Summaries of Recent Precedential and Informative Appellate Opinions
WilmerHale compiles lists of precedential and informative opinions that raise copyright and trademark law issues. The following is a consolidated list of those opinions with brief summaries designed to showcase the latest developments in intellectual property law. |
Precedential Copyright Opinions
Alliance for Water Efficiency v. Fryer, No. 15-1206 (7th
Cir. Dec. 22, 2015)
Easterbrook, J. In dispute over the right to publish a report that
defendant, a consultant, had been engaged by plaintiff to prepare,
the court held that plaintiff had failed to allege facts sufficient
to plead a copyright claim so as to invoke federal question
jurisdiction. The report did not constitute a "work for
hire" because the defendant was not an employee of plaintiff
and because there was no allegation that he had entered into a
written agreement that the work would be a work for hire.
Jones v. West Plains Bank & Trust Co., No. 15-1714
(8th Cir. Dec. 28, 2015)
Bye, J. In case arising out of the sale of audio tapes containing
plaintiff's copyrighted songs at a public foreclosure auction,
the court held that it was an abuse of discretion for the district
court to certify the dismissal of plaintiff's copyright claim
for appeal pursuant to Fed. R. Civ. P. 54(b) where plaintiff's
conversion claim was still pending before the district court.
Although the appeals court generally "defer[s] to a district
court's decision to certify a final judgment under Rule
54(b)," in this case the district court did not properly weigh
the Rule 54(b) factors because it failed to identify any hardship
or injustice that would result if plaintiff is not able to
immediately appeal the order dismissing his copyright claim.
Further, even if the interest in avoiding further litigation were a
valid Rule 54(b) factor, it would not be met because there remains
a chance for continued litigation and multiple appeals, thereby
creating the type of piecemeal appeals that the court seeks to
avoid.
Adobe Systems, Inc. v. Christenson, No. 12-17373 (9th
Cir. Dec. 30, 2015)
McKeown, J. Affirming grant of summary judgment in favor of
defendant on Adobe's copyright and trademark claims arising out
of defendant's sale of Adobe software without authorization.
With respect to defendant's first sale defense to the copyright
claim, the court held that the party raising the defense bears an
initial burden, which at the summary judgment stage is discharged
by producing evidence sufficient for a jury to find that the
alleged infringer lawfully acquired ownership of genuine copies of
the copyrighted software. The burden then shifts to the copyright
owner to establish the absence of a first sale, because of a
licensing or other non-ownership-transferring arrangement when the
copy first changed hands. The court found that Adobe was unable to
meet its burden to prove the absence of a first sale in light of
the district court's determination that it had failed to
produce the specific license agreements applicable to the
transactions. In addition, the court held that neither general
testimony nor generic licensing templates was sufficient. With
respect to the trademark claim, defendant's use of Adobe's
marks to identify genuine Adobe goods fell within the scope of the
nominative fair use defense. The fact that defendant sold
"academic" or "OEM" versions of the software as
"full" or "retail" versions might have stated a
claim of false advertising or unfair competition under the Lanham
Act, but the court observed that Adobe had failed to allege such a
claim.
Savant Homes, Inc. v. Collins, No. 15-1115 (10th Cir.
Jan. 4, 2016)
Matheson, J. Affirming grant of summary judgment in favor of
defendants where plaintiff alleged that defendants had copied its
floor plan for a house, on which it owned a registered copyright.
The court held that, although the Copyright Act protects
"architectural works" such as buildings, architectural
plans, or drawings, only the "overall form" or "the
arrangement and composition of spaces and elements in the
design" are protectable, not "individual standard
features." Here, plaintiff failed to offer any evidence to
create a disputed issue of fact in response to defendants'
expert report opining that plaintiff's plan consisted almost
exclusively of standard elements arranged in a standard fashion.
Similarly, with respect to the trade dress claim, summary judgment
was proper because plaintiff failed to rebut defendants'
evidence that its plan consisted of standard content, precluding a
finding of inherent distinctiveness. Further, plaintiff's
exclusive reliance on its sales volume was insufficient standing
alone to create a fact issue as to secondary meaning.
Precedential Trademark Opinions
In re Tam, No. 2014-1203 (Fed. Cir. Dec. 22, 2015) (en
banc)
Moore, J. In case challenging Section 2(a) of the Lanham Act, which
bars the PTO from registering scandalous, immoral, or disparaging
marks, a majority of the Federal Circuit sitting en banc held that
the disparagement provision of Section 2(a) is an unconstitutional
restriction on speech in violation of the First Amendment. Under
Section 2(a), a mark may be denied registration if it
"[c]onsists of or comprises immoral, deceptive, or scandalous
matter; or matter which may disparage or falsely suggest a
connection with persons, living or dead, institutions, beliefs, or
national symbols, or bring them into contempt or disrepute."
Here, the examiner refused to register the mark THE SLANTS for an
Asian-American rock band, finding the mark likely disparaging to
persons of Asian descent. The TTAB affirmed the refusal, and a
panel of the Federal Circuit affirmed based on binding precedent.
The Federal Circuit sua sponte ordered rehearing en banc.
The majority explained that, because Section 2(a) permits the PTO to deny registration based on disapproval of the message conveyed, it is a content-based, viewpoint-based regulation subject to strict scrutiny. The majority rejected the government's argument that Section 2(a) is not a prohibition on speech in light of the potential loss of the significant and financially valuable benefits that a federal trademark registration bestows. It further rejected the government's arguments that a trademark registration is government speech, not restricted by the Free Speech Clause, and that Section 2(a) is merely the government's shaping of a federal subsidy program. Finally, even if Section 2(a) were to be treated as regulation of commercial speech, it would fail to survive the intermediate-scrutiny framework applicable to such speech because there is no substantial government interest justifying the regulation. Three judges dissented from the majority's holding that Section 2(a) is unconstitutional on its face, with one opining that it was nevertheless unconstitutional as applied to petitioner.
Federal Treasury Enterprise Sojuzplodoimport, OAO v.
Spirits Int'l B.V., Nos. 14-4721-cv(L), 15-152-CV (XAP) (2d
Cir. Jan. 5, 2016)
Jacobs, J. In case arising out of rival claims to the
"Stolichnaya" trademarks for vodka and other spirits, the
district court erred in considering whether plaintiff's
asserted basis for standing to pursue a claim for trademark
infringement was valid under Russian law. The district court
granted defendants' motion to dismiss on the grounds that
plaintiff lacked statutory standing to bring its Lanham Act claims
because the assignment by which it acquired the trademark rights
pursuant to a decree from the Russian Federation was invalid under
Russian law. The appeals court held that considerations of
international comity and the act of state doctrine precluded a US
court from adjudicating the validity of the trademark assignment,
which was an act of a foreign government performed within its own
territory. In addition, plaintiff's Lanham Act claims were not
barred by laches because those claims were tolled during the
pendency of prior litigation, such that the presumption of laches
never arose. However, plaintiff's non-Lanham Act claims were
not tolled during prior litigation, and therefore were subject to
the presumption of laches.
Peter Kiewit Sons, Inc. v. Wall Street Equity Group,
Inc., No. 14-3461 (8th Cir. Jan. 6, 2016)
Kelly, J. Affirming district court's refusal to postpone
hearing on damages and calculation of damages in trademark
infringement suit arising out of defendants' unauthorized use
of plaintiff's mark in solicitations to third parties. District
court did not abuse its discretion in refusing to postpone the
hearing given its experience with defendant during the discovery
process and understandable skepticism of his veracity. With respect
to the district court's damages calculation, defendant's
failure to argue prior to appeal that the district court should
deduct overhead and operating costs from its calculation of damages
precluded consideration of that argument for the first time on
appeal.
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