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

Carroll Shelby Licensing, Inc. and Carroll Hall Shelby Trust filed a lawsuit against Denice Halicki and her associated entities, alleging that Halicki's copyright claims over the "Eleanor" Ford Mustangs were invalid. Halicki counterclaimed, asserting that Shelby's "GT-500CR" Mustangs infringed her copyright in Eleanor, a collection of Mustangs featured in four films. The dispute also involved claims of breach of a prior settlement agreement between the parties.The United States District Court for the Central District of California held that Eleanor was not entitled to character copyright protection and dismissed Halicki’s breach of contract claim based on the settlement agreement. The court also denied Shelby’s request for a declaration that the GT-500CR did not infringe any of Halicki’s rights.The United States Court of Appeals for the Ninth Circuit reviewed the case and affirmed the district court’s summary judgment that Eleanor was not entitled to character copyright protection. The Ninth Circuit applied the Towle test and concluded that Eleanor did not have conceptual qualities, consistent traits, or distinctive elements necessary for character copyright protection. The court also affirmed the district court’s judgment that Shelby did not violate the settlement agreement, which prohibited Shelby from copying only Eleanor’s distinctive hood and inset lights.However, the Ninth Circuit reversed the district court’s denial of declaratory relief and remanded the case for the purpose of issuing the appropriate declaration. The appellate court held that a declaration would clarify and settle the legal relations between Shelby and Halicki and provide Shelby relief from the uncertainty that led to the proceedings. View "CARROLL SHELBY LICENSING, INC. V. HALICKI" on Justia Law

Rodney Woodland, a freelance artist and model, sued Montero Lamar Hill, also known as Lil Nas X, for copyright infringement. Woodland claimed that Hill posted photos on his Instagram page that were too similar to photos Woodland had posted on his own Instagram account. Woodland's photos, posted between August 2018 and July 2021, received between eight and seventy-five "likes." Hill's allegedly infringing photos were posted between March and October 2021 and received hundreds of thousands to millions of "likes."The United States District Court for the Central District of California dismissed Woodland's claims, including copyright infringement, declaratory relief, accounting, and unjust enrichment. The court found that Woodland failed to allege facts showing a reasonable possibility that Hill viewed Woodland's photos on Instagram and that Hill's photos were not substantially similar to Woodland's. Woodland was granted leave to amend his complaint but ultimately failed to state a claim for copyright infringement.The United States Court of Appeals for the Ninth Circuit reviewed the case and affirmed the district court's dismissal. The Ninth Circuit held that Woodland did not plausibly allege that Hill had "access" to Woodland's photos, as the mere fact that Woodland posted his photos on Instagram was insufficient to show that Hill had viewed them. Additionally, the court found that Woodland failed to show that Hill unlawfully appropriated his photos. The court explained that the Copyright Act protects only the "selection" and "arrangement" of individual elements in a photo, and the photos in question were not substantially similar in their selection and arrangement of elements. Thus, Woodland's copyright infringement claim was dismissed. View "Woodland v. Hill" on Justia Law

Bigfoot Ventures Limited brought a shareholder derivative action on behalf of NextEngine, Inc. against Mark S. Knighton, ShapeTools, LLC, and NextEngine. Bigfoot alleged that the agreement between NextEngine and ShapeTools was not intended to benefit NextEngine or its shareholders. Bigfoot had a history of litigation against NextEngine, including disputes over loans and intellectual property (IP) rights.The United States District Court for the Central District of California dismissed Bigfoot’s suit, finding that Bigfoot could not fairly or adequately represent the interests of NextEngine’s shareholders as required by Federal Rule of Civil Procedure 23.1. The court considered the ongoing litigation between Bigfoot and NextEngine, which suggested that the derivative action was being used as leverage in other lawsuits. The court also found that Bigfoot’s personal interest in gaining control of NextEngine’s IP outweighed its interest in asserting rights on behalf of NextEngine.The United States Court of Appeals for the Ninth Circuit affirmed the district court’s dismissal. The Ninth Circuit clarified that courts are not required to assess each of the eight factors from Larson v. Dumke when determining plaintiff adequacy in a shareholder derivative action. The court held that the district court did not err in considering the ongoing litigation as an outside entanglement and found that the record supported the district court’s conclusion that Bigfoot was an inadequate plaintiff. The Ninth Circuit also held that the district court did not abuse its discretion by vacating the trial to hear the motion to dismiss, as it raised significant issues that needed to be resolved before trial. View "BIGFOOT VENTURES LIMITED V. KNIGHTON" on Justia Law

Aquarian Foundation, Inc., a non-profit religious organization, alleged that Bruce Lowndes infringed on its copyrights by uploading spiritual teachings of its late founder, Keith Milton Rhinehart, to various websites. Lowndes claimed he had a license from Rhinehart, granted in 1985, to use the materials. Rhinehart passed away in 1999, bequeathing his estate, including the copyrights, to Aquarian.The United States District Court for the Western District of Washington granted partial summary judgment, confirming that Rhinehart's copyrights were properly transferred to Aquarian via his will. After a bench trial, the court ruled against Aquarian on its claims of copyright infringement, trademark infringement, and false designation of origin. The court found that Rhinehart created the works as his own, not as works for hire, and that he had validly licensed them to Lowndes. The court also determined that Lowndes did not breach the licensing agreement and that Aquarian could not terminate the license under 17 U.S.C. § 203(a). The court denied attorneys’ fees to both parties.The United States Court of Appeals for the Ninth Circuit affirmed the district court’s findings that Rhinehart’s works were not created as works for hire, that he validly licensed the works to Lowndes, and that Lowndes did not breach the licensing agreement. The court also affirmed the decision not to award Lowndes attorneys’ fees under the Lanham Act. However, the Ninth Circuit reversed the district court’s determination regarding the termination of the license, holding that Aquarian’s termination letter in May 2021 was effective. The case was remanded for further proceedings to address any infringement that may have occurred after the license termination, as well as the denial of injunctive relief and attorneys’ fees under the Copyright Act. View "AQUARIAN FOUNDATION, INC. V. LOWNDES" on Justia Law

Tangle, Inc. holds copyright registrations for seven kinetic and manipulable sculptures made from 17 or 18 identical, connected, 90-degree curved tubular segments that can be twisted or turned 360 degrees. Aritzia, Inc. owns and operates retail stores and used similar sculptures in their store windows. Tangle alleged that Aritzia's sculptures infringed on their copyrighted works and also claimed trade dress infringement under the Lanham Act.The United States District Court for the Northern District of California dismissed Tangle's initial copyright infringement claim for failure to state a claim but allowed Tangle to amend its complaint. Tangle filed an amended complaint, which was again dismissed. Tangle then filed a Second Amended Complaint, adding a trade dress infringement claim. The district court dismissed both claims, giving Tangle leave to amend. Tangle chose not to amend further and instead appealed the dismissal.The United States Court of Appeals for the Ninth Circuit reviewed the case. The court reversed the district court’s dismissal of Tangle’s copyright claim, holding that Tangle adequately alleged valid copyrights in its kinetic and manipulable sculptures. The court found that the sculptures were sufficiently "fixed" in a tangible medium for copyright purposes, despite their ability to move into various poses. The court also held that Tangle plausibly alleged that Aritzia's sculptures were substantially similar to Tangle's protected works under the "extrinsic test."However, the Ninth Circuit affirmed the district court’s dismissal of Tangle’s trade dress infringement claim. The court agreed that Tangle failed to provide a complete recitation of the concrete elements of its alleged trade dress, which is necessary to give adequate notice of the asserted trade dress.The case was remanded for further proceedings consistent with the Ninth Circuit's opinion. View "TANGLE, INC. V. ARITZIA, INC." on Justia Law

LegalForce RAPC Worldwide, P.C. ("LegalForce USA"), a California S corporation operating legal services websites, sued LegalForce, Inc. ("LegalForce Japan"), a Japanese corporation providing legal software services, for trademark infringement. LegalForce USA alleged that LegalForce Japan's U.S. expansion plans, website ownership, and advertising and selling of equity infringed its trademark. The district court dismissed the website claims for lack of jurisdiction and the expansion plan claims as unripe. The claims concerning equity were dismissed for failure to state a claim.The United States District Court for the Northern District of California dismissed all claims except those related to the advertising and selling of equity. The court held that it had jurisdiction over these claims but dismissed them for failure to state a claim, reasoning that advertising and selling equity is not connected to the sale of goods or services and thus cannot constitute trademark infringement. The court also found that LegalForce USA failed to justify an extraterritorial application of the Lanham Act.The United States Court of Appeals for the Ninth Circuit affirmed the district court's dismissal. The court held that using a trademark in connection with the sale of equity does not constitute using the mark in connection with "goods or services" under the Lanham Act. The court also affirmed that LegalForce Japan's services in Japan could not satisfy the "in connection with" goods or services requirement under the Lanham Act, as the relevant conduct occurred outside U.S. territory. The court concluded that the Lanham Act does not apply extraterritorially in this context. View "LEGALFORCE RAPC WORLDWIDE, PC V. LEGALFORCE, INC." on Justia Law

Teradata Corporation sued SAP SE, alleging that SAP illegally conditioned sales of its business-management software (S/4HANA) on the purchase of its back-end database engine (HANA) in violation of Section 1 of the Sherman Act and misappropriated Teradata’s trade secrets under the California Uniform Trade Secrets Act. Teradata claimed that SAP’s tying arrangement forced customers to buy HANA, harming competition in the enterprise data warehousing (EDW) market. Teradata also alleged that SAP used its confidential batched merge method, a technique for efficient data aggregation, without authorization.The United States District Court for the Northern District of California granted summary judgment in favor of SAP. The court excluded Teradata’s expert testimony on market definition and market power, finding the methodology unreliable. Without this testimony, the court concluded that Teradata failed to create a material dispute on its tying claim. The court also ruled against Teradata on the trade secret claim, stating that Teradata did not properly designate the batched merge method as confidential and that the agreements between the parties gave SAP the right to use the method.The United States Court of Appeals for the Ninth Circuit reversed the district court’s summary judgment. The appellate court held that the district court abused its discretion by excluding the expert’s testimony, which was based on reasonable methodologies. The court found that Teradata raised a triable issue regarding SAP’s market power in the tying market and the anticompetitive effects in the tied market. The court also determined that there were material factual disputes regarding whether Teradata properly designated the batched merge method as confidential and whether the agreements allowed SAP to use the method. The case was remanded for further proceedings. View "TERADATA CORPORATION V. SAP SE" on Justia Law

Oracle International Corporation sued Rimini Street, Inc. for copyright infringement and violations of the Lanham Act. Oracle alleged that Rimini, a third-party provider of software support services, infringed on its copyrights by using Oracle's software in unauthorized ways. Rimini had previously been found to infringe Oracle's copyrights and had changed its business model, seeking a declaratory judgment that its new processes did not infringe Oracle's copyrights. Oracle counterclaimed, leading to a bench trial.The United States District Court for the District of Nevada found that Rimini's new processes still infringed Oracle's copyrights and issued a permanent injunction against Rimini. The court ordered Rimini to delete various software files and issue a press release correcting alleged misstatements. Rimini appealed the decision, challenging several aspects of the district court's rulings.The United States Court of Appeals for the Ninth Circuit reviewed the case and vacated the district court's holding that Rimini created infringing derivative works based solely on interoperability with Oracle's programs. The court explained that a derivative work must incorporate Oracle's copyrighted work, either literally or nonliterally. The court also vacated the district court's ruling striking Rimini's affirmative defense under 17 U.S.C. § 117(a), which allows the owner of a copy of a computer program to make another copy for certain purposes.Additionally, the Ninth Circuit vacated the district court's ruling that Rimini's creation of "gap customer" environments and use of automated tools to deliver PeopleSoft updates constituted copyright infringement. The court also reversed the district court's ruling that Rimini's security-related statements, except for one about "holistic security," constituted false advertising under the Lanham Act. The court vacated the portions of the injunction appealed by Rimini and remanded the case for further proceedings consistent with its opinion. View "ORACLE INTERNATIONAL CORPORATION V. RIMINI STREET, INC." on Justia Law

CPC Patent Technologies Pty Ltd. sought discovery from Apple Inc. under 28 U.S.C. § 1782 for use in a prospective patent infringement lawsuit in Germany. CPC aimed to obtain documents describing the functionality of Apple’s biometric security technology. The district court granted CPC’s application, allowing them to serve a subpoena on Apple, but the scope of the discovery and the specific documents Apple must produce remained unresolved.Initially, a magistrate judge denied CPC’s application, finding the discovery requests unduly burdensome. CPC sought review, and the district court affirmed the magistrate judge’s decision under a clear error standard. On appeal, the Ninth Circuit held that the district court should have reviewed the magistrate judge’s decision de novo, as the ruling on a § 1782 application is dispositive. The case was remanded, and the district court, applying de novo review, granted CPC’s application. Apple objected, particularly concerned about the potential requirement to produce source code, but the district court’s order did not definitively resolve these objections.The United States Court of Appeals for the Ninth Circuit reviewed the case and dismissed the appeal for lack of appellate jurisdiction. The court held that the district court’s decision was not final because the scope of discovery and the specific documents Apple must produce were still undetermined. The lack of a final judgment meant that the Ninth Circuit could not evaluate the Intel factors used to determine whether discovery was warranted under § 1782. Consequently, the appeal was dismissed, leaving the district court to resolve the remaining discovery issues. View "CPC PATENT TECHNOLOGIES PTY LTD. V. APPLE INC." on Justia Law

The case involves a trademark infringement dispute between two Arizona-based personal injury law firms. The plaintiff, Lerner & Rowe, PC, owns three registered trademarks, including the name "Lerner & Rowe." The defendant, Brown, Engstrand & Shely, LLC, doing business as The Accident Law Group (ALG), used a marketing strategy called "conquesting" by purchasing the term "Lerner & Rowe" as a Google Ads keyword. This caused ALG's advertisements to appear when users searched for "Lerner & Rowe" on Google.The United States District Court for the District of Arizona granted summary judgment in favor of ALG on Lerner & Rowe's claims of trademark infringement and unjust enrichment but denied summary judgment on the unfair competition claims. ALG moved for reconsideration, and the district court subsequently granted summary judgment on all claims. Lerner & Rowe appealed the ruling.The United States Court of Appeals for the Ninth Circuit reviewed the case and affirmed the district court's decision. The court held that Lerner & Rowe failed to establish that ALG's use of the "Lerner & Rowe" mark was likely to cause consumer confusion. The court found that while the strength of the mark favored Lerner & Rowe, the evidence of actual confusion was de minimis, the reasonably prudent consumer's degree of care and the labeling and appearance of ALG's advertisements weighed in favor of ALG. The court concluded that Lerner & Rowe did not establish a genuine dispute of material fact regarding the likelihood of confusion, which is essential for a trademark infringement claim under the Lanham Act. The judgment was affirmed. View "LERNER & ROWE PC V. BROWN ENGSTRAND & SHELY LLC" on Justia Law