Justia Trademark Opinion SummariesArticles Posted in US Court of Appeals for the District of Columbia Circuit
Valancourt Books, LLC v. Merrick Garland
The Copyright Office sent a letter to Valancourt Books, LLC, an independent press based in Richmond, Virginia, demanding physical copies of Valancourt’s published books on the pain of fines. Valancourt protested that it could not afford to deposit physical copies and that much of what it published was in the public domain. In response, the Office narrowed the list of demanded works but continued to demand that Valancourt deposit copies of its books with the Library of Congress or otherwise face a fine. Valancourt then brought this action against the Register of Copyrights and the Attorney General. Valancourt challenged the application of Section 407’s deposit requirement against it as an unconstitutional taking of its property in violation of the Fifth Amendment and an invalid burden on its speech in violation of the First Amendment. The district court granted summary judgment to the government on both claims. The DC Circuit reversed the district court’s grant of summary judgment in the government’s favor and remanded for the entry of judgment to Valancourt and the award of relief. The court concluded that Section 407, as applied by the Copyright Office in this case, worked an unconstitutional taking of Valancourt’s property. The court explained that the Office demanded that Valancourt relinquish property (physical copies of copyrighted books) on the pain of fines. And because the requirement to turn over copies of the works is not a condition of attaining (or retaining) copyright protection in them, the demand to forfeit property cannot be justified as the conferral of a benefit in exchange for property. View "Valancourt Books, LLC v. Merrick Garland" on Justia Law
Klayman v. Judicial Watch, Inc.
Klayman founded Judicial Watch in 1994 and served as its Chairman and General Counsel until 2003. Klayman claims he left voluntarily. Judicial Watch (JW) claims it forced Klayman to resign based on misconduct. During negotiations over Klayman’s departure, JW prepared its newsletter, which was mailed to donors with a letter signed by Klayman as “Chairman and General Counsel.” While the newsletter was at the printer, the parties executed a severance agreement. Klayman resigned; the parties were prohibited from disparaging each other. Klayman was prohibited from access to donor lists and agreed to pay outstanding personal expenses. JW paid Klayman $600,000. Klayman ran to represent Florida in the U.S. Senate. His campaign used the vendor that JW used for its mailings and use the names of JW’s donors for campaign solicitations. Klayman lost the election, then launched “Saving Judicial Watch,” with a fundraising effort directed at JW donors using names obtained for his Senate run. In promotional materials, Klayman asserted that he resigned to run for Senate, that the JW leadership team had mismanaged and the organization, and that Klayman should be reinstated.Klayman filed a complaint against JW, asserting violations of the Lanham Act, 15 U.S.C. 1125(a)(1), by publishing a false endorsement when it sent the newsletter identifying him as “Chairman and General Counsel” after he had left JW. Klayman also alleged that JW breached the non-disparagement agreement by preventing him from making fair comments about JW and that JW defamed him. During the 15 years of ensuing litigation, Klayman lost several claims at summary judgment and lost the remaining claims at trial. The jury awarded JW $2.3 million. The D.C. Circuit rejected all of Klayman’s claims on appeal. View "Klayman v. Judicial Watch, Inc." on Justia Law
Imapizza, LLC v. At Pizza Limited
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
Paleteria La Michoacana, Inc. v. Productos Lacteos Tocumbo S.A
This appeal stemmed from a dispute between a paleta company in Mexico (Prolacto) and a paleta company in northern California (PLM) over a phrase "La Michoacana" and an image of a girl in traditional dress holding a paleta ("Indian Girl"). At issue was whether Prolacto or PLM owned the contested phrase and image and which paleta company unfairly competed or otherwise infringed the other's trademark rights.The DC Circuit held that Prolacto's false-association claim failed because Prolacto failed to establish a right to the "La Michoacana" mark or injury from PLM's use sufficient to establish false association in violation of Section 43(a) of the Lanham Act. Therefore, the court affirmed the district court's judgment for PLM on that claim. The court also affirmed the district court's conclusion that Prolacto failed to establish that PLM's use of the Tocumbo Statements and other advertising materials constituted false advertising in violation of Prolacto's rights under section 43(a)(1)(B). Finally, the court affirmed the district court's conclusion that Prolacto infringed PLM's use of its registered marks. The court found no merit in Prolacto's remaining arguments. View "Paleteria La Michoacana, Inc. v. Productos Lacteos Tocumbo S.A" on Justia Law
American Society for Testing v. Public.Resource.Org, Inc.
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