Justia U.S. 5th Circuit Court of Appeals Opinion SummariesArticles Posted in Intellectual Property
Alliance for Good Government v. Coalition for Better Government
Alliance and Coalition are nonprofit organizations that endorse political candidates in New Orleans. Alliance filed suit against Coalition, seeking to enjoin use of its trade name and logo for federal trademark infringement under the Lanham Act, state trademark infringement, and unfair trade practices. The district court subsequently joined Darleen Jacobs as a third party to the case.The Fifth Circuit affirmed the district court's award of attorney's fees to Alliance for federal trademark infringement under the Lanham Act. The court concluded that the district court's procedure for joining Jacobs met the demands of due process, and the district court did not abuse its discretion in holding her directly liable for the fee award. The court found it appropriate to extend the interpretation of the Patent Act fee-shifting provision to its interpretation of the Lanham Act and found that district courts do have the authority to award appellate fees under the Lanham Act. The court concluded that the district court's decision to award fees for further litigation of the attorney's fee award did not contravene the mandate rule; even if appellants are correct that Alliance's billing entries are flawed, the proper remedy is "a reduction of the award by a percentage intended to substitute for the exercise of billing judgment," which the district court did; and the district court considered each of appellants' objections to Alliance's fees motion. Finally, the court declined to address appellants' First Amendment argument, which was not addressed in Alliance I. View "Alliance for Good Government v. Coalition for Better Government" on Justia Law
Perry v. H. J. Heinz Company Brands, LLC
Plaintiff filed suit against Heinz for trademark infringement, trademark counterfeiting, false designation of origin, and for violations of various Louisiana trademark laws. Heinz filed a counterclaim to have plaintiff's Metchup trademark registration canceled for abandonment or nonuse. The claims relate to plaintiff's mayonnaise and ketchup product and Heinz's Mayochup product. The district court dismissed plaintiff's claims because it found that there was no likelihood of confusion between Mayochup and Metchup and no confusion caused by Heinz's fleeting use of Metchup in advertising. The district court also canceled plaintiff's trademark registration after concluding that he failed to prove that he had made lawful, non-de minimis use of the Metchup mark in commerce.The Fifth Circuit affirmed the district court's dismissal of plaintiff's claims against Heinz, agreeing with the district court that there is little chance that a consumer would confuse plaintiff's Metchup with Heinz's Mayochup or be confused by Heinz's use of Metchup in advertising. However, the court vacated the district court's cancelation of plaintiff's trademark and remanded for further proceedings. The court explained that because plaintiff sold some Metchup and testified that he hoped to sell more, a finder of fact should determine whether his incontestable trademark should be deemed abandoned and canceled. View "Perry v. H. J. Heinz Company Brands, LLC" on Justia Law
Future Proof Brands, LLC v. Molson Coors Beverage Co.
Future Proof filed suit against Coors for trademark infringement, claiming that consumers would confuse Coors' hard seltzer beverage "Vizzy" with Future Proof's hard seltzer beverage "Brizzy."The Fifth Circuit affirmed the district court's denial of Future Proof's motion for a preliminary injunction, holding that the district court did not abuse its discretion in determining that Future Proof cannot determine a likelihood of success on the merits of its claims. In this case, the district court considered the digits of confusion and concluded that three digits supported the injunction and one weighed "marginally in favor of granting the injunction . . . ." But the district court correctly concluded that the other four factors did not support the injunction. The district court also notably concluded correctly that the two digits that have special importance, namely the sixth—which "may alone be sufficient to justify an inference that there is a likelihood of confusion,"—and the seventh—which constitutes the "best evidence of a likelihood of confusion,"—did not support the injunction. View "Future Proof Brands, LLC v. Molson Coors Beverage Co." on Justia Law
Batiste v. Lewis
Paul Batiste, a local jazz musician, brought a copyright infringement action against the world-famous hip-hop duo Macklemore & Ryan Lewis. After the district court found no evidence of copyrighting, it granted summary judgment for defendants and then ordered both Batiste and his attorney to pay defendants' attorneys' fees.The Fifth Circuit held that the district court acted well within its discretion in denying Batiste's motion for leave to supplement his summary-judgment opposition. The court also held that the district court correctly granted summary judgment for defendants on the copyright infringement claims where Batiste failed to produce evidence for a reasonable jury to infer that defendants had access to his music or to find striking similarities between his songs and those of defendants. Therefore, he cannot prove factual copying and his copyright claims fail. The court further held that, given the objective unreasonableness of Batiste's claims, his history of litigation misconduct, and his pattern of filing overaggressive copyright actions, the district court did not abuse its discretion in awarding fees to defendants under the Copyright Act. Finally, the court lacked jurisdiction to review Batiste's challenge to the district court's decision to hold his attorney jointly and severally liable for the fee award as a sanction. View "Batiste v. Lewis" on Justia Law
ATOM Instrument Corp. v. Petroleum Analyzer Co., LP
After ATOM filed for bankruptcy, plaintiff and ATOM initiated an adversarial proceeding against Petroleum Analyzer, alleging claims of misappropriation of trade secrets, unfair competition, and civil theft. On the bankruptcy court's recommendation, the district court withdrew the reference to the bankruptcy court and asserted jurisdiction under 28 U.S.C. 1334, and entered partial summary judgment for plaintiff and ATOM. Four years later, the district court held a bench trial and entered judgment in favor of Petroleum Analyzer and later awarded attorneys' fees to Petroleum Analyzer.The Fifth Circuit held that the district court did not clearly err by finding that Petroleum Analyzer did not use plaintiff's trade secrets in Petroleum Analyzer's sulfur-detecting excimer lamp called a MultiTek. Furthermore, the district court did not ignore the "law of the case" doctrine. The court also held that the district court did not err by awarding Petroleum Analyzer attorneys' fees under the Texas Theft Liability Act. The court remanded to allow the district court to make the initial determination and award of appellate attorneys' fees to Petroleum Analyzer. View "ATOM Instrument Corp. v. Petroleum Analyzer Co., LP" on Justia Law
Digital Drilling Data Systems, LLC v. Petrolink Services, Inc.
Digidrill filed suit against its competitor, Petrolink, alleging that Petrolink hacked into its software at various oil drilling sites in order to "scrape" valuable drilling data in real time. The district court granted Petrolink's motion for summary judgment on Digidrill's copyright claims. Digidrill's unjust enrichment claim proceeded to trial, where a jury returned a verdict in Digidrill's favor.In regard to the copyright infringement claim, the Fifth Circuit affirmed the district court's judgment and held that Digidrill likely waived its "qualitative importance" argument but, even if not, the argument fails on the merits because no reasonable jury could find substantial similarity based on the qualitative importance of the copied schema to DataLogger as a whole. The court also affirmed the district court's judgment as to the Digital Millennium Copyright Act claims, holding that the USB dongle and Interface Process did not effectively control access to the protected database schema.The court also held that Digidrill's unjust enrichment claim is not preempted by the Copyright Act because the claim incorporates an element beyond mere unauthorized copying. The court held that the available Texas authorities do not foreclose the possibility that a litigant may show the taking of an undue advantage without showing the violation of a law or legal duty. Therefore, the court affirmed the district court's denial of Petrolink's judgment as a matter of law on the issue of whether Digidrill adduced sufficient evidence of the benefit Petrolink obtained from Digidrill. Finally, the court held that the district court failed to treat Petrolink as the prevailing party under the relevant statutes and failed to apply the correct legal standard. Accordingly, the court vacated the district court's denial of Petrolink's motion for fees and remanded. View "Digital Drilling Data Systems, LLC v. Petrolink Services, Inc." on Justia Law
Illinois Tool Works, Inc. v. Rust-Oleum Corp.
Illinois Tool Works, maker of Rain-X, filed suit against Rust-Oleum over a commercial for its competing product, RainBrella. Illinois Tool Works alleged that the commercial made three false claims. After a jury ruled in favor of Illinois Tool Works, it awarded the company over $1.3 million. The district court then reduced the corrective-advertising award.The Fifth Circuit held that Illinois Tool Works failed to present sufficient evidence showing that Rust-Oleum's profits were attributable to the Lanham Act violation. Therefore, the court vacated the disgorgement-of-profits award, holding that there was no causal connection between Rust-Oleum's false advertising and its profits. The court never explicitly condoned a prospective corrective-advertising award, but saw no principled reason to prohibit them categorically. In this case, because Illinois Tool Works offered no evidence to support the corrective-advertising award, the court held that a jury could not have reasonably awarded any amount to Illinois Tool Works. Finally, the court held that the evidence was insufficient to support the district court's injunction against Rust-Oleum for making the 100-car-washes claim.Therefore, the district court erred in denying Rust-Oleum's renewed motion for judgment as a matter of law. The court vacated the damages award and reversed the district court's judgment enjoining Rust-Oleum from making its 100-car-washes claim. The court affirmed the district court's judgment enjoining Rust-Oleum from making the other advertising claims. View "Illinois Tool Works, Inc. v. Rust-Oleum Corp." on Justia Law
Energy Intelligence Group, Inc. v. Kayne Anderson Capital Advisors, LP
EIG, publisher of "Oil Daily," filed suit alleging numerous instances of copyright infringement and violations of the Digital Millennium Copyright Act (DMCA) against KA, a boutique investment firm. KA purchased an annual "Oil Daily" subscription for a partner, but the partner routinely shared access with fellow KA employees and other third parties in violation of his subscription agreements and copyright law.The Fifth Circuit held that failure to mitigate is not a complete defense to copyright or DMCA claims for statutory damages; the district court properly denied KA's referral motion; and the district court properly denied KA's post-offer attorney's fees under Rule 68. The court also held that remand was necessary to determine copyright damages because the court could not determine whether the jury intended to award EIG $15,000 per infringed work. Therefore, the court affirmed the district court's denial of KA's 17 U.S.C. 411(b) referral motion; vacated the judgment in full and instated an award of $1,062,500 for EIG's DMCA claims. The court remanded as to copyright damages, attorney's fees, and costs, with the clarification that non-prevailing copyright and DMCA defendants may not recover post-offer attorney's fees under Rule 68. View "Energy Intelligence Group, Inc. v. Kayne Anderson Capital Advisors, LP" on Justia Law
Southern Credentialing Support Services, LLC v. Hammond Surgical Hospital, LLC
Southern Credentialing filed suit claiming that Hammond's ongoing use of credentialing forms infringed Southern Credentialing's copyrights. The district court granted summary judgment as to the existence of the copyrights and infringement, granting damages, attorney's fees and costs, as well as an injunction barring Hammond from infringing the copyrights. Both parties appealed.The Fifth Circuit held that Southern Credentialing has valid copyrights protecting the selection and arrangement of information in its credentialing forms. The court also held that the district court correctly concluded that Hammond infringed valid copyrights of Southern Credentialing and thus the court affirmed the permanent injunction barring future infringement.The court held that 17 U.S.C. 412 bars statutory damage awards when a defendant violates one of the six exclusive rights of a copyright holder preregistration and violates a different right in the same work after registration. In this case, although Southern Credentialing was unable to obtain statutory damages, it has obtained an injunction that will protect against future infringement. Accordingly, the court affirmed in part, reversed in part, and remanded for entry of an amended judgment. View "Southern Credentialing Support Services, LLC v. Hammond Surgical Hospital, LLC" on Justia Law
Diece-Lisa Industries, Inc. v. Disney Enterprises, Inc.
Plaintiff appealed the district court's rulings in two consolidated actions alleging that various Disney corporate entities infringed on plaintiff's "Lots of Hugs" trademark by using the "Lots-O'-Huggin' Bear" (aka "Lotso") in the Toy Story 3 movie and in the sale of merchandise.The Fifth Circuit held that plaintiff may obtain review of the adversary interlocutory rulings in its current appeal from the adverse final judgment in case No. 2:14-CV-00070. The court affirmed the district court's conclusion that plaintiff lacked personal jurisdiction over the IP entities, because plaintiff's arguments were based on two novel theories that were without merit. The court set aside the district court's order pertaining to the third amended complaint and remanded, holding that the district court abused its discretion, by sua sponte and without hearing, vacating its order granting plaintiff leave to file the third amended complaint. Finally, the court affirmed the district court's decision striking the fourth amended complaint, holding that the district court did not abuse its discretion in striking the complaint. View "Diece-Lisa Industries, Inc. v. Disney Enterprises, Inc." on Justia Law