Posts Tagged: "U.S. Court of Appeals for the Ninth Circuit"

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.

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.”

The U.S. Court of Appeals for the Ninth Circuit yesterday upheld a district court ruling that embedding images from Instagram posts in third-party websites does not constitute copyright infringement. The case has to do with two photographers’ images that were embedded and posted with articles run by Buzzfeed News and Time from the photographers’ public Instagram accounts. The district court and the Ninth Circuit both cited Perfect 10 v. Amazon as precluding relief.

The U.S. Supreme Court held today in Jack Daniel’s Properties v. VIP Products that the Rogers test, used to “protect First Amendment interests in the trademark context,” is not relevant “when an alleged infringer uses a trademark as a designation of source for the infringer’s own goods.” The Court therefore vacated the U.S. Court of Appeals for the Ninth Circuit’s ruling that said VIP’s dog toy mimicking a Jack Daniel’s whiskey bottle was an expressive work entitled to First Amendment protection. Justice Kagan authored the unanimous opinion for the Court, while Justice Sotomayor, joined by Justice Alito, and Justice Gorsuch, joined by Justices Thomas and Barrett, each filed concurring opinions.

Last week, the United States Court of Appeals for the Ninth Circuit issued a ruling in a copyright dispute between Erickson Productions and Kraig Kast, ultimately reversing and remanding the case back to the district court for a jury trial. The appeals court ruled that the district court erred by not conducting a jury trial after a first appeal by Kast. The case began when Jim Erickson of Erickson Productions accused Kast of the unauthorized use of three copyrighted photos on his developmental website. The case was heard before a jury in the United States District Court for the Northern District of California, which awarded Erickson $450,000 in damages after finding that Kast willfully infringed on the copyright.

At today’s hearing in Jack Daniel’s v. VIP Products, the U.S. Supreme Court Justices suggested to both sides that there might be an easier way out on the facts of this particular case than either party is proposing, but weighed the need to overturn the Second Circuit’s test in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), which some of the Justices characterized as injecting unnecessary confusion. Though the Court seemed equally concerned about retaining a way for defendants making clearly parodic use of a mark to get out of litigation quickly, which Rogers is intended to do, they questioned both sides about why in this case they couldn’t either find for Jack Daniel’s by just saying that VIP is clearly using a source identifier on a commercial product, or remand to the district court to say they failed to properly weigh the parody or proximity factors of the product, for instance. Overall, the Justices seemed skeptical that the product in question represents a non-commercial use.

Last November, the U.S. Supreme Court granted a petition for writ of certiorari filed by famed whiskey brand owner Jack Daniel’s Properties. The petition filed by Jack Daniel’s appealed the U.S. Court of Appeals for the Ninth Circuit’s March 2020 ruling that a “Bad Spaniels” dog toy marketed by VIP Products was an expressive work entitled to First Amendment protections against trademark infringement liability under the Rogers test. On January 18, a series of 16 amicus briefs were filed with the Supreme Court, the vast majority of which urged the nation’s highest court to reverse the Ninth Circuit’s ruling and limit the application of the Rogers test to clearly artistic works and exclude consumer products that happened to have some humorous expression. Several amici also pushed back on the Ninth Circuit’s ruling that VIP Products’ use of Jack Daniel’s marks was noncommercial.

The U.S. Supreme Court yesterday granted a petition filed in August this year by Jack Daniel’s Properties, Inc. seeking clarification on whether the First Amendment protects VIP Products, LLC, a maker of dog toys that made humorous use of Jack Daniel’s trademarks for commercial purposes, against claims of infringement and dilution. The High Court previously denied Jack Daniel’s petition in January of 2021, and the U.S. Court of Appeals for the Ninth Circuit “summarily affirmed” the district court’s summary judgment ruling for VIP on remand. In its ruling in 2020, the Ninth Circuit said VIP’s dog toy mimicking a Jack Daniel’s whiskey bottle was an expressive work entitled to First Amendment protection, reversing the district court’s initial holding that the toy infringed and diluted Jack Daniel’s marks and remanding the case back to the district court for a determination on the merits of the infringement claim.

The United States Court of Appeals for the Ninth Circuit on Tuesday affirmed the dismissal of Metamorfoza’s trademark infringement and unfair competition claims against Big Funny over a trademark that included the disclaimed phrase “Museum of Illusions.” Big Funny also cross-appealed the district court’s denial of its motion for attorneys’ fees, but the Court of Appeals agreed with the district court, finding that it had acted within its discretion in denying fees under 15 U.S.C. § 1117(a) because the case was not “exceptional.” Big Funny and Metamorfoza both operate multiple museums called “Museum of Illusions” in the United States. Big Funny operates museums in California and Florida, while Metamorfoza has museums in New York, Missouri and Texas.

On August 3, the U.S. Court of Appeals for the Ninth Circuit issued a ruling in McGucken v. Pub Ocean Ltd. that reversed a Central District of California’s sua sponte grant of summary judgment to Pub Ocean on McGucken’s copyright infringement claims. The case involved Pub Ocean’s unauthorized use of photos of a lake that formed in Death Valley, California, in March 2019. The Ninth Circuit found that all of the fair use factors weighed against a determination that Pub Ocean’s unlicensed use of the photographs were transformative.

On February 22, the U.S. Court of Appeals for the Ninth Circuit reversed and remanded the U.S. District Court for the Central District of California’s dismissal of a copyright suit filed against Apple Inc. and other defendants explaining that dismissal was improper at the pleading stage because reasonable minds could differ on the issue of substantial similarity. The suit was brought by Francesca Gregorini—writer, director, and producer of the film The Truth About Emanuel. She claimed that the first three episodes of Defendants’ AppleTV+ series, Servant, infringed her copyright. In May 2020, U.S. District Judge Walters dismissed Gregorini’s complaint on the ground that the works were not substantially similar as a matter of law. Gregorini appealed to the Ninth Circuit.

In a 6-3 decision today, the U.S. Supreme Court held that Section 411(b) of the U.S. Copyright Act “does not distinguish between a mistake of law and a mistake of fact; lack of either factual or legal knowledge can excuse an inaccuracy in a copyright registration under §411(b)(1)(A)’s safe harbor.” The decision comes after Unicolors, Inc. petitioned the Court in January of last year, asking whether the Ninth Circuit erred in determining that Section 411 required referral to the Copyright Office on any inaccurate registration information, even without evidence of fraud or material error, in conflict with other circuit courts and the Copyright Office’s own findings on Section 411.

One recurring thorn in the side of copyright owners is Cloudflare, the San Francisco-based web performance, optimization, and security company. Cloudflare offers many services to its customers, including a content delivery network that utilizes hundreds of servers around the world to cache its customers’ content. When an end user requests content from one of Cloudflare’s customers, it is delivered to that user from the cached copy on the nearest Cloudflare server—not the customer’s own web host server. This saves on bandwidth costs, improves security, and decreases page load times. It also raises important questions about Cloudflare’s liability for contributory copyright infringement when it knowingly allows infringing content to remain on its cache servers. Under Ninth Circuit precedent, web hosting services like Cloudflare can be held contributorily liable for assisting in the infringement under the material contribution theory. However, a recent district court decision misconstrued the case law to conclude otherwise in Mon Cheri v. Cloudflare.

The U.S. Supreme Court heard oral argument today in Unicolors v. H&M. The case asks the Court to decide whether the Ninth Circuit properly construed the language of 17 U.S.C. § 411 relating to whether courts must have evidence of intent to defraud before referring copyright registration validity questions to the Copyright Office. While the questioning seemed to favor Unicolors overall, at least one Justice today asked why a change in the question presented at the merits stage of the briefing shouldn’t result in the case being dismissed as having been “improvidently granted.”