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

Petronas is a major oil and gas company located in Kuala Lumpur, Malaysia and GoDaddy is the world's largest domain name registrar. After a third party registered the domain names "petronastower.net" and "petronastowers.net" and then used GoDaddy's domain name forwarding service to direct the disputed domain names to an adult entertainment web site, Petronas filed suit against GoDaddy alleging contributory cybersquatting under the Anticybersquatting Consumer Protection Act, 15 U.S.C. 1125(d). The district court granted summary judgment in favor of GoDaddy. The court affirmed, holding that the Act did not include a cause of action for contributory cybersquatting because: (1) the plain text of the Act did not apply to the conduct that would be actionable under such a theory; (2) Congress did not intend to implicitly include common law doctrines applicable to trademark infringement because the Act created a new cause of action that was distinct from traditional trademark remedies; and (3) allowing suits against registrars for contributory cybersquatting would not advance the goals of the statute. View "Petronas v. GoDaddy.com" on Justia Law

Marshak appealed the district court's preliminary injunction for HRE enjoining Marshak from using the "The Platters" mark in connection with any vocal group with narrow exceptions. At issue was whether the likelihood of irreparable harm must be established - rather than presumed, as under prior Ninth Circuit precedent - by a plaintiff seeking injunctive relief in the trademark context. Following eBay v. MarcExchange and Winter v. Natural Res. Def. Council, Inc., a plaintiff seeking a preliminary injunction in a trademark infringement case must establish irreparable harm. The court concluded that HRE was not foreclosed from bringing the underlying suit where prior New York actions (Marshak I and Marshak II) did not have res judicata effect; HRE's trademark infringement claim and request for preliminary injunction was not precluded by the doctrine of laches; the record supported the district court's determination that HRE did not abandon "The Platters" mark; but the fact that the district curt made no factual findings that would support a likelihood of establishing irreparable harm, led the court to reverse the preliminary injunction and to remand to the district court. View "HRE v. Florida Entertainment Mgmt." on Justia Law

HFI filed suit against the Bank alleging trademark infringement and related claims, contending that the Bank's use of its "Hana Bank" mark infringed HFI's "Hana Financial" mark because its use of the word "Hana" in connection with financial services would likely cause confusion. A party claiming trademark ownership must establish priority and one of the ways that a party could establish priority was through the constructive use doctrine known as "tacking." Tacking required a highly fact-sensitive inquiry, and the jury decided the issue after receiving an instruction that correctly conveyed the narrowness of the doctrine. In this instance, the court concluded that there was sufficient evidence to support the jury's verdict on trademark priority where, viewing the marks in context and in their entirety, the ordinary purchasers could perceive them as conveying the same idea or meaning or evoking the same mental reaction. Accordingly, the court affirmed the district court's denial of HFI's motion for judgment as a matter of law on trademark priority and upheld the jury's verdict. View "Hana Financial, Inc. v. Hana Bank, et al." on Justia Law

This appeal stemmed from Seven Arts's attempts to establish ownership of copyrights in several motion pictures: "Rules of Engagement," "An American Rhapsody," and "Who is Cletis Tout?" Seven Arts filed suit against Paramount and Content Media for copyright infringement, a declaration of ownership rights, and an accounting, seeking a declaration that neither Content Media, nor its predecessors-in-interest, CanWest, was the owner or grantee of rights to the films. The action was filed over three years after Paramount plainly and expressly repudiated Seven Arts's copyright ownership by choosing to continue paying royalties to CanWest and Content Media, rather than to Seven Arts's predecessors. The court joined its sister circuits in holding that an untimely ownership claim will bar a claim for copyright infringement where the gravaman of the dispute was ownership, at least where, as here, the parties were in a close relationship. The court affirmed the judgment of the district court, concluding that the district court properly dismissed the suit because it was apparent from the complaint that Paramount clearly and expressly repudiated Seven Arts's ownership of the copyrights more than three years before Seven Arts brought suit. View "Seven Arts v. Content Media" on Justia Law

Plaintiff filed suit against Green Day and others, alleging violations of the Copyright Act, 17 U.S.C. 101 et seq., and the Lanham Act, 15 U.S.C. 1051 et seq., because Green Day used plaintiff's illustration, "Scream Icon," in the video backdrop of its stage show. On appeal, plaintiff challenged the district court's grant of summary judgment in favor of Green Day on all claims and the grant of attorney's fees to Green Day under the Copyright Act. The court concluded that Green Day's use of the illustration was fair use under the Copyright Act where the purpose and character of the use was transformative and not overly commercial; the nature of the work included its status as a widely disseminated work of street art; Green Day's use of the work was not excessive in light of its transformative purpose; and Green Day's use did not affect the value of the piece or of plaintiff's artwork in general. In regards to plaintiff's claims under the Lanham Act, the court concluded that plaintiff failed to establish any trademark rights. The court concluded, however, that the district court clearly erred in finding that plaintiff's claims were objectively unreasonable. Accordingly, the court affirmed the district court's grant of summary judgment but vacated the award of attorneys fees. View "Seltzer v. Green Day, Inc., et al." on Justia Law

Former starting quarterback for Arizona State University, Samuel Keller, filed a putative class action suit against EA, alleging that EA violated his right of publicity under California Civil Code 3344 and California common law by using Keller's likeness as part of the "NCAA Football" video game series. EA moved to strike the complaint as a strategic lawsuit against public participation (SLAPP) under California's anti-SLAPP statute, Cal. Civ. Proc. Code 425.16. The court concluded that EA could not prevail as a matter of law based on the transformative use defense where EA's use did not qualify for First Amendment protection because it literally recreated Keller in the very setting in which he had achieved renown. The court also concluded that, although there was some overlap between the transformative use test and the Rogers v. Grimaldi test, the Rogers test should not be imported wholesale to the right-of-publicity claims. Finally, the court concluded that state law defenses for reporting of information did not protect EA's use. Accordingly, the court affirmed the district court's denial of the motion to strike the complaint. View "In re: NCAA Licensing Litig." on Justia Law

Retired Hall of Fame football player, James "Jim" Brown, filed suit against EA, alleging that EA violated section 43(a) of the Lanham Act, 15 U.S.C. 1125(a), through the use of Brown's likeness in EA's "Madden NFL" series of football video games. The court rejected the "likelihood of confusion" test and the "alternative means" test, concluding that the only relevant legal framework for balancing the public's right to be free from consumer confusion about Brown's affiliation with "Madden NFL" and EA's First Amendment rights in the context of Brown's section 43(a) claim was the Rogers v. Grimaldi test. Applying the Rogers test, the court concluded that the use of Brown's likeness was artistically relevant to the "Madden NFL" games and that there were no alleged facts to support the claim that EA explicitly mislead consumers as to Brown's involvement with the games. In this case, the public interest in free expression outweighed the public interest in avoiding consumer confusion. Accordingly, the court affirmed the district court's grant of EA's motion to dismiss. View "Brown v. Electronic Arts, Inc." on Justia Law

This case stemmed from a dispute between the parties over license agreements which allowed Myriad access to Oracle's Java programming language. On appeal, Myriad challenged the district court's partial denial of its motion to compel arbitration. The court concluded that the incorporation of the United Nations Commission on International Trade Law (UNCITRAL) arbitration rules into the parties' commercial contract constituted clear and unmistakable evidence that the parties agreed to arbitrate arbitrability. Accordingly, the court reversed and remanded for further proceedings. View "Oracle America, Inc. v. Myriad Group A.G." on Justia Law

Fox filed suit against Dish Network for copyright infringement and breach of contract, seeking a preliminary injunction. At issue were two Dish products: (1) "PrimeTime Anytime," which allowed a cable subscriber to set a single timer to record any and all primetime programming on four major networks; and (2) "AutoHop," which allowed users to automatically skip commercials. The court held that the district court did not abuse its discretion in holding that Fox did not establish a likelihood of success on its direct infringement claim. In this case, Dish's PrimeTime Anytime program created the copied program only in response to the user's command and the district court did not err in concluding that the user, not Dish, made the copy. Operating a system used to make copies at the user's command did not mean that the system operator, rather than the user, caused copies to be made. Although Fox established a prima facie case of direct infringement by Dish customers, Dish met its burden of demonstrating that it was likely to succeed on its affirmative defense that its customers' copying was a "fair use." Accordingly, the district court did not abuse its discretion in concluding that Fox was unlikely to succeed on its claim of secondary infringement. Applying a very deferential standard of review, the court concluded that the district court did not abuse its discretion in denying a preliminary injunction based on alleged contract breaches. Finally, even if Fox was likely to succeed on its claims that Dish directly infringed Fox's copyrights and breached the no-copying clause of the contract at issue by making "quality assurance" copies, the court agreed with the district court that Fox did not demonstrate a likelihood of irreparable harm resulting from these copies. Therefore, the court affirmed the judgment of the district court. View "Fox Broadcasting Co. v. Dish Network" on Justia Law

Plaintiff sued Marvel for patent infringement and breach of contract, claiming that it had used his ideas in developing a Spider-Man role-playing toy called the "Web Blaster" without compensating him. The parties subsequently agreed to settle the case while appeals were pending and executed a Settlement Agreement. Thereafter, Marvel entered into a licensing agreement with Hasbro giving it the right to produce the Web Blaster. At issue was the calculation of royalties for subsequent iterations of the Web Blaster. The court joined its sister circuits in holding, pursuant to Brulotte v. Thys Co., that a so-called "hybrid" licensing agreement encompassing inseparable patent and non-patent rights was unenforceable beyond the expiration date of the underlying patent, unless the agreement provided a discounted rate for the non-patent rights or some other clear indication that the royalty at issue was in no way subject to patent leverage. Accordingly, the court affirmed the district court's grant of summary judgment in favor of Marvel, concluding that plaintiff could not recover royalties under the Settlement Agreement beyond the expiration date of the patent at issue. View "Kimble v. Marvel Enter., Inc." on Justia Law