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

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

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

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