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

Plaintiff claimed Defendant infringed her copyrights in two charts depicting organizational change. The key question is whether the copyright in one of those charts was registered with the Copyright Office such that it will support a suit for copyright infringement.The Ninth Circuit reversed the district court’s partial grant of summary judgment in favor of Defendants, vacated a jury verdict, vacated an award of attorneys’ fees, and remanded an action alleging infringement of copyrights in two charts depicting organizational change. The court held that Plaintiff created a genuine issue of material fact on that question. The panel held that Plaintiff raised a genuine dispute about whether she registered the chart directly or whether she registered elements of that chart by later registering an “Aligning for Success” chart. Agreeing with other circuits on a matter of first impression, the panel held that by registering a derivative work, an author registers all of the material included in the derivative work, including that which previously appeared in an unregistered, original work created by the author. The panel, therefore, reversed the district court’s grant of summary judgment and also vacated the jury verdict because, as a result of the grant of summary judgment, the district court prevented Plaintiff from introducing any evidence and making any argument as to the Managinwg Complex Change chart at trial. The panel further held that the district court erred in instructing the jury that if it found that Defendant accessed and copied other work but did not copy the registered Aligning for Success chart, then Dfendant’s challenged work was an independent creation. View "ENTERPRISE MANAGEMENT LIMITED, INC., ET AL V. CONSTRUX SOFTWARE BUILDERS, INC., ET AL" on Justia Law

Plaintiffs are photographers who sued Defendant Instagram for copyright infringement. Plaintiff alleged that Instagram violates their exclusive display right by permitting third-party sites to embed the photographers’ Instagram content. The district court held that Instagram could not be liable for secondary infringement because embedding a photo does not “display a copy” of the underlying images under Perfect 10.The Ninth Circuit affirmed the district court’s dismissal of an action brought by two photographers under the Copyright Act alleging that Instagram, LLC, violated their exclusive display right by permitting third-party sites to embed the photographers’ Instagram content. The panel held that, under Perfect 10 v. Amazon, 508 F.3d 1146 (9th Cir. 2007), Instagram could not be liable for secondary infringement because embedding a photo does not "display a copy" of the underlying image. Perfect 10 set forth the “Server Test,” which provides that a copy of a photographic image is not displayed when it is not fixed in a computer’s memory. The panel held that Perfect 10 did not restrict the application of the Server Test to a specific type of website, such as search engine. Arguments that Perfect10 is inconsistent with the Copyright Act are foreclosed by Perfect 10 outside of an en banc proceeding. And Perfect 10 was not effectively overturned by American Broadcasting Co. v. Aereo, 573 U.S. 431 (2014), which held that a streaming provider infringed broadcasters’ exclusive right to public performance. View "ALEXIS HUNLEY, ET AL V. INSTAGRAM, LLC" on Justia Law

Thousands of copyrighted photos on Zillow’s site come from VHT, a professional real estate photography studio. Zillow used VHT’s photos on its real estate “Listing Platform,” which is the primary display of properties, and on a home design section of the website called “Digs.” Following summary judgment rulings, a jury trial, and various post-trial motions, the Ninth Circuit affirmed the district court in large part in prior appeal Zillow I. Essentially, the panel agreed with the district court that Zillow was not liable for direct, secondary, or contributory infringement.   Back on remand, the Ninth Circuit affirmed the district court’s decision in full. The panel held that the district court properly excused VHT’s failure to meet Section 411(a)’s non-jurisdictional exhaustion requirement because copyright registration was wholly collateral to whether Zillow infringed on VHT's copyright, dismissing VHT’s claim after the statute of limitations had already expired would cause irreparable harm, and excusal would not undermine the purpose of administrative exhaustion. The panel affirmed the district court’s ruling, on remand, that the 2,700 VHT photos remaining at issue were not a compilation, which would entitle VHT to only a single award of statutory damages under 17 U.S.C. Section 504(c), but rather, each individual photo constituted an infringement. The photos were part of VHT’s master photo database, and the VHT group registered its images as a “compilation.” But VHT also registered the underlying individual images and licensed these images on a per-image or per-property basis. The panel held that the photos had independent economic value separate from the database and did not qualify as “one work.” View "VHT, INC. V. ZILLOW GROUP, INC., ET AL" on Justia Law

Counsel filed a class action lawsuit on behalf of copyright holders of musical compositions and recovered a little over $50,000 for the class members from Defendant Rhapsody International, Inc. (now rebranded as Napster), a music streaming service. The class members obtained no meaningful injunctive or nonmonetary relief in the settlement of their action. The district court nonetheless authorized $1.7 in attorneys’ fees under the “lodestar” method.   The Ninth Circuit reversed the district court’s award of attorneys’ fees to Plaintiffs’ counsel and remanded. The panel held that the touchstone for determining the reasonableness of attorneys’ fees in a class action under Federal Rule of Civil Procedure 23 is the benefit to the class. Here, the benefit was minimal. The panel held that the district court erred in failing to calculate the settlement’s actual benefit to the class members who submitted settlement claims, as opposed to a hypothetical $20 million cap agreed on by the parties. The panel held that district courts awarding attorneys’ fees in class actions under the Copyright Act must still generally consider the proportion between the award and the benefit to the class to ensure that the award is reasonable. The panel recognized that a fee award may exceed the monetary benefit provided to the class in certain copyright cases, such as when a copyright infringement litigation leads to substantial nonmonetary relief or provides a meaningful benefit to society, but this was not such a case. The panel instructed that, on remand, the district court should rigorously evaluate the actual benefit provided to the class and award reasonable attorneys’ fees considering that benefit. View "DAVID LOWERY, ET AL V. RHAPSODY INTERNATIONAL, INC." on Justia Law

Plaintiff  Enigma Software Group USA LLC (“Enigma”), a computer security software provider, sued a competitor, Defendant-Appellee Malwarebytes, Inc. (“Malwarebytes”), for designating its products as “malicious,” “threats,” and “potentially unwanted programs” (“PUPs”). Enigma’s operative complaint alleged a false advertising claim under Section 43(a) of the Lanham Act, 15 U.S.C. Section 1125(a)(1)(B), and tort claims under New York law. Malwarebytes moved to dismiss under Federal Rule of Civil Procedure 12(b)(6). The district court granted the motion, concluding that all of Enigma’s claims were insufficient as a matter of law.   The Ninth Circuit affirmed in part and reversed in part. In the context of this case, the panel concluded that when a company in the computer security business describes a competitor’s software as “malicious” and a “threat” to a customer’s computer, that is more a statement of objective fact than a non-actionable opinion. It is potentially actionable under the Lanham Act, provided Enigma plausibly alleges the other elements of a false advertising claim. The panel disagreed with the district court and concluded that Malwarebytes is subject to personal jurisdiction in New York. As this action was initially filed in New York, the law of that state properly applies.   Because the panel held that the Lanham Act and NYGBL Section 349 claims should not have been dismissed, the panel concluded that the tortious interference with business relations claim should similarly not have been dismissed. The panel agreed with the district court regarding the dismissal of the claim for tortious interference with contractual relations, however, and affirmed the dismissal of that claim. View "ENIGMA SOFTWARE GROUP USA, LLC V. MALWAREBYTES, INC." on Justia Law

Appellee Jason Scott Collection, Inc. (JSC) and Appellants Trendily Furniture, LLC, Trendily Home Collection, LLC and Rahul Malhotra (collectively, “Trendily”) are high-end furniture manufacturers that sell their products in the Texas market. Trendily intentionally copied three unique furniture designs by JSC and sold them to Texas retailers. The district court granted summary judgment to JSC on its copyright claim and then held Trendily liable on the trade dress claim following a bench trial. On appeal, Trendily challenged only the latter ruling, arguing that trade dress liability is precluded here because JSC did not demonstrate either secondary meaning or the likelihood of consumer confusion.   The Ninth Circuit affirmed the district court’s decision. The panel held that the district court did not clearly err in finding that JSC did so. The panel wrote that Trendily’s clear intent to copy nonfunctional features of JSC’s pieces supports a strong inference of secondary meaning. Noting that copyright and trademark are not mutually exclusive, the panel rejected Trendily’s argument that it should be held liable only under the Copyright Act. The panel held that the district court properly considered several other factors, including that the JSC pieces were continuously manufactured and sold since 2004, that JSC had a longstanding and well-known presence in the high-end furniture market, and that JSC’s furniture was distinctive in the minds of purchasers. The panel held that the district court did not err in finding that there was a likelihood of confusion between the JSC pieces and the Trendily pieces. View "JASON SCOTT COLLECTION, INC. V. TRENDILY FURNITURE, LLC, ET AL" on Justia Law

Defendant Citizens Equity First Credit Union (CEFCU) petitioned the Trademark Trial and Appeal Board (TTAB) to cancel a trademark registration belonging to Plaintiff San Diego County Credit Union (SDCCU). SDCCU procured a stay to the TTAB proceedings by filing an action seeking declaratory relief to establish that it was not infringing either of CEFCU’s registered and common-law marks and to establish that those marks were invalid. The district court granted SDCCU’s motion for summary judgment on noninfringement. After a bench trial, the district court also held that CEFCU’s common-law mark was invalid and awarded SDCCU attorneys’ fees.   The Ninth Circuit filed (1) an order amending its opinion, denying a petition for panel rehearing, and denying on behalf of the court a petition for rehearing en banc; and (2) an amended opinion affirming in part and vacating in part the district court’s judgment and award of attorneys’ fees. The panel held that SDCCU had no personal stake in seeking to invalidate CEFCU’s common-law mark because the district court had already granted summary judgment in favor of SDCCU, which established that SDCCU was not infringing that mark. The panel held that the district court correctly exercised personal jurisdiction over CEFCU regarding SDCCU’s noninfringement claims, which sought declaratory relief that SDCCU was not infringing CEFCU’s registered mark or common-law mark. View "SAN DIEGO COUNTY CREDIT UNION V. CEFCU" on Justia Law

Defendant Citizens Equity First Credit Union (CEFCU) petitioned the Trademark Trial and Appeal Board (TTAB) to cancel a trademark registration belonging to plaintiff San Diego County Credit Union (SDCCU). SDCCU procured a stay to the TTAB proceedings by filing an action seeking declaratory relief to establish that it was not infringing either of CEFCU’s registered and common-law marks and to establish that those marks were invalid. The district court granted SDCCU’s motion for summary judgment on noninfringement. After a bench trial, the district court also held that CEFCU’s common-law mark was invalid and awarded SDCCU attorneys’ fees.   The Ninth Circuit affirmed in part and vacated in part the district court’s judgment and award of attorneys’ fees in favor of Plaintiff and remanded. The panel held that SDCCU had no personal stake in seeking to invalidate CEFCU’s common-law mark because the district court had already granted summary judgment in favor of SDCCU, which established that SDCCU was not infringing that mark. Hence, there was no longer any reasonable basis for SDCCU to apprehend a trademark infringement suit from CEFCU. After it granted summary judgment in favor of SDCCU, the district court was not resolving an actual “case” or “controversy” regarding the validity of CEFCU’s common-law mark; thus, it lacked Article III jurisdiction to proceed to trial on that issue. The panel therefore vacated the district court’s judgment and its award of attorneys’ fees, which was based, in part, on the merits of the invalidity claim over which the district court lacked Article III jurisdiction. View "SAN DIEGO COUNTY CREDIT UNION V. CEFCU" on Justia Law

Plaintiff is a physically challenged athlete and motivational speaker who started the Scott Rigsby Foundation and registered the domain name “scottrigsbyfoundation.org” with GoDaddy.com. When Plaintiff and the Foundation failed to pay the annual renewal fee in 2018, a third party registered the then-available domain name. Scottrigsbyfoundation.org became a gambling information site. Plaintiff sued GoDaddy.com, LLC and its corporate relatives (collectively, “GoDaddy”), for violations of the Lanham Act and various state laws and sought declaratory and injunctive relief, including the return of the domain name. The Northern District of Georgia transferred the case to the District of Arizona, which dismissed all claims.   The Ninth Circuit affirmed the district court’s dismissal and dismissed Plaintiff’s and the Foundation’s appeal of an order transferring venue. The panel held that it lacked jurisdiction to review the District Court for the Northern District of Georgia’s order transferring the case to the District of Arizona because transfer orders are reviewable only in the circuit of the transferor district court. The panel held that Plaintiff could not satisfy the “use in commerce” requirement of the Lanham Act vis-à-vis GoDaddy because the “use” in question was being carried out by a third-party gambling site, not GoDaddy. As to the Lanham Act claim, the panel further held that Plaintiff could not overcome GoDaddy’s immunity under the Anti-cybersquatting Consumer Protection Act.  The panel held that Section 230 of the Communications Decency Act shielded GoDaddy from liability for Plaintiff’s state-law claims for invasion of privacy, publicity, trade libel, libel, and violations of Arizona’s Consumer Fraud Act. View "SCOTT RIGSBY, ET AL V. GODADDY INC., ET AL" on Justia Law

Punchbowl is an online party and event planning service. AJ Press owns and operates Punchbowl News, a subscription-based online news publication that provides articles, podcasts, and videos about American politics, from a Washington, D.C. insider’s perspective. Punchbowl claimed that Punchbowl News is misusing its “Punchbowl” trademark (the Mark).   The Ninth Circuit affirmed the district court’s summary judgment in favor of AJ Press, LLC, in an action brought by Punchbowl, Inc. (Punchbowl), alleging violations of the Lanham Act for trademark infringement and unfair competition and related state law claims. The panel wrote that no reasonable buyer would believe that a company that operates a D.C. insider news publication is related to a “technology company” with a “focus on celebrations, holidays, events, and memory-making.” The panel wrote that this resolves not only the Lanham Act claims, but the state law claims as well. The panel explained that survey evidence of consumer confusion is not relevant to the question of whether AJ Press’s use of the Mark is explicitly misleading, which is a legal test for assessing whether the Lanham Act applies. The panel held that the district court’s denial of Punchbowl’s request for a continuance under Fed. R. Civ. P. 56(d) to permit further discovery was not an abuse of discretion. View "PUNCHBOWL, INC. V. AJ PRESS, LLC" on Justia Law