Justia Trademark Opinion Summaries

Charles Curry, Jr., a former competitive powerlifter and bodybuilder, started a nutritional supplements business called Get Diesel Nutrition in 2002. He began selling a testosterone-boosting supplement called "Diesel Test" in 2005. Revolution Laboratories, LLC, founded by Joshua and Barry Nussbaum, also sold a supplement called "Diesel Test" starting in 2016. Curry, acting without a lawyer, filed a lawsuit against Revolution and the Nussbaums in 2017, asserting trademark claims under the federal Lanham Act and Illinois common law. Curry later obtained counsel, and the case proceeded to a jury trial in May 2023, resulting in a verdict for Curry.The jury awarded Curry $2,500 in actual damages for loss of goodwill and reputation and $500,000 as disgorgement of Revolution’s profits from the infringement. Additionally, the jury awarded Curry $300,000 in punitive damages against each of Joshua, Barry, and Revolution, totaling $900,000. The district court later ruled that disgorgement of profits under the Lanham Act is an equitable remedy for the judge to decide and recalculated the appropriate profits award to be $547,095.44.The United States Court of Appeals for the Seventh Circuit reviewed the case. Defendants challenged the district court's decision to allow Curry's punitive damages request to go to the jury and argued that the punitive damage awards were excessive in violation of the Fourteenth Amendment’s due process clause. The Seventh Circuit affirmed the district court's decision, holding that the district court did not abuse its discretion in allowing Curry to seek punitive damages and that the punitive damage awards were not unconstitutionally excessive. The court concluded that the ratio of punitive damages to the combined compensatory and disgorgement awards was constitutionally permissible. View "Curry v. Revolution Laboratories, LLC" 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

US Ghost Adventures, LLC (Ghost Adventures) operates a bed and breakfast at the Lizzie Borden House in Fall River, Massachusetts, offering ghost tours and related activities. Ghost Adventures holds federal trademarks for the name "Lizzie Borden" and a hatchet logo. Miss Lizzie's Coffee LLC (Miss Lizzie's) opened a coffee shop next to the Lizzie Borden House, using the Lizzie Borden story in its marketing, including a hatchet logo and references to being "The Most Haunted Coffee Shop in the World." Some visitors mistakenly believed the two businesses were affiliated.Ghost Adventures sued Miss Lizzie's in the United States District Court for the District of Massachusetts for trademark infringement and unfair competition, seeking a preliminary injunction to stop Miss Lizzie's from using the "Lizzie Borden" name and hatchet logo. The district court denied the preliminary injunction, finding that Ghost Adventures failed to show a likelihood of success on the merits. The court determined that the key element in any infringement action is the likelihood of confusion, which Ghost Adventures did not demonstrate. The court found that Miss Lizzie's hatchet logo and use of the name "Lizzie" were not similar enough to Ghost Adventures' trademarks to cause confusion.The United States Court of Appeals for the First Circuit reviewed the case and affirmed the district court's decision. The appellate court agreed that the district court did not clearly err in finding that the hatchet logos were dissimilar and that Miss Lizzie's reference to "Lizzie" was to the historical figure, not the trademark. The court also found that any consumer confusion was due to the proximity of the businesses and their common reliance on the Lizzie Borden story, not the similarity of their marks. The court concluded that Ghost Adventures did not demonstrate a likelihood of success on the merits, and the district court's denial of the preliminary injunction was affirmed. View "US Ghost Adventures, LLC v. Miss Lizzie's Coffee LLC" on Justia Law

The case involves a trademark infringement dispute between two Arizona-based personal injury law firms. The plaintiff, Lerner & Rowe, PC, owns three registered trademarks, including the name "Lerner & Rowe." The defendant, Brown, Engstrand & Shely, LLC, doing business as The Accident Law Group (ALG), used a marketing strategy called "conquesting" by purchasing the term "Lerner & Rowe" as a Google Ads keyword. This caused ALG's advertisements to appear when users searched for "Lerner & Rowe" on Google.The United States District Court for the District of Arizona granted summary judgment in favor of ALG on Lerner & Rowe's claims of trademark infringement and unjust enrichment but denied summary judgment on the unfair competition claims. ALG moved for reconsideration, and the district court subsequently granted summary judgment on all claims. Lerner & Rowe appealed the ruling.The United States Court of Appeals for the Ninth Circuit reviewed the case and affirmed the district court's decision. The court held that Lerner & Rowe failed to establish that ALG's use of the "Lerner & Rowe" mark was likely to cause consumer confusion. The court found that while the strength of the mark favored Lerner & Rowe, the evidence of actual confusion was de minimis, the reasonably prudent consumer's degree of care and the labeling and appearance of ALG's advertisements weighed in favor of ALG. The court concluded that Lerner & Rowe did not establish a genuine dispute of material fact regarding the likelihood of confusion, which is essential for a trademark infringement claim under the Lanham Act. The judgment was affirmed. View "LERNER & ROWE PC V. BROWN ENGSTRAND & SHELY LLC" on Justia Law

The case involves a dispute between two companies, 1-800 Contacts, Inc. (Plaintiff-Appellant) and JAND, Inc., doing business as Warby Parker (Defendant-Appellee). 1-800 Contacts alleged that Warby Parker used its trademarks in keyword search advertisements, violating the federal Lanham Act and New York State common law. Specifically, 1-800 Contacts claimed that Warby Parker purchased keywords consisting of 1-800 Contacts' trademarks to divert customers searching for 1-800 Contacts to Warby Parker's website. However, 1-800 Contacts did not allege that Warby Parker used its trademarks in any other way beyond purchasing them as keywords.The United States District Court for the Southern District of New York granted Warby Parker's motion for judgment on the pleadings, dismissing the case. The district court applied the Polaroid test to determine the likelihood of consumer confusion and found that although 1-800 Contacts' trademarks were strong and there were indications of bad faith by Warby Parker, these factors were insufficient to establish a likelihood of consumer confusion. The court emphasized that Warby Parker's advertisements and landing pages clearly displayed Warby Parker's own mark, which was substantially different from 1-800 Contacts' marks.The United States Court of Appeals for the Second Circuit reviewed the case and affirmed the district court's judgment. The appellate court held that the mere act of purchasing a competitor's trademarks as keywords does not constitute trademark infringement. It found that 1-800 Contacts failed to plausibly allege any likelihood of consumer confusion under the Polaroid test. The court noted that Warby Parker's advertisements and landing pages did not use 1-800 Contacts' trademarks and were clearly marked with Warby Parker's own branding, making it unlikely that consumers would be confused about the source or affiliation of the advertisements. View "1-800 Contacts, Inc. v. JAND, Inc." on Justia Law

This case involves a dispute over the "Pollo Picú" trademark used in the sale of fresh chicken. Productos Avícolas del Sur, Inc. (PAS) sold chicken under this trademark until 2011, when financial difficulties forced the company to stop. In 2016, To-Ricos, Ltd. (To-Ricos) applied to register the Picú mark, believing PAS had abandoned it. PAS opposed the application, leading To-Ricos to seek a declaratory judgment in federal district court to establish its ownership of the mark. The district court granted summary judgment for To-Ricos, concluding that PAS had abandoned the mark.The United States District Court for the District of Puerto Rico found that PAS had not used the Picú mark for at least three consecutive years, establishing a prima facie case of abandonment. PAS argued that its financial difficulties and ongoing litigation with its bank excused its nonuse of the mark and that it intended to resume use. However, the district court determined that PAS did not provide sufficient evidence of intent to resume use within the statutory period and thus granted summary judgment in favor of To-Ricos.The United States Court of Appeals for the First Circuit reviewed the case and affirmed the district court's decision. The appellate court held that PAS failed to rebut the presumption of abandonment. PAS's attempts to sell the mark in 2012, its 2014 settlement agreement with the bank, and its 2017 licensing agreement with IMEX did not demonstrate an intent to resume use of the mark within the relevant statutory period. The court emphasized that mere explanations for nonuse or vague intentions to resume use are insufficient to rebut the presumption of abandonment. Consequently, the court affirmed the district court's grant of summary judgment, establishing To-Ricos as the rightful owner of the Picú mark. View "To-Ricos, Ltd. v. Productos Avicolas del Sur, 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

American Girl, LLC, a manufacturer of dolls and related products, sued Zembrka, a Chinese entity operating through websites, for selling counterfeit American Girl products. American Girl alleged that Zembrka's websites sold and shipped counterfeit products to New York, using American Girl's trademarks. The case was filed in the United States District Court for the Southern District of New York.The District Court granted Zembrka's motion to dismiss for lack of personal jurisdiction, emphasizing that American Girl failed to show that Zembrka shipped the counterfeit products to New York. The court concluded that without evidence of shipment, the "transacting business" requirement under New York's long-arm statute, C.P.L.R. § 302(a)(1), was not met. American Girl's motion for reconsideration, which included new evidence of New York customers purchasing counterfeit products, was also denied.The United States Court of Appeals for the Second Circuit reviewed the case. The court found that American Girl had adequately demonstrated that Zembrka transacted business in New York. Evidence showed that Zembrka accepted orders from New York, sent order confirmations, and received payments, which constituted purposeful activity within the state. The court held that actual shipment of goods was not necessary to establish personal jurisdiction under § 302(a)(1). The court also determined that exercising jurisdiction over Zembrka was consistent with due process, given New York's strong interest in protecting its consumers and businesses from counterfeit goods.The Second Circuit reversed the District Court's dismissal and remanded the case for further proceedings. View "American Girl, LLC v. Zembrka" 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

In 2022, two top officers of the Libertarian Party of Michigan resigned, leading to a power struggle within the party. Andrew Chadderdon became the acting Chair, but his leadership was contested by the defendants, who then voted to remove him and elected themselves to committee positions. The Libertarian Party Judicial Committee later voided these elections, reinstating Chadderdon. The defendants, however, continued to use the Libertarian National Committee’s (LNC) trademark, claiming to be the rightful leaders of the Michigan affiliate.The United States District Court for the Eastern District of Michigan granted the LNC’s request for a preliminary injunction, barring the defendants from using the LNC’s trademark. The defendants appealed, arguing that the district court’s application of the Lanham Act to their noncommercial speech violated the First Amendment and that their use of the trademark was authorized and not likely to cause confusion.The United States Court of Appeals for the Sixth Circuit reviewed the case. The court found that the Lanham Act could apply to the defendants’ use of the LNC’s trademark because they used it as a source identifier for their political services, which falls within the scope of the Act. The court also determined that the defendants’ use of the trademark created a likelihood of confusion among potential voters, party members, and donors. However, the court found that the defendants’ use of the trademark for online solicitation, when accompanied by clear disclaimers, did not create a likelihood of confusion.The Sixth Circuit affirmed the preliminary injunction in part, except for the aspect concerning the defendants’ online solicitation with disclaimers, which it vacated. View "Libertarian National Committee, Inc. v. Saliba" on Justia Law