Justia Trademark Opinion Summaries

Retired Hall of Fame football player, James "Jim" Brown, filed suit against EA, alleging that EA violated section 43(a) of the Lanham Act, 15 U.S.C. 1125(a), through the use of Brown's likeness in EA's "Madden NFL" series of football video games. The court rejected the "likelihood of confusion" test and the "alternative means" test, concluding that the only relevant legal framework for balancing the public's right to be free from consumer confusion about Brown's affiliation with "Madden NFL" and EA's First Amendment rights in the context of Brown's section 43(a) claim was the Rogers v. Grimaldi test. Applying the Rogers test, the court concluded that the use of Brown's likeness was artistically relevant to the "Madden NFL" games and that there were no alleged facts to support the claim that EA explicitly mislead consumers as to Brown's involvement with the games. In this case, the public interest in free expression outweighed the public interest in avoiding consumer confusion. Accordingly, the court affirmed the district court's grant of EA's motion to dismiss. View "Brown v. Electronic Arts, Inc." on Justia Law

Plaintiffs, entities with rights or licenses to registered trademarks bearing the "Guggenheim" name, filed suit alleging trademark infringement and other federal and state law claims after defendant solicited investors to buy various financial products while presenting himself as "David B. Guggenheim." On appeal, defendant challenged the district court's entry of default judgment against him. The court concluded that the district court did not abuse its discretion by entering a default judgment against defendant where the district court was presented with a plethora of evidence to support its finding that he willfully defaulted. Moreover, defendant's asserted defense failed on the merits because his conduct plainly failed to satisfy the elements of a legitimate fair use defense, even if the district court erred by not specifically addressing this defense. View "Guggenheim Capital, LLC v. Birnbaum" on Justia Law

Unique filed a complaint against Ferrari for trademark infringement and false designation of origin under federal law; for deceptive trade practices under state law; and for violation of a final judgment. The district court held that Unique's light blue trademark was valid and enforceable but that Ferrari's blue gauze had not infringed upon that trademark. The clerk entered judgment for Unique on Ferrari's affirmative defense but for Ferrari on Unique's original charge of infringement. Ferrari appealed. At issue was whether a party could appeal on the merits from a decision in its favor, where a district court found against him as to one issue, nondispositive of the case. The court concluded that, although he may not challenge the district court's findings on the merits, he was entitled to vacatur of the portion of the district court's order adverse to him. Accordingly, on the facts of this case, the Supreme Court in Electrical Fittings Corp. v. Thomas & Betts Co. clearly prescribed vacatur of the district court's judgment on the question of validity as the legal consequence of an appeal by an otherwise-successful defendant in an infringement suit on the merits of that question. View "Unique Sports Products, Inc. v. Ferrari Importing Co." 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

Plaintiff, owner of a motivational services business organized around the concept of "Own Your Power," appealed from the district court's grant of a motion to dismiss finding that defendants' use of the phrase "Own Your Power" was fair use. The district court dismissed plaintiff's counterfeiting, vicarious infringement, and contributory infringement claims on additional grounds. Defendants published a magazine cover, hosted an event, and built a section of a website all utilizing the phrase. Because the court found that defendants have not adequately established a fair use defense, the court vacated the judgment of the district court with respect to the trademark infringement, false designation of origin, and reverse confusion claims and remanded for further proceedings. The court agreed with the district court's holdings with respect to plaintiff's vicarious infringement, contributory infringement, and counterfeiting claims and affirmed with respect to these claims. View "Kelly-Brown, et al. v. Winfrey, et al." on Justia Law

B&B, manufacturer and seller of a product called "Sealtight," filed suit against Hargis, manufacturer of a product called "Sealtite," claiming trademark infringement and unfair competition. Hargis counterclaimed for false advertising and false designation of origin. The jury returned a verdict which rejected B&B's claims but found in favor of Hargis on its counterclaims. On appeal, B&B argued that the district court should have given preclusive effect to the Trademark Trial and Appeal Board's (TTAB) findings concerning the likelihood of confusion of the two companies' trademarks. B&B also appealed the award of attorney fees and costs. The court concluded that the district court properly refused to apply collateral estoppel to the TTAB's decision; rejected B&B's argument that the TTAB's factual findings from a trademark registration case were entitled to deference by the district court; and concluded that the district court did not abuse its discretion in excluding the TTAB's decision from the evidence presented to the jury. Therefore, the court affirmed the denial of B&B's motion for judgment as a matter of law or alternative motion for a new trial based on its claim of issue preclusion; affirmed the district court's evidentiary decisions; and remanded the award of attorney fees with directions to amend the award by deducting Hargis's attorney fees for the prior appeal. View "B & B Hardware v. Hargis Industries, et al" on Justia Law

In a trademark infringement dispute between Georgia-Pacific and von Drehle involving paper towels and "touchless" paper towel dispensers, the court vacated the district court's award of summary judgment in von Drehle's favor, and remanded the case for a jury determination of whether von Drehle was liable for contributory trademark infringement. Over three months later, von Drehle sought for the first time to amend its answer to include affirmative defenses of claim preclusion and issue preclusion. The court subsequently held that the district court erred in vacating the jury verdict and in awarding judgment in von Drehle's favor because: (1) von Drehle waived the preclusion defenses by failing to assert them in a timely manner; and (2) the district court erred in alternatively considering the preclusion defense sua sponte. Accordingly, the court vacated the district court's award of judgment in von Drehle's favor, and remanded the case to the district court with instructions to reinstate the jury's verdict in favor of Georgia-Pacific. View "Georgia Pacific Consumer Products, LP v. von Drehle Corp." on Justia Law

DHS sued VHS for misappropriation of trade secrets, breach of contract, and trademark violations. DHS engaged VHS to market and sell the drug Provasca. After that relationship ended, VHS began to manufacture, market, and sell Arterosil, a product similar in many respects to Provasca. The court held that the district court granted DHS's request for a preliminary injunction after making sufficient findings of fact to support each element of the analysis and applying the correct legal standard to those facts. Therefore, the court affirmed the district court's grant of the preliminary injunction in full and lifted the stay of the injunction. The court remanded and directed the district court to expedite the trial on the permanent injunction and to attempt to narrow the breadth of its preliminary injunction. View "Daniels Health Sciences, L.L.C v. Vascular Health Sciences, L.L.C." on Justia Law

In 2002 Brandeberry sold his phonebook business, AMTEL, to White, who in turn sold the business to Yellowbook, a national publisher of yellow-pages directories. In 2009, Brandeberry started a rival phonebook under the AMTEL name. Yellowbook brought a trademark-infringement suit. The district court found that when Brandeberry initially purchased the rights to the AMTEL mark the rights were transferred to both him individually and his corporation; since the sale to White did not involve Brandeberry in an individual capacity, Brandeberry retained his individual rights, and White received only a non-exclusive right to use the mark. The Sixth Circuit reversed, holding that the contract transferred exclusive ownership of the mark and, even if it did not, Brandeberry’s rights were abandoned. The initial contract cannot be read to create joint ownership, and trademark law would not permit joint ownership under the facts in this case. View "Yellowbook Inc. v. Brandeberry" on Justia Law

Eastland is the proprietor of the rap duo Phifty-50, which, according to its web site, has to its credit one album (2003) and a T-shirt. Eastland has registered “PHIFTY-50” as a trademark. It also claims a trademark in “50/50” and contends that Lionsgate and Summit infringed its rights by using “50/50” as the title of a motion picture that opened in 2011. The district court dismissed, finding the movie’s title descriptive because the film concerns a 50% chance of the main character surviving cancer. The Seventh Circuit affirmed, stating that the complaint fails at the threshold: it does not allege that the use of “50/50” as a title has caused any confusion about the film’s source, and any such allegation would be too implausible to support costly litigation. The phrase 50/50 or a sound-alike variant has been in use as the title of intellectual property for a long time. If there is any prospect of intellectual property in the phrase 50/50, Eastland is a very junior user and in no position to complain about the 2011 film. View "Eastland Music Grp. LLC v. Lionsgate Entm't Inc." on Justia Law