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

This appeal arose from a copyright dispute between Adobe and defendant and his software company, SSI. The court affirmed the district court's dismissal of both Adobe's copyright and trademark claims. Although a copyright holder enjoys broad privileges protecting the exclusive right to distribute a work, the first sale doctrine serves as an important exception to that right. Under this doctrine, once a copy of a work is lawfully sold or transferred, the new owner has the right “to sell or otherwise dispose of” that copy without the copyright owner’s permission. In this case, the court concluded that the district court correctly held that Adobe established its registered copyrights in the disputed software and that defendant carried his burden of showing that he lawfully acquired genuine copies of Adobe’s software, but that Adobe failed to produce the purported license agreements or other evidence to document that it retained title to the software when the copies were first transferred. The district court did not abuse its discretion in granting defendant’s motion to strike and excluding evidence purporting to document the licenses. Finally, the court concluded that the district court properly analyzed the trademark claim under the nominative fair use defense to a trademark infringement claim instead of under the unfair competition rubric. Accordingly, the court affirmed the judgment. View "Adobe Systems, Inc. v. Christenson" on Justia Law

DC filed suit against defendant, producer of replicas of the Batmobile, alleging, among other things, causes of action for copyright infringement, trademark infringement, and unfair competition arising from defendant’s manufacture and sale of the Batmobile replicas. The court concluded that the Batmobile, as it appears in the comic books, television series, and motion picture, is entitled to copyright protection. The court also concluded that the Batmobile character is the property of DC and that defendant infringed upon DC’s property rights when he produced unauthorized derivative works of the Batmobile as it appeared in the 1966 television show and the 1989 motion picture. Finally, the district court did not err when it ruled as a matter of law that defendant could not assert a laches defense to DC's trademark infringement claim because defendant willfully infringed on DC's trademarks. Accordingly, the court affirmed the district court's grant of summary judgment for DC on the copyright and trademark infringement claims. View "DC Comics v. Towle" on Justia Law

The Internet Corporation for Assigned Names and Numbers (ICANN) creates and assigns top level domains (TLDs), such as “.com” and “.net.” Plaintiff, a registry specializing in “expressive” TLDs, filed suit alleging that the 2012 Application Round for the creation of new TLDs violated federal and California law. The district court dismissed the complaint. The court rejected plaintiff's claims for conspiracy in restraint of trade or commerce under section 1 of the Sherman Act, 15 U.S.C. 1, because plaintiff failed to allege an anticompetitive agreement; the court rejected plaintiff's claim under Section 2 of the Sherman Act, because ICANN’s authority was lawfully obtained through a contract with the DOC and did not unlawfully acquire or maintain its monopoly; the trademark and unfair competition claims were not ripe for adjudication because plaintiff has not alleged that ICANN has delegated or intends to delegate any of the TLDs that plaintiff uses; and the complaint failed to allege a claim for tortious interference or unfair business practice. Accordingly, the court affirmed the judgment. View "name.space, Inc. V. ICANN" on Justia Law

MTM filed suit against online retailer Amazon under the Lanham Act, 15 U.S.C. 1051 et seq., alleging that Amazon had infringed MTM's trademark. MTM argues that initial interest confusion might occur because Amazon lists the search term used – here the trademarked phrase “mtm special ops” – three times at the top of its search page. The district court granted summary judgment in favor of Amazon. The court considered five non-exhaustive Sleekcraft factors to determine whether a trademark gives rise to a likelihood of confusion: the strength of the mark, relatedness/proximity of the goods, evidence of actual confusion, defendant’s intent, and the degree of care exercised by purchasers. The court concluded that there are genuine issues of material fact as to whether there is a likelihood of confusion under the initial interest confusion theory. Finally, the court held that the customer-generated use of a trademark in the retail search context is a use in commerce. In this case, Amazon's purpose is not less commercial just because it is selling wares, not advertising space. Therefore, the court declined to affirm the district court on the alternative ground that Amazon’s use is not a use in commerce. Accordingly, the court reversed and remanded. View "Multi Time Machine v. Amazon.com" on Justia Law

Hope Road, an entity owned by Bob Marley's children, granted Zion an exclusive license to design, manufacture, and sell t-shirts and other merchandise bearing Marley's image. Hope Road and Zion filed suit against multiple defendants who were involved in the sale of competing Marley merchandise, alleging claims arising from defendants' use of Marley's likeness. The court concluded that the district court did not err by denying defendants' post-trial motion for judgment as a matter of law on the Lanham Act, 15 U.S.C. 1125(a), false endorsement claim where defendants waived several defenses to plaintiffs' claims by failing to properly raise them in the district court; the district court did not abuse its broad discretion in determining the profits for Defendants A.V.E.L.A., Freeze, and Jem where there was sufficient evidence to find Freeze willfully infringed plaintiffs' rights because Freeze's vice president of licensing testified that she knew that plaintiffs had the right to merchandising Marley's image before Freeze began selling similar goods; the Seventh Amendment does not require that a jury calculate these profits because juries have not traditionally done so, and a claim for profit disgorgement is equitable in nature; the district court did not abuse its discretion by ordering A.V.E.L.A. defendants to pay attorneys' fees; the court affirmed the district court's grant of summary judgment to defendants on the right of publicity claim; there was sufficient evidence to support the jury's finding that A.V.E.L.A. defendants interfered with prospective economic advantage; and the district court did not err in granting defendants' motion for judgment as a matter of law on the issue of punitive damages. View "Fifty-Six Hope Road Music v. A.V.E.L.A." on Justia Law

Pom Wonderful, owner of the "POM" standard character mark, filed a trademark infringement claim against Pur to stop Pur from using the word "pom" on its pomegranate-flavored energy drink. On appeal, Pom Wonderful challenged the district court's order of its motion for a preliminary injunction. The court reversed, holding that the district court abused its discretion in finding that Pom Wonderful is unlikely to succeed on the merits of its claim. Because the district court's decision to deny Pom Wonderful's motion for a preliminary injunction was tainted by its mistaken likelihood-of-success determination, the court remanded with instructions to the district court to consider whether Pom Wonderful meets its burden of proving the other elements of a preliminary injunction. View "Pom Wonderful v. Hubbard" on Justia Law

SoCal filed suit against Defendant Zaffina and his company, SoCal Inc., alleging violations of the Lanham Act, 15 U.S.C. 1051 et seq.; the California Business and Professions Code; common law trademark infringement; and unfair competition. The court concluded that the district court did have jurisdiction over SoCal's claim under the Lanham Act; the district court properly concluded that SoCal had the capacity to bring its Lanham Act claim in federal court; SoCal had standing to sue; and SoCal's motion for summary judgment was properly served on Zaffina. On the merits, the court concluded that SoCal was entitled to summary judgment where the contested marks are protectable, SoCal owns these marks, and Zaffina's use of these marks is likely to cause confusion. The court held that unincorporated associations have the capacity to own trademarks and the district court's assumption that SoCal has the capacity to own the contested marks was correct. The court rejected defendant's remaining claims and affirmed the district court's entry of summary judgment. View "S. Cal. Darts Ass'n v. Zaffina" on Justia Law

Quinta Real appealed from the district court's conclusion that expansion of Quinta Real's Mexican hotel business into the United States would result in a likelihood of consumer confusion with La Quinta. The court held that the "use in commerce" element of the Lanham Act claims under section 32 and 43(a) is not connected to the Lanham Act's jurisdictional grant in 15 U.S.C. 1121(a), which grants federal subject-matter jurisdiction without any reference to a "use in commerce" requirement. Therefore, the court concluded that there is federal subject-matter jurisdiction over the trademark claims. The court also concluded that the district court correctly found a likelihood of confusion, but did not provide a sufficient analysis balancing the equities in its decision to grant a permanent injunction. The court held that the defense of laches did not apply. The court affirmed in part and remanded for further assessment of the equities. View "La Quinta Worldwide v. Q.R.T.M." on Justia Law

Airs International, a purported owner of an ANGEL DREAMS trademark, filed suit against Victoria's Secret alleging breach of contract claims and requesting cancellation of Victoria's Secret's registered DREAM ANGELS trademark. On appeal, Airs International challenged the district court's dismissal of its claims. The court held that Section 37 of the Lanham Act, 15 U.S.C. 1119, did not provide an independent basis for federal jurisdiction. Because Airs Aromatics had not appealed the dismissal of the only claims it brought that could support jurisdiction, the district court's judgment dismissing this action with prejudice must be affirmed. Airs Aromatics has not alleged sufficient facts to support a claim for trademark infringement where it failed to allege that the litigation was the kind of continuous, public usage of a trademark that served to identify the marked goods to the public as those of the mark's owner. Finally, leave to amend would be futile. Accordingly, the court affirmed the judgment of the district court. View "Airs Aromatics v. Victoria's Secret" on Justia Law

Experience Hendrix filed suit against Pitsicalis alleging that Pitsicalis was infringing trademarks in violation of the Lanham Act, 15 U.S.C. 1051-1127, and that the trademark infringement also amounted to an unfair or deceptive trade practice proscribed by Washington's Consumer Protection Act (WCPA), Wash. Rev. Code 19.86.010-19.86.920. Determining that Pitsicalis had Article III standing, the court concluded, inter alia, that the WPRA was constitutional as applied to the narrow set of non-speculative circumstances at issue in this case; Pitsicalis was liable under the Lanham Act for using domain names that infringed Experience Hendrix's trademark "Hendrix"; and Paragraph 5 of the permanent injunction failed to state clearly the terms of the injunction and did not describe in reasonable detail the acts that were and were not restrained. Accordingly, the court reversed the district court's determination that the Washington statute was unconstitutional and remanded Pitsicalis's declaratory judgment claims pertaining to the WPRA with instructions to enter judgment on those claims in favor of Experience Hendrix; affirmed the grant of partial summary judgment on Experience Hendrix's claim that Pitsicalis's use of domain names infringed Experience Hendrix's mark; vacated the permanent injunction and remanded so the district court could revise the language at issue; reversed the Rule 50(b)(3) decision to strike most of the jury's award of damages under both the Lanham Act and the WPRA; affirmed the district court's order granting a new trial on damages under both statutes; remanded for a new trial on such damages; vacated the district court's award of attorney's fees under the WCPA; and remanded the fee request for further proceedings. View "Experience Hendrix v. HendrixLicensing.com" on Justia Law