Justia Trademark Opinion Summaries

Apple brought this action against Psystar for copyright infringement because Psystar was using Apple's software on Psystar computers. The district court held that Psystar was infringing Apple's federally registered copyrights in its operating software, Mac OS X, because Psystar was copying the software for use in Psystar's computers. Psystar subsequently appealed the district court's rejection of Psystar's copyright misuse defense, the district court's order enjoining Psystar's continuing infringement, and the district court's grant of Apple's motions to seal documents on grounds of maintaining confidentiality. The court held that Psystar's misuse defense failed because it was an attempt to apply the first sale doctrine to a valid licensing agreement. The court affirmed the district court's order enjoining Psystar's continuing infringement and Digital Millennium Copyright Act (DMCA), 17 U.S.C. 1203(b)(1), violations and held that the district court properly applied the Supreme Court's four eBay Inc. v MercExchange, L.L.C. factors. The court held, however, that there was no adequate basis on the record to support the sealing of any Apple records on grounds of confidentiality and applied the presumption in favor of access, vacating the district court's sealing orders. View "Apple Inc. v. Psystar Corp." on Justia Law

This case was brought pursuant to the Anticybersquatting Consumer Protection Act (ACPA), 15 U.S.C. 1125(d)(1) over the registered domain name "gopets.com." The main issue on appeal was whether the term "registration" applied only to the initial registration of the domain name, or whether it also applied to a re-registration of a currently registered domain name by a new registrant. The court concluded that such re-registration was not a "registration" within the meaning of section 1125(d)(1). Therefore, the court held that, because Edward Hise registered gopets.com in 1999, long before GoPets Ltd. registered its service mark, Digital Overture's re-registration and continued ownership of gopets.com did not violate section 1125(d)(1). The court held, however, that the Hises violated the ACPA in registering the additional domains because the Hises acted in bad faith and the court affirmed the district court's award for each of those registrations. The court also affirmed the district court's conclusion that the Hises' use of gopets.com violated the Lanham Act, 15 U.S.C. 1051 et seq., and remanded for determination of any relief that the district court might find appropriate for that violation. The court finally vacated the district court's award of attorney's fees and remanded for reconsideration by the district court. View "GoPets Ltd. v. Hise, et al." on Justia Law

Louis Vuitton sued Managed Solutions Group, Inc. (MSG), Akanoc Solutions, Inc., and Steven Chen (collectively, Defendants) for contributory copyright and trademark infringement, contending that Defendants were liable for their role in hosting websites that directly infringed Louis Vuitton's trademarks and copyrights. After trial, a jury found Defendants liable and awarded damages against each defendant. In response to Defendants' motion for judgment as a matter of law, the district court set aside the jury's verdict and award against MSG. The district court otherwise denied the motion. The court affirmed the district court on all issues of liability raised by the appeal and cross-appeal but vacated the judgment and remanded with instructions that the district court award statutory damages in the amount of $10,500,000 for contributory trademark infringement and $300,000 for contributory copyright infringement, for which Akanoc and Chen should be jointly and severally liable. Accordingly, the court vacated and remanded. View "Louis Vuitton Malletier, S.A. v. Akanoc Solutions, Inc., et al." on Justia Law

Optical Systems Technology, Inc. (OSTI) and Knights Armament Company (KAC), and its owner, dispute the ownership of two trademarks used in the manufacturing and marketing of clip-on night vision devices: "Universal Night Sight" and "UNS." At issue was the district court's entry of partial summary judgment in favor of KAC on OSTI's misappropriation of trade secrets counterclaim. Also at issue was OSTI's pending motion for summary judgment on all counts of KAC's complaint. The court held that the district court was correct in concluding as a matter of law that OSTI's trade secret misappropriation claim was barred by the statute of limitations and the district court correctly granted summary judgment to KAC on OSTI's Count IV, based upon undisputed facts in the record. The court also held that the district court committed no clear error when it determined that OSTI owned the mark; the mark was descriptive, without secondary meaning; and OSTI had no protectable rights in the mark. Therefore, the court held that KAC could not be liable for trademark infringement based on rights to a mark that OSTI could not enforce. View "Knights Armament Co. v. Optical Sys. Tech., Inc." on Justia Law

This appeal stemmed from numerous trademark and unfair competition claims over the name "Patsy's." Patsy's Italian Restaurant appealed, and Patsy's Pizzeria cross-appealed, from a judgment of the district court after a jury trial on claims brought pursuant to trademark and unfair competition law. The court upheld the district court's jury instructions; affirmed the district court's refusal to grant a new trial on the issue of whether Patsy's Pizzeria made fraudulent statements to the Patent and Trademark Office, as well as its refusal to vacate the jury's verdict that Patsy's Italian Restaurant did not fraudulently obtain its trademark registrations; affirmed the district court's refusal to reinstate Patsy's Pizzeria's trademark registrations; and upheld the district court's denial of attorneys' fees and injunctive relief. Accordingly, the court affirmed the judgment of the district court. View "Patsy's Italian Restaurant, Inc., et al. v. Banas, et al." on Justia Law

This appeal stemmed from the district court's summary judgment dismissing Fleischer Studios, Inc.'s (Fleischer) copyright and trademark infringement action where the district court ruled that Fleischer held neither a valid copyright nor a valid trademark in the Betty Boop cartoon character and therefore lacked standing to sue. The court held that because the chain of title was broken, the district court properly dismissed Fleischer's copyright infringement claim. The court vacated and remanded to the district court for further proceedings on Fleischer's trademark infringmenet claims regarding the Betty Boop word mark because it was unable to ascertain a legal basis for the district court's reasoning on the current record. View "Fleischer Studios, Inc. v. A.V.E.L.A., Inc., et al." on Justia Law

FICO brought suit against three credit bureaus: Experian, Equifax, and Trans Union, as well as against VantageScore, the credit bureaus' joint venture. The suit alleged antitrust, trademark infringement, false-advertising, and other claims. FICO, Experian, and VantageScore appealed from the district court's judgment. The court held that FICO failed to demonstrate that it had suffered any antitrust injury that would entitle it to seek damages under section 4 of the Clayton Act, 15 U.S.C. 12-27, and FICO failed to demonstrate the threat of an immediate injury that might support injunctive relief under section 16. The court also held that there was no genuine issue of material fact that consumers in this market immediately understood "300-850" to describe the qualities and characteristics of FICO's credit score and therefore, the district court did not err in finding the mark to be merely descriptive. The court further held that there was sufficient evidence for a reasonable jury to determine that the U.S. Patent and Trademark Office (PTO) relied on FICO's false representation in deciding whether to issue the "300-850" trademark registration. The court agreed with the district court that VantageScore was not a licensee and therefore was not estopped from challenging the mark under either theory of agency or equity. The court finally held that FICO's false advertising claims were properly dismissed and the district court did not abuse its discretion in denying the motion for attorneys' fees. View "Fair Isaac Corp., et al. v. Experian Information Solutions, et al." on Justia Law

Plaintiff sued defendant, claiming, among other things, copyright infringement under 17 U.S.C. 501, trademark infringement under 15 U.S.C. 1114(a), and unfair competition under New York state law. At issue was whether the first sale doctrine, 17 U.S.C. 109(a), applied to copyrighted workers produced outside the United States but imported and resold in the United States. The court held that the first sale doctrine did not apply to works manufactured outside of the United States; the district court did not err in declining to instruct the jury regarding the unsettled state of the first sale doctrine; and the district court did not err in admitting evidence of defendant's gross revenues. Accordingly, the judgment of the district court was affirmed. View "John Wiley & Sons, Inc. v. Kirtsaeng" on Justia Law

CollegeSource, Inc. (CollegeSource), a California corporation with its principal place of business in California, sued AcademyOne, Inc. (AcademyOne), a Pennsylvania corporation with its principal place of business in Pennsylvania, in federal district court for the Southern District of California, alleging that AcademyOne misappropriated material from CollegeSource's websites. AcademyOne moved to dismiss for lack of personal jurisdiction and the district court granted its motion. The court held that AcademyOne was subject to specific personal jurisdiction, but not general personal jurisdiction, in California with respect to CollegeSource's misappropriation claims. Under the doctrine of pendant personal jurisdiction, AcademyOne was also subject to personal jurisdiction in California with respect to the remainder of CollegeSource's claims. Therefore, the court reversed the district court's dismissal of CollegeSource's complaint and remanded for further proceedings. View "CollegeSource, Inc. v. AcademyOne, Inc." on Justia Law

CollegeSource, Inc. (CollegeSource), a California corporation with its principal place of business in California, sued AcademyOne, Inc. (AcademyOne), a Pennsylvania corporation with its principal place of business in Pennsylvania, in federal district court for the Southern District of California, alleging that AcademyOne misappropriated material from CollegeSource's websites. AcademyOne moved to dismiss for lack of personal jurisdiction and the district court granted its motion. The court held that AcademyOne was subject to specific personal jurisdiction, but not general personal jurisdiction, in California with respect to CollegeSource's misappropriation claims. Under the doctrine of pendant personal jurisdiction, AcademyOne was also subject to personal jurisdiction in California with respect to the remainder of CollegeSource's claims. Therefore, the court reversed the district court's dismissal of CollegeSource's complaint and remanded for further proceedings.