Justia Trademark Opinion SummariesArticles Posted in US Court of Appeals for the District of Columbia Circuit
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