Articles Posted in Intellectual Property

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The Ninth Circuit affirmed the district court's grant of summary judgment to Fox and held that Fox's use of the name "Empire" was protected by the First Amendment and was outside the reach of the Lanham Act, 15 U.S.C. 1125. At issue was a Fox television show entitled Empire, which portrays a fictional hip hop music label named "Empire Enterprises" that was based in New York. The panel applied a test developed by the Second Circuit in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), to determine whether the Lanham Act applied. The panel held that Fox's expressive work sufficiently satisfied the first prong of the Rogers test where the title Empire supported the themes and geographic setting of the work and the second prong of the Rogers test where the use of the mark "Empire" did not explicitly mislead consumers. View "Twentieth Century Fox Television v. Empire Distribution" on Justia Law

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This petition for writ of mandamus arose in the context of a contested trademark action initiated by San Diego Comic Convention (SDCC) against petitioners, over the use of the mark "comic-con" or "comic con." The Ninth Circuit granted the petition and vacated the district court's orders directing petitioners to prominently post on their social medial outlets its order prohibiting comments about the litigation on social media, dubbing this posting a "disclaimer." The panel held that the orders at issue were unconstitutional prior restraints on speech because they prohibit speech that poses neither a clear and present danger nor a serious and imminent threat to SDCC's interest in a fair trial. The panel explained that the well-established doctrines on jury selection and the court's inherent management powers provide an alternative, less restrictive, means of ensuring a fair trial. View "Dan Farr Productions v. USDC-CASD" on Justia Law

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The Ninth Circuit affirmed the district court's grant of summary judgment for defendants in a copyright infringement action. The panel held that DRK, a stock photography agency that markets and licenses images created by others to publishing entities, is a nonexclusive licensing agent for the photographs at issue and has failed to demonstrate any adequate ownership interest in the copyrights to confer standing. The panel also held that DRK lacked standing as a beneficial owner of the copyrights. Finally, the panel affirmed the district court's denial of DRK's motion to modify the scheduling order for leave to amend its complaint. View "DRK Photo v. McGraw-Hill Global Education Holdings, LLC" on Justia Law

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In order to be eligible for the safe harbor protection of the Digital Millennium Copyright Act (DMCA), 17 U.S.C. 512(c), the defendant must show that the photographs at issue were stored at the direction of the user. The Ninth Circuit filed an amended opinion reversing the district court's holding, on summary judgment, that defendant was protected by the safe harbor of the DMCA from liability for posting plaintiff's photographs online and vacating a discovery order. The panel held that the common law of agency applied to safe harbor defenses and that, in this case, there were genuine factual disputes regarding whether the moderators are LiveJournal's agents. The panel addressed the remaining elements of the safe harbor defense and vacated the district court's order denying discovery of the moderators' identities. The panel remanded for further proceedings. View "Mavrix Photographs, LLC v. LiveJournal, Inc." on Justia Law

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The Ninth Circuit affirmed the district court's decision that VidAngel had likely violated both the Digital Millennium Copyright Act and the Copyright Act, and order preliminarily enjoining VidAngel from circumventing the technological measures controlling access to copyrighted works on DVDs and Blu-ray discs owned by the plaintiff entertainment studios, copying those works, and streaming, transmitting, or otherwise publicly performing or displaying them electronically. The Ninth Circuit held that the Family Movie Act of 2005 did not exempt VidAngel from liability for copyright infringement; VidAngel's fair use defense failed; the anti-circumvention provision of the Digital Millennium Copyright Act covered plaintiffs' technological protection measures, which control both access to and use of copyrighted works; and the district court did not abuse its discretion by finding irreparable harm, by balancing the equities, and by considering the public interest. View "Disney Enterprises, Inc. v. VidAngel, Inc." on Justia Law

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In this trademark infringement suit under the Lanham Act, furniture manufacturer Omnia admitted that it blatantly copied and began selling the same goods branded with the mark of its (now ex) business partner, retail furniture company Stone Creek. The district court granted judgment for Omnia. The panel reversed and held that Omnia's use of Stone Creek's mark was likely to cause confusion where placing an identical mark on identical goods creates a strong likelihood of confusion, especially when the mark was fanciful. Furthermore, Stone Creek also sells in overlapping market channels and other factors heighten the likelihood that consumers will be confused as to the origin of the furniture. The panel rejected Omnia's invocation of a common-law defense—known as the Tea Rose–Rectanus doctrine—that protects use of a mark in a remote geographic area when the use is in good faith. In this case, Omnia's knowledge of Stone Creek's prior use defeated any claim of good faith. Finally, the panel confirmed that a 1999 amendment to the trademark statutes did not sweep away the panel's precedent requiring that a plaintiff prove willfulness to justify an award of the defendant's profits. The panel remanded this issue for the district court to make such a determination. View "Stone Creek, Inc. v. Omnia Italian Design, Inc." on Justia Law

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The Ninth Circuit reversed the grant of summary judgment for defendants in this trademark infringement suit regarding defendants' use of Marketquest's "All-in-One" and "The Write Choice" trademarks. The panel held that Marketquest's pleading was adequate to support a cause of action for trademark infringement under a reverse confusion theory of likely confusion; consideration of the intent factor in the likelihood of confusion analysis varies with the type of confusion being considered; the district court erred by granting summary judgment in favor of defendants based upon the fair use defense regarding their use of "All-in-One;" and the district court erred by applying the fair use analysis to defendants' use of "The Write Choice" after determining that Marketquest presented no evidence of likely confusion. View "Marketquest Group, Inc. v. BIC Corp." on Justia Law

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Plaintiff filed suit against various defendants in the film industry, alleging copyright and state law claims, including breach of implied-in-fact contract and declaratory relief. Plaintiff alleged that defendants used his screenplay idea to create "The Purge" films without providing him compensation or credit as a writer. The Ninth Circuit affirmed the denial of defendants' anti-SLAPP motion to strike the state law claims. In this case, plaintiff's implied-in-fact contract claim did not arise from protected free speech activity because the claim was based on defendants' failure to pay for the use of plaintiff's idea, not the creation, production, distribution, or content of the films. The panel also held that defendants' failure to pay was not conduct in furtherance of the right to free speech. View "Jordan-Benel v. Universal City Studios, Inc." on Justia Law

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A claim of genericness or "genericide," where the public appropriates a trademark and uses it as a generic name for particular types of goods or services irrespective of its source, must be made with regard to a particular type of good or service. Plaintiffs petitioned for cancellation of the GOOGLE trademark under the Lanham Act, 15 U.S.C. 1064(3), based on the ground that it is generic. The Ninth Circuit affirmed the grant of summary judgment in favor of Google, Inc., holding that plaintiffs failed to recognize that a claim of genericide must always relate to a particular type of good or service, and that plaintiffs erroneously assumed that verb use automatically constitutes generic use; the district court correctly framed its inquiry as whether the primary significance of the word "google" to the relevant public was as a generic name for internet search engines or as a mark identifying the Google search engine in particular; the assumption that a majority of the public uses the verb "google" in a generic and indiscriminate sense, on its own, could not support a jury finding of genericide under the primary significance test; and plaintiffs have failed to present sufficient evidence in this case to support a jury finding that the relevant public primarily understands the word "google" as a generic name for internet search engines and not as a mark identifying the Google search engine in particular. View "Elliott v. Google, Inc." on Justia Law

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Mavrix filed suit against LiveJournal for posting 20 of its copyrighted photographs online. The district court granted summary judgment for LiveJournal, holding that the Digital Millennium Copyright Act's (DMCA), 17 U.S.C. 512(c), safe harbor protected LiveJournal from liability because Mavrix's photographs were posted at the direction of the user. In this case, when users submitted Mavrix's photographs to LiveJournal, LiveJournal posted the photographs after a team of volunteer moderators led by a LiveJournal employee reviewed and approved them. The court disagreed with the district court and concluded that the common law of agency does apply to this analysis and that there were genuine factual disputes regarding whether the moderators were LiveJournal's agents. Therefore, the court reversed and remanded for trial. The court addressed the remaining issues that the district court addressed because these issues may be contested on remand. On remand, the district court must determine whether LiveJournal met the section 512(c) safe harbor threshold requirement by showing that the photographs were posted at the direction of the user, then LiveJournal must show that it lacked actual or red flag knowledge of the infringements and that it did not financially benefit from infringements that it had the right and ability to control. View "Mavrix Photographs, LLC v. LiveJournal, Inc." on Justia Law