Articles Posted in Intellectual Property

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A bare allegation that a defendant is the registered subscriber of an Internet Protocol address associated with infringing activity is not sufficient to state a claim for direct or contributory infringement. The Ninth Circuit affirmed the district court's dismissal of an action brought by plaintiff under the Copyright Act, alleging direct and contributory infringement. The panel held that the direct infringement claim failed because defendant's status as the registered subscriber of an infringing IP address, standing alone, did not create a reasonable inference that he was also the infringer. The panel reasoned that because multiple devices and individuals may be able to connect via an IP address, simply identifying the IP subscriber solved only part of the puzzle. The panel held that a plaintiff must allege something more to create a reasonable inference that a subscriber is also an infringer. Furthermore, Cobbler Nevada could not succeed on its contributory infringement theory because, without allegations of intentional encouragement or inducement of infringement, an individual's failure to take affirmative steps to police his internet connection was insufficient to state a claim. View "Cobbler Nevada, LLC v. Gonzalez" on Justia Law

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The Ninth Circuit reversed the district court's grant of summary judgment to CBS in an action alleging violation of state law copyrights owned by ABS in sound recordings originally fixed before 1972. The panel held that the district court erred in finding that there was no genuine issue of material fact about the copyright eligibility of remastered sound recordings distributed by CBS and improperly concluded that ABS's state copyright interest in pre-1972 sound recordings embodied in the remastered sound recordings was preempted; the district court abused its discretion by excluding evidence of ABS's expert and reports that evidenced CBS's performance of ABS's sound recordings in California, and granting partial summary judgment of no infringement with respect to the samples contained in those reports; and the district court's strict application of its local rules with respect to the timeliness of ABS's motion for class action certification was inconsistent with the Federal Rules of Civil Procedure and thus an abuse of discretion. The panel reversed the striking of class certification and remanded for further proceedings. View "ABS Entertainment, Inc. v. CBS Corp." on Justia Law

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The Ninth Circuit reversed the district court's grant of summary judgment for defendants in a trademark infringement action over the "Honey Badger" catchphrases under the Lanham Act. The panel applied the test in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), to balance the competing interests at stake when a trademark owner claims that an expressive work infringes on its trademark rights. The panel held that the Rogers test was not an automatic safe harbor for any minimally expressive work that copies someone else's mark. In this case, a jury could determine that defendants did not add any value protected by the First Amendment but merely appropriated the goodwill associated with plaintiff's mark. Defendants have not used another’s mark in the creation of a song, photograph, video game, or television show, but have largely just pasted plaintiff's mark into their greeting cards. Therefore, the panel remanded for further proceedings. View "Gordon v. Drape Creative, Inc." on Justia Law

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OTR filed suit against Defendant West, asserting various claims under the Lanham Act and state law. Primarily at issue on appeal was whether West could be found liable for reverse passing off under the Lanham Act. The Ninth Circuit affirmed the judgment, holding that West was liable for reverse passing off because he did not simply copy OTR's intellectual property but passed off genuine OTR products as his own. In this case, West asked one of OTR's suppliers to provide him with sample tires from OTR's molds; he asked the supplier to remove OTR's identifying information from the tires; and he wanted to use the tires to obtain business from one of OTR's customers. The panel affirmed the district court's conclusion that West did not establish that OTR committed fraud on the United States Patent and Trademark Office, and held that fraud on the PTO must be established by clear and convincing evidence. The panel also affirmed the denial of a new trial on the issue of trade dress validity and the district court's rejection of a proposed jury instruction. The panel addressed additional issues in a concurrently filed memorandum disposition. View "OTR Wheel Engineering, Inc. v. West Worldwide Services, Inc." on Justia Law

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The Ninth Circuit reversed the district court's order denying plaintiff's motion for attorney's fees in a copyright infringement action brought by a film production company, alleging that a single user illegally downloaded and distributed repeatedly American Heist, a Hollywood action movie. In Fogerty v. Fantasy, Inc., 510 U.S. 517 (1994), the Supreme Court laid out factors to guide discretion in whether to award fees. The panel held that the district court did not faithfully apply the Fogerty factors in this meritorious BitTorrent action. The panel noted that the district court's analysis of whether fees are warranted should be based on Glacier's case against defendant, and not on the district court's view of BitTorrent litigation in general or on the conduct of Glacier's counsel in other suits. Therefore, remand was necessary because the district court denied fees under the present circumstances based on a one-size-fits-all disapproval of other BitTorrent suits. View "Glacier Films (USA), Inc. v. Turchin" on Justia Law

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The Ninth Circuit affirmed in part and reversed in part dismissal of claims for resale royalties under the California Resale Royalties Act. The Act grants artists an unwaivable right to 5% of the proceeds on any resale of their artwork under specified circumstances. The panel held that plaintiffs' claims under the Act were covered by the 1976 Copyright Act and were expressly preempted. Therefore, the panel dismissed those claims. The panel held, however, that the 1909 Copyright Act had no express preemption provisions. Therefore, plaintiffs' claims under the Act were covered only by the 1909 Act and could not be expressly preempted. Furthermore, these claims were not preempted by conflict preemption. The panel reversed dismissal of those claims and remanded for further proceedings. View "Close v. Sotheby's, Inc." on Justia Law

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The Ninth Circuit affirmed the district court's judgment in favor of Pinkette, which sells LUSH-branded women's fashions, in a trademark infringement action brought by CWL, which sells LUSH-branded cosmetics and related goods. The panel distinguished between Petrella v. Metro-Goldwyn-Mayer, Inc., 134 S. Ct. 1962 (2014), and SCA Hygiene Products v. First Quality Baby Products, LLC, 137 S. Ct. 954 (2017), holding that the principle at work in these cases—a concern over laches overriding a statute of limitations—did not apply here, where the Lanham Act has no statute of limitations and expressly makes laches a defense to cancellation. In this case, the district court applied the correct standard when it applied the factors set forth in E-Sys., Inc. v. Monitek, Inc., 720 F.2d 604 (9th Cir. 1983), to CWL's claim for injunctive relief. After analyzing the E-Systems factors, the panel held that they validate the strong presumption in favor of laches created by CWL's delaying past the expiration of the most analogous state statute of limitations. Therefore, the district court did not abuse its discretion in applying laches to bar CWL's cancellation and infringement claims. The panel held that CWL's remaining arguments were without merit. View "Pinkette Cothing, Inc. v. Cosmetic Warriors Limited" on Justia Law

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Experian compiled the Consumer View Database, which contains more than 250 million records, each pertaining to an individual consumer, which includes compiled pairings of names and addresses. The Ninth Circuit held that the name and address pairings were copyrightable as compilations but were entitled only to limited protection under the copyright laws. The panel held that Experian established that its lists were copyrightable but failed to establish that its copyright had been infringed because it did not establish a bodily appropriation of its work. Therefore, the panel affirmed the district court's grant of summary judgment for Natimark on the copyright infringement claim. However, the panel reversed as to the state law trade secret claim, remanding for further proceedings. View "Experian Information Solutions, Inc. v. Nationwide Marketing Services, Inc." on Justia Law

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The Ninth Circuit affirmed the district court's grant of summary judgment for CoreLogic in an action brought under the Digital Millennium Copyright Act. Plaintiffs, professional real estate photographers, alleged that CoreLogic removed copyright management information from their photographs and distributed their photographs with the copyright management information removed, in violation of 17 U.S.C. 1202(b)(1)–(3). The panel held that section 1202(b) requires an affirmative showing that the defendant knew the prohibited act would induce, enable, facilitate, or conceal infringement. In this case, plaintiffs failed to make the required affirmative showing because they failed to produce evidence showing that CoreLogic knew its software carried even a substantial risk of inducing, enabling, facilitating, or concealing infringement, let alone a pattern or probability of such a connection to infringement. The panel affirmed the district court's denial of plaintiffs' discovery request and the award of fees. View "Stevens v. CoreLogic, Inc." on Justia Law

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The Ninth Circuit reversed the district court's grant of summary judgment for McKeon in a trademark infringement action alleging that McKeon's green ear plugs infringed Moldex's green earplugs. The panel held that the existence or nonexistence of alternative designs was probative of functionality or nonfunctionality, and thus evidence of alternative colors must be considered in deciding the functionality of Moldex's mark. The panel held that there was a material dispute of material facts as to whether Moldex's bright green color earplugs was functional. Therefore, the panel remanded for the district court to consider McKeon's arguments both that Moldex's green color lacked secondary meaning and that there was no likelihood of confusion, and then if necessary go to trial. View "Moldex-Metric, Inc. v. McKeon Products, Inc." on Justia Law