Justia Trademark Opinion Summaries

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

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

This case involves a trademark infringement dispute between BillFloat Inc., a Delaware corporation using the "SmartBiz" trademark, and Collins Cash Inc., a New York corporation using the "Smart Business Funding" mark. BillFloat alleged that Collins Cash, its former business partner, infringed on its trademark.The case was initially heard in the United States District Court for the Northern District of California. The district court admitted Collins Cash's likelihood-of-confusion survey as expert evidence under Federal Rule of Evidence 702. After a jury trial, the court ruled in favor of Collins Cash, finding no likelihood of confusion between the marks. The district court also partially denied Collins Cash's motion for attorneys' fees.The case was then appealed to the United States Court of Appeals for the Ninth Circuit. The appellate court affirmed the district court's judgment. It held that the district court did not abuse its discretion in admitting Collins Cash's likelihood-of-confusion survey as expert evidence. The court also held that the district court did not abuse its discretion in declining to instruct the jury that it should not draw any inferences from BillFloat's lack of a similar survey. On cross-appeal, the appellate court held that the district court did not abuse its discretion in denying Collins Cash's motion for attorneys' fees for the trademark infringement claim, either under the parties' partnership agreement or under the Lanham Act. The court concluded that the trademark claim did not relate to the partnership agreement, and the case was not "exceptional" under the Lanham Act. View "BILLFLOAT INC. V. COLLINS CASH INC." on Justia Law

The United States Court of Appeals for the Ninth Circuit was asked to rule on a trademark infringement case brought by BBK Tobacco & Foods LLP against Central Coast Agriculture, Inc. BBK, a distributor and seller of smoking-related products with trademarked "RAW" branding, alleged that CCA infringed on its mark by selling cannabis products under the mark "Raw Garden." The district court granted summary judgment in favor of CCA on BBK’s trademark claims, but in favor of BBK on its counterclaims to invalidate several of CCA’s trademark applications and CCA’s counterclaim to cancel BBK’s trademark applications for unlawful use.The Ninth Circuit affirmed the district court’s grant of summary judgment in favor of BBK on its claim to invalidate four of CCA’s trademark applications. The court held that, under 15 U.S.C. § 1119, when an action involves a claim of infringement on a registered trademark, a district court also has jurisdiction to consider challenges to the trademark applications of a party to the action. The court also held that lack of a bona fide intent to use a mark in commerce is a valid basis to challenge a trademark application.However, in a separately filed memorandum disposition, the Ninth Circuit reversed the district court’s summary judgment on BBK’s trademark claims and affirmed the summary judgment on CCA’s counterclaim to cancel BBK’s trademark for unlawful use. View "BBK TOBACCO & FOODS LLP V. CENTRAL COAST AGRICULTURE, INC." on Justia Law

In a trademark dispute between two companies that used the word "Punchbowl" in their marks, the United States Court of Appeals for the Ninth Circuit reversed the district court's summary judgement in favor of AJ Press, LLC. The court held that AJ Press, LLC's use of the Punchbowl mark was not outside the scope of the Lanham Act under the "Rogers test". The Rogers test, which governs disputes over trademarks that are used in expressive works protected by the First Amendment, does not apply when the accused infringer uses a trademark to designate the source of its own goods. The court found that AJ Press, LLC was using the Punchbowl mark to identify and distinguish its news products. The court reversed the district court's judgement and remanded for further proceedings, instructing the district court to proceed to a likelihood-of-confusion analysis under the Lanham Act. View "Punchbowl, Inc. v. AJ Press, LLC" on Justia Law

Impossible X, now a Texas LLC, is a one-person company run by Joel Runyon, a self-described “digital nomad” who for two years operated his business from San Diego. Impossible X sells apparel, nutritional supplements, diet guides, and a consulting service through its website and various social media channels. Impossible Foods sued Impossible X in federal court in California, seeking a declaration that Impossible Foods’ use of the IMPOSSIBLE mark did not infringe on Impossible X’s trademark rights. The district court dismissed the case for lack of personal jurisdiction.   The Ninth Circuit reversed the district court’s dismissal. The panel held that Impossible X was subject to specific personal jurisdiction in California because it previously operated out of California and built its brand and trademarks there, and its activities in California were sufficiently affiliated with the underlying trademark dispute to satisfy the requirements of due process. First, Impossible X purposefully directed its activities toward California and availed itself of the privileges of conducting activities there by building its brand and working to establish trademark rights there. Second, Impossible Foods’ declaratory judgment action arose out of or related to Impossible X’s conduct in California. The panel did not confine its analysis to Impossible X’s trademark enforcement activities, but rather concluded that, to the extent the Federal Circuit follows such an approach for patent declaratory judgments, that approach is not justified in the trademark context. Third, the panel concluded that there was nothing unreasonable about requiring Impossible X to defend a lawsuit based on its trademark building activities in the state that was its headquarters and Runyon’s home base. View "IMPOSSIBLE FOODS INC. V. IMPOSSIBLE X LLC" on Justia Law

This civil contempt dispute is the fallout from the protracted copyright infringement litigation between Oracle USA, Inc. and Rimini Street, Inc.—now in its thirteenth year. In the underlying case, the district court entered a permanent injunction that enjoined Rimini from various infringing practices. Years later, the district court identified ten potential violations of the permanent injunction (“Issues 1– 10”), and ultimately held Rimini in contempt on five. Rimini was ordered to pay $630,000 in statutory sanctions plus attorneys’ fees. On appeal, Rimini argued that the contempt order should be reversed and that the sanctions should be vacated.   The Ninth Circuit affirmed in part, reversed in part, and vacated in part the district court’s order. The permanent injunction generally prohibited Rimini from reproducing, preparing derivative works from, or distributing certain Oracle software. The district court identified ten potential violations of the permanent injunction (Issues 1–10) and held Rimini in contempt on five (Issues 1-4, 8). The panel affirmed the district court’s finding of contempt on Issues 1-4. The panel held that the district court did not abuse its discretion in holding Rimini in contempt for hosting Oracle files on its computer systems (Issue 1). The panel also held that the district court did not abuse its discretion in finding Rimini in contempt for violating the injunction against the “cross use” of development environments (Issues 2, 3, and 4). Reversing the finding of contempt on Issue 8, the panel held that the district court abused its discretion in holding Rimini in contempt for creating copies of an Oracle Database file on its systems. View "ORACLE USA, INC., ET AL V. RIMINI STREET, INC." on Justia Law

Plaintiff alleged that Valeant fraudulently obtained two sets of patents related to a drug and asserted these patents to stifle competition from generic drugmakers. Plaintiff further alleged that Defendants defrauded the federal government by charging an artificially inflated price for the drug while falsely certifying that its price was fair and reasonable. Dismissing Plaintiff’s action under the False Claims Act’s public disclosure bar, the district court concluded that his allegations had already been publicly disclosed, including in inter partes patent review (“IPR”) before the Patent and Trademark Office.   The Ninth Circuit reversed the district court’s dismissal. The panel held that an IPR proceeding in which the Patent and Trademark Office invalidated Valeant’s “‘688” patent was not a channel (i) disclosure because the government was not a party to that proceeding, and it was not a channel (ii) disclosure because its primary function was not investigative. The panel held that, under United States ex rel. Silbersher v. Allergan, 46 F.4th 991 (9th Cir. 2022), the patent prosecution histories of Valeant’s patents were qualifying public disclosures under channel (ii). The panel assumed without deciding that a Law360 article and two published medical studies were channel (iii) disclosures. The panel held that the “substantially the same” prong of the public disclosure bar applies when the publicly disclosed facts are substantially similar to the relator’s allegations or transactions. None of the qualifying public disclosures made a direct claim that Valeant committed fraud, nor did they disclose a combination of facts sufficient to permit a reasonable inference of fraud. View "ZACHARY SILBERSHER, ET AL V. VALEANT PHARMACEUTICALS INT'L, ET AL" on Justia Law

Y.Y.G.M. SA, doing business as Brandy Melville, manufactures its own clothing, home goods, and other items. It owns several trademarks, including the Brandy Melville Heart Mark (Heart Mark) and the LA Lightning Mark (Lightning Mark). Redbubble owns and operates an online marketplace where artists can upload their artwork to be printed on various products and sold. After a jury found that Redbubble, Inc. had violated Brandy Melville’s trademarks, the district court granted partial judgment as a matter of law to Redbubble on one trademark claim. Both parties appealed.   The Ninth Circuit affirmed in part and vacated in part the district court’s judgment after a jury trial in an action brought under the Lanham Act against Red Bubble. Vacating the district court’s order granting in part and denying in part Redbubble’s motion for judgment as a matter of law, the panel held that a party is liable for contributory infringement when it continues to supply its product to one whom it knows or has reason to know is engaging in trademark infringement. A party meets this standard if it is willfully blind to infringement. Agreeing with other circuits, the panel held that contributory trademark liability requires the defendant to have knowledge of specific infringers or instances of infringement. The panel held that, in granting judgment as a matter of law to Redbubble on the claim for contributory trademark counterfeiting as to the Heart Mark, the district court further erred by failing to evaluate the evidence of likelihood of confusion under the correct legal standard. View "Y.Y.G.M. SA V. REDBUBBLE, INC." on Justia Law

Herbal Brands, Inc., which has its principal place of business in Arizona, brought suit in Arizona against New York residents that sell products via Amazon storefronts. Herbal Brands alleged that Defendants’ unauthorized sale of Herbal Brands products on Amazon to Arizona residents and others violated the Lanham Act and state law. The district court dismissed for lack of personal jurisdiction over Defendants.   The Ninth Circuit reversed. The panel held that if a defendant, in its regular course of business, sells a physical product via an interactive website and causes that product to be delivered to the forum, then the defendant has purposefully directed its conduct at the forum such that the exercise of personal jurisdiction may be appropriate. The panel applied the Arizona long-arm statute, which provides for personal jurisdiction co-extensive with the limits of federal due process. Due process requires that a nonresident defendant must have “certain minimum contacts” with the forum such that the exercise of personal jurisdiction does not offend traditional notions of fair play and substantial justice.   The panel held that Herbal Brands met its initial burden of showing that Defendants purposefully directed their activities at the forum because, under the Calder effects test, Defendants’ sale of products to Arizona residents was an intentional act, and Herbal Brands’ cease-and-desist letters informed defendants that their actions were causing harm in Arizona. The court held that Defendants had sufficient minimum contacts with Arizona, Herbal Brands’ harm arose out of those contacts, and the exercise of personal jurisdiction would be reasonable in the circumstances. View "HERBAL BRANDS, INC. V. PHOTOPLAZA, INC., ET AL" on Justia Law