Justia U.S. 5th Circuit Court of Appeals Opinion SummariesArticles Posted in Intellectual Property
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
Pennzoil-Quaker State v. Miller Oil and Gas
This dispute over a commercial relationship stemmed from an agreement between Pennzoil and Miller Oil where Pennzoil agreed to loan Miller Oil equipment for use at Pit Stop. After Pennzoil discovered that Pit Stop was using mislabeled bulk oil that Pit Stop claimed was a Pennzoil product, Pennzoil filed a trademark infringement lawsuit. The district court concluded that Pennzoil's marks are valid and protectable, and that there was a likelihood of confusion between Miller Oil's marks and Pennzoil's marks, such that the use of the latter by defendants constituted trademark infringement. The district court considered Miller Oil's affirmative defense of acquiescence and ruled that Pennzoil had implicitly and explicitly assured Pit Stop that the use of the Pennzoil trademarks and trade dress were allowed, and that Miller Oil relied upon Pennzoil's assurances. The court concluded that, given Miller Oil did not establish undue prejudice, the district court's legal conclusion that Pennzoil had acquiesced was error. Allowing Miller Oil to continue to display Pennzoil's marks in light of an unchallenged determination of trademark infringement would be the type of "unjustified windfall" the court previously condemned. Accordingly, the court reversed the district court's finding of acquiescence and vacated the elements of the injunction allowing Miller Oil to use Pennzoil's marks. View "Pennzoil-Quaker State v. Miller Oil and Gas" 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
World Wrestling Entertainment v. Unidentified Part
WWE seeks ex parte seizure and temporary restraining orders against unnamed defendants under the ex parte seizure provision of the Trademark Counterfeiting Act, 15 U.S.C. 1116. WWE alleged that defendants work as "fly-by-night" counterfeiters, setting up shop near WWE events and cannibalizing WWE's merchandise sales by purveying unauthorized products. The district court denied relief and certified its order for interlocutory appeal. The court concluded that, in this case, the persons against whom seizure would be ordered are readily identifiable as any non-affiliated person purporting to sell WWE merchandise at or near a live WWE event; WWE has met its burden under section 1116(d), and the orders sought here should issue; and the court did not address the validity of a provision of the proposed order purporting to deputize private citizens, leaving it to the district court to address in the first instance. Accordingly, the court vacated and remanded for further proceedings. View "World Wrestling Entertainment v. Unidentified Part" on Justia Law
Camsoft Data Sys., Inc. v. Southern Electronics Supply, et al.
Defendant appealed the district court's remand to state court. Plaintiff moved to dismiss the case. At issue was whether the district court has jurisdiction over an inventorship dispute where the contested patent has not yet been issued. The court concluded that, regardless of whether the removed complaint included an inventorship dispute, that dispute was inadequate to establish the district court's jurisdiction because the allegations indicated that no patent had issued; by raising a timely objection to removal, plaintiff properly preserved its jurisdictional argument; and because removal was improper and the case had not yet been tried on the merits, binding precedent dictated that the court remand the case to state court. Accordingly, the court affirmed the district court's remand order as amended and dismissed plaintiff's motion and cross-motion. View "Camsoft Data Sys., Inc. v. Southern Electronics Supply, et al." on Justia Law
Brand Coupon Network, L.L.C. v. Catalina Marketing Corp., et al.
BCN filed suit against Catalina and three of its individual officers or employees, alleging deceptive trade practices, trademark violations, and related fraud and tort claims. BCN's claims stemmed from defendants' creation of CouponNetwork.com, a website and business "remarkably similar" to BCN's existing business, BrandCouponNetwork.com. The court vacated the district court's judgment to the extent that it dismissed BCN's claims under Rule 12(b)(6) as time barred because the district court erred in considering evidence outside the pleadings and a genuine issue of material fact appeared to exist regarding the timeliness of BCN's claims which would preclude summary judgment. The court affirmed the district court's dismissal of the individual defendants where BCN failed to preserve its claims where BCN did not present it to the district court and BCN's claims were conclusional. The court remanded for further proceedings. View "Brand Coupon Network, L.L.C. v. Catalina Marketing Corp., et al." 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
Wellogix, Inc. v. Accenture, L.L.P.
Wellogix sued Accenture and others, alleging that they misappropriated its trade secrets regarding software that allowed oil companies to plan, procure, and pay for complex services online. The jury returned a verdict for Wellogix, awarding compensatory and punitive damages. Accenture appealed. The court concluded that the district court did not abuse its discretion by denying Accenture's motion for a judgment as a matter of law where reasonable jurors could find that Accenture misappropriated Wellogix's trade secrets and that there was sufficient evidence to support the compensatory damages award; by denying Accenture's motion for a new trial where the district court allowed Wellogix's software expert's testimony and allowed Wellogix to introduce into evidence patent-related documents; and by refusing to set aside the punitive damages award where there was sufficient evidence and testimony to support the jury's "malice" finding and the award was not grossly excessive. Accordingly, the court affirmed the judgment. View "Wellogix, Inc. v. Accenture, L.L.P." on Justia Law
United States v. Liu
Defendant challenged his conviction for conspiracy to steal trade secrets and perjury. The Government contended that defendant, who worked on research and development, conspired to steal Dow Chemical's trade secrets regarding a type of chlorinated polyethylene (CPE) and sell that information to Chinese companies for his own profit. The principal issue on appeal concerned the propriety of the court's ruling excluding the testimony of defendant's engineering expert. Because of the witness's training and experience as a chemical engineer and his broad experience in chemical plants, the court concluded that the district court abused its discretion in excluding his opinion testimony related to the manufacturing of CPE. However, given the overwhelming evidence that defendant and his co-conspirators stole trade secrets and that defendant believed he was stealing trade secrets, the court concluded that the exclusion of the witness's testimony did not affect the verdict. Further, there was sufficient evidence to support defendant's perjury conviction. Accordingly, the court affirmed the judgment. View "United States v. Liu" on Justia Law