Justia U.S. 9th Circuit Court of Appeals Opinion Summaries

Will Co. Ltd., a Japanese adult entertainment producer, brought a copyright infringement action against the owners and operators of ThisAV.com, a video-hosting site based in Hong Kong, alleging that the site was displaying without authorization several of its copyrighted works. The district court found that it lacked specific personal jurisdiction over ThisAV.com’s owners and operators because Will Co. could not establish that they “expressly aimed” ThisAV.com’s content at the United States market, or that it was foreseeable that operating the site would cause jurisdictionally significant harm in the United States. Defendants were Youhaha Marketing and Promotion Limited (“YMP”) and Ka Yeung Lee.The Ninth Circuit reversed the district court’s dismissal of a copyright suit for lack of specific personal jurisdiction and remanded for further proceedings. The panel concluded that both YMP and Lee committed at least one intentional act by operating ThisAV.com and purchasing its domain name and domain privacy services. As to the second element, both Defendants did “something more” than mere passive operation of the website. As to the third element, Defendants’ conduct caused harm in the United States because there were almost 1.3 million visits to their website in the United States during the relevant period, and that harm was foreseeable. View "WILL CO., LTD. V. KA LEE" on Justia Law

The district court appointed the receiver and authorized him to sell Defendants’ property—three radio stations—to generate the funds needed to satisfy the judgment. Contending that they had satisfied the judgment by depositing certain sums with the district court, Defendants moved to discharge the receiver, terminate the receivership, and enjoin the sale of the radio stations. The district court denied the motion, holding that it was within its discretion to prolong the receivership in order to protect other creditors and ensure that the receiver would be paid for his services.   The Ninth Circuit affirmed the district court’s order denying Defendants’ motion to discharge a receiver who had been appointed to aid in the execution of a judgment for violations of the Copyright Act. Agreeing with the First Circuit, the panel held that, even assuming Defendants satisfied the judgment, it was within the district court’s discretion to prolong the receivership. The panel further held that the district court did not abuse its discretion in denying Defendants’ motion to terminate the receivership.   The district court offered valid reasons for not terminating the receivership—protecting creditors, permitting the receiver to prepare a final accounting, ensuring that the receiver would be compensated for his time, and seeing to it that obligations incurred during the receivership would be paid. View "WB MUSIC CORP. V. ROYCE INTL. BROADCASTING CORP." on Justia Law

Relator alleged that Defendants prevented generic drug competitors from entering the market. Relator alleged that this permitted defendants to charge Medicare inflated prices for the two drugs, in violation of the False Claims Act. The district court denied Defendants’ motion to dismiss based on the False Claims Act’s public disclosure bar, which prevents a relator from merely repackaging publicly disclosed information for personal profit by asserting a claim under the Act.The Ninth Circuit held that an ex parte patent prosecution is an “other 4 UNITED STATES EX REL. SILBERSHER V. ALLERGAN Federal . . . hearing” under 31 U.S.C. Sec. 3730(e)(4)(A)(ii). Thus, the public disclosure bar was triggered. The Ninth Circuit expressed no opinion on whether Relator still could bring his qui tam action because he was an “original source” of the information in his complaint. The court remanded to the district court for further proceedings. View "ZACHARY SILBERSHER V. ALLERGAN, INC." on Justia Law

Plaintiff alleged copyright infringement in the posting by Pub Ocean Ltd. of an article about an ephemeral lake that formed on the desert floor in Death Valley, using twelve of Plaintiff’s photos of the lake without seeking or receiving a license.   The Ninth Circuit reversed the district court’s summary judgment in favor of Defendant, based on a fair use defense in an action under the Copyright Act, and remanded for further proceedings. The court held that Pub Ocean could not invoke a fair use defense to Plaintiff’s copyright infringement claim. Under 17 U.S.C. Section 107, in determining whether fair use applies, a court must analyze the purpose and character of the use, the nature of the copyrighted work, the amount and substantiality of the portion used in relation to the copyrighted work as a whole, and the effect of the use upon the potential market for or value of the copyrighted work.The court explained that because all four statutory factors pointed unambiguously in the same direction, the court held that the district court erred in failing to grant partial summary judgment in favor of Plaintiff on the fair use issue. View "ELLIOT MCGUCKEN V. PUB OCEAN LIMITED" on Justia Law

After Bacardi began an advertising campaign in November 2013 using the phrase “Bacardi Untameable” to promote its rum products, Lodestar filed suit for trademark infringement and unfair competition under the Lanham Act.   The Ninth Circuit affirmed the district court’s summary judgment ruling in favor of Bacardi, and held that Plaintiff failed to meet the elements of a trademark infringement action. Plaintiff alleged “reverse confusion”, which occurs when a person who knows of a well-known junior user comes into contact with a lesser-known senior user, and the similarity of the marks causes the individual to believe that the senior user is affiliated or the same as the junior user.   The court found that Plaintiff’s Untamed Revolutionary Rum product should be excluded from the likelihood-of-confusion analysis because it did not reflect a bona fide use of the mark. In applying the Sleekcraft factors, the court found that Plaintiff failed to carry its burden to show a likelihood of confusion. Further, while the district court erred in certain aspects in its consideration, the errors did not alter the ultimate conclusion. View "LODESTAR ANSTALT V. BACARDI & COMPANY LTD." on Justia Law

Bluetooth SIG, Inc. (“SIG”) is a non-profit organization that owns the commonly-recognized “Bluetooth” marks. Before a product manufacturer is permitted to use any Bluetooth marks, they must join SIG, execute a licensing agreement, submit declarations of compliance, and pay certain fees.FCA US, LLC (“FCA”) makes cars containing Bluetooth head units manufactured by third-party suppliers that have been qualified by the SIG. SIG brought trademark claims against FCA under the Lanham Act.The Ninth Circuit vacated the district court’s order that found the first sale doctrine did not apply. The first sale doctrine provides that a producer’s rights to control the distribution of a trademarked product do not extend beyond the first sale of the product. The panel held that the first sale doctrine also applies when a mark is used to refer to a component part incorporated into a new end product, provided the seller discloses how the trademarked product was incorporated into the new end product. View "BLUETOOTH SIG INC. V. FCA US LLC" on Justia Law

The Ninth Circuit affirmed the district court's order vacating the jury's damages award for copyright infringement and granting judgment as a matter of law to Katy Perry and other defendants. Plaintiffs, Christian hip-hop artists, filed suit alleging that a repeating instrumental figure in one of Katy Perry's songs copied a similar ostinato in one of plaintiffs' songs.The panel held that copyright law protects musical works only to the extent that they are original works of authorship. In this case, the trial record compels the panel to conclude that the ostinatos at issue consist entirely of commonplace musical elements, and that the similarities between them do not arise out of an original combination of these elements. Therefore, the jury's verdict finding defendants liable for copyright infringement was unsupported by the evidence. View "Gray v. Hudson" on Justia Law

A 2019 Arizona statute prohibits auto dealer management system (DMS) providers from “tak[ing] any action by contract, technical means or otherwise to prohibit or limit a dealer’s ability to protect, store, copy, share or use” data the dealer has stored in its DMS. DMS providers may not impose charges “beyond any direct costs incurred” for database access. DMS providers may not prohibit the third parties contracted by the dealers “from integrating into the dealer’s data system,” nor may they otherwise “plac[e] an unreasonable restriction on integration.” DMS providers must “[a]dopt and make available a standardized framework for the exchange, integration, and sharing of data” with authorized integrators.The Ninth Circuit affirmed the denial of a preliminary injunction against the statute’s enforcement. There is no conflict preemption; the statute and the federal Copyright Act are not irreconcilable. The statute does not conflict with 17 U.S.C. 106(1), which grants the owner of a copyrighted work the exclusive right “to reproduce the copyrighted work in copies.” The plaintiffs forfeited their claim that the statute impaired their contracts with third-party vendors and did not show that the statute impaired their ability to discharge their contractual duty to keep dealer data confidential. The statute was reasonably drawn to serve important public purposes of promoting consumer data privacy and competition and amounted to neither a per se physical taking nor a regulatory taking. View "CDK Global LLC v. Brnovich" on Justia Law

The Ninth Circuit wrote to clarify the role that de minimis copying plays in statutory copyright. The de minimis concept is properly used to analyze whether so little of a copyrighted work has been copied that the allegedly infringing work is not substantially similar to the copyrighted work and is thus non-infringing. However, once infringement is established, that is, ownership and violation of one of the exclusive rights in copyright under 17 U.S.C. 106, de minimis use of the infringing work is not a defense to an infringement action.The panel reversed the district court's grant of summary judgment for defendants based on a putative de minimis use defense in a copyright case involving plaintiff's photograph of the Indianapolis skyline. The panel applied the Perfect 10 server test, concluding that Wilmott's server was continuously transmitting the image to those who used the specific pinpoint address or were conducting reverse image searches using the same or similar photo. Therefore, Wilmott transmitted and displayed the photo without plaintiff's permission. Furthermore, Wilmott's display was public by virtue of the way it operated its servers and its website. The panel also concluded that the "degree of copying" was total because the infringing work was an identical copy of the copyrighted Indianapolis photo. Accordingly, there is no place for an inquiry as to whether there was de minimis copying. On remand, the district court must consider Wilmott's remaining defenses, and it can address the questions surrounding plaintiff's ownership of the Indianapolis photo, in addition to the other defenses raised by Wilmott. View "Bell v. Wilmott Storage Services, LLC" on Justia Law

Ayla, a San Francisco-based brand, is the registered owner of trademarks for use of the “AYLA” word mark in connection with on-site beauty services, online retail beauty products, cosmetics services, and cosmetics. Alya Skin, an Australian company, sells and ships skincare products worldwide. Ayla sued in the Northern District of California, asserting trademark infringement and false designation of origin under the Lanham Act, 15 U.S.C. 1114, 1125(a).Alya Skin asserted that it has no retail stores, offices, officers, directors, employees, bank accounts, or real property in the U.S., does not sell products in U.S. retail stores, solicit business from Americans, nor direct advertising toward California; less than 10% of its sales have been to the U.S. and less than 2% of its sales have been to California. Alya Skin uses an Idaho company to fulfill shipments outside of Australia and New Zealand. Alya Skin filed a U.S. trademark registration application in 2018, and represented to potential customers that its products are FDA-approved; it ships from, and allows returns to, Idaho Alya Skin’s website listed U.S. dollars as the default currency and advertises four-day delivery to the U.S.The Ninth Circuit reversed the dismissal of the suit. Jurisdiction under Fed.R.Civ.P. 4(k)(2) comports with due process. Alya Skin had minimum contacts with the U.S., and subjecting it to an action in that forum would not offend traditional notions of fair play and substantial justice. The company purposefully directed its activities toward the U.S. The Lanham Act and unfair competition claims arose out of or resulted from Alya Skin’s intentional forum-related activities. View "Ayla, LLC v. Alya Skin Pty. Ltd." on Justia Law