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

Inhale claimed copyright protection in the shape of a hookah water container that it first published in 2008 and registered with the United States Copyright Office in 2011. Inhale filed suit against Starbuzz for copyright infringement, claiming that Starbuzz sold water containers that were identical in shape to Inhale's container. The district court granted summary judgment in favor of Starbuzz after determining that the shape of the water container was not copyrightable. The court concluded that the shape of a container is not independent of the container's utilitarian function - to hold the contents within its shape - because the shape accomplishes the function. Therefore, the district court correctly concluded that the shape of Inhale's hookah water container was not copyrightable. Further, the district court did not abuse its discretion under 17 U.S.C. 505 by awarding attorneys' fees to Starbuzz. Moreover, the court awarded attorneys' fees incurred in the defense of this appeal to Starbuzz under section 505 in an amount to be determined by the district court. Accordingly, the court affirmed the district court's judgment and remanded. View "Inhale, Inc. v. Starbuzz Tobacco, Inc." on Justia Law

Hokto USA, a wholly owned subsidiary of Hokuto Co., Ltd., filed suit against Concord Farms for violating its rights to marks under which it markets its Certified Organic Mushrooms, which are produced in the United States. The district court granted summary judgment in favor of Hokto USA and Hokuto Japan on all claims and entered a permanent injunction against Concord Farms. Determining that this was a classic gray-market case, the court concluded that, because Concord Farms offered no other evidence that its imported mushrooms were not "materially different" from Hokto USA's mushrooms, the district court correctly concluded that they were not genuine Hokto USA goods; the district court correctly concluded that there was no genuine dispute of material fact as to whether Concord Farms's importation of Hokuto Japan mushrooms was likely to confuse consumers; and the district court did not err in concluding that Hokuto Japan did not engage in naked licensing where, given the close working relationship, Hokuto Japan was familiar with and reasonably relied upon Hokto USA's efforts to control the quality of the mushrooms it distributed. Accordingly, the court affirmed the district court's grant of Hokto USA's and Hokuto Japan's motion for summary judgment and affirmed the permanent injunction, denying Concord Farms's motion for summary judgment. View "Hokto Kinoko Co. v. Concord Farms, Inc." on Justia Law

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