Justia Trademark Opinion Summaries

The Second Circuit affirmed the district court's judgment granting attorneys' fees and costs to defendants under section 505 of the Copyright Act and section 35(a) of the Lanham Act. These provisions authorized the district court to award fees to the prevailing party in a lawsuit. The court held that defendants met the definition of "prevailing party" under both fee-shifting provisions. Although defendants did not obtain a dismissal on the the Copyright and Lanham Acts claims, defendants have fulfilled their primary objective by obtaining dismissal of the complaint on collateral estoppel grounds. View "Manhattan Review, LLC v. Yun" on Justia Law

The district court granted summary judgment to the Standards Developing Organizations (SDOs) on their claims of direct copyright infringement, finding that they held valid and enforceable copyrights in the incorporated standards that PRO had copied and distributed, and that PRO had failed to create a triable issue of fact that its reproduction qualified as fair use under the Copyright Act. The district court also concluded that ASTM was entitled to summary judgment on its trademark infringement claims, and issued permanent injunctions prohibiting PRO from all unauthorized use of the ten standards identified in the summary judgment motions and of ASTM's registered trademarks.The DC Circuit reversed and held that the district court erred in its application of both fair use doctrines. The court remanded for the district court to develop a fuller record regarding the nature of each of the standards at issue, the way in which they were incorporated, and the manner and extent to which they were copied by PRO in order to resolve this mixed question of law and fact. View "American Society for Testing v. Public.Resource.Org, Inc." on Justia Law

The district court erred in granting Defendant’s motion to dismiss, based on an arbitration provision, Plaintiff’s claims that Defendant violated various articles of the Puerto Rico Civil Code and federal copyright and trademark laws.This suit stemmed from a songwriting contest held in Puerto Rico in 2014. As a contestant, Plaintiff agreed to the terms of the contest’s rules, which included an arbitration provision. The provision compelled the submission to arbitration of those claims that “aris[e] in connection with, touch upon or relat[e] to” those rules. The district court granted Defendant’s motion to dismiss pursuant to Fed. R. Civ. P. 12(b)(6) based on that arbitration provision. The First Circuit reversed, holding that the arbitration provision did not reveal that the parties to it intended for Defendant, a third party, to benefit from it with the requisite clarity. View "Cortes-Ramos v. Martin-Morales" on Justia Law

This case arose from a dispute between the parties over licensing agreements involving the motion picture Gone in 60 Seconds. The trial court entered judgment for Classic and ordered that Eleanor Licensing retain possession of a vehicle identified as "Eleanor No. 1," which had been manufactured by Classic pursuant to a licensing agreement between the parties; quieting title to the vehicle in Eleanor Licensing; directing Classic to perform according to the terms of the licensing agreement and transfered legal title to Eleanor No. 1 to Eleanor Licensing; and awarding damages and attorney fees. The court held that the November 1, 2007 License Agreement was supported by adequate consideration; the contract-based claims, to the extent otherwise valid, were barred by the statute of limitations; the causes of action for return of personal property and quiet title were timely filed; the alter ego finding was not supported by substantial evidence; Jason Engel was properly named as a defendant in the causes of action to quiet title and for return of personal property; Tony Engel was a proper defendant in the quiet title cause of action; and the Engels were not liable for attorney fees. The court reversed in part and affirmed in part the judgment and postjudgment order. View "Eleanor Licensing LLC v. Classic Recreations LLC" on Justia Law

This case arose from a dispute between the parties over licensing agreements involving the motion picture Gone in 60 Seconds. The trial court entered judgment for Classic and ordered that Eleanor Licensing retain possession of a vehicle identified as "Eleanor No. 1," which had been manufactured by Classic pursuant to a licensing agreement between the parties; quieting title to the vehicle in Eleanor Licensing; directing Classic to perform according to the terms of the licensing agreement and transfered legal title to Eleanor No. 1 to Eleanor Licensing; and awarding damages and attorney fees. The court held that the November 1, 2007 License Agreement was supported by adequate consideration; the contract-based claims, to the extent otherwise valid, were barred by the statute of limitations; the causes of action for return of personal property and quiet title were timely filed; the alter ego finding was not supported by substantial evidence; Jason Engel was properly named as a defendant in the causes of action to quiet title and for return of personal property; Tony Engel was a proper defendant in the quiet title cause of action; and the Engels were not liable for attorney fees. The court reversed in part and affirmed in part the judgment and postjudgment order. View "Eleanor Licensing LLC v. Classic Recreations LLC" on Justia Law

Halo, a Hong Kong company that designs and sells high-end modern furniture, owns two U.S. design patents, 13 U.S. copyrights, and one U.S. common law trademark, all relating to its furniture designs. Halo’s common law trademark, ODEON, is used in association with at least four of its designs. Halo sells its furniture in the U.S., including through its own retail stores. Comptoir, a Canadian corporation, also designs and markets high-end furniture that is manufactured in China, Vietnam, and India. Comptoir’s furniture is imported and sold to U.S. consumers directly at furniture shows and through distributors, including in Illinois. Halo sued, alleging infringement and violation of Illinois consumer fraud and deceptive business practices statutes. The district court dismissed on forum non conveniens grounds, finding that the balance of interests favored Canada and that Canada, where the defendants reside, was an adequate forum. The Federal Circuit reversed. The policies underlying U.S. copyright, patent, and trademark laws would be defeated if a domestic forum to adjudicate the rights they convey was denied without a sufficient showing of the adequacy of the alternative foreign jurisdiction; the Federal Court of Canada would not provide any “potential avenue for redress for the subject matter” of Halo’s dispute. View "Halo Creative & Design, Ltd. v. Comptoir des Indes Inc." on Justia Law

Plaintiffs, twenty-three professional football players, filed a putative class action against the NFL, claiming that films produced by NFL-affiliate NFL Films violated the players’ rights under the right-of-publicity laws of various states as well as their rights under the Lanham Act, 15 U.S.C. 1125. Twenty plaintiffs settled, but appellants elected to opt out of the settlement and pursued individual right-of-publicity and Lanham Act claims. The district court granted summary judgment for the NFL. Applying the three Porous Media Corp. v. Pall Corp., factors, the court agreed with the district court’s conclusion that the films are expressive, rather than commercial, speech and that the Copyright Act, 17 U.S.C. 301(a), therefore preempts appellants’ claims. The court also concluded that appellants' claim of false endorsement under the Lanham Act fails as a matter of law because appellants provide no evidence that the films contain misleading or false statements regarding their current endorsement of the NFL. Accordingly, the court affirmed the judgment. View "Dryer v. National Football League" on Justia Law

This appeal arose from a copyright dispute between Adobe and defendant and his software company, SSI. The court affirmed the district court's dismissal of both Adobe's copyright and trademark claims. Although a copyright holder enjoys broad privileges protecting the exclusive right to distribute a work, the first sale doctrine serves as an important exception to that right. Under this doctrine, once a copy of a work is lawfully sold or transferred, the new owner has the right “to sell or otherwise dispose of” that copy without the copyright owner’s permission. In this case, the court concluded that the district court correctly held that Adobe established its registered copyrights in the disputed software and that defendant carried his burden of showing that he lawfully acquired genuine copies of Adobe’s software, but that Adobe failed to produce the purported license agreements or other evidence to document that it retained title to the software when the copies were first transferred. The district court did not abuse its discretion in granting defendant’s motion to strike and excluding evidence purporting to document the licenses. Finally, the court concluded that the district court properly analyzed the trademark claim under the nominative fair use defense to a trademark infringement claim instead of under the unfair competition rubric. Accordingly, the court affirmed the judgment. View "Adobe Systems, Inc. v. Christenson" on Justia Law

DC filed suit against defendant, producer of replicas of the Batmobile, alleging, among other things, causes of action for copyright infringement, trademark infringement, and unfair competition arising from defendant’s manufacture and sale of the Batmobile replicas. The court concluded that the Batmobile, as it appears in the comic books, television series, and motion picture, is entitled to copyright protection. The court also concluded that the Batmobile character is the property of DC and that defendant infringed upon DC’s property rights when he produced unauthorized derivative works of the Batmobile as it appeared in the 1966 television show and the 1989 motion picture. Finally, the district court did not err when it ruled as a matter of law that defendant could not assert a laches defense to DC's trademark infringement claim because defendant willfully infringed on DC's trademarks. Accordingly, the court affirmed the district court's grant of summary judgment for DC on the copyright and trademark infringement claims. View "DC Comics v. Towle" on Justia Law

Norbero Colon Lorenzana (Colon) was working for South American Restaurant Corporation (SARCO), a franchisee and operator of Church’s Chicken locations in Puerto Rico, when he suggested to his superiors the concept for a new chicken sandwich that could be included on Church’s menu. Church’s subsequently began selling the item, which it called the “Pechu Sandwich.” SARCO subsequently received a certificate of registration from the Puerto Rico Department of State trademarking the name “Pechu Sandwich” and also received a federal trademark registration for the name “Pechusandwich.” Colon brought suit alleging violations of the Lanham Act and Copyright Act. SARCO filed a motion to dismiss under Fed. R. Civ. P. 12(b)(6), which the district court granted. The First Circuit affirmed, holding (1) the district court properly determined that neither the name “Pechu Sandwich” nor the recipe are eligible for copyright protection; and (2) that Colon failed to sufficiently plead that SARCO committed fraud in the procurement of a federal trademark for the Pechu Sandwich. View "Colon-Lorenzana v. South American Restaurants Corp." on Justia Law