United States: Copyright And Trademark Case Review

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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