Justia Trademark Opinion SummariesArticles Posted in US Court of Appeals for the Ninth Circuit
IMPOSSIBLE FOODS INC. V. IMPOSSIBLE X LLC
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
ORACLE USA, INC., ET AL V. RIMINI STREET, INC.
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
ZACHARY SILBERSHER, ET AL V. VALEANT PHARMACEUTICALS INT’L, ET AL
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 V. REDBUBBLE, INC.
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. V. PHOTOPLAZA, INC., ET AL
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
ENIGMA SOFTWARE GROUP USA, LLC V. MALWAREBYTES, INC.
Plaintiff Enigma Software Group USA LLC (“Enigma”), a computer security software provider, sued a competitor, Defendant-Appellee Malwarebytes, Inc. (“Malwarebytes”), for designating its products as “malicious,” “threats,” and “potentially unwanted programs” (“PUPs”). Enigma’s operative complaint alleged a false advertising claim under Section 43(a) of the Lanham Act, 15 U.S.C. Section 1125(a)(1)(B), and tort claims under New York law. Malwarebytes moved to dismiss under Federal Rule of Civil Procedure 12(b)(6). The district court granted the motion, concluding that all of Enigma’s claims were insufficient as a matter of law. The Ninth Circuit affirmed in part and reversed in part. In the context of this case, the panel concluded that when a company in the computer security business describes a competitor’s software as “malicious” and a “threat” to a customer’s computer, that is more a statement of objective fact than a non-actionable opinion. It is potentially actionable under the Lanham Act, provided Enigma plausibly alleges the other elements of a false advertising claim. The panel disagreed with the district court and concluded that Malwarebytes is subject to personal jurisdiction in New York. As this action was initially filed in New York, the law of that state properly applies. Because the panel held that the Lanham Act and NYGBL Section 349 claims should not have been dismissed, the panel concluded that the tortious interference with business relations claim should similarly not have been dismissed. The panel agreed with the district court regarding the dismissal of the claim for tortious interference with contractual relations, however, and affirmed the dismissal of that claim. View "ENIGMA SOFTWARE GROUP USA, LLC V. MALWAREBYTES, INC." on Justia Law
JASON SCOTT COLLECTION, INC. V. TRENDILY FURNITURE, LLC, ET AL
Appellee Jason Scott Collection, Inc. (JSC) and Appellants Trendily Furniture, LLC, Trendily Home Collection, LLC and Rahul Malhotra (collectively, “Trendily”) are high-end furniture manufacturers that sell their products in the Texas market. Trendily intentionally copied three unique furniture designs by JSC and sold them to Texas retailers. The district court granted summary judgment to JSC on its copyright claim and then held Trendily liable on the trade dress claim following a bench trial. On appeal, Trendily challenged only the latter ruling, arguing that trade dress liability is precluded here because JSC did not demonstrate either secondary meaning or the likelihood of consumer confusion. The Ninth Circuit affirmed the district court’s decision. The panel held that the district court did not clearly err in finding that JSC did so. The panel wrote that Trendily’s clear intent to copy nonfunctional features of JSC’s pieces supports a strong inference of secondary meaning. Noting that copyright and trademark are not mutually exclusive, the panel rejected Trendily’s argument that it should be held liable only under the Copyright Act. The panel held that the district court properly considered several other factors, including that the JSC pieces were continuously manufactured and sold since 2004, that JSC had a longstanding and well-known presence in the high-end furniture market, and that JSC’s furniture was distinctive in the minds of purchasers. The panel held that the district court did not err in finding that there was a likelihood of confusion between the JSC pieces and the Trendily pieces. View "JASON SCOTT COLLECTION, INC. V. TRENDILY FURNITURE, LLC, ET AL" on Justia Law
SAN DIEGO COUNTY CREDIT UNION V. CEFCU
Defendant Citizens Equity First Credit Union (CEFCU) petitioned the Trademark Trial and Appeal Board (TTAB) to cancel a trademark registration belonging to Plaintiff San Diego County Credit Union (SDCCU). SDCCU procured a stay to the TTAB proceedings by filing an action seeking declaratory relief to establish that it was not infringing either of CEFCU’s registered and common-law marks and to establish that those marks were invalid. The district court granted SDCCU’s motion for summary judgment on noninfringement. After a bench trial, the district court also held that CEFCU’s common-law mark was invalid and awarded SDCCU attorneys’ fees. The Ninth Circuit filed (1) an order amending its opinion, denying a petition for panel rehearing, and denying on behalf of the court a petition for rehearing en banc; and (2) an amended opinion affirming in part and vacating in part the district court’s judgment and award of attorneys’ fees. The panel held that SDCCU had no personal stake in seeking to invalidate CEFCU’s common-law mark because the district court had already granted summary judgment in favor of SDCCU, which established that SDCCU was not infringing that mark. The panel held that the district court correctly exercised personal jurisdiction over CEFCU regarding SDCCU’s noninfringement claims, which sought declaratory relief that SDCCU was not infringing CEFCU’s registered mark or common-law mark. View "SAN DIEGO COUNTY CREDIT UNION V. CEFCU" on Justia Law
SAN DIEGO COUNTY CREDIT UNION V. CEFCU
Defendant Citizens Equity First Credit Union (CEFCU) petitioned the Trademark Trial and Appeal Board (TTAB) to cancel a trademark registration belonging to plaintiff San Diego County Credit Union (SDCCU). SDCCU procured a stay to the TTAB proceedings by filing an action seeking declaratory relief to establish that it was not infringing either of CEFCU’s registered and common-law marks and to establish that those marks were invalid. The district court granted SDCCU’s motion for summary judgment on noninfringement. After a bench trial, the district court also held that CEFCU’s common-law mark was invalid and awarded SDCCU attorneys’ fees. The Ninth Circuit affirmed in part and vacated in part the district court’s judgment and award of attorneys’ fees in favor of Plaintiff and remanded. The panel held that SDCCU had no personal stake in seeking to invalidate CEFCU’s common-law mark because the district court had already granted summary judgment in favor of SDCCU, which established that SDCCU was not infringing that mark. Hence, there was no longer any reasonable basis for SDCCU to apprehend a trademark infringement suit from CEFCU. After it granted summary judgment in favor of SDCCU, the district court was not resolving an actual “case” or “controversy” regarding the validity of CEFCU’s common-law mark; thus, it lacked Article III jurisdiction to proceed to trial on that issue. The panel therefore vacated the district court’s judgment and its award of attorneys’ fees, which was based, in part, on the merits of the invalidity claim over which the district court lacked Article III jurisdiction. View "SAN DIEGO COUNTY CREDIT UNION V. CEFCU" on Justia Law
SCOTT RIGSBY, ET AL V. GODADDY INC., ET AL
Plaintiff is a physically challenged athlete and motivational speaker who started the Scott Rigsby Foundation and registered the domain name “scottrigsbyfoundation.org” with GoDaddy.com. When Plaintiff and the Foundation failed to pay the annual renewal fee in 2018, a third party registered the then-available domain name. Scottrigsbyfoundation.org became a gambling information site. Plaintiff sued GoDaddy.com, LLC and its corporate relatives (collectively, “GoDaddy”), for violations of the Lanham Act and various state laws and sought declaratory and injunctive relief, including the return of the domain name. The Northern District of Georgia transferred the case to the District of Arizona, which dismissed all claims. The Ninth Circuit affirmed the district court’s dismissal and dismissed Plaintiff’s and the Foundation’s appeal of an order transferring venue. The panel held that it lacked jurisdiction to review the District Court for the Northern District of Georgia’s order transferring the case to the District of Arizona because transfer orders are reviewable only in the circuit of the transferor district court. The panel held that Plaintiff could not satisfy the “use in commerce” requirement of the Lanham Act vis-à-vis GoDaddy because the “use” in question was being carried out by a third-party gambling site, not GoDaddy. As to the Lanham Act claim, the panel further held that Plaintiff could not overcome GoDaddy’s immunity under the Anti-cybersquatting Consumer Protection Act. The panel held that Section 230 of the Communications Decency Act shielded GoDaddy from liability for Plaintiff’s state-law claims for invasion of privacy, publicity, trade libel, libel, and violations of Arizona’s Consumer Fraud Act. View "SCOTT RIGSBY, ET AL V. GODADDY INC., ET AL" on Justia Law