Justia Trademark Opinion Summaries

HSN sold through its website and television station about 70,000 "Esteban" guitars that it identified, inaccurately, as containing Fishman pickups. Esteban is the performance name used by musician Paul who, with his company Daystar, has collaborated with HSN since 2001 to market Esteban guitar packages. Fishman, manufacturer of the pickup at issue, which is attached to musical instruments for sound amplification, claimed trademark infringement and false advertising under the Lanham Act, 15 U.S.C.1051, against HSN, Paul, and Daystar. The district court rejected the claims, finding that the violations were not "willful." The judge chose not to order disgorgement of profits. The First Circuit affirmed, rejecting challenges to evidentiary rulings and jury instructions. In federal civil litigation willfulness requires a conscious awareness of wrongdoing by the defendant or at least conduct deemed "objectively reckless" measured against standards of reasonable behavi View "Fishman Transducers, Inc. v. Paul" on Justia Law

In 2000, a fire destroyed a business location of Stone Flood and Fire Restoration Inc., spurring years of litigation with its insurer, Safeco Insurance Company of America. After Stone Flood and its two shareholders, James and Patrice Stone, sued Safeco in 2007, the district court dismissed all claims against Safeco. The court concluded (1) Stone Flood's claims on the insurance policy were filed three days beyond the applicable statute of limitations and were therefore barred; (2) the Stones were not insureds and lacked standing to bring individual claims under the policy; and (3) the Stones lacked standing to bring a claim of intentional infliction of emotional distress (IIED) because their alleged injuries were merely derivative of the corporation's. The Supreme Court reversed in part and affirmed in part, holding (1) the district court's calculation of the tolling of the limitations period was incorrect and a correct calculation saved Stone Flood's claims under the insurance policy; and (2) the district court properly concluded the Stones were not insureds and lacked standing to sue under the policy, and their claim of IIED failed for lack of a distinct, non-derivative injury. Remanded.View "Stone Flood & Fire Restoration, Inc. v. Safeco Ins. Co." on Justia Law

Appellants filed suit against Rearden Commerce, asserting numerous claims related to a conflict between the parties' marks and names. The district court granted Rearden Commerce's motion for summary judgment as to Appellants' trademark-related claims. Specifically, the district court found Rearden Commerce was entitled to judgment as a matter of law on Appellants' claims of false designation of origin under the Lanham Act, violations of the Anticybersquatting Consumer Protection Act, common law trademark infringement, and violations of the California Unfair Competition Law. The Ninth Circuit Court of Appeals vacated the district court, holding that genuine issues of material fact existed, which precluded summary judgment in favor of Rearden Commerce. Remanded for further proceedings. View "Rearden LLC v. Rearden Commerce, Inc." on Justia Law

Of the parties in this case, one of two competing car dealerships used a software program in order to compete more aggressively with the other one over the internet. The program produced a "multiplicity of mini-websites, a host of hard feelings, and of course, litigation." The mini-websites (or "microsites" would either automatically redirect users who clicked on them to Eastern Shore Toyota, LLC's official websites, or they would display a one-page website advertising Eastern Shore. Eastern Shore was sent numerous cease-and-desist letters for using any microsite address that infringed on another company's trademark. Eastern Shore blamed the person behind the creation of its microsite marketing strategy for its legal troubles with third parties. One such third party, Bob Tyler Toyota, filed suit against Eastern Shore's owner Shawn Esfahani and the "internet marketing expert" who first approached Eastern Shore with the microsite idea, David Vaughn, Jr. Bob Tyler Toyota brought six claims against Eastern Shore, seeking injunctive relief and actual and statutory damages, all relating to Eastern Shore's alleged misuse of its trademarks under state and federal law. The district court denied Bob Tyler Toyota's motion for summary judgment and its motion for judgment as a matter of law. The jury found that Eastern Shore violated at least one of Bob Tyler Toyota's six claims. At that time, Bob Tyler Toyota did not object to or even mention any inconsistencies between the jury's findings. A month after the verdict, Bob Tyler Toyota renewed its motion for judgment as a matter of law on all of its claims. It also moved for a new trial on its anticybersquatting claim, arguing, among other things, that the jury verdict was inconsistent and that it was not supported by the evidence. The district court denied both motions. Bob Tyler Toyota appealed. In light of the totality of the evidence, the Eleventh Circuit could not say that the district court erred in denying Bob Tyler Toyota's motions or abused its discretion in determining the jury's verdict was not against the weight of the evidence. Accordingly, the Court affirmed the district court's decision and jury verdict. View "Pensacola Motor Sales Inc. v. Eastern Shore Toyota" on Justia Law

This case arose from a trademark infringement suit involving the sale of counterfeit versions of defendant's hoisin sauce. The district court subsequently imposed sanctions in fees and costs pursuant to FRCP 11 against plaintiffs and their attorneys in favor of defendant. The attorneys appealed, contending that the district court erred in its application of Rule 11. Defendant cross-appealed, contending that the district should have awarded substantially more in fees and costs and moved to sanction the attorneys for filing a purportedly frivolous appeal. The court held that the safe harbor requirement under Rule 11 was satisfied in these circumstances; the attorneys have failed to show that the district court abused its discretion in concluding that the action was frivolous; nor have the attorneys shown that the district court abused its discretion in deciding to impose monetary sanctions. The court rejected defendant's arguments on cross appeal and affirmed the judgment of the district court. View "Star Mark Mgmt., Inc. v. Koon Chun Hing Kee Soy & Sauce Factory, Ltd." on Justia Law

This case arose when the University told Daniel A. Moore, an artist who painted famous football scenes involving the University since 1979, that he would need permission to depict the University's uniforms because they were trademarks. Moore contended that he did not need permission because the uniforms were being used realistically to portray historic events. The parties could not reach a resolution and the University subsequently sued Moore for breach of contract, trademark infringement, and unfair competition. The court held that, as evidenced by the parties' course of conduct, Moore's depiction of the University's uniforms in his unlicensed paintings, prints, and calendars was not prohibited by the prior licensing agreements. Additionally, the paintings, prints, and calendars did not violate the Lanham Act, 15 U.S.C. 1125(a), because these artistically expressive objects were protected by the First Amendment. Accordingly, the court affirmed the grant of summary judgment by the district court with respect to the paintings and prints, and reversed with respect to the prints as replicated on calendars. With respect to the licensing agreements' coverage of the mugs and other "mundane products," the court reversed the district court's grant of summary judgment because disputed issues of fact remained. Accordingly, the court affirmed in part, reversed in part, and remanded. View "University of Ala. Bd of Trustees v. New Life, Inc" on Justia Law

Alpha sued defendants, foreign corporations, alleging that defendants conspired to steal its tire blueprints, produce infringing tires, and sell them to entities that had formerly purchased products from Alpha. A jury found in favor of Alpha on all claims and the district court upheld the damages award against defendants' post-trial challenges. Defendants subsequently appealed, contesting the verdict and the district court's exercise of personal jurisdiction. The court initially held that the district court properly exercised jurisdiction over defendants. The court affirmed the district court's judgment that defendants were liable to Alpha under the Copyright Act, 17 U.S.C. 101 et seq., and for conversion under Virginia law, but the court dismissed the remaining theories of liability submitted to the jury. Accordingly, the court affirmed the jury's damages award. Finally, the court vacated the district court's award of attorneys' fees. View "Tire Engineering and Distribution, LLC. v. Shandong Linglong Rubber Co." on Justia Law

Marzetti, which markets five varieties of “New York Brand the Original Texas Toast” croutons, sued under 15 U.S.C. 1125(a) alleging infringement based on Roskam’s use of the mark “Texas Toast” on its packaged croutons. The district court agreed with Roskam that the terminology is generic when describing a type of crouton, so that the mark “Texas Toast” is not entitled to trademark protection and that even if “Texas Toast” were a protectable mark, Roskam’s use did not create a likelihood of confusion among consumers. The Sixth Circuit affirmed, citing the generic quality of the mark. View "T. Marzetti Co. v. Roskam Baking Co" on Justia Law

FNB South Dakota and its affiliates appealed from the district court's entry of a permanent injunction against them as a remedy for trademark infringement and unfair competition claims brought by FNB Sioux Falls. FNB Sioux Falls cross-appealed the denial of its motion for attorney's fees and the district court's purported factual finding that certain of FNB South Dakota's affiliates' names "appear" not to infringe FNB Sioux Falls' marks. The court held that, because the nucleus of operative facts in this action included facts not common to the prior action, this action was not barred by res judicata; the admission of the confusion log was harmless error; the district court's finding of a likelihood of confusion was based on a permissible view of the evidence and was therefore not clearly erroneous; and the district court's denial of fees must be affirmed. The court also declined to strike the challenged language from the district court's Amended Findings of Fact and Conclusions of Law. Accordingly, the court affirmed the judgment. View "The First National Bank v. First National Bank SD, et al." on Justia Law

Appellants sued GLC and SGI asserting trademark infringement, deceptive trade practices, and breach of contract stemming from GLC's "Money Bags" lottery games of 2005 and 2007. At issue was whether the Court of Appeals erred in finding that GLC was entitled to assert sovereign immunity as a bar to a suit raising claims that arose outside the Georgia Tort Claims Act and whether the Court of Appeals erred in finding that OCGA 10-1-440 required the bona fide use of a trademark to make out a claim concerning the trademark's infringement? The court held that because sovereign immunity applied to state instrumentalities, GLC was entitled to assert sovereign immunity as a defense in this case. The court also held that there was no error in the interpretation of OCGA 10-1-440(b) by the Court of Appeals where appellants have not made "bona fide" use of their MONEYBAG$ mark in commerce sufficient to establish protectable rights in the mark. Accordingly, the judgment was affirmed.View "Kyle, et al. v. Georgia Lottery Corp., et al." on Justia Law