United States: 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.


Recent Precedential Copyright Opinions

Killer Joe Nevada v. Leaverton, et. al., No. 14-3274 (8th Cir., Dec. 4, 2015)   
Benton, J. Affirming the district court's denial of attorney's fees where a copyright owner filed suit against an ISP subscriber suspected of infringing its copyright by downloading a film through a BitTorrent computer program, but failed to investigate whether the individual associated with the IP address provided by the ISP provider infringed the copyright. "Leaverton cites no binding authority that a Copyright Act suit based on the infringer's IP address is frivolous or unreasonable." 

Guzman v. Hacienda Records & Recording Studio, No. 15-40297 (5th Cir., Dec. 14, 2015)
Stewart, CJ. Affirming the district court's "hotly contested" bench trial findings and rulings regarding alleged copyright infringement of a 1974 Tejano song, "Triste." The Fifth Circuit relied on the great deference owed to the trial judge's findings when applying the clearly erroneous standard of review following a bench trial, and rejected plaintiff's "sliding scale" analysis that would have lowered his access burden, noting that while such an analysis finds support in other circuits, "we are not convinced that the circumstances of this case provide an appropriate occasion to adopt the sliding scale analysis as the law of this circuit."  

Recent Precedential Trademark Opinions

Grubbs v. Sheakley Group, Inc., No. 15-3302 (6th Cir., Dec. 7, 2015) 
Clay, J. Reversing the district court's dismissal of plaintiff's Lanham Act claims for failure to state a claim, where defendants used the plaintiff's company name (Tri-Serve) "in a trademark way" to divert plaintiff's customers to their competing business through emails and mailings suggesting that the two competitors were "partnering" and that the plaintiff's offices were "moving" to the defendants' address.1

As an initial matter, the Court found that the defendant-competitor could be held vicariously liable for trademark infringement under the Lanham Act for the acts of its consultant because "the defendant and the infringer had an actual or apparent partnership," as evidenced by the language of the mailings. Applying the standard eight factor test for evaluating likelihood of confusion favored plaintiff, and thus that plaintiff stated a claim for false designation of origin.

With respect to false advertising, the Court held that plaintiff stated a claim after modifying the test for "commercial advertising and promotion" first developed by the Southern District of New York in Gordon & Breach Sco. Publishers S.A. v. Am. Inst. Of Physics, 859 F.Supp 1521, 1536 (S.D.N.Y. 1994) and used in other circuits, defining it as: "commercial advertising and promotion" as: (1) commercial speech; (2) for the purpose of influencing customers to buy the defendant's goods or services; (3) that is disseminated either widely enough to the relevant purchasing public to constitute advertising or promotion within that industry or to a substantial portion of the plaintiff's or defendant's existing customer or client base.  

Linen v. Dutta-Roy, No. 13-15309 (11th Cir., Dec. 16, 2015)
Tjoflat, J. Affirming a preliminary injunction requiring the defendant to transfer four domain names he had registered in his own name, rather than in the name of his former employer and mark-owner. In reaching its decision, the Eleventh Circuit held that re-registration falls within the ACPA's purview under the Act's registration hook, following the Third Circuit's reasoning in Schmidheiny v. Weber, 319 F.3d 581 (3rd Cir. 2003) and rejecting the Ninth Circuit's opposite conclusion in GoPets Ltd. v. Hise, 657 F.3d 1024 (9th Cir. 2011). 

Non-Precedential Copyright Opinion of Note

D'Agostino v. Appliances Buy Phone, Inc., No. 15-1171 (3rd Cir., Dec. 7, 2015)
Affirming the district court's order that the plaintiff's cybersquatting claim was time barred under principles of res judicata but vacating the district court's dismissal of the copyright claim because "it cannot be said at this stage of the pleadings that the claim is barred" under the entire controversy doctrine due to the disputed facts as to when the copyright claim accrued. 


1 The Sixth Circuit upheld the district court's dismissal of RICO claims, and remanded for further proceedings with respect to Plaintiff's state law claims.

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