Justia U.S. 5th Circuit Court of Appeals Opinion SummariesArticles Posted in Copyright
Geophysical Service v. TGS-Nopec Geophysical
TGS, a Houston company requested seismic data from Geophysical, a Canadian company, under Canada's law that requires companies who gather seismic data about the Earth's substructure to submit their findings to the Canadian government. After a period of confidentiality, the Canadian agency that compiled this data was then apparently permitted to release it to members of the public upon specific request. Geophysicial then filed suit against TGS, alleging copyright infringement. The court held that the act of state doctrine does not forbid a United States court from considering the applicability of copyright's first sale doctrine to foreign-made copies when the foreign copier was a government agency. The court also held that the inapplicability of the Copyright Act, 17 U.S.C. 101 et seq., to extraterritorial conduct barred a contributory infringement claim based on the domestic authorization of entirely extraterritorial conduct. Accordingly, the court affirmed in part, reversed in part, and remanded. View "Geophysical Service v. TGS-Nopec Geophysical" on Justia Law
Ultraflo Corp. v. Pelican Tank Parts, Inc.
Ultraflo filed suit against Pelican, asserting an unfair competition by misappropriation claim under Texas law. Ultraflo alleged that Pelican stole its drawings showing how to design valves and then used them to make duplicate valves. The court previously held that copyright preempts this Texas cause of action when the intellectual property at issue is within the subject matter of copyright. Ultraflo contends that its claim escapes preemption because its valve design, when separated from the drawing itself, is afforded no protection under the Copyright Act, 17 U.S.C. 101 et seq. Determining that Ultraflo did not waive its preemption challenge, the court concluded the district court correctly found that the state claim is preempted because copyright preemption prohibits interference with Congress’s decision not to grant copyright protection just as much as it protects a decision to provide protection. Accordingly, the court affirmed the judgment. View "Ultraflo Corp. v. Pelican Tank Parts, Inc." on Justia Law
GlobeRanger Corp. v. Software AG
After GlobeRanger, a software maker, obtained a $15 million judgment in a trade secret misappropriation trial against competitor Software AG, Software AG appealed. The court found that the trade secret claim is not preempted but that a dismissed conversion claim was preempted and supports federal jurisdiction. In this case, GlobeRanger’s trade secret misappropriation claim requires establishing an additional element than what is required to make out a copyright violation: that the protected information was taken via improper means or breach of a confidential relationship. Because the state tort provides substantially different protection than copyright law, it is not preempted. As the complaint alleged only conversion of intangible property for which there is equivalency between the rights protected under that state tort and federal copyright law, complete preemption converted the conversion claim into one brought under the Copyright Act, 17 U.S.C. 101 et seq., that supported federal question jurisdiction at the time of removal and supplemental jurisdiction after it was dismissed. On the merits, the court concluded that GlobeRanger’s evidence is sufficient to show that Software AG used the Navy Solution in developing its own product. Therefore, the court upheld the jury's finding of trade secret use. Finally, the court rejected Software AG's claims of error in regard to the damages award and affirmed the award. View "GlobeRanger Corp. v. Software AG" on Justia Law
Guzman v. Hacienda Records and Recording
This dispute involves two Tejano songs: "Triste Aventurera" and "Cartas de Amor." Plaintiff filed suit against Hacienda alleging, inter alia, that Hacienda's release of "Cartas" infringed upon his "Triste" copyright. The district court ruled in favor of Hacienda as to each of plaintiff's claims. The court rejected plaintiff's contention that the district court erred in finding no reasonable possibility of access. In this case, the court concluded that plaintiff failed to show that the district court's access finding was clearly erroneous. The court also concluded that, absent evidence of uniqueness or complexity, and in light of the expert testimony at trial describing differences in the lyrics and music of the songs, the district court’s finding that "Cartas" and "Triste" are not strikingly similar was not clearly erroneous; the court rejected plaintiff's invitation to apply a novel "sliding-scale" analysis that would have lowered his access burden; and plaintiff waived his Digital Millennium Copyright Act (DMCA), 17 U.S.C. 1202(a), claim. Accordingly, the court affirmed the judgment. View "Guzman v. Hacienda Records and Recording" on Justia Law
Spear Marketing, Inc. v. BancorpSouth Bank
SMI filed suit against BCS and ARGO, alleging violations of various Texas state law claims related to defendants' alleged theft of trade secrets in connection with a software program developed and sold by SMI. After removal to federal court, the district court denied SMI's motion to remand and subsequently granted defendants' motion for summary judgment. The court concluded that the district court was correct to consider only the Original Petition when deciding SMI’s motion to remand; held that state law claims based on ideas fixed in tangible media are preempted by section 301(a) of the Copyright Act, 17 U.S.C. 301(a), and that the technical trade secrets found within VaultWorks fall within the subject matter of copyright; affirmed the district court’s denial of SMI’s motion to remand and held that it properly exercised jurisdiction over this action as a result of complete preemption by the Copyright Act; concluded that it would not be reasonable for a jury to infer that defendants used SMI’s trade secrets and therefore, the court affirmed the district court’s dismissal of SMI’s claim of misappropriation of trade secrets; and concluded that SMI has waived its remaining claims. Accordingly, the court affirmed the judgment. View "Spear Marketing, Inc. v. BancorpSouth Bank" on Justia Law
Nola Spice Designs, L.L.C., et al v. Haydel Enterp
Haydel Enterprises appealed the district court’s grant of summary judgment to Nola Spice Designs and Raquel Duarte on claims of trademark infringement, unfair competition, trademark dilution, copyright infringement, and unfair trade practices. Haydel Enterprises owns Haydel’s Bakery in New Orleans, which makes and sells pastries and cakes, including a popular king cake. In 2008, Haydel commissioned an artist to design a mascot, which was named “Mardi Gras Bead Dog.” On October 13, 2009, and December 1, 2009, the United States Patent and Trademark Office (“PTO”) issued two trademark registrations to Haydel for, respectively, the phrase “MARDI GRAS BEAD DOG” and its bead dog design. Both registrations cover king cake pastries, jewelry, and clothing. Haydel sold these items in its New Orleans store, online, and through a licensee. In September 2012, Haydel obtained a certificate of copyright registration for its work titled “Bead Dog” in “photograph(s), jewelry design, 2-D artwork, sculpture.” In May 2012, Raquel Duarte formed Nola Spice Designs, which sold jewelry and accessories, including necklaces and earrings featuring bead dog trinkets. Haydel learned of Duarte’s bead dogs through Haydel’s customers. In August 2012, Haydel sent Nola Spice Designs a letter noting Haydel’s trademark and copyright in “the bead dog design,” and demanding, inter alia, that Nola Spice Designs “remove from [its] website all display, mention of or reference to the bead dog design,” and “cease any and all promotion, sale, and/or use” of materials incorporating the bead dog design. In October 2012, Nola Spice Designs filed a complaint against Haydel seeking: (1) a declaratory judgment that Nola Spice Designs’s activities do not violate the Lanham Act or any other trademark law; (2) the cancellation of Haydel’s trademarks; and (3) damages for unfair trade practices under the Louisiana Unfair Trade Practices Act (“LUTPA”). Haydel asserted counterclaims against Nola Spice Designs and filed a third-party complaint against Duarte, seeking injunctive relief and damages. The parties also filed cross-motions for summary judgment. The district court granted summary judgment to Nola Spice on its claim for a declaratory judgment that it was not infringing Haydel’s trademarks, and the court cancelled those trademarks as unprotectable, but it denied Nola Spice’s motion for summary judgment on its LUTPA claims. The district court also granted summary judgment to Nola Spice on Haydel’s claims of trademark infringement, unfair competition, trademark dilution, copyright infringement, and unfair trade practices. Haydel timely appealed the district court’s order. Nola Spice did not appeal the district court’s dismissal with prejudice of its LUTPA claim. Upon review, the Fifth Circuit affirmed the district court’s grant of summary judgment to Nola Spice on its claim for a declaratory judgment of non-infringement of Haydel’s trademarks, and affirmed the district court’s cancellation of those trademarks. The Court affirmed the district court’s grant of summary judgment to Nola Spice on Haydel’s claims of trademark infringement, unfair competition, and trademark dilution under the Lanham Act; trademark dilution under Louisiana law; copyright infringement under the Copyright Act; and unfair trade practices under LUTPA. View "Nola Spice Designs, L.L.C., et al v. Haydel Enterp" on Justia Law
Isbell v. DM Records, Inc.
This appeal stemmed from litigation regarding the ownership of the composition copyright to the song Whoomp! (There It Is), writen and produced by Tag Team. The district court concluded that plaintiff owned the copyright and DM Records was liable for copyright infringement, and the jury awarded $2 million in damages. DM Records appealed on several grounds. In regards to DM Record's arguments related to the district court's interpretation of the Recording Agreement as assigning a single fifty percent interest to Alvert Music, the court concluded that none of the pieces of allegedly conflicting evidence cited by DM Records presents a factual issue, and Bellmark Records waived its right to bring a Rule 50(b) motion by not raising its second argument at trial. In regards to DM Records' challenge to the district court's denial of its Rule 60(b) motion for relief from judgment based on fraud and lack of standing, DM Records is not entitled to Rule 60(b) relief on the basis of the allegedly withheld Security Agreement because standing is determined at the time of suit and the 2006 Security Agreement does not establish that plaintiff did not own the copyright in 2002 when he commenced the suit. The court also concluded that the district court did not plainly err in instructing the jury and that the jury could have determined that plaintiff was properly awarded 100 percent of the royalties from which it could pay Tag Team its share. Finally, it was not plain error for the district court to allow plaintiff's closing statement and not to grant DM's motion for a new trial. Accordingly, the court affirmed the judgment. View "Isbell v. DM Records, Inc." on Justia Law
Yesh Music, et al. v. Lakewood Church, et al.
Plaintiff, a general partnership comprised of two musicians, filed suit alleging copyright infringement against defendant, Lakewood Church, over the use of a song entitled, "Signaling Through the Flames." Plaintiff later voluntarily dismissed the complaint without prejudice. Subsequently, plaintiff filed a motion to vacate its voluntary dismissal under Rule 60(b), which the district court granted. Defendant appealed. The court affirmed the judgment, concluding that a voluntary dismissal without prejudice was a final proceeding under Rule 60(b) and the district court did not abuse its discretion in dismissing the case. View "Yesh Music, et al. v. Lakewood Church, et al." on Justia Law
Baisden v. I’m Ready Productions, Inc., et al.
Plaintiff, the host of a nationally syndicated radio show and the author of several books, appealed an adverse judgment in his suit against various defendants for copyright infringement, breach of contract, and tortious interference. Defendants cross-appealed the denial of attorneys' fees. Because the court agreed that the facts of this case supported the creation of an exclusive license as to the first work at issue, and an implied nonexclusive license as to the second work at issue, the court affirmed the jury's verdict that defendants did not infringe on plaintiff's copyrights. The court rejected the remaining challenges to the district court's judgment and affirmed in all respects. View "Baisden v. I'm Ready Productions, Inc., et al." on Justia Law
GlobeRanger Corp. v. Software AG, et al.
Plaintiff, developer of a passive radio frequency identification (RFID) system for commercial use, alleged a number of Texas claims against a group of software companies in state court. Defendants moved the suit to federal court and obtained a dismissal from the district court on the basis that all of plaintiff's claims were preempted by the Copyright Act, 28 U.S.C. 1338. The court held that the complete preemption doctrine applied in copyright preemption cases; plaintiff had pled factual allegations that at least in part fell outside of the scope of copyright; and defendants have argued enough of a basis for preemption on plaintiff's conversion claim to stay in federal court. Accordingly, the court reversed and remanded. View "GlobeRanger Corp. v. Software AG, et al." on Justia Law