Justia Trademark Opinion Summaries

Dr. Ross Greene developed a method of treating children with explosive behaviors known as the Collaborative Problem Solving (CPS) approach and advanced this method through his work at the Massachusetts General Hospital (MGH) and through his publications, The Explosive Child, a book he wrote himself, and Treating Explosive Kids, a book he co-authored with Dr. J. Stuart Ablon. Greene alleged that MGH had infringed his CPS-related trademarks and that Ablon had infringed his CPS-related copyrights. MGH counterclaimed for ownership of the marks. The district court granted summary judgment in favor of MGH. After a trial, the jury awarded $19,000 on Greene’s claim that Ablon infringed on The Explosive Child. The First Circuit affirmed, holding (1) the district court correctly concluded that none of Greene’s defenses to the enforcement of his employment contracts with MGH succeeded; (2) the district court erred in ruling that Treating Explosive Kids could not be both joint and derivative as a matter of law, but the error did not improperly circumscribe the evidence Greene could present on his copyright claim; (3) the district court properly determined that Greene was not entitled to an accounting or an injunction; and (4) the district court properly denied Ablon’s motion for judgment as a matter of law. View "Greene v. General Hosp. Corp." on Justia Law

Haydel Enterprises appealed the district court’s grant of summary judgment to Nola Spice Designs and Raquel Duarte on claims of trademark infringement, unfair competition, trademark dilution, copyright infringement, and unfair trade practices. Haydel Enterprises owns Haydel’s Bakery in New Orleans, which makes and sells pastries and cakes, including a popular king cake. In 2008, Haydel commissioned an artist to design a mascot, which was named “Mardi Gras Bead Dog.” On October 13, 2009, and December 1, 2009, the United States Patent and Trademark Office (“PTO”) issued two trademark registrations to Haydel for, respectively, the phrase “MARDI GRAS BEAD DOG” and its bead dog design. Both registrations cover king cake pastries, jewelry, and clothing. Haydel sold these items in its New Orleans store, online, and through a licensee. In September 2012, Haydel obtained a certificate of copyright registration for its work titled “Bead Dog” in “photograph(s), jewelry design, 2-D artwork, sculpture.” In May 2012, Raquel Duarte formed Nola Spice Designs, which sold jewelry and accessories, including necklaces and earrings featuring bead dog trinkets. Haydel learned of Duarte’s bead dogs through Haydel’s customers. In August 2012, Haydel sent Nola Spice Designs a letter noting Haydel’s trademark and copyright in “the bead dog design,” and demanding, inter alia, that Nola Spice Designs “remove from [its] website all display, mention of or reference to the bead dog design,” and “cease any and all promotion, sale, and/or use” of materials incorporating the bead dog design. In October 2012, Nola Spice Designs filed a complaint against Haydel seeking: (1) a declaratory judgment that Nola Spice Designs’s activities do not violate the Lanham Act or any other trademark law; (2) the cancellation of Haydel’s trademarks; and (3) damages for unfair trade practices under the Louisiana Unfair Trade Practices Act (“LUTPA”). Haydel asserted counterclaims against Nola Spice Designs and filed a third-party complaint against Duarte, seeking injunctive relief and damages. The parties also filed cross-motions for summary judgment. The district court granted summary judgment to Nola Spice on its claim for a declaratory judgment that it was not infringing Haydel’s trademarks, and the court cancelled those trademarks as unprotectable, but it denied Nola Spice’s motion for summary judgment on its LUTPA claims. The district court also granted summary judgment to Nola Spice on Haydel’s claims of trademark infringement, unfair competition, trademark dilution, copyright infringement, and unfair trade practices. Haydel timely appealed the district court’s order. Nola Spice did not appeal the district court’s dismissal with prejudice of its LUTPA claim. Upon review, the Fifth Circuit affirmed the district court’s grant of summary judgment to Nola Spice on its claim for a declaratory judgment of non-infringement of Haydel’s trademarks, and affirmed the district court’s cancellation of those trademarks. The Court affirmed the district court’s grant of summary judgment to Nola Spice on Haydel’s claims of trademark infringement, unfair competition, and trademark dilution under the Lanham Act; trademark dilution under Louisiana law; copyright infringement under the Copyright Act; and unfair trade practices under LUTPA. View "Nola Spice Designs, L.L.C., et al v. Haydel Enterp" on Justia Law

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

Plaintiff filed suit against Green Day and others, alleging violations of the Copyright Act, 17 U.S.C. 101 et seq., and the Lanham Act, 15 U.S.C. 1051 et seq., because Green Day used plaintiff's illustration, "Scream Icon," in the video backdrop of its stage show. On appeal, plaintiff challenged the district court's grant of summary judgment in favor of Green Day on all claims and the grant of attorney's fees to Green Day under the Copyright Act. The court concluded that Green Day's use of the illustration was fair use under the Copyright Act where the purpose and character of the use was transformative and not overly commercial; the nature of the work included its status as a widely disseminated work of street art; Green Day's use of the work was not excessive in light of its transformative purpose; and Green Day's use did not affect the value of the piece or of plaintiff's artwork in general. In regards to plaintiff's claims under the Lanham Act, the court concluded that plaintiff failed to establish any trademark rights. The court concluded, however, that the district court clearly erred in finding that plaintiff's claims were objectively unreasonable. Accordingly, the court affirmed the district court's grant of summary judgment but vacated the award of attorneys fees. View "Seltzer v. Green Day, Inc., et al." on Justia Law

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

Mattel filed suit against MGA, claiming that MGA infringed Mattel's copyrights by producing Bratz dolls. On appeal, Mattel challenged the jury's verdict that Mattel misappropriated MGA's trade secrets and the district court's award of attorneys fees and costs to MGA under the Copyright Act, 17 U.S.C. 505. The court held that MGA's claim of trade-secret misappropriation was not logically related to Mattel's counterclaim and therefore, the court reversed the district court's holding that MGA's counterclaim-in-reply was compulsory. Because the district court did not abuse its discretion in awarding fees and costs under the Act, the court affirmed that award. View "Mattel, Inc., et al v. MGA Entertainment, Inc., et al" on Justia Law

In 1930, A.A. Milne transferred to Slesinger exclusive merchandising and other rights to Winnie-the-Pooh works in the U.S. and Canada. In 1961, Slesinger exclusively “assigned, granted, and set over to” Disney the rights in the 1930 agreement. A 1983 agreement sought to resolve the parties’ disputes, but Slesinger contends it retained rights in the works, while Disney maintains Slesinger assigned all rights. In 1991, before the present litigation, Slesinger sued in state court, alleging breach of the 1983 agreement. Slesinger acknowledged that the 1983 agreement “regranted, licensed and assigned all rights” to Disney. The action was ultimately dismissed. The dispute continued in federal court. The district court dismissed, noting that the parties’ actions indicated the rights were transferred to Disney in the 1983 agreement. Between 1983 and 2006, Disney registered at least 15 trademarks. In 2004, Disney registered copyrights in 45 works and renewed copyright registrations for another 14. Slesinger did not attempt to perfect or register trademarks or copyrights before asserting its federal claims and never objected to Disney’s registrations until 2006, when the state court dismissed its claims and Slesinger attempted to cancel Disney’s applications and marks. The Federal Circuit affirmed the Board’s dismissal, citing estoppel. View "Stephen Slesinger, Inc. v. Disney Enters., Inc." on Justia Law

Miller's is a restaurant with a location in Boynton Beach, Florida, and Boynton Carolina is its competitor. At issue was whether Miller's has common law trademark rights in the term "ale house" and trade dress rights in the interior decoration of its restaurant, and if so, whether Boynton Carolina violated Section 43 of the Trademark Act of 1946 (Lanham Act), 15 U.S.C. 1125(a), and the Copyright Act, 17 U.S.C. 106, when it adopted a name, decor, and a floor plan similar to Miller's own. The court held that the district court did not err in finding Miller's trademark infringement claim barred by issue preclusion, in finding Miller's trade dress not to be inherently distinctive, and in finding Miller's and Boynton Carolina's floor plans not to be substantially similar. View "Miller's Ale House, Inc. v. Boynton Carolina Ale House" on Justia Law

Alpha sued defendants, foreign corporations, alleging that defendants conspired to steal its tire blueprints, produce infringing tires, and sell them to entities that had formerly purchased products from Alpha. A jury found in favor of Alpha on all claims and the district court upheld the damages award against defendants' post-trial challenges. Defendants subsequently appealed, contesting the verdict and the district court's exercise of personal jurisdiction. The court initially held that the district court properly exercised jurisdiction over defendants. The court affirmed the district court's judgment that defendants were liable to Alpha under the Copyright Act, 17 U.S.C. 101 et seq., and for conversion under Virginia law, but the court dismissed the remaining theories of liability submitted to the jury. Accordingly, the court affirmed the jury's damages award. Finally, the court vacated the district court's award of attorneys' fees. View "Tire Engineering and Distribution, LLC. v. Shandong Linglong Rubber Co." on Justia Law

This case arose when Ford sent a cease-and-desist letter to NBFP, demanding that NBFP pay damages and refrain from using Ford's trademarks on its websites. NBFP sued Ford in Texas state court, seeking a declaratory judgment that its online printing operations did not infringe Ford's trademark rights. NBFP subsequently appealed the district court's partial grant of summary judgment for Ford; the district court's final judgment holding NBFP liable for trademark infringement; and the district court's order denying NBFP's motion to amend its complaint. Ford cross-appealed from the district court's final judgment, disputing that court's findings on infringement, dilution, and attorney's fees. The court held that the district court's grant of partial summary judgment to Ford was affirmed. Because there was no likely threat of consumer confusion as to NBFP's sale of products bearing the Ford marks to three independent used car dealers, the court reversed the district court's judgment finding that NBFP's sale of these products amounted to trademark infringement, the court remanded to the district court with instructions to enter judgment for NBFP on this category of products. The court affirmed the district court's judgment in all other respects. View "Nat'l Business Forms v. Phillips, et al." on Justia Law