Posts in Circuit Courts of Appeal

The U.S. Supreme Court on Monday denied a petition that challenged the U.S. Court of Appeals for the Ninth Circuit’s decision that found a district court had authority to impose $36 million in sanctions for abusive litigation practices in a trademark case. The underlying case relates to AECOM Energy & Construction, Inc.’s (AECOM) suit against Gary Topolewski, who owned a clothing business called Metal Jeans, Inc., for infringing use of trademarks associated with AECOM’s predecessor, Morrison Knudsen Corporation.

On April 10, Dr. Stephen Thaler filed a reply brief  at the U.S. Court of Appeals for the D.C. Circuit, continuing the artificial intelligence (AI) technologist’s legal challenge to the U.S. Copyright Office’s refusal to register copyright to an artwork generated by Thaler’s Creativity Machine. The reply brief argues that there is no human authorship requirement under the U.S. Copyright Act preventing Thaler from claiming copyright in the AI-generated work, and that standard principles of property law enables ownership of the work to vest in Thaler, who created the AI system at issue in the case.

The protection of privilege in communications between clients and lawyers is a very important one under U.S. law. The basic rule is that when a client seeks legal advice from a lawyer, the communication between the client and the lawyer is confidential and cannot be discovered during litigation. An important purpose of this rule is to encourage clients to communicate fully and freely with lawyers in the process of seeking legal help. The lawyers here include both external lawyers and in-house lawyers.

On April 1, the U.S. Court of Appeals for the Ninth Circuit issued a ruling in BBK Tobacco & Foods LLP v. Central Coast Agriculture, Inc. affirming a lower court’s ruling that canceled trademark applications pending at the U.S. Patent and Trademark Office (USPTO). The Ninth Circuit panel majority determined that the district court had statutory authority to invalidate a trademark application for no bona fide intent to use over a dissent authored by U.S. Circuit Judge Patrick Bumatay, who argued that district courts lacked the authority to cancel trademarks before registration by the USPTO.

The U.S. Court of Appeals for the Second Circuit on Monday, March 25, affirmed a district court’s denial of summary judgment to beer company Modelo, owned by AB InBev, which alleged that sublicensee, Constellation Brands, had violated the terms of a licensing agreement to sell Modelo beer products in the United States. Modelo argued that Constellation violated the sublicense, which defined “Beer” as “beer, ale, porter, stout, malt beverages, and any other versions or combinations of the foregoing, including non-alcoholic versions of any of the foregoing,” by selling hard seltzer products under Modelo’s MODELO and CORONA trademarks.

Oral arguments took place today in Warner Chappell Music v. Nealy, a case that asks whether a copyright plaintiff can recover damages for acts that allegedly occurred more than three years before the filing of a lawsuit. The Justices repeatedly asked the parties involved whether they should dismiss the case as having been improvidently granted (DIG) in order to first grant and decide another pending case that directly addresses a technically peripheral, but seemingly crucial, question at issue in Warner Chappell, namely, whether the so-called discovery accrual rule applies to the Copyright Act’s statute of limitations for civil claims.  

Three law school faculty and students filed an amicus brief earlier this week urging the U.S. Supreme Court to reverse a trademark decision of the U.S. Court of Appeals for the Seventh Circuit regarding the legal standard for trademark confusion. The brief asks the Court to “end the contradiction and confusion” around the different approaches taken to the likelihood of confusion analysis by federal courts.

On February 6, the U.S. Court of Appeals for the Fourth Circuit issued an opinion in Philpot v. Independent Journal Review reversing a ruling that an online reproduction of a photograph of singer-songwriter Ted Nugent constituted fair use. The Fourth Circuit further found that professional photographer Larry Philpot was entitled to summary judgment on the validity of his copyright registration, vacating the Eastern District of Virginia’s determination that a genuine dispute of material fact existed as to the accuracy of Philpot’s registration application.

The Judicial Conference of the United States’ Committee on Judicial Conduct (Conference) and Disability issued its decision today in Judge Pauline Newman’s appeal of the Judicial Council of the U.S. Court of Appeals’ (Council) September 2023 decision to suspend her from all cases. Federal Circuit Chief Judge Kimberly Moore first identified a complaint against Newman in April 2023. IPWatchdog was the first to break the news, and the court soon published a statement responding to media reports and making previously sealed documents public…. Today’s decision denied Newman’s petition for review of the Council’s decision, holding that the Council did not abuse its discretion in refusing to transfer the proceedings to a different circuit, that Newman has not shown good cause for her failure to cooperate, and that the sanction did not exceed the Judicial Council’s authority.

The U.S. Supreme Court today granted a request by the U.S. Solicitor General to participate in oral argument as an amicus in Warner Chappell Music v. Nealy, which challenges a circuit court ruling that, under the discovery accrual rule, monetary damages for infringement under the Copyright Act are available for acts occurring outside of the Copyright Act’s three-year statute of limitations. The Solicitor General is urging the Supreme Court to affirm the lower ruling and uphold the Eleventh Circuit’s interpretation of the High Court’s ruling in Petrella v. Metro-Goldwyn-Mayer (2013) over competing interpretations in the Second Circuit.

The U.S. Supreme Court today denied certiorari to Diamond J Wholesale, LLC, who petitioned the Court in December 2023 to clarify how individual liability for willful trademark infringement by a corporation should be assessed. The U.S. Court of Appeals for the Eleventh Circuit in August 2023 backed a Georgia district court’s finding that Diamond and its owner, Raj Solomon, willfully infringed trademarks owned by Top Tobacco, L.P., Republic Technologies (NA), LLC, and Republic Tobacco, L.P. (Top Tobacco) for cigarette rolling papers. The ruling upheld an $11 million verdict in favor of the tobacco companies.

Relish Labs LLC and the Kroger Company (who own the “Home Chef” brand and mark) petitioned the U.S. Supreme Court this week, asking the Justices to review a decision by the U.S. Court of Appeals for the Seventh Circuit that held Home Chef had not proven consumers were likely to confuse their marks with Grubhub and Takeaway.com’s logo.

On January 5, the U.S. Court of Appeals for the Ninth Circuit published an amended opinion and order denying rehearing and rehearing en banc, thus upholding its August reversal of the Northern District of California’s dismissal of a qui tam whistleblower action under the False Claims Act (FCA). The FCA claim was brought by patent attorney Zachary Silbersher against Valeant Pharmaceuticals, predecessor to Canadian drugmaker Bausch Health. The appellate court’s decision turned on the application of the FCA’s public disclosure bar, finding that inter partes review (IPR) proceedings did not trigger the statutory bar to qui tam actions based on evidence previously disclosed during adversarial agency proceedings “in which the Government or its agent is a party.”

This year has seen a bonanza of significant trademark decisions, including several high- profile decisions from the Supreme Court. Courts ruled on issues ranging from First Amendment and parody considerations to the extraterritorial reach of U.S. trademark law, yet in most cases returned to basic principles of trademark law to resolve the open issues. Below is a selection of a few of those significant cases from the previous year.