Copyright Opinions
Eleventh Circuit Seeks Florida High Court's Guidance
on Pre-1972 Sound Recordings: Flo & Eddie, Inc. v. Sirius
XM Radio, Inc., No. 15-13100 (11th Cir. June 29,
2016)
Anderson, J. In a suit asserting common-law copyright
protection over pre-1972 sound recordings by The Turtles, the
Eleventh Circuit certified four questions to the Supreme Court of
Florida before reviewing the district court's summary judgment
decision: (1) whether Florida recognizes a common-law copyright in
sound recordings including the exclusive right of reproduction
and/or the exclusive right of public performance; (2) if so,
whether public sale, distribution, or performance of phonorecords
constitutes a "publication" sufficient to terminate those
exclusive rights under Florida law; (3) whether back-up or buffer
copies made on Sirius's servers and satellites infringe any
common-law exclusive right of reproduction held by plaintiff; and
(4) whether plaintiff has a cause of action under its other Florida
state-law claims for unfair competition/misappropriation,
conversion, or civil theft.
Seventh Circuit Rejects Bases for Hypothetical License
Fee for Copyrighted Work: Bell v. Taylor, Nos. 15-2343,
15-3735, 15-3731 (7th Cir. July 1, 2016)
Flaum, J. In a dispute involving alleged
infringement of copyright in plaintiff's photographs, the
Seventh Circuit held that the advertised price of a download
license on plaintiff's website and an affidavit asserting
plaintiff's belief that the price represented fair market value
were insufficient to establish a hypothetical license fee and prove
damages.
Second Circuit Affirms Third Parties Have Standing to
Challenge Ownership of Copyright: Urbont v. Sony Music
Entertainment, No. 15-1778-cv (2d Cir. July 29, 2016)
Hall, J. Plaintiff Jack Urbont alleged copyright
infringement of the Iron Man theme song by defendants Sony
Music Entertainment and Razor Sharp Records. Defendants challenged
plaintiff's copyright ownership, contending that the song was
created at the behest of third-party Marvel Comics. The Second
Circuit held that third parties to an alleged employer-employee
relationship have standing to raise a "work for hire"
defense, but vacated the district court's summary judgment
ruling, finding plaintiff had raised a genuine issue of material
fact as to work for hire in this case. Separately, the Court
affirmed the district court's finding that the state law claims
were preempted by the Copyright Act because the Iron Man
theme song recording was an accompaniment to an
"audiovisual" work and not a separate sound recording
protected from preemption by the Copyright Act of 1976.
Trademark Opinions
MAYARI Not Confusingly Similar to MAYA for Use on Wines:
Oakville Hills Cellar, Inc. v. Georgallis Holdings, LLC,
No. 2016-1103 (Fed. Cir. June 24, 2016)
Lourie, J. In a trademark dispute involving marks
for use on wine, the Federal Circuit affirmed the TTAB's
dismissal of Oakville's opposition to Georgallis's
application to register the mark MAYARI. The Federal Circuit
concluded that the TTAB properly found MAYA (Oakville's mark)
and MAYARI to be "dissimilar as to appearance, sound, meaning,
and commercial impression." Substantial evidence supported the
finding that "MAYA is a familiar word, whereas MAYARI has no
recognized meaning to U.S. consumers" and that, by contrast,
there was insufficient evidence to suggest that consumers would
dissect MAYA into "MAYA- and -RI." Further, the Federal
Circuit concluded that the TTAB had not erred in determining that
dissimilarity of the marks alone was sufficient to preclude
likelihood of confusion, noting that "'a single
DuPont factor may be dispositive . . . especially when
that single factor is the dissimilarity of the marks'"
(quoting Odom's Tenn. Pride Sausage, Inc. v. FF
Acquisition, L.L.C., 600 F.3d 1343, 1346–47 (Fed. Cir.
2010)).
Second Circuit Affirms Cancellation of Registration Due
to Fraudulent Procurement: MPC Franchise, LLC v. Tarntino,
No. 15-717-cv (2d Cir. June 27, 2016)
Livingston, J. In a dispute over the mark for a
chain of pizzerias named Pudgie's, the Second Circuit affirmed
the district court's grant of summary judgment cancelling
defendant's registration. In his application, defendant stated
that (1) he believed himself to be the owner of the mark and (2) he
believed no other person, firm, corporation, or association had
rights to use the mark in a manner likely to cause confusion, to
cause mistake, or to deceive. However, during the litigation, the
defendant admitted that he had never individually or personally
used the mark at issue, and the evidence showed defendant was
"aware of multiple other Pudgie's locations that were
using the mark in the precise same capacity in which he applied for
the mark." Applying the In re Bose Corp scienter
standard (i.e., a trademark applicant must actually have known the
falsity of material statements in his application), the Second
Circuit concluded that there was no issue of material fact as to
whether defendant knowingly made false statements in his
registration application.
Ninth Circuit Reverses Summary Judgment Finding on
Likelihood of Confusion: JL Beverage Co., LLC v. Jim Beam
Brands Co., No. 13-17382 (9th Cir. July 14, 2016)
Wallace, J. In a dispute between two producers of
vodka branded with images of lips, the Ninth Circuit reversed the
district court's summary judgment for defendant. Reviewing the
factors of the Ninth Circuit's Sleekcraft test, the court
concluded that there was a genuine dispute of material fact as to
the likelihood of consumer confusion and thus that summary
judgement had been improper. The Ninth Circuit noted that, due to
the "non-exhaustive, multi-factor, fact-intensive
inquiry" involved, it had cautioned against granting summary
judgment in cases turning on likelihood of consumer confusion.
Seventh Circuit Affirms Dismissal of Trademark Claim
Asserted Against Unauthorized Karaoke Files: Phoenix
Entertainment Partners, LLC v. Rumsey, No. 15-2844 (7th Cir.
July 21, 2016)
Rovner, J. Producer of karaoke accompaniment
tracks brought suit against a pub and its owner based on the
alleged practice of playing unauthorized digital copies of karaoke
files instead of authorized copies from legitimately acquired
media. Plaintiffs framed their claim under the Lanham Act, arguing
that the unauthorized copy of their track was a distinct good which
the defendants were improperly "passing off" as a genuine
track. Applying the Supreme Court's Dastar decision,
the Court held that the appropriate claim should have been for
copyright infringement, and affirmed the district court's
dismissal because the routine display of an embedded trademark
during the performance of the tracks did not support a Lanham Act
claim.
Third Circuit Affirms Summary Judgment that Blossom
Pastry Design was Functional and Not Protectable Trade Dress:
Sweet Street Desserts, Inc. v. Chudleigh's Ltd., Nos.
15-1445 and 15-1548 (3d Cir. July 21, 2016)
Shwartz, J. Chudleigh's asserted trade dress
infringement of its incontestable Blossom Design registration
against a bakery selling a similar folded pastry to Applebee's.
The Third Circuit held that the Blossom Design was functional
because the shape of the dough is essential to the purpose of an
effective single-serving fruit pie, and affects its cost and
quality, and thus cancelled Chudleigh's trademark registration
and affirmed the district court's summary judgment ruling.
Ninth Circuit Affirms Rights Based on Assigned
Coexistence Agreement: Russell Road Food and Beverage v.
Spencer, No. 14-16096 (9th Cir. July 22, 2016)
Wardlaw, J. This dispute arose as a declaratory
judgment action from the assignee of a trademark coexistence
agreement asserting he had the right to use the mark CRAZY HORSE in
conjunction with adult entertainment. The Ninth Circuit affirmed
the district court's summary judgment order finding that
because plaintiff Russell Road obtained a valid assignment of an
enforceable trademark co-existence agreement, its use of CRAZY
HORSE did not infringe Spencer's federally registered
trademark.
Eleventh Circuit Finds No Likelihood of Confusion with
Similar University Names: Florida International University
Board of Trustees v. Florida National University, No. 15-11509
(11th Cir. July 26, 2016
Marcus, J. This case concerns whether a for profit school
infringed the trademark rights of Florida International University
when it changed its name from Florida National College to Florida
National University. The Eleventh Circuit affirmed the district
court's ruling that there was no likelihood of confusion,
noting that the mark FLORIDA INTERNATIONAL UNIVERSITY was a
relatively weak mark due to significant co-existing third party use
of FLORIDA and UNIVERSITY, that there were sufficient differences
between the middle word INTERNATIONAL and NATIONAL and the two
schools' acronyms FIU and FNU, that potential college students
are sophisticated consumers, and that there was no evidence of
actual confusion.
First Circuit Reverses District Court – Finding
Likelihood of Confusion with ORIENTAL Marks: Oriental Financial
Group, Inc. v. Cooperative De Ahorro Y Credito Oriental, No.
15-1009 (1st Cir. August 3, 2016)
Lipez, J. This dispute involves whether the use
of four word marks used by Cooperative De Ahorro Y Credito, COOP
ORIENTAL, COOPERATIVA ORIENTAL, ORIENTAL POP, and CLUB DE
ORIENTALITO, create a likelihood of confusion with the Oriental
Financial Group's ORIENTAL trademark. The district court found
no likelihood of confusion and denied Oriental Financial
Group's request for an injunction. The First Circuit reversed
the district court's findings as to COOP ORIENTAL, COOPERATIVA
ORIENTAL and ORIENTAL POP, finding that they infringe Oriental
Financial Group's trademark rights in ORIENTAL, and remanded
for reconsideration of whether an injunction should be entered. The
Court, however, affirmed the district court's finding that CLUB
DE ORIENTALITO was not likely to cause confusion.
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