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

After Bacardi began an advertising campaign in November 2013 using the phrase “Bacardi Untameable” to promote its rum products, Lodestar filed suit for trademark infringement and unfair competition under the Lanham Act.   The Ninth Circuit affirmed the district court’s summary judgment ruling in favor of Bacardi, and held that Plaintiff failed to meet the elements of a trademark infringement action. Plaintiff alleged “reverse confusion”, which occurs when a person who knows of a well-known junior user comes into contact with a lesser-known senior user, and the similarity of the marks causes the individual to believe that the senior user is affiliated or the same as the junior user.   The court found that Plaintiff’s Untamed Revolutionary Rum product should be excluded from the likelihood-of-confusion analysis because it did not reflect a bona fide use of the mark. In applying the Sleekcraft factors, the court found that Plaintiff failed to carry its burden to show a likelihood of confusion. Further, while the district court erred in certain aspects in its consideration, the errors did not alter the ultimate conclusion. View "LODESTAR ANSTALT V. BACARDI & COMPANY LTD." on Justia Law

Ayla, a San Francisco-based brand, is the registered owner of trademarks for use of the “AYLA” word mark in connection with on-site beauty services, online retail beauty products, cosmetics services, and cosmetics. Alya Skin, an Australian company, sells and ships skincare products worldwide. Ayla sued in the Northern District of California, asserting trademark infringement and false designation of origin under the Lanham Act, 15 U.S.C. 1114, 1125(a).Alya Skin asserted that it has no retail stores, offices, officers, directors, employees, bank accounts, or real property in the U.S., does not sell products in U.S. retail stores, solicit business from Americans, nor direct advertising toward California; less than 10% of its sales have been to the U.S. and less than 2% of its sales have been to California. Alya Skin uses an Idaho company to fulfill shipments outside of Australia and New Zealand. Alya Skin filed a U.S. trademark registration application in 2018, and represented to potential customers that its products are FDA-approved; it ships from, and allows returns to, Idaho Alya Skin’s website listed U.S. dollars as the default currency and advertises four-day delivery to the U.S.The Ninth Circuit reversed the dismissal of the suit. Jurisdiction under Fed.R.Civ.P. 4(k)(2) comports with due process. Alya Skin had minimum contacts with the U.S., and subjecting it to an action in that forum would not offend traditional notions of fair play and substantial justice. The company purposefully directed its activities toward the U.S. The Lanham Act and unfair competition claims arose out of or resulted from Alya Skin’s intentional forum-related activities. View "Ayla, LLC v. Alya Skin Pty. Ltd." on Justia Law

The Ninth Circuit affirmed the district court's grant of summary judgment in favor of Apple in a trademark infringement action brought by Social Tech over the use of the MEMOJI mark. The panel held that mere adoption of a mark without bona fide use in commerce, in an attempt to reserve rights for the future, is insufficient to establish rights in the mark under the Lanham Act. The panel explained that Social Tech failed to put forward evidence that the release of its Memoji application to the public was for genuine commercial purposes warranting trademark protection and thus it failed to establish a triable issue regarding whether it engaged in a bona fide use of the mark in commerce within the meaning of the Lanham Act.The panel considered the totality of the circumstances and concluded that, while at the time of its original intent-to-use filing, Social Tech may have had some commercial intent to develop the Memoji application, at the time it filed its Statement of Use, its use of the MEMOJI mark was made merely to reserve a right in the mark. Because Social Tech did not engage in bona fide use of the MEMOJI mark in commerce, its registration is invalid, and Apple is entitled to cancellation of Trademark Registration No. 5,566,242. View "Social Technologies LLC v. Apple Inc." on Justia Law

Ironhawk filed suit against Dropbox for trademark infringement and unfair competition, alleging that Dropbox's use of the name Smart Sync intentionally infringes on Ironhawk's SmartSync trademark and is likely to cause confusion among consumers as to the affiliation of Ironhawk's product with Dropbox. After the district court concluded that Ironhawk could not prevail because a reasonable trier of fact could not find a likelihood of consumer confusion, Ironhawk appealed based on a theory of reverse confusion.The Ninth Circuit held that there was a genuine dispute of material fact as to the likelihood of consumer confusion under a reverse confusion theory of infringement and thus reversed the district court's grant of summary judgment for Dropbox, vacating the judgment, and remanding for trial. The panel first concluded that a reasonable jury could find that Ironhawk's potential consumers include commercial customers. Applying the Sleekcraft factors, the panel then concluded that a reasonable trier of fact could find a likelihood of confusion. Therefore, Dropbox has not met its high burden of establishing that no genuine disputes of material fact exist as to the likelihood of confusion between Smart Sync and SmartSync. View "Ironhawk Technologies, Inc. v. Dropbox, Inc." on Justia Law

Metal Jeans, an apparel brand and owner of the non-stylized "METAL" trademark, filed an infringement claim against Metal Sport, a powerlifting brand with a similar but stylized mark. The district court denied both parties' merits motions because material facts remained in dispute, but granted Metal Sport's separate motion for summary judgment on whether Metal Jeans was barred from pressing its infringement claim by the equitable doctrine of unclean hands. In doing so, the district court rejected Metal Jeans' counter-defense that Metal Sport also acted with unclean hands.In a separate memorandum disposition filed simultaneously with this opinion, the Ninth Circuit concluded that the district court improperly granted summary judgment against Metal Jeans. The panel wrote here to resolve an issue of first impression: the standard of review the panel employs when a district court concludes that a party has acted with unclean hands. The panel held that the appropriate standard of review of a district court's determination to grant summary judgment on the affirmative defense of unclean hands is abuse of discretion. The panel remanded for further proceedings. View "Metal Jeans, Inc. v. Metal Sport, Inc." on Justia Law

The Ninth Circuit reversed the district court's summary judgment in favor of defendants on a copyright infringement claim and affirmed the district court's dismissal and grant of summary judgment in favor of defendants on a trademark claim concerning the book "Oh, the Places You'll Boldly Go!," (the mash-up) a Dr. Seuss and Star Trek mash-up.The panel held that the mash-up does not make fair use of "Oh, the Places You'll Go!" (the original work). The panel explained that the purpose and character of the mash-up; the nature of the original work; the amount and substantiality of the original work; and the potential market for or value of Seuss, all weigh against fair use. The panel concluded that the bottom line is that ComicMix created, without seeking permission or a license, a non-transformative commercial work that targets and usurps the original work's potential market, and ComicMix cannot sustain a fair use defense. The panel also held that Seuss does not have a cognizable trademark infringement claim against ComicMix because the Lanham Act did not apply under the Rogers test. In this case, the allegedly valid trademarks in the title, the typeface, and the style of the original work were relevant to achieving the mash-up's artistic purpose, and the use of the claimed original work trademarks was not explicitly misleading. View "Dr. Seuss Enterprises, LP v. ComicMix LLC" on Justia Law

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

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

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

VVV appealed the district court's dismiss of its trademark claims based on three marks and the denial of leave to amend its complaint. The Ninth Circuit assumed, without deciding, that the district court correctly applied the elements of claim preclusion to this case, but found that an exception to claim preclusion applied.The panel explained that an interparty proceeding before the TTAB is a limited proceeding involving registration of a trademark, and the TTAB has no authority to determine the right to use, or the broader questions of infringement, unfair competition, damages or injunctive relief. In this case, TTAB had no power to decide VVV's claims of infringement, dilution, and unfair competition or to grant either injunctive relief or damages. Therefore, the panel held that it would be unfair to preclude VVV from litigating these claims and seeking relief when barriers existed that prevented it from doing so in the first action. The panel reversed and remanded for the district court to consider, in the first instance, whether issue preclusion applied. The panel also reversed the denial of leave to amend the complaint, and affirmed the dismissal of plaintiff's claims as to the second and third marks. View "V.V.V. & Sons Edible Oils v. Meenakshi Overseas" on Justia Law