangle, Inc. holds copyright registrations for seven kinetic and manipulable sculptures made from 17 or 18 identical, connected, 90-degree curved tubular segments that can be twisted or turned 360 degrees. Aritzia, Inc. owns and operates retail stores and used similar sculptures in their store windows. Tangle alleged that Aritzia's sculptures infringed on their copyrighted works and also claimed trade dress infringement under the Lanham Act.The United States District Court for the Northern District of California dismissed Tangle's initial copyright infringement claim for failure to state a claim but allowed Tangle to amend its complaint. Tangle filed an amended complaint, which was again dismissed. Tangle then filed a Second Amended Complaint, adding a trade dress infringement claim. The district court dismissed both claims, giving Tangle leave to amend. Tangle chose not to amend further and instead appealed the dismissal.The United States Court of Appeals for the Ninth Circuit reviewed the case. The court reversed the district court’s dismissal of Tangle’s copyright claim, holding that Tangle adequately alleged valid copyrights in its kinetic and manipulable sculptures. The court found that the sculptures were sufficiently "fixed" in a tangible medium for copyright purposes, despite their ability to move into various poses. The court also held that Tangle plausibly alleged that Aritzia's sculptures were substantially similar to Tangle's protected works under the "extrinsic test."However, the Ninth Circuit affirmed the district court’s dismissal of Tangle’s trade dress infringement claim. The court agreed that Tangle failed to provide a complete recitation of the concrete elements of its alleged trade dress, which is necessary to give adequate notice of the asserted trade dress.The case was remanded for further proceedings consistent with the Ninth Circuit's opinion. View "TANGLE, INC. V. ARITZIA, INC." on Justia Law

Oracle International Corporation sued Rimini Street, Inc. for copyright infringement and violations of the Lanham Act. Oracle alleged that Rimini, a third-party provider of software support services, infringed on its copyrights by using Oracle's software in unauthorized ways. Rimini had previously been found to infringe Oracle's copyrights and had changed its business model, seeking a declaratory judgment that its new processes did not infringe Oracle's copyrights. Oracle counterclaimed, leading to a bench trial.The United States District Court for the District of Nevada found that Rimini's new processes still infringed Oracle's copyrights and issued a permanent injunction against Rimini. The court ordered Rimini to delete various software files and issue a press release correcting alleged misstatements. Rimini appealed the decision, challenging several aspects of the district court's rulings.The United States Court of Appeals for the Ninth Circuit reviewed the case and vacated the district court's holding that Rimini created infringing derivative works based solely on interoperability with Oracle's programs. The court explained that a derivative work must incorporate Oracle's copyrighted work, either literally or nonliterally. The court also vacated the district court's ruling striking Rimini's affirmative defense under 17 U.S.C. § 117(a), which allows the owner of a copy of a computer program to make another copy for certain purposes.Additionally, the Ninth Circuit vacated the district court's ruling that Rimini's creation of "gap customer" environments and use of automated tools to deliver PeopleSoft updates constituted copyright infringement. The court also reversed the district court's ruling that Rimini's security-related statements, except for one about "holistic security," constituted false advertising under the Lanham Act. The court vacated the portions of the injunction appealed by Rimini and remanded the case for further proceedings consistent with its opinion. View "ORACLE INTERNATIONAL CORPORATION V. RIMINI STREET, INC." on Justia Law

In 2020, Mix Creative Learning Center, an art studio offering children's art lessons, began selling online art kits during the pandemic. These kits included reproductions of artworks from Michel Keck's Dog Art series. Keck sued Mix Creative and its proprietor for copyright and trademark infringement, seeking enhanced statutory damages for willful infringement.The United States District Court for the Southern District of Texas found that the fair use defense applied to the copyright claim and granted summary judgment to Mix Creative. The court also granted summary judgment on the trademark claim, even though Mix Creative had not sought it. Following this, the district court awarded fees and costs to Mix Creative under 17 U.S.C. § 505 but declined to hold Keck’s trial counsel jointly and severally liable for the fee award under 28 U.S.C. § 1927.The United States Court of Appeals for the Fifth Circuit reviewed the case and affirmed the district court's judgment. The appellate court held that the fair use defense applied because Mix Creative’s use was transformative and unlikely to harm the market for Keck’s works. The court also found that any error in the district court’s sua sponte grant of summary judgment on the trademark claim was harmless, given the parties' concession that the arguments for the copyright claim applied to the trademark claim. Lastly, the appellate court ruled that the district court did not abuse its discretion in awarding fees to Mix Creative or in refusing to hold Keck’s attorneys jointly and severally liable for the fee award. View "Keck v. Mix Creative Learning Center" on Justia Law

A physician in Puerto Rico, Dr. Jaime Salas Rushford, had his board certification suspended by the American Board of Internal Medicine (ABIM) after ABIM concluded that he had improperly shared board exam questions with his test prep instructor. ABIM sued Salas Rushford for copyright infringement in New Jersey. Salas Rushford counterclaimed against ABIM and several ABIM-affiliated individuals, alleging that the process leading to his suspension was a "sham."The counterclaims were transferred to the District of Puerto Rico, where the district court granted ABIM's motion for judgment on the pleadings and denied Salas Rushford leave to amend his pleading. The court found that Salas Rushford failed to state a claim for breach of contract, breach of the implied covenant of good faith and fair dealing, and tort claims against the ABIM Individuals. The court also dismissed his Lanham Act claim for commercial disparagement.The United States Court of Appeals for the First Circuit reviewed the case. The court affirmed the district court's dismissal of Salas Rushford's claims. It held that ABIM had broad discretion under its policies to revoke certification if a diplomate failed to maintain satisfactory ethical and professional behavior. The court found that Salas Rushford did not plausibly allege that ABIM acted with bad motive or ill intention, which is necessary to state a claim for breach of the implied covenant of good faith and fair dealing under New Jersey law.The court also affirmed the dismissal of the Lanham Act claim, noting that Salas Rushford failed to allege actual consumer deception or intentional deception, which is required to state a claim for false advertising. Finally, the court upheld the district court's denial of leave to amend the complaint, citing undue delay and lack of a concrete argument for why justice required an amendment. View "American Board of Internal Medicine v. Salas-Rushford" on Justia Law

D'Pergo Custom Guitars, Inc. sued Sweetwater Sound, Inc. for using a photo of D'Pergo's guitar necks on Sweetwater's website. D'Pergo claimed copyright infringement under the Copyright Act, trademark infringement under the Lanham Act, and a violation of the New Hampshire Consumer Protection Act (CPA). The district court granted summary judgment to Sweetwater on the trademark claim and to D'Pergo on the copyright claim. A bench trial found in favor of Sweetwater on the CPA claim, and a jury awarded D'Pergo approximately $75,000 in compensatory damages for the copyright claim but did not award any of Sweetwater's profits.D'Pergo appealed the district court's summary judgment on the trademark claim and the bench trial ruling on the CPA claim. D'Pergo also argued that erroneous jury instructions warranted a reversal of the jury's finding that it was not entitled to recover any of Sweetwater's profits. Sweetwater cross-appealed, challenging the copyright damages based on what it claimed was inadmissible expert testimony.The United States Court of Appeals for the First Circuit affirmed the district court's ruling in favor of Sweetwater on the CPA claim, finding that Sweetwater did not act with the intent required for a CPA violation. However, the court reversed the district court's grant of summary judgment to Sweetwater on the trademark claim, concluding that D'Pergo's evidence created a genuine issue of fact regarding the trademark's secondary meaning and likelihood of confusion.The court also remanded for a new jury trial on the issue of infringing profits for the copyright claim, finding that the district court's jury instruction on the burden of proof for infringing profits overstated D'Pergo's burden. The court affirmed the district court's refusal to give D'Pergo's proposed "commingling" instruction and upheld the actual damages awarded to D'Pergo, rejecting Sweetwater's challenge to the admissibility of the expert testimony. View "D'Pergo Custom Guitars, Inc. v. Sweetwater Sound, Inc." on Justia Law

Proof Research, Inc. and Carbon Six Barrels, LLC both manufacture carbon-fiber gun barrels. Proof entered the market first and obtained a trademark for the unique appearance of its barrels. When Proof found out that Carbon Six intended to begin manufacturing and selling similar-looking carbon-fiber gun barrels of its own, Proof responded with litigation. However, Proof did not file suit against Carbon Six but rather against McGowen Precision Barrels, LLC, Carbon Six’s sister company. McGowen then initiated separate proceedings to have Proof’s trademark canceled. McGowen was ultimately successful, and Proof’s trademark for its carbon-fiber gun barrels was canceled in 2021. On February 9, 2022, Carbon Six filed this lawsuit against Proof for defamation and violation of the Louisiana Unfair Trade Practices Act stemming from Proof’s efforts to register, renew, enforce, and defend its previously valid trademark. However, Carbon Six brought its claims after the one-year prescriptive period imposed by Louisiana law had run. On Proof’s motion to dismiss under Rule 12(b)(6), Carbon Six failed to convince the district court that any of its claims were timely. The district court also held that Carbon Six’s LUTPA claim was legally deficient.   The Fifth Circuit affirmed. The court held that all actions Carbon Six alleged Proof took were discrete rather than ongoing, and each began and ended more than a year before this lawsuit was filed. Carbon Six’s LUTPA claim is therefore prescribed. The court explained even if Carbon Six could do so, Proof’s attempt to enforce a later-invalidated trademark does not violate LUTPA. View "Carbon Six Barrels v. Proof Research" on Justia Law