Justia Trademark Opinion Summaries

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

In 1999, Latham, McLean, and Vernooy formed Bliss to sell children’s clothing under the name “bella bliss.” In 2003, Shannon left Bliss and started Latham to sell her own children’s clothing under the name “little english.” Bliss’s logo is a lowercase “b” drawn out as if stitched in thread. Bliss has registered trademarks for this logo. Bliss has several designs that it claims as signature looks of the bella bliss brand that have “become famous and widely known and recognized as symbols of unique and high-quality garments.” There has been previous litigation between the parties.In 2020, Bliss filed federal claims for copyright, trademark, and trade dress infringement; false designation of origin and misappropriation of source; and unfair competition. The district court dismissed Bliss’s claims and granted Latham attorney’s fees for defending the copyright claim but found that Bliss filed its action in good faith and that the trademark and trade dress claims were not so “exceptionally meritless” that Latham merited a rare attorney’s fees award under 15 U.S.C. 1117. The Sixth Circuit affirmed in part. Bliss stated claims for federal and state trademark infringement but has not stated a claim for trade dress infringement. The district court did not err in denying attorney’s fees to Latham for defending the trademark and trade dress infringement claims. View "Bliss Collection, LLC v. Latham Companies, LLC" 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

The Copyright Office sent a letter to Valancourt Books, LLC, an independent press based in Richmond, Virginia, demanding physical copies of Valancourt’s published books on the pain of fines. Valancourt protested that it could not afford to deposit physical copies and that much of what it published was in the public domain. In response, the Office narrowed the list of demanded works but continued to demand that Valancourt deposit copies of its books with the Library of Congress or otherwise face a fine. Valancourt then brought this action against the Register of Copyrights and the Attorney General. Valancourt challenged the application of Section 407’s deposit requirement against it as an unconstitutional taking of its property in violation of the Fifth Amendment and an invalid burden on its speech in violation of the First Amendment. The district court granted summary judgment to the government on both claims.   The DC Circuit reversed the district court’s grant of summary judgment in the government’s favor and remanded for the entry of judgment to Valancourt and the award of relief. The court concluded that Section 407, as applied by the Copyright Office in this case, worked an unconstitutional taking of Valancourt’s property. The court explained that the Office demanded that Valancourt relinquish property (physical copies of copyrighted books) on the pain of fines. And because the requirement to turn over copies of the works is not a condition of attaining (or retaining) copyright protection in them, the demand to forfeit property cannot be justified as the conferral of a benefit in exchange for property. View "Valancourt Books, LLC v. Merrick Garland" on Justia Law

This civil contempt dispute is the fallout from the protracted copyright infringement litigation between Oracle USA, Inc. and Rimini Street, Inc.—now in its thirteenth year. In the underlying case, the district court entered a permanent injunction that enjoined Rimini from various infringing practices. Years later, the district court identified ten potential violations of the permanent injunction (“Issues 1– 10”), and ultimately held Rimini in contempt on five. Rimini was ordered to pay $630,000 in statutory sanctions plus attorneys’ fees. On appeal, Rimini argued that the contempt order should be reversed and that the sanctions should be vacated.   The Ninth Circuit affirmed in part, reversed in part, and vacated in part the district court’s order. The permanent injunction generally prohibited Rimini from reproducing, preparing derivative works from, or distributing certain Oracle software. The district court identified ten potential violations of the permanent injunction (Issues 1–10) and held Rimini in contempt on five (Issues 1-4, 8). The panel affirmed the district court’s finding of contempt on Issues 1-4. The panel held that the district court did not abuse its discretion in holding Rimini in contempt for hosting Oracle files on its computer systems (Issue 1). The panel also held that the district court did not abuse its discretion in finding Rimini in contempt for violating the injunction against the “cross use” of development environments (Issues 2, 3, and 4). Reversing the finding of contempt on Issue 8, the panel held that the district court abused its discretion in holding Rimini in contempt for creating copies of an Oracle Database file on its systems. View "ORACLE USA, INC., ET AL V. RIMINI STREET, INC." on Justia Law

Appellee Jason Scott Collection, Inc. (JSC) and Appellants Trendily Furniture, LLC, Trendily Home Collection, LLC and Rahul Malhotra (collectively, “Trendily”) are high-end furniture manufacturers that sell their products in the Texas market. Trendily intentionally copied three unique furniture designs by JSC and sold them to Texas retailers. The district court granted summary judgment to JSC on its copyright claim and then held Trendily liable on the trade dress claim following a bench trial. On appeal, Trendily challenged only the latter ruling, arguing that trade dress liability is precluded here because JSC did not demonstrate either secondary meaning or the likelihood of consumer confusion.   The Ninth Circuit affirmed the district court’s decision. The panel held that the district court did not clearly err in finding that JSC did so. The panel wrote that Trendily’s clear intent to copy nonfunctional features of JSC’s pieces supports a strong inference of secondary meaning. Noting that copyright and trademark are not mutually exclusive, the panel rejected Trendily’s argument that it should be held liable only under the Copyright Act. The panel held that the district court properly considered several other factors, including that the JSC pieces were continuously manufactured and sold since 2004, that JSC had a longstanding and well-known presence in the high-end furniture market, and that JSC’s furniture was distinctive in the minds of purchasers. The panel held that the district court did not err in finding that there was a likelihood of confusion between the JSC pieces and the Trendily pieces. View "JASON SCOTT COLLECTION, INC. V. TRENDILY FURNITURE, LLC, ET AL" on Justia Law

Varco, L.P. (“Varco”), an oil and gas drilling company, purchased the assets of another drilling company, including U.S. Patent No. 5,474,142 (the “’142 Patent”). Varco’s parent company, Varco International, Inc., and a competitor, National Oilwell, Inc., completed a merger to form National Oilwell Varco, Inc. It was understood that Varco, as Varco International, Inc.’s operating company, would transfer its assets to the newly formed entity’s operating company: Plaintiff-Appellee/Cross-Appellant National Oilwell Varco, L.P. (“NOV”).  NOV filed an action in district court alleging that Defendant-Appellant/CrossAppellee Auto-Dril, Inc. (“Auto-Dril”) infringed the ’142 Patent (the “Underlying Action”). Auto-Dril and NOV entered into a confidential settlement agreement that was intended to end their litigation over the ’142 Patent (the “Settlement Agreement”). The parties appealed various holdings that both preceded and followed a trial regarding their 2011 Settlement Agreement.   The Fifth Circuit held that it lacks jurisdiction over Auto-Dril’s counterclaim for being fraudulently induced into entering the Settlement Agreement. The court reversed the ruling granting summary judgment for NOV on Auto-Dril’s claim for breach of the Settlement Agreement. The court reversed the dismissal of NOV’s claim for breach of the Settlement Agreement and remanded NOV’s JMOL motion for reconsideration. The court explained that here, NOV’s conduct did not rise to the level of a fraud on the court. Specifically, there is no clear and convincing evidence that NOV was cognizant that it did not own the ’142 Patent while it was litigating the Underlying Action. View "National Oilwell Varco v. Auto-Dril" 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

Appellants are a Swiss consortium, Interprofession du Gruyère (“IDG”), and a French consortium, Syndicat Interprofessionel du Gruyère (“SIG”) (together, “the Consortiums”), who believe that gruyere should only be used to label cheese that is produced in the Gruyère region of Switzerland and France. Seeking to enforce this limitation in the United States, the Consortiums filed an application with the United States Patent and Trademark Office (“USPTO”) to register the word “GRUYERE” as a certification mark. Appellees, the U.S. Dairy Export Council, Atalanta Corporation, and Intercibus, Inc. (together, “the Opposers”), opposed this certification mark because they believe the term is generic and, therefore, ineligible for such protection. The USPTO’s Trademark Trial and Appeal Board (“TTAB”) agreed with the Opposers and held that “GRUYERE” could not be registered as a certification mark because it is generic. The Consortiums filed a complaint challenging the TTAB’s decision in the United States district court. The district court granted summary judgment for the Opposers on the same grounds as articulated in the TTAB’s decision.   The Fourth Circuit affirmed and concluded that that the term “GRUYERE” is generic as a matter of law. The court explained that the Consortiums have not brought evidence bearing on whether, at an earlier point in history, the term “GRUYERE” was in common use in the United States. But even assuming that was the case, this argument still fails. In sum, the Consortiums cannot overcome what the record makes clear: cheese consumers in the United States understand “GRUYERE” to refer to a type of cheese, which renders the term generic. View "Interprofession du Gruyere v. U.S. Dairy Export Council" on Justia Law

Plaintiffs in this case—Sherman Nealy and Music Specialist, Inc.—filed this copyright action seeking, among other things, damages for infringement they allege occurred more than three years before they filed this lawsuit. The defendants—Warner Chappell Music, Inc. and Artist Publishing Group, LLC—contend that Plaintiffs cannot recover damages for anything that happened more than three years before they filed suit.  The district court certified the following question for interlocutory appellate review: whether damages in this copyright action are limited to a three-year lookback period as calculated from the date of the filing of the complaint.   The Eleventh Circuit answered that question in the negative. The court wrote that given that the plain text of the Copyright Act does not support the existence of a separate damages bar for an otherwise timely copyright claim, the court held that a copyright plaintiff with a timely claim under the discovery rule may recover retrospective relief for infringement that occurred more than three years prior to the filing of the lawsuit. View "Sherman Nealy, et al. v. Warner Chappell Music, Inc., et al." on Justia Law