infringement Archives - Page 14 of 27

Trademark Claim for Profit Damages Means No Jury Trial

by Jodi Benassi | Jun 11, 2020 | Food, Beverage & Agribusiness, Trademarks

The US Court of Appeals for the Ninth Circuit affirmed a denial of a jury trial demand in a trademark infringement lawsuit where only a claim of disgorgement of profits was at issue. JL Beverage Company, LLC v. Jim Beam Brands Co., Beam Inc., Case No. 18-16597 (9th Cir. May 27, 2020) (Wallace, J.) (Friedland, J., concurring).

JL sued Jim Beam for trademark infringement. JL manufactured and sold vodka in bottles featuring stylized depictions of lips. Jim Beam also sells vodka in bottles featuring stylized depictions of lips. JL alleged that consumers would confuse its “Johnny Love Vodka” lip mark with Jim Beam’s Pucker line of flavored vodka products.

After JL failed to provide a computation of actual damages during discovery, Jim Beam sought to limit the damages JL could seek at trial. The district court found that JL’s failure prevented Jim Beam from preparing a responsive case and granted Jim Beam’s motion to exclude JL’s claims for actual damages. Jim Beam further argued that JL may not recover a royalty because 1) it is not appropriate in situations, like this one, where the parties did not have a previous royalty agreement and 2) as with actual damages, JL never identified a means of calculating a reasonable royalty or produced evidence upon which a fact finder could determine such a royalty. Again, the court agreed, and limited JL’s damage claims to equitable disgorgement of Jim Beam’s profits, as provided under the Lanham Act.

Without claims for actual damages or royalties, Jim Beam moved to strike JL’s demand for a jury trial. Since the Lanham Act does not afford the right to a jury trial, the district court considered whether the Seventh Amendment affords such a right in a trademark dispute. The Seventh Amendment provides that “[i]n Suits at common law, where the value in controversy shall exceed twenty dollars, the right of trial by jury shall be preserved.” The district court found controlling law in Ninth Circuit precedent Fifty-Six Hope Road Music, which held that that the Seventh Amendment does not afford the right to a jury calculation of profits for two reasons: disgorgement is an equitable remedy, and the specific issue of profit determination cannot be said to be traditionally tried by a jury. The district court denied JL’s demand for a jury trial, held a two-day bench trial and ultimately determined that Jim Beam did not infringe JL’s marks. JL appealed the district court’s order granting Jim Beam’s motion to strike its jury trial demand and the district court’s judgment.

The Ninth Circuit affirmed the district court’s order and judgment, finding no error in the court’s likelihood of confusion analysis on any of the factors, nor in its denial of the jury trial.

In a concurring opinion, Judge Friedland wrote separately to address the tension between the Court’s holdings in Fifty-Six Hope Road Music (a trademark case) and Sid & Marty Krofft (a copyright case). In Krofft, the Ninth Circuit found a right to a jury trial in a copyright case where there was only a claim [...]

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Copyright Office, Not Courts, Determines Validity of Registrations Containing Inaccurate Information

by Sarah Bro | Jun 10, 2020 | Copyrights

With the validity of a copyright registration at issue, the US Court of Appeals for the Ninth Circuit reversed and remanded a district court’s judgment after a jury trial and award of attorney’s fees in favor of the plaintiff in a copyright infringement action, holding that the district court was required to request the Register of Copyrights to advise whether inaccurate information, if known, would have caused the Register to refuse registration of the plaintiff’s asserted copyright. Unicolors, Inc. v. H&M Hennes & Mauritz, L.P., (9th Cir. May 29, 2020) (Bea, J.).

The appeal to the Ninth Circuit arose from a copyright infringement action brought by Unicolors, a company that creates designs for use on textiles and garments, against the global fast-fashion retail giant, H&M Hennes & Mauritz (H&M). After a jury found substantial similarity between a design created by Unicolors in 2011 and a design printed on a skirt and jacket sold by H&M four years later, the Ninth Circuit was tasked with examining the threshold issue of whether Unicolors actually holds a valid copyright registration for the 2011 design, which is a precondition to bringing its copyright infringement suit.

The garment design that Unicolors claimed to be infringed by H&M is one of 31 separate designs comprising a “single-unit registration.” To register a collection of works as a “single unit” under the Copyright Act, however, the works must have been first sold or offered for sale in “a single unit of publication.” On this point, H&M argued that the collection of works identified in Unicolors’s asserted copyright registration were sold separately instead of together and at the same time, which required the court to find Unicolors’s copyright registration invalid.

In its examination of the “rarely disputed” issue of whether a copyright is properly registered, the Ninth Circuit found the district court’s rationale for denying H&M’s petition to be “flawed.” First, the Court flatly rejected the district court’s requirement that H&M demonstrate that Unicolors intended to defraud the Copyright Office at the time of its application filing, and pointed to the Ninth Circuit’s 2019 ruling in Gold Value Int’l Textile, Inc. v. Sanctuary Clothing, LLC, where it clarified that there is no such intent-to-defraud requirement for copyright registration invalidation (and in doing so, rejected a series of Ninth Circuit cases that imply an opposite conclusion).

Second, the Ninth Circuit concluded that the plain meaning of “single unit,” under the Copyright Act’s provision for the registration of a collection of published works as a single unit, requires that the registrant first published the works in a singular, bundled collection. Therefore, the Court explained that the district court further erred in concluding that Unicolors’s application for copyright registration did not contain inaccuracies despite the inclusion of the company’s own designated “confined designs,” which, according to testimony and evidence in the proceeding, were sold separately and exclusively to individual customers and were not first sold together and at the same time with the rest of the works in the single unit registration.

With this underlying [...]

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Prevailing at the PTAB Can Mean Prevailing Party Attorneys’ Fees

by Jodi Benassi | May 7, 2020 | Patents

Addressing whether attorneys’ fees may be awarded in a patent infringement lawsuit where an accused infringer successfully invalidates claims in an inter partes review (IPR) proceeding, the US Court of Appeals for the Federal Circuit found that the accused infringer is considered the “prevailing party” for purposes of 35 U.S.C. § 285, but remanded for consideration on whether fees incurred in IPR proceedings can be awarded. Dragon Intellectual Property, LLC v. DISH Network LLC, et al., Case No. 19-1283 (Fed. Cir. Apr. 22, 2020) (Moore, J.).

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Rock Dust Dust-Up: Failure to Preserve Issues, Present Evidence at Trial Dooms Appeal

by Paul Devinsky | Apr 2, 2020 | Patents

The US Court of Appeals for the Federal Circuit affirmed a jury verdict of infringement of a design patent on grounds that purported appellate issues had not been properly presented to the trial court. Hafco Foundry and Machine Co., Inc. v. GMS Mine Repair and Maintenance, Inc., Case No. 18-1904 (Fed. Cir. Mar. 16, 2020) (per curiam) (Newman, J., concurring in part, dissenting in part).

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A Mixed Bag on New Rules – Juggling Copyright Preclusion and Patent Infringement

by McDermott Will & Emery | Jan 15, 2020 | Copyrights, Patents

Addressing issues of copyright and patent infringement, the US Court of Appeals for the Federal Circuit found that the Federal Insecticide, Fungicide, and Rodenticide Act did not preempt copyright protection and that patent infringement under 35 U.S.C. § 271(g) does not require that the claimed process be performed by a single entity. Syngenta Crop Protection, LLC v. Willowood, LLC, Case Nos.18-1614, -2044 (Fed. Cir., Dec. 18, 2019) (Reyna, J.).

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