Justia U.S. 5th Circuit Court of Appeals Opinion Summaries

Articles Posted in Intellectual Property

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This case involved ten years of litigation regarding an attempt to simultaneously sell a restaurant and license associated intellectual property. The Fifth Circuit affirmed the district court's ruling that the Bill of Sale assigned all Camellia Grill Trademark rights to Hicham Khodr; affirmed the district court's ruling that the Bill of Sale assigned the trade dress associated with the Carrollton restaurant; affirmed the district court's finding that infringement damages were unwarranted; reversed the district court's denial of summary judgment on the trade-dress breach of contract claim and remanded for proceedings to determine if Khodr breached the License Agreement by using the alleged trade dress at the Chartres restaurant; and affirmed the district court's compensable damages ruling. View "Uptown Grill, LLC v. Camellia Grill Holdings, Inc." on Justia Law

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In this trademark infringement action, the district court granted Alliance for Good Government summary judgment on its trademark infringement claim against Coalition for Better Government, enjoined Coalition from the use of both its logo and its trade name, and then awarded Alliance attorney's fees incurred in bringing the lawsuit. The Fifth Circuit affirmed in part and held that the district court did not abuse its discretion in finding that Alliance was entitled to fees. The court remanded for the district court to reassess the amount of fees, because the court has since modified the district court's injunction to permit Coalition to use its trade name. View "Alliance for Good Government v. Coalition for Better Government" on Justia Law

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Springboards filed suit against the school district under the Lanham Act, alleging that the school district used the company's marks in the course of operating a summer reading program. At issue was the school district's use of "Houston ISD Millionaire Club" on its incentive items and informational material. The Fifth Circuit affirmed the district court's grant of summary judgment for the school district, holding that a reasonable jury could not find that the allegedly infringing use of the marks created a likelihood of confusion. The court held that no reasonably jury could conclude that it was likely potential purchasers of Springboards' products would have believed that Springboards was affiliated with HISD's summer reading program. View "Springboards to Education, Inc. v. Houston Independent School District" on Justia Law

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Under the Defend Trade Secrets Act, a defendant is not eligible for fees when the plaintiff obtains a dismissal without prejudice because such a dismissal does not establish the winner of the dispute. The Fifth Circuit held that taking the lead early in the lawsuit did not make defendants eligible for fees, nor did the trial court's postponement of the litigation when it allowed plaintiff to dismiss the federal suit without prejudice. Accordingly, the court affirmed the district court's denial of fees. View "Dunster Live, LLC v. LoneStar Logos Management Co." on Justia Law

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This appeal stemmed from RPD's purchase of a patent license from multiple debtors in bankruptcy sales of their estates. Tech Pharm alleged that RPD did not have rights under the license to Tech Pharm's patented invention. The bankruptcy court held that RPD did not have rights and the district court agreed. The Fifth Circuit affirmed the district court's judgment and held that the patent license was a rejected executory contract and could not have been transferred by the bankruptcy sales in question. In this case, because the license agreement was an executory contract deemed rejected by operation of law, RPD could not and did not acquire the license from any of the Grapevine, Western Pennsylvania, and Waco estates—and no bankruptcy court order held otherwise. Finally, the court held that the bankruptcy court did not exceed its authority in addressing RPD's rights through purchase of the OnSite machines, and did not err in reading the license agreement to require that third parties operate OnSite machines in the same locations where they were placed at the time of sale. View "RPD Holdings, LLC v. Tech Pharmacy Services" on Justia Law

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Alliance filed suit seeking to enjoin Coalition's use of its logo for federal trademark infringement under the Lanham Act. The district court granted summary judgment in favor of Alliance and enjoined Coalition from using both its name and logo in political advertisements. The Fifth Circuit affirmed and held that Coalition failed to properly raise threshold questions concerning the applicability of the Lanham Act to what it characterized as political non-commercial speech. Therefore, the court declined to reach those questions. The court also held that the district court did not err in deciding that the birds on the logos at issue were identical. The panel held that the evidence established without dispute that Alliance's logo was a valid composite mark and that the use of Coalition's logo infringed Alliance's composite mark as a matter of law. The panel did modify the court's injunction in one respect, finding that the injunction restrained Coalition from using its name as well as its logo. Therefore, that aspect of the injunction was overbroad. View "Alliance for Good Government v. Coalition for Better Government" on Justia Law

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Specific elements from within a television show—as opposed to the title of the show itself—can receive trademark protection. The Fifth Circuit affirmed the district court's grant of summary judgment to Viacom on its trademark infringement and unfair competition claims related to the common law trademark of The Krusty Krab. The Krusty Krab is a fictional restaurant in the "SpongeBob SquarePants" animated television series, and IJR took steps to open seafood restaurants using the same name. The court held that The Krusty Krab's key role in "SpongeBob SquarePants" coupled with the consistent use of the mark on licensed products established ownership of the mark because of its immediate recognition as an identifier of the source for goods and services; Viacom's mark has acquired distinctiveness through secondary meaning as a matter of law; and Viacom met its burden by proving that IJR's use of The Krusty Krab created a likelihood of confusion as to source, affiliation, or sponsorship. View "Viacom International, Inc. v. IJR Capital Investments, LLC" on Justia Law

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The Fifth Circuit affirmed the district court's grant of judgment as a matter of law to defendants, concluding that federal law preempted ThermoTek's unfair competition claim and that ThermoTek failed to prove its damages for fraud. ThermoTek designs, manufacturers, and sells the VascuTherm system, which consists of a medical device and specially designed wraps that provide thermal and compression therapy. The court held that the district court did not abuse its discretion in reaching the preemption defense on the merits. On the merits, the court held that federal copyright and patent laws preempted the unfair-competition-by-misappropriation claim. View "Motion Medical Technologies, LLC v. Thermotek, Inc." on Justia Law

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Plaintiffs, BWP Media and National Photo Group, filed suit against T&S, an internet service provider, for direct and secondary infringement. Plaintiffs alleged that T&S hosted an internet forum on which third-party users posted images that infringed copyrights owned by plaintiffs. The district court granted summary judgment for T&S. The court adopted the volitional-conduct requirement in direct-copyright infringement cases, and found that BWP did not contend that T&S did, in fact, engage in such conduct. In this case, the court explained that T&S hosts the forum on which infringing content was posted, but its connection to the infringement ends there. Rather, the users posted the infringing content. Accordingly, the court affirmed the judgment. View "BWP Media USA, Inc. v. T & S Software Associates, Inc." on Justia Law

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Streamline Production filed a trademark infringement suit against Streamline Manufacturing, seeking damages under the Lanham Act, 15 U.S.C. 1051 et seq., and Texas common law. The parties stipulated to an injunction and a jury returned a verdict finding that Streamline Manufacturing infringed on Streamline Production's valid trademark in its name and awarded damages for lost royalties, unjust enrichment, and exemplary damages. The district court denied Streamline Manufacturing's motion for judgment as a matter of law (JMOL), as well as its renewed JMOL, or in the alternative, for a new trial. The court concluded that there was insufficient evidence to support the royalty award where, given the limited nature of the expert testimony on royalty damages and the other evidence presented at trial on the nature of Streamline Manufacturing's infringement and customers, the royalty award does not bear a rational relationship to the infringing use; the unjust enrichment award was not supported by sufficient evidence; and, because the court vacated the royalty and unjust enrichment awards for insufficient evidence, the court also vacated the exemplary damages award. The court otherwise affirmed the judgment. View "Streamline Production Systems, Inc. v. Streamline Manufacturing, Inc." on Justia Law