Justia Trademark Opinion Summaries

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

After a bench trial, the district court entered a judgment for plaintiffs concluding that on seventeen occasions, defendant had infringed plaintiffs' copyrights in their research reports, and that by collecting and disseminating to its own subscribers the summary recommendations with respect to securities trading contained in plaintiffs' reports, defendant had committed the New York state law tort of "hot news" misappropriation. Defendant appealed the judgment and injunction against it on the "hot news" misappropriation claim. The court held that plaintiffs' claim against defendant for "hot news" misappropriation of the plaintiff financial firms' recommendations to clients and prospective clients as to trading in corporate securities was preempted by federal copyright law. Based upon principles explained and applied in National Basketball Association v. Motorola ("NBA"), the court held that because plaintiffs' claim fell within the "general scope" of copyright, 17 U.S.C. 106, and involved the type of works protected by the Copyright Act, 17 U.S.C. 102 and 103, and because defendant's acts at issue did not meet the exceptions for a "hot news" misappropriation claim as recognized by NBA, the claim was preempted. Accordingly, the court reversed the judgment of the district court with respect to that claim. View "Barclays Capital Inc., et al. v. Theflyonthewall.com, Inc." on Justia Law

Two businesses with nearly identical names, John C. Flood, Inc. ("1996 Flood") and John C. Flood of Virginia, Inc. ("Virginia Flood"), brought suit against each other over which company had the right to use two trademarks: JOHN C. FLOOD and its abridged form FLOOD. At issue was whether the district court erred in concluding that 1996 Flood was the proper owner of the two trademarks and that Virginia Flood, as the licensee of the marks, was estopped from challenging 1996 Flood's ownership. The court affirmed the district court's order granting 1996 Flood's motion for partial summary judgment and held that 1996 Flood was the proper successor-in-interest to John C. Flood, Inc. ("1984 Flood"), and that Virginia Flood was barred by the doctrine of licensee estoppel from challenging 1996 Flood's ownership of those marks. Accordingly, the court affirmed the judgment but remanded the case back to the district court for clarification regarding whether Virginia Flood's use of the mark JOHN C. FLOOD OF VIRGINIA was prohibited by the court's decision. View "John C. Flood of Virginia, Inc., et al. v. John C. Flood, Inc., et al." on Justia Law

The state notified a concert promoter that use of two names might violate New Jersey trademark laws. The promoter provided evidence of common law trademarks, but the state notified the hotel venue to advertise the shows as a "tribute" or "salute" to named groups. The promoter filed suit, claiming that the state's enforcement violated the federal Lanham Act, 15 U.S.C. 1125 and its civil rights. The district court entered a temporary restraining order, but the state changed its position. The court did not issue an injunction and denied attorney fees under 42 U.S.C. 1988. The Third Circuit affirmed, rejecting arguments under the "catalyst" theory and holding that the promoter was not a "prevailing party." Even the judge did not consider the TRO an enforceable judgment on the merits and the state's change of position mooted the constitutional issues. View "Singer Mgmt. Consultants, Inc.v. Milgram" on Justia Law

The parties agree that defendant has used the mark continuously since 1998, Plaintiff claims, and defendant disputes, use since 1989. The defendant applied for registration of the mark in 1998 and the USPTO issued registration in 2002. The plaintiff applied for registration in 2000. The USPTO initially denied, but in 2008 granted, registration. The defendant sent a cease-and-desist letter in 2000, but plaintiff continued to use the mark. The parties negotiated and, in 2005, entered an agreement under which defendant would advertise on plaintiff's website. The relationship broke down and, in 2008 defendant petitioned the USPTO to cancel plaintiff's registration; the petition is still pending. Plaintiff sought declaratory judgment and defendant counterclaimed. The district court entered a preliminary injunction in favor of defendant. The First Circuit vacated and remanded. The district court erred in presuming irreparable harm upon finding a likelihood of success on the merits, in a case where there has been an excessive delay in seeking relief.

For many years the owners of the original bridal shop allowed family members to operate similar businesses under the same name. The owners sold one of their own shops and the buyer agreed to pay $75,000 per year for the use of the name and marks. When the agreement expired in 2002, the buyer continued to use the name and marks, without paying. The district court dismissed a 2007 claim under the Lanham Act, 15 U.S.C. 1117, 1125. The Seventh Circuit affirmed, holding that the owners abandoned their mark by engaging in "naked licensing:" allowing others to use the mark without exercising reasonable control over the nature and quality of the goods, services, or business on which the mark is used. It was not enough that the owners had confidence in the high quality of the buyer's operation; they retained no control.

Appellant appealed an order of summary judgment in favor of the United States Bureau of Customs and Border Protection ("CBP") in his eight Freedom of Information Act ("FOIA"), 5 U.S.C. 552, requests for 19 C.F.R. 133.21(c) Notices of Seizures of Infringing Merchandise ("Notices") from certain United States ports. Appellant raised several issues of error on appeal. The court held that the district court's findings that the Notices contained plainly commercial information, which disclosed intimate aspects of an importers business such as supply chains and fluctuations of demand for merchandise, was well supported. The court also held that the district court was not clearly erroneous in its finding that the information at issue was confidential and privileged where the trade secret exemption of FOIA ("Exemption 4") was applicable. The court further held that when an agency freely disclosed to a third party confidential information covered by a FOIA exemption without limiting the third-party's ability to further disseminate the information then the agency waived the ability to claim an exemption to a FOIA request for the disclosed information. Therefore, the district court's ruling was affirmed in regards to FOIA Exemption 4 but the district court's conclusion as to the fees charged to appellant was reversed where CBP must follow the FOIA fee provisions under 19 C.F.R. 103.