Posts in Circuit Courts of Appeal

Eleventh Circuit Affirms Finding that Takedown Notice for Auto Stickers Violated DMCA

The U.S. Court of Appeals for the Eleventh Circuit on Wednesday affirmed a district court’s comprehensive order finding that Day to Day Imports, Inc. (DDI) acted with willful blindness in submitting a fifth Takedown Notice to Amazon asking that auto stickers it alleged infringed its licensed artwork be removed from the site. DDI took a license in 2016 to the copyright for artwork created by Harold Walters for a set of replacement stickers for the dashboard climate controls for certain General Motors vehicles. In 2018, Alper Automotive, Inc. began selling a sticker that DDI alleged infringed the licensed copyright. DDI sent Takedown Notices to Alper on May 8, 2018; May 15, 2018; August 2, 2018; and November 1, 2018.

Win for Photographer in Ninth Circuit Reversal of Fair Use Finding

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.

Eleventh Circuit Upholds Sanctions in Energy Drink Dispute for Failure to Provide Computation of Damages

On Wednesday, August 3, the U.S. Court of Appeals for the Eleventh Circuit affirmed a district court’s ruling against Vital Pharmaceuticals, Inc. (VPX) in the form of sanctions for violating its discovery obligations in a trade dress dispute with Monster Energy Company. The Eleventh Circuit also denied Monster’s motion for sanctions in the form of attorney’s fees and double costs.

Seventh Circuit Throws Out Antitrust Suit Against AbbVie in Welcome Victory for Patent Rights

The U.S. Court of Appeals for the Seventh Circuit agreed with a district court earlier this week that neither a settlement agreement between AbbVie and a number of generic biologics companies, nor the 132 patents owned by Abbvie covering its blockbuster drug, Humira, violate the Sherman Antitrust Act. This holding, which is significant in its own right, also has broader implications for patent-antitrust analysis.

District Court Denies Preliminary Injunction Requested Under Reverse Confusion Theory Following PepsiCo Ruling

In a case that echoes they key issue in a recent U.S. Court of Appeals for the Second Circuit ruling for PepsiCo, Inc., U.S. District Court for the Southern District of New York Judge Lorna Schofield denied a brand owner’s request for a preliminary injunction enjoining model and influencer Hailey Rhode Bieber, who is also the spouse of superstar Justin Bieber, from selling products under the name “Rhode,” which is also her middle name.

Second Circuit Says RISE Mark is on Weak End of Suggestive Spectrum, Reversing Preliminary Injunction Against Pepsi

On July 22, the U.S. Court of Appeals for the Second Circuit issued a decision in RiseandShine Corp. v. PepsiCo, Inc., authored by Senior Circuit Judge Pierre N. Leval, reversing a preliminary injunction entered by the Southern District of New York that prevented Pepsi from marketing its “Mtn DEW Rise Energy” canned energy drink. In reversing, the Second Circuit held that the district court had improperly construed certain likelihood of confusion factors as favoring the merits of RiseandShine’s reverse confusion theory.

Fifth Circuit Panel Questions Appellate Jurisdiction of US Inventor’s APA Claims Over Fintiv’s Lack of Notice and Comment Rulemaking

On July 6, the U.S. Court of Appeals for the Fifth Circuit heard oral arguments in US Inventor v. Hirshfeld, an appeal from a lawsuit first filed in February 2021 to challenge the U.S. Patent and Trademark Office’s (USPTO’s) development of the Fintiv framework for discretionary denials of petitions for Patent Trial and Appeal Board (PTAB) proceedings. Although the appeal comes to the Fifth Circuit following the district court’s dismissal due to the plaintiffs’ lack of Article III standing, much of the oral arguments focused on whether the Fifth Circuit or the U.S. Court of Appeals for the Federal Circuit had proper jurisdiction to hear the appeal.

INTA Asks Second Circuit to Limit Rogers’ Definition of ‘Expressive Work’ to Prevent Application of Test on Ordinary Consumer Products

On June 24, the International Trademark Association (INTA) filed an amicus brief in Vans, Inc. v. MSCHF Product Studio, Inc., a case currently on appeal from the Eastern District of New York to the U.S. Court of Appeals for the Second Circuit. In the brief, INTA urges the Second Circuit to clarify the kinds of “expressive works” to which the Rogers test may be applied, and in such a way that the use of Vans trade dress on sneakers sold by MSCHF Product Studio would be actionable for infringement and not protected by the First Amendment simply because MSCHF claims the sneakers are works of art.

Petition Asks SCOTUS to Clarify Takings Clause in Context of Copyright Infringement

Following a denial of rehearing en banc by the U.S. Court of Appeals for the Fifth Circuit in February, publishing company Canada Hockey L.L.C., doing business as Epic Sports, and Michael Bynum, a sportswriter and editor, have now filed a petition for writ of certiorari with the U.S. Supreme Court in their appeal of a copyright case against both Texas A&M University and a pair of school officials. The petition claims the Fifth Circuit’s decision leaves copyright holders “at the mercy of state infringers.” In their petition, the plaintiffs argue that the Fifth Circuit’s ruling affirming the Southern District of Texas’ dismissal of copyright claims over Texas A&M’s unauthorized reproduction of portions of Bynum’s manuscript on the nearly 100-year history of the famed “12th Man” tradition at Texas A&M erred in failing to find constitutional violations of both the Fifth Amendment’s Takings Clause and due process under the Fourteenth Amendment. The Texas ruling followed the U.S. Supreme Court’s March 2020 decision in Allen v. Cooper, which declared that Congress’ abrogation of state sovereign immunity under the Copyright Remedy Clarification Act was unconstitutional.

Examining the Circuit Split on Preliminary Injunctions in False Advertising Post-eBay

In responding to the unprecedented COVID-19 challenges, companies around the world are rushing to capitalize on the current crisis by advertising the effectiveness of their products in containing the virus spread. Among these ads and messages, some may be useful in building the public’s confidence and marketing effective products to consumers, but some may mislead and deceive desperate consumers into buying treatments and products without any scientific support. As fear and anxiety proliferate during this pandemic, fraudulent or false advertisements also surge and explode. Petitioners raise false advertising claims and try to stop misleading advertisements by seeking injunctions. However, the injunction standard in the false advertising context is still the subject of debate.

High Court Grants Warhol Petition Asking for Guidance on Fair Use Doctrine

The U.S. Supreme Court today granted cert in Andy Warhol Foundation v. Goldsmith, Lynn, et. al., a case that asks the High Court to review a decision of the U.S. Court of Appeals for the Second Circuit holding  that Andy Warhol’s Prince Series did not constitute fair use of Lynn Goldsmith’s photograph. In its petition for certiorari, filed in December 2021, the Andy Warhol Foundation told the Court that “the Second Circuit’s decision…creates a circuit split and casts a cloud of legal uncertainty over an entire genre of visual art.”

Upcycled Goods: Considering When Restoration Crosses into Infringement

Two recent decisions dealing with high-end watches illustrate the fine line between permissible and infringing modifications when the final product bears a trademark of the original maker. As the trend of “upcycling” or “creative reuse” continues to grow, entrepreneurs should be aware of the potential pitfalls in modifying the products of others. Generally, the first sale or “exhaustion” doctrine protects a reseller of authentic goods from infringement liability—but only when the goods have not been materially altered in any manner and meet the trademark owner’s quality standards. There are, however, some circumstances where courts have found certain modifications to be permissible.

Eighth Circuit Overturns Injunction for Harassment Allegedly Inspired by Patent Troll Rhetoric

On March 4, the U.S. Court of Appeals for the Eighth Circuit issued a ruling in Tumey v. Mycroft AI, Inc. in which the appellate court overturned the Western District of Missouri’s grant of injunctive relief to Tumey, a patent attorney representing a plaintiff asserting patent claims against Mycroft. The Eighth Circuit found that Tumey had not met the requisite standard of proof to show that Mycroft had engaged in cyber attacks and harassing phone calls targeting Tumey and his family to support injunctive relief. The appellate court also remanded the case with instructions to reassign the case to a different district court judge.

Fifth Circuit Says Auto Parts Suppliers Have No Article III Standing to Bring Antitrust Claims Against SEP Holders

The U.S. Court of Appeals for the Fifth Circuit on Monday vacated and remanded a district court decision that had dismissed Continental Automotive Systems, Inc.’s suit against several standard-essential patent holders and their licensing agent, claiming violations of federal antitrust law and state law. The U.S. District Court for the Northern District of Texas dismissed with prejudice Continental’s Sherman Act claims for lack of antitrust standing and, alternatively, for failure to plausibly plead certain elements. Continental appealed, but the Fifth Circuit said Continental’s claims should have been dismissed for lack of Article III standing because it had not proven that the SEP holders had “denied Continental property to which it was entitled and that Continental thereby suffered a cognizable injury in fact.”

Ninth Circuit Says Copyright Suit Against AppleTV+ Shyamalan Series Can Proceed

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.