Justia Trademark Opinion Summaries

Two computer programs hold the registered trademark "CONDOR." After the district court entered summary judgment, the Seventh Circuit concluded that a trial was required on a confusion-in-trade allegation, but held that the state university was immune from federal jurisdiction. On rehearing, the Seventh Circuit reversed itself, citing the doctrine of waiver by litigation conduct and again rejected summary judgment.The state is not entitled to assert sovereign immunity over the counterclaims. View "Bd. of Regents Univ. of WI Sys. v. Phoenix Software Int'l, Inc." on Justia Law

Two computer programs hold the registered trademark "CONDOR." After the district court entered summary judgment, the Seventh Circuit concluded that a trial was required on a confusion-in-trade allegation, but held that the state university was immune from federal jurisdiction. On rehearing, the Seventh Circuit reversed itself, citing the doctrine of waiver by litigation conduct and again rejected summary judgment.The state is not entitled to assert sovereign immunity over the counterclaims. View "Bd. of Regents Univ. of WI Sys. v. Phoenix Software Int'l, Inc." on Justia Law

Two multi-national distilleries have engaged in a lengthy dispute over the use of the words "Havana Club" to sell rum in the United States. Most recently the district held that defendant's use of the words on its label is not a false advertisement of the rum’s geographic origin under Section 43(a)(1)(B) of the Lanham Act, 15 U.S.C. 1125(a)(1)(B). The Third Circuit affirmed, holding that no reasonable interpretation of the label as a whole, which includes a statement that it is "distilled and crafted in Puerto Rico," could lead a reasonable consumer to a false or misleading conclusion. The court declined to address whether the term is subject to trademark protection. View "Pernod Ricard USA LLC v. Bacardi U.S.A. Inc." on Justia Law

Perfect 10 moved for a preliminary injunction against Google, arguing that it was entitled to an injunction because Google's web and image search and related caching feature, its Blogger service, and its practice of forwarding Perfect 10's takedown notices to chillingeffects.org constituted copyright infringement. Perfect 10 also argued that it was entitled to an injunction based upon Google's alleged violation of the rights of publicity assigned to Perfect 10 by some of its models. At issue was whether the district court erred in denying Perfect 10's request for preliminary injunctive relief. The court held that Perfect 10 had not shown a sufficient causal connection between irreparable harm to Perfect 10's business and Google's operation of its search engine. Therefore, the court held that because Perfect 10 had failed to satisfy this necessary requirement for obtaining preliminary injunctive relief, the district court's ruling was not an abuse of discretion. View "Perfect 10, Inc. v. Google, Inc." on Justia Law

Plaintiff, the owner of the federal trademark "The Flying Burrito Company," appealed the district court's dismissal of its trademark infringement action for lack of personal jurisdiction. At issue was whether a federal court in Arkansas had personal jurisdiction over an Iowa citizen and an Iowa limited liability company where the contact with Arkansas was a single meeting by the parties in Arkansas. The court held that defendants' actions in making the isolated trip to Arkansas do not reveal an intent to purposefully avail themselves of the protection of that state's laws, or otherwise established sufficient contacts with Arkansas to justify personal jurisdiction. As noted, defendants made the trip to Arkansas in an effort to avoid any trademark infringement resulting from the name of their Iowa restaurant and nothing in the record showed any other connection to Arkansas. Therefore, defendants have insufficient contacts with Arkansas to confer personal jurisdiction over them with respect to the subject of this lawsuit. With respect to plaintiff's ground of appeal seeking jurisdictional discovery, the district court did not expressly rule on that issue, but in any even, the court saw no basis for such discovery. View "Pangaea, Inc. v. The Flying Burrito, LLC, et al." on Justia Law

Plaintiff claimed that several of defendant's brands of toilet paper infringed on its trademark design. The district court entered summary judgment, holding that toilet paper embossed patterns are functional and cannot be protected as a registered trademark under the Lanham Act, 15 U.S.C. 1115(b)(8). The Seventh Circuit affirmed. Plaintiff patented the design, claiming it to be functional and can only claim the protection of a patent, not that of a trademark. The "central advance" claimed in the utility patents is embossing a quilt-like diamond lattice filled with signature designs that improves perceived softness and bulk, and reduces nesting and ridging. This is the same essential feature claimed in the trademarks. View "Georgia-Pacific Consumer Prods. v. Kimberly-Clark Corp." on Justia Law

XMH sought Chapter 11 bankruptcy relief and obtained permission to sell a subsidiary's assets (11 U.S.C. 363), indicating that a contract between the subsidiary and WG would be assigned to purchasers. WG objected, claiming that the contract was a sublicense of a trademark and could not be assigned without permission. The bankruptcy judge agreed with WG, but allowed XMH to renegotiate so that the subsidiary would retain title to the contract but the purchasers would assume all duties and receive all fees. The district court granted a motion substituting the purchasers for XMH and ruled that the order barring assignment was erroneous. First holding that the order was appealable and that it should exercise jurisdiction despite the absence of the bankruptcy trustee as a party, the Seventh Circuit affirmed. If WG had wanted to prevent assignment, it could have identified the contract as a trademark sublicense to trigger a default rule that trademark licenses are assumed to be not assignable. The contract was not simply a sublicense: WG retained control over "all other aspects of the production and sale of the Trademarked Apparel." Such a designation would have been more effective than a clause forbidding assignment because it would have survived bankruptcy. View "In re XMH Corp. " on Justia Law

Petitioner, a native and citizen of Mexico, petitioned for review of the BIA's decision dismissing his appeal from an IJ's order finding him removable and denying his application for cancellation of removal. Petitioner challenged the BIA's finding that his six convictions for "willfully manufacturing, intentionally selling, and knowingly possessing for sale more than 1,000 articles bearing a counterfeit trademark," in violation of California Penal Code 350(a)(2), constituted an aggravated felony as an "offense relating to... counterfeiting." Petitioner also maintained that the generic offense of counterfeiting referred only to the imitation of currency and that this conviction under section 350 did not require proof of his intent. The court held that the definition of aggravated felony extended to convictions for the unauthorized imitation of trademarks. The court also rejected petitioner's remaining argument that section 350 did not incorporate "an intent to defraud" as an essential element of the offense because "[t]he commission of the crime necessarily defrauds the owner of the mark, or an innocent purchaser of the counterfeit items, or both," and the court had "difficulty distinguishing such intent from a general intent to defraud[.]" Accordingly, the petition for review was denied. View "Rodriguez-Valencia v. Holder, Jr." on Justia Law

Appellants (AVELA) appealed a permanent injunction prohibiting them from licensing certain images extracted from publicity materials for the films "Gone with the Wind" and "The Wizard of Oz," as well as several animated short films featuring the cat-mouse duo "Tom & Jerry." At issue was whether the district court properly issued the permanent injunction after granting summary judgment in favor of appellee (Warner Bros.) on their claim that the extracted images infringed copyrights for the films. The court affirmed in large part the district court's grant of summary judgment to Warner Bros. on the issue of copyright infringement and the resulting permanent injunction. The court reversed with respect to one category of AVELA products, and vacated in corresponding part the permanent injunction entered by the district court. The court remanded for modification of the permanent injunction and further proceedings with the opinion. View "Warner Bros. Entertainment, Inc., et al. v. X One X Productions, et al." on Justia Law

This appeal stemmed from a judgment against an entertainment company, plaintiffs, that sued the current members of "Expose," an American girl dance band, about the trademark name of the band. At issue was whether the district court erred when it found that plaintiffs failed to prove that it had enforceable rights in the Expose mark at common law. The court held that the district court did not err when it determined that the individual band members were the common law owners of the Expose mark where the record supported findings that plaintiffs had no enforceable rights in the mark and where the court need not reach the issue of consumer confusion because plaintiffs had no enforceable rights. The court further held that the remaining grounds for relief asserted by plaintiffs were without merit. Accordingly, the court affirmed the judgment of the district court. View "Crystal Entertainment & Filmworks, Inc., et al. v. Jurado, et al." on Justia Law