Justia Trademark Opinion Summaries

Dmarcian, Inc. (dInc) and dmarcian Europe BV (dBV)—and a broken business relationship. The original dmarcian, dInc, is a Delaware corporation with headquarters in North Carolina. Its corporate homonym, dBV, is a Dutch entity based in the Netherlands. The two companies negotiated an agreement authorizing dBV to sell dInc’s software in Europe and Africa. The license was done on a handshake, and the parties now dispute its terms. Among other allegations, dInc accuses dBV of directly competing for customers, which prompted dInc to bring claims of copyright and trademark infringement, misappropriation of trade secrets, and tortious interference. The district court exercised personal jurisdiction over dBV and declined to dismiss for forum non conveniens. The district court also issued a preliminary injunction limiting dBV’s use of dInc’s intellectual property. The district court later held dBV in contempt for violating the injunction, and dBV appealed.   The Fourth Circuit affirmed except as to one aspect of the contempt order, which the court vacated and remanded for further proceedings as to the proper amount of sanctions. The court explained that the district court did not err in exercising personal jurisdiction, in declining to dismiss for forum non conveniens, and in issuing a preliminary injunction. Further, the court held that the district court was also justified in issuing a contempt sanction; but the court  requires a more thorough examination of the sanction amount. While the preliminary injunction may not be the final word on the merits, its entry was also not an abuse of discretion considering the weighty interests and detailed findings discussed at length above. View "Dmarcian, Inc. v. Dmarcian Europe BV" on Justia Law

Plaintiff is a physically challenged athlete and motivational speaker who started the Scott Rigsby Foundation and registered the domain name “scottrigsbyfoundation.org” with GoDaddy.com. When Plaintiff and the Foundation failed to pay the annual renewal fee in 2018, a third party registered the then-available domain name. Scottrigsbyfoundation.org became a gambling information site. Plaintiff sued GoDaddy.com, LLC and its corporate relatives (collectively, “GoDaddy”), for violations of the Lanham Act and various state laws and sought declaratory and injunctive relief, including the return of the domain name. The Northern District of Georgia transferred the case to the District of Arizona, which dismissed all claims.   The Ninth Circuit affirmed the district court’s dismissal and dismissed Plaintiff’s and the Foundation’s appeal of an order transferring venue. The panel held that it lacked jurisdiction to review the District Court for the Northern District of Georgia’s order transferring the case to the District of Arizona because transfer orders are reviewable only in the circuit of the transferor district court. The panel held that Plaintiff could not satisfy the “use in commerce” requirement of the Lanham Act vis-à-vis GoDaddy because the “use” in question was being carried out by a third-party gambling site, not GoDaddy. As to the Lanham Act claim, the panel further held that Plaintiff could not overcome GoDaddy’s immunity under the Anti-cybersquatting Consumer Protection Act.  The panel held that Section 230 of the Communications Decency Act shielded GoDaddy from liability for Plaintiff’s state-law claims for invasion of privacy, publicity, trade libel, libel, and violations of Arizona’s Consumer Fraud Act. View "SCOTT RIGSBY, ET AL V. GODADDY INC., ET AL" on Justia Law

Appellant Shenzhen Stone Network Information Ltd. (“SSN”) appealed the district court’s order granting summary judgment on Appellee Prudential Insurance Company of America’s (“Prudential”) cybersquatting claim. Prudential owns several registered trademarks on the term PRU and other PRU-formative marks. Prudential initiated the underlying action after discovering that SSN had registered the domain name PRU.COM. Prudential alleged that SSN violated the Anti-Cybersquatting Consumer Protection Act (“ACPA”), by registering a domain name identical to Prudential’s distinctive mark with the bad faith intent to profit. The district court determined that SSN could be held liable for cybersquatting because the ACPA is not limited to the initial registration of a domain name but encompasses subsequent re-registrations as well. The district court concluded that SSN possessed the bad faith intent to profit from the disputed domain name and granted Prudential’s motion for summary judgment. On appeal, SSN contests the district court’s ruling that SSN acted in bad faith when registering the disputed domain name.   The Fourth Circuit affirmed, concluding that the totality of the circumstances supports the conclusion that SSN acted in bad faith and that SSN is not entitled to the benefit of the ACPA’s safe harbor provision. The court reasoned that SSN failed to satisfy the statute’s safe harbor provision. First, SSN’s self-serving denials of subjective belief that its use of the PRU.COM domain name was lawful are insufficient to defeat summary judgment absent objective corroboration. Further, SSN did not have reasonable grounds to believe that its registration of the PRU.COM domain name was otherwise lawful. View "The Prudential Insurance Company of America v. Shenzhen Stone Network Information Ltd." on Justia Law

Block, Inc. appealed from an order granting in part H&R Block, Inc. and HRB Innovations, Inc.’s (collectively, “H&R Block”) motion for a preliminary injunction. H&R Block claims that the use of “Block” and a green square logo in connection with tax services: (1) is likely to cause confusion because H&R Block and Block, Inc. both offer overlapping services, including tax preparation and filing, other related financial services, and charitable services; (2) has confused consumers, the media, and investors; and (3) will cause irreparable harm, as it will undermine H&R Block’s ability to control its public image and perception and lead consumers to incorrectly believe Block, Inc’s tax service is connected to H&R Block or one of the “building blocks” in the Block, Inc. family of brands.   The Eighth Circuit reversed and vacated the preliminary injunction. The court explained that H&R Block failed to satisfy its burden because the evidence in the record is inadequate to establish substantial consumer confusion by an appreciable number of ordinary consumers, nor irreparable harm that is concrete and imminent. The court wrote that if there is, in fact, trademark infringement, H&R Block will have a full opportunity to demonstrate that infringement at a trial on the merits. View "H&R Block, Inc. v. Block, Inc." on Justia Law

Five months after being sued in Oregon for trademark infringement, Jacob Rieger & Co., LLC provided notice to its liability insurer, Cincinnati Insurance Company. Due to Rieger’s delay, Cincinnati refused to reimburse Rieger’s legal fees for the five months that Cincinnati was unaware of the lawsuit. The Oregon case was ultimately dismissed for lack of jurisdiction. Instead of waiting to be sued in a court that did have jurisdiction, Rieger’s parent company, GSP Licensing LLC, filed a new suit in Missouri as the plaintiff. GSP was not named under Rieger’s insurance policy, so Cincinnati denied coverage for the Missouri case. Cincinnati then filed this lawsuit, seeking a declaration of coverage. The district court granted summary judgment to Cincinnati.   The Eighth Circuit reversed in part the district court’s grant of summary judgment to Cincinnati. The court affirmed the dismissal of Rieger’s tort claims and the imposition of sanctions. The court explained that under Missouri law, a tort claim is independent of a contract claim if the tort claim can succeed without regard to the outcome of the contract claim. In other words, the tort claim could succeed regardless of the outcome of the contract claim. Here, Rieger admits that its tort claims would fail if its contract claim succeeded. By Rieger’s own admission, the court found that the district court properly dismissed Rieger’s tort claims. View "Cincinnati Insurance Company v. Jacob Rieger & Co., LLC" on Justia Law

Unicolors, which creates designs for use on textiles and garments, alleged that a design it created in 2011 (the EH101 design) is remarkably similar to a design printed on garments that H&M began selling in 2015 (the Xue Xu design). The Supreme Court held that lack of either factual or legal knowledge on the part of a copyright holder can excuse an inaccuracy in a copyright registration under the Copyright Act's safe-harbor provision, 17 U.S.C. Section 411(b)(1). Accordingly, the panel reviewed anew the threshold issue whether Unicolors holds a valid copyright in registration No. VA-1-770-400 (the '400 Registration), and concluded that under the correct standard, the '400 Registration is valid because the factual inaccuracies in the application are excused by the cited safe-harbor provision.   On remand, from the Supreme Court in this copyright-infringement action the Ninth Circuit affirmed the district court's judgment in general, save that it vacated and remanded with instructions to grant a new trial, limited only to damages, if Unicolors rejects the remittitur amount of $116,975.23. The panel held that a party seeking to invalidate a copyright registration under Section 411(b) must demonstrate that (1) the registrant submitted a resignation application containing inaccuracies, (2) the registrant knew that the application failed to comply with the requisite legal requirements, and (3) the inaccuracies in question were material to the registration decision by the Register of Copyrights. View "UNICOLORS, INC. V. H&M HENNES & MAURITZ, LP" on Justia Law

Bimbo Bakeries USA, Inc. (“Bimbo Bakeries”) owned, baked, and sold Grandma Sycamore’s Home-Maid Bread (“Grandma Sycamore’s”). Bimbo Bakeries alleged that United States Bakery (“U.S. Bakery”), a competitor, and Leland Sycamore (“Leland”), the baker who developed the Grandma Sycamore’s recipe, misappropriated its trade secret for making Grandma Sycamore’s. The district court granted summary judgment in favor of U.S. Bakery on a trade dress infringement claim. The parties went to trial on the other two claims, and the jury returned a verdict in favor of Bimbo Bakeries on both. After the trial, the district court denied U.S. Bakery’s and Leland’s renewed motions for judgment as a matter of law on the trade secrets misappropriation and false advertising claims. The district court did, however, remit the jury’s damages award. All parties appealed. Bimbo Bakeries argued the district court should not have granted U.S. Bakery summary judgment on its trade dress infringement claim and should not have remitted damages for the false advertising claim. U.S. Bakery and Leland argued the district court should have granted their renewed motions for judgment as a matter of law, and Leland made additional arguments related to his personal liability. The Tenth Circuit affirmed in part, reversed in part, and remanded for further proceedings because the Court found all of Bimbo Bakeries’ claims failed as a matter of law. View "Bimbo Bakeries USA, et al. v. Sycamore, et al." on Justia Law

The Ninth Circuit reversed the district court's summary judgment in favor of defendants on a copyright infringement claim and affirmed the district court's dismissal and grant of summary judgment in favor of defendants on a trademark claim concerning the book "Oh, the Places You'll Boldly Go!," (the mash-up) a Dr. Seuss and Star Trek mash-up.The panel held that the mash-up does not make fair use of "Oh, the Places You'll Go!" (the original work). The panel explained that the purpose and character of the mash-up; the nature of the original work; the amount and substantiality of the original work; and the potential market for or value of Seuss, all weigh against fair use. The panel concluded that the bottom line is that ComicMix created, without seeking permission or a license, a non-transformative commercial work that targets and usurps the original work's potential market, and ComicMix cannot sustain a fair use defense. The panel also held that Seuss does not have a cognizable trademark infringement claim against ComicMix because the Lanham Act did not apply under the Rogers test. In this case, the allegedly valid trademarks in the title, the typeface, and the style of the original work were relevant to achieving the mash-up's artistic purpose, and the use of the claimed original work trademarks was not explicitly misleading. View "Dr. Seuss Enterprises, LP v. ComicMix LLC" on Justia Law

The Second Circuit affirmed the district court's dismissal of plaintiff's third amended complaint for failure to state a claim under Federal Rule of Civil Procedure 12(b)(6), alleging that defendants violated the Copyright Act by copying creative aspects from his unreleased science fiction videogame, including his use of a tardigrade -- a microscopic animal -- traveling in space, in their television series Star Trek: Discovery.Even assuming that actual copying occurred, the court agreed with the district court that plaintiff failed to plausibly allege substantial similarity between protectible elements of his videogame and elements from Discovery. The court explained that, overall, the presence of Ripper the tardigrade in Discovery is minimal, as it only appears in three episodes. Therefore, after extracting the unprotectible elements from plaintiff's videogame -- the scientific facts, general ideas, science fiction themes constituting scènes à faire, and generalized character traits -- the court held that the videogame and Discovery are not substantially similar because the protectible elements are markedly different. View "Anas Osama Ibrahim Abdin v. CBS Broadcasting Inc." on Justia Law

IMAPizza, which operates the "&pizza" chain of restaurants in the United States, filed suit under the Copyright and Lanham Acts as well as D.C. common law against At Pizza, operator of the "@pizza" restaurant in Edinburgh, Scotland.The DC Circuit affirmed the district court's dismissal of IMAPizza's Copyright and Lanham Act claims, holding that IMAPizza failed to state a claim under the Copyright Act because it did not allege an act of copyright infringement in the United States. The court declined to extend the Copyright Act beyond its territorial limits lest U.S. law be used to sanction what might be lawful conduct in another country. The court also held that IMAPizza failed to state a claim under the Lanham Act because it failed to allege some plausible effect — let alone a significant or substantial effect — upon U.S. commerce. Finally, the court held that IMAPizza's trespass claim fails for want of any unauthorized entry into its restaurants, and the district court did not abuse its discretion in denying IMAPizza's motions for leave to file a surreply and to exercise supplemental jurisdiction over the U.K.'s "passing off" claim. View "Imapizza, LLC v. At Pizza Limited" on Justia Law