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

The Ninth Circuit affirmed the district court's grant of summary judgment for Farmacy Beauty in an action brought by Arcona, alleging trademark counterfeiting claims based on the use of the trademarked term "EYE DEW" on its skincare products.The panel held that the plain language of the Lanham Act, 15 U.S.C. 1114, requires a likelihood of confusion for a trademark counterfeiting claim. The panel will not presume consumer confusion in this case because the products are not identical. Therefore, summary judgment was proper because there is no genuine dispute of material fact about the likelihood of consumer confusion. View "Arcona, Inc. v. Farmacy Beauty, LLC" on Justia Law

Four Seasons front man Frankie Valli and other defendants associated with Jersey Boys did not infringe Rex Woodard's copyright in the autobiography of Tommy DeVito, now owned by Donna Corbello, Woodard's surviving wife.The Ninth Circuit affirmed the district court's judgment, after a jury trial in favor of defendants, on the sole ground that Jersey Boys did not infringe DeVito's biography, and so the panel did not reach the district court's fair use rationale. The panel rests its decision primarily on the unremarkable proposition that facts, in and of themselves, may not form the basis for a copyright claim. In this case, each of the alleged similarities between the Play and the Work are based on historical facts, common phrases and scenes-a-faire, or elements that were treated as facts in the Work and are thus unprotected by copyright, even though now challenged as fictional. The panel explained that neither Valli nor the other defendants violated Corbello's copyright by depicting in the Play events in their own lives that are also documented in the Work. Therefore, because the Play did not copy any protected elements of the Work, there was no copyright infringement. View "Corbello v. Vallli" on Justia Law

Oracle, owner of the proprietary Solaris software operating system, filed suit alleging that HPE improperly accessed, downloaded, copied, and installed Solaris patches on servers not under an Oracle support contract. Oracle asserted direct copyright infringement claims for HPE's direct support customers, and indirect infringement claims for joint HPE-Terix customers. The district court granted summary judgment for HPE.The Ninth Circuit held that the copyright infringement claim is subject to the Copyright Act's three year statute of limitations, which runs separately for each violation. The panel explained that Oracle's constructive knowledge triggered the statute of limitations and Oracle failed to conduct a reasonable investigation into the suspected infringement. The panel also held that the intentional interference with prospective economic advantage claim is barred by California's two year statute of limitations. Therefore, the panel affirmed the district court's partial summary judgment for HPE on the infringement and intentional interference claims. The panel also affirmed in part summary judgment on the indirect infringement claims for patch installations by Terix; reversed summary judgment on all infringement claims for pre-installation conduct and on the direct infringement claims for unauthorized patch installations by HPE; and addressed all other issues in a concurrently filed memorandum opinion. View "Oracle America, Inc. v. Hewlett Packard Enterprise Co." on Justia Law

HM filed suit alleging infringement of HM's rights in the EAMES and AERON trade dresses under the Lanham Act. The jury found in favor of HM as to the Eames chairs and awarded infringement and dilution damages. As to the Aeron chair, the jury found in favor of OSP.The Ninth Circuit held that for a product's design to be protected under trademark law, the design must be nonfunctional. The panel affirmed the district court's judgment in favor of HM on its causes of action for the infringement of its registered and unregistered EAMES trade dresses and rejected OSP's argument that the utilitarian functionality of the Eames chairs' component parts renders their overall appearances functional as a matter of law; reversed the judgment in favor of OSP regarding the Aeron chair because the functionality jury instruction does not accurately track the panel's functionality caselaw; reversed the judgment in favor of HM on its cause of action for dilution because there was legally insufficient evidence to find that the claimed EAMES trade dresses were famous under 15 U.S.C. 1125(c)(2)(A); and remanded for a new trial. View "Blumenthal Distributing, Inc. v. Herman Miller, Inc." on Justia Law

The Ninth Circuit reversed the district court's judgment after a jury trial and award of attorneys' fees in favor of Unicolors in a copyright infringement action against H&M, where Unicolors alleged that a design it created in 2011 is remarkably similar to a design printed on garments that H&M began selling in 2015.The panel held that courts may not consider in the first instance whether the Register of Copyrights would have refused registration due to the inclusion of known inaccuracies in a registration application. In this case the district court erred by imposing an intent-to-defraud requirement for registration invalidation and erred in concluding that Unicolors’s application for copyright registration did not contain inaccuracies despite the inclusion of confined designs.The panel held that the plain meaning of "single unit" in 37 C.F.R. 202.3(b)(4)(i)(A) requires that the registrant first published the collection of works in a singular, bundled collection. The panel explained that it is an inaccuracy for a registrant like Unicolors to register a collection of works as a single-unit publication when the works were not initially published as a singular, bundled collection. Furthermore, the undisputed evidence adduced at trial further shows that H&M included the inaccurate information "with knowledge that it was inaccurate." Therefore, the panel remanded to the district court with instructions to submit an inquiry to the Register of Copyrights asking whether the known inaccuracies contained in the '400 Registration application, if known to the Register of Copyrights, would have caused it to refuse registration. View "Unicolors, Inc. v. H&M Hennes & Mauritz, LP" on Justia Law

The Ninth Circuit vacated the district court's order denying Dolores' motion for recovery of attorney's fees under the Copyright Act. The district court had granted summary judgment for Dolores on Doc's Dream's complaint seeking a declaration that the late religious leader Dr. Eugene Scott completely abandoned his works to the public domain. The district court then denied Dolores' motion for attorney fees under 17 U.S.C. 505.The panel held that, even when asserted as a claim for declaratory relief, any action that turns on the existence of a valid copyright and whether that copyright has been infringed invokes the Copyright Act. Therefore, attorney's fees may be available under section 505 of the Copyright Act. View "Doc's Dream, LLC v. Dolores Press, Inc." on Justia Law

VIP filed suit seeking a declaration that its "Bad Spaniels Silly Squeaker" toy did not infringe JDPI's trademark rights or, in the alternative, that Jack Daniel's trade dress and bottle design were not entitled to trademark protection. JDPI counterclaimed and alleged claims of trademark infringement and dilution.The Ninth Circuit affirmed the district court's grant of summary judgment to JDPI on the issues of aesthetic functionality and distinctiveness. The court held that the district court correctly found that Jack Daniel's trade dress and bottle design are distinctive and aesthetically nonfunctional, and thus entitled to trademark protection; VIP also failed to rebut the presumption of nonfunctionality and distinctiveness of the Jack Daniel's bottle design; the district court correctly rejected VIP's nominative fair use defense; and the district court correctly rejected VIP's request for cancellation of the registered mark and rejected VIP's nominative fair use defense.However, the panel held that the dog toy is an expressive work entitled to First Amendment protection. In this case, the district court erred in finding trademark infringement without first requiring JDPI to satisfy at least one of the two Rogers prongs. Therefore, the panel reversed the district court's judgment as to the dilution claim, vacated the judgment on the trademark infringement claim, and remanded for further proceedings. View "VIP Products LLC v. Jack Daniel's Properties, Inc." on Justia Law

The Ninth Circuit affirmed the district court's grant of summary judgment to defendants in an action brought by plaintiff, a licensing company, alleging that the Burbank High School student show choirs failed to obtain licenses for their use of copyrighted sheet music in arranging a show choir performance.The panel held that plaintiff lacked standing to sue as to three of the four musical works at issue, and that the defense of fair use rendered the use of the fourth work noninfringing. In regard to the three works, plaintiff received its interests in the three songs from individual co-owners of copyright, without the consent of the other co-owners, and therefore held only nonexclusive licenses in those works. The panel held that the use of the fourth work was a fair use in light of the limited and transformative nature of the use and the work's nonprofit educational purposes in enhancing the educational experience of high school students. Finally, the panel held that the district court abused its discretion in denying defendants' motion for attorneys' fees under 17 U.S.C. 505, and remanded for the calculation of the award. View "Tresóna Multimedia, LLC v. Burbank High School Vocal Music Ass'n" on Justia Law

The Ninth Circuit affirmed the district court's dismissal of plaintiff's action alleging copyright infringement by the Disney movie Inside Out of plaintiffs' characters called The Moodsters. After plaintiff developed The Moodsters, anthropomorphized characters representing human emotions, she pitched to entertainment and toy companies around the country, including The Walt Disney Company.The panel held that, under DC Comics v. Towle, 802 F.3d 1012 (9th Cir. 2015), lightly sketched characters such as The Moodsters, which lack consistent, identifiable character traits and attributes, do not enjoy copyright protection. Furthermore, under Warner Bros. Pictures v. Columbia Broad. Sys., 216 F.2d 945, 950 (9th Cir. 1954), The Moodsters are chessman in the game of telling the story. In this case, the panel applied the alternative "story being told" test and held that The Moodsters as an ensemble are no more copyrightable than the individual characters. Finally, the panel held that the district court did not err in dismissing plaintiff's claim for an implied-in-fact contract where plaintiff was required under California law to do more than plead a boiler-plate allegation, devoid of any relevant details. View "Daniels v. The Walt Disney Co." on Justia Law

The estate of guitarist Randy Wolfe filed suit claiming that Led Zeppelin copied portions of Taurus, a song written by Wolfe and performed by his band Spirit, in Led Zeppelin's opening notes of Stairway to Heaven.The en banc court affirmed the district court's judgment after a jury trial in favor of Led Zeppelin, holding that the 1909 Copyright Act, which does not protect sound recordings, controlled its analysis. In this case, Taurus was an unpublished work registered in 1967. Because the deposit copy defines the four corners of the Taurus copyright, the en banc court held that it was not error for the district court to decline plaintiff's request to play the sound recordings of the Taurus performance that contain further embellishments or to admit the recordings on the issue of substantial similarity.The en banc court also held that plaintiff's complaint on access was moot. The en banc court affirmed the district court's challenged jury instructions; rejected the inverse ratio rule, overruling circuit precedent to the contrary; and held that the district court did not err in its formulation of the originality instructions, or in excluding a selection and arrangement instruction. Finally, the en banc court affirmed the district court with respect to the remaining trial issues and its denial of attorneys' fees and costs to Warner/Chappell. View "Skidmore v. Zeppelin" on Justia Law