Justia U.S. 5th Circuit Court of Appeals Opinion SummariesArticles Posted in Intellectual Property
Dunster Live, LLC v. LoneStar Logos Management Co.
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
RPD Holdings, LLC v. Tech Pharmacy Services
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
Alliance for Good Government v. Coalition for Better Government
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
Viacom International, Inc. v. IJR Capital Investments, LLC
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
Motion Medical Technologies, LLC v. Thermotek, Inc.
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
BWP Media USA, Inc. v. T & S Software Associates, Inc.
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
Streamline Production Systems, Inc. v. Streamline Manufacturing, Inc.
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
Vetter v. McAtee
Plaintiff owned AIA-LOGO! Promotions, LLC and defendant owned Insignia Marketing, Inc. Plaintiff filed suit against defendant, claiming breach of a partnership agreement, and defendant counterclaimed for breach of the same partnership agreement. Insignia then initiated a separate suit against plaintiff and Logo Promotions for trademark infringement, copyright infringement, cyber piracy, false advertising, and civil conspiracy. The jury found that plaintiff, but not defendant, had breached the partnership agreement, and awarded $60,000 in damages; found, however, that neither plaintiff nor Logo Promotions had infringed Insignia's trademark; found that Insignia had obtained registration of the "Communicat-R" trademark through fraud, that the mark was not in use on the day it was registered, and that Insignia had abandoned the mark after registration, all supporting cancellation of the registration; and found plaintiff and Logo Promotions liable for false advertising, but not cyber piracy or civil conspiracy. The trial court subsequently denied plaintiff attorneys' fees and reaffirmed its finding of waiver and, in the alternative, that the case was not "exceptional" enough to warrant such an award under the Lanham Act, 15 U.S.C. 1051 et seq. Defendant moved for a partial new trial and plaintiff moved for a renewed judgment as a matter of law, both of which the trial court denied. The court affirmed the denial of defendant's motion for a new trial to the extent that the motion was based on errors in the trial and jury instructions; affirmed the denial of defendant's motion for a new trial to the extent that the motion challenged the jury’s verdict as against the great weight of the evidence; affirmed the denial of plaintiff's renewed motion for judgment as a matter of law; affirmed the trial court's equal division of the interpleaded funds; and affirmed the denial of attorneys' fees. View "Vetter v. McAtee" 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
Retractable Technologies, Inc. v. Becton Dickinson & Co.
BD and RTI are competitors in the market for syringes of various types and IV catheters. This appeal arises from a $340 million jury verdict (after trebling) entered against BD for its alleged attempt to monopolize the United States safety syringe market in violation of Section 2 of the Sherman Antitrust Act, 15 U.S.C. 2. BD was also found liable for false advertising under Section 43(a) of the Lanham Act, 15 U.S.C. 1125(a)(1)(B). The district court, relying on principles of equity, held that the treble damage award subsumed BD’s liability to disgorge profits from the false advertising, but the district court enjoined BD to stop using those ads and notify customers, employees, distributors, and others about the false claims. The court concluded that the Section 2 claim for attempt to monopolize is infirm as a matter of law where patent infringement, which operates to increase competition, is not anticompetitive conduct; false advertising is a slim, and here nonexistent, reed for a Section 2 claim; and the allegation that BD “tainted” the market for retractable syringes while surreptitiously plotting to offer its own retractable a few years later is unsupported and incoherent. The court affirmed the Lanham Act judgment of liability for false advertising but reversed and remanded for a redetermination of disgorgement damages, if any. Accordingly, the court vacated and remanded the injunctive relief for reconsideration. View "Retractable Technologies, Inc. v. Becton Dickinson & Co." on Justia Law