Intellectual Property and Tech Law Reports

Fuji Kogyo Co., Ltd. v. Pac. Bay Int'l, Inc.

Plaintiff Fuji Kogyo Co., appeals the decision of the district court dismissing its suit to enjoin its competitors, the Defendants, Pacific Bay International, Inc., Batson Enterprises, Inc., and Amtak Limited, from selling fishing line guides that allegedly infringe its registered and unregistered trademarks. The district court cancelled three of Fuji’s registered trademarks because it found them to be functional and therefore unprotectable. We affirm.

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R.J. Reynolds Tobacco Co. v. Cigarettes Cheaper!

R.J. Reynolds sells cigarettes (Camel, Winston, Salem, and Doral are its principal brands) in both domestic and foreign commerce. For several years Cigarettes Cheaper!, which operates a chain of retail outlets, reimported Reynolds products for domestic sale. (We refer to the practice as “reimportation” even though some of the cigarettes in question were manufactured outside the United States by firms licensed to use the trademarks in their own countries.) That practice led to this litigation, which Reynolds commenced under the Lanham Act. GMB, one of Reynolds’s subsidiaries, owns the marks and is an additional party for that reason. To prevent needless repetition, for the rest of this opinion we treat Reynolds as the sole plaintiff. 

Reynolds argued that the sale of gray market products violates the Lanham Act, 15 U.S.C. §§ 1050 to 1127, which protects trademarks used in interstate commerce. Cigarettes Cheaper! replied that the marks are genuine (after all, they were applied by Reynolds or under its license) and took the offensive with two antitrust counterclaims, one based on the Sherman Act and the other on the Robinson-Patman Act. 15 U.S.C. §13. The Sherman Act theory is that Reynolds conspired with retail dealers, in violation of 15 U.S.C. §§ 1 and 2, to drive it out of business; the Robinson-Patman theory is that Reynolds charged different prices to different retail dealers and in particular refused to sell cigarettes to Cigarettes Cheaper! at its lowest level of discounts (which is, Cigarettes Cheaper! maintains, why it searched abroad for cigarettes to reimport).

The three claims took separate paths. The district court granted summary judgment for Reynolds on the Sherman Act claim after concluding that Reynolds lacks market power. The Robinson-Patman Act claim went to trial, which lasted five weeks. A jury returned a general verdict in favor of Reynolds. Finally the trademark claim was tried to a different jury, after the district judge rejected Cigarettes Cheaper!’s argument that the Lanham Act always permits the use in the United States of trademarks affixed by their proprietor. If the products designed for domestic and foreign markets are materially different, then sale of the reimported product under a mark that consumers associate with the domestic product could be confusing and hence unlawful, the district court ruled. The trial to determine whether the domestic and foreign cigarettes are materially different lasted two weeks. The jury concluded that they are different and awarded Reynolds approximately $4 million in damages.

Having lost on all three claims, Cigarettes Cheaper! has appealed; it complains not only about the principal decisions but also about a large number of evidentiary and other procedural rulings that it says prevented the juries from approaching the issues correctly.

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Fuji Photo Film Co., Ltd. v. Benun

The United States District Court for the District of New Jersey preliminarily enjoined Ribi Tech Products LLC (Ribi Tech) and other defendants from, inter alia, importing certain lens fitted film packages (LFFPs). Fuji Photo Film Co. v. Benun, No. 2:05-CV-1863-KSH-PS (D.N.J. June 16, 2005) (Preliminary Injunction Order). Ribi Tech challenges that preliminary injunction on the sole ground that the district court lacked jurisdiction to enjoin the importation of any LFFPs that are subject to a general exclusion order issued by the International Trade Commission (ITC or Commission) in 1999. In re Certain Lens-Fitted Film Packages, Inv. No. 337-TA-406 (Int’l Trade Comm’n June 28, 1999) (Exclusion Order); see also Jazz Photo Corp. v. Int’l Trade Comm’n, 264 F.3d 1094, 1110-11 (Fed. Cir. 2001) (affirming the Exclusion Order for those LFFPs that were not previously sold in the United States or that were manufactured by procedures exceeding permissible repair) (Jazz I). Because the district court properly asserted jurisdiction under 38 U.S.C. § 1338(a), and because no other statute operates to divest the district court of that jurisdiction, this court affirms.

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Au-Tomotive Gold, Inc. v. Volkswagen of Am., Inc.

This case centers on the trademarks of two well-known automobile manufacturers—Volkswagen and Audi. The question is whether the Lanham Act prevents a maker of automobile accessories from selling, without a license or other authorization, products bearing exact replicas of the trademarks of these famous car companies. Au-Tomotive Gold, Inc. (“Auto Gold”) argues that, as used on its key chains and license plate covers, the logos and marks of Volkswagen and Audi are aesthetic functional elements of the product—that is, they are “the actual benefit that the consumer wishes to purchase”—and are thus unprotected by the trademark laws. Accepting Auto Gold’s position would be the death knell for trademark protection. It would mean that simply because a consumer likes a trademark, or finds it aesthetically pleasing, a competitor could adopt and use the mark on its own products. Thus, a competitor could adopt the distinctive Mercedes circle and tri-point star or the well-known golden arches of McDonald’s, all under the rubric of aesthetic functionality.

The doctrine of aesthetic functionality has a somewhat checkered history. In broad strokes, purely aesthetic product features may be protected as a trademark where they are source identifying and are not functional. On the other hand,where an aesthetic product feature serves a “significant nontrademark function,” the doctrine may preclude protection as a trademark where doing so would stifle legitimate competition. Qualitex Co. v. Jacobson Products Co., 514 U.S. 159,170 (1995). Taken to its limits, as Auto Gold advocates, this doctrine would permit a competitor to trade on any mark simply because there is some “aesthetic” value to the mark that consumers desire. This approach distorts both basic principles of trademark law and the doctrine of functionality in particular.

Auto Gold’s incorporation of Volkswagen and Audi marks in its key chains and license plates appears to be nothing more than naked appropriation of the marks. The doctrine of aesthetic functionality does not provide a defense against actions to enforce the trademarks against such poaching. Consequently, we reverse the district court’s grant of summary judgment in favor of Auto Gold on the basis of aesthetic functionality. We also reverse the denial of Volkswagen and Audi’s motion for summary judgment with respect to infringement and dilution and remand for further proceedings.

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Venture Indus. Corp. v. Autoliv ASP, Inc.

Autoliv ASP, Inc. (“Autoliv”) appeals the decision of the United States District Court for the Eastern District of Michigan denying Autoliv’s motion for relief from judgment in favor of Venture Industries Corp., Vemco, Inc., Patent Holding Co., and Larry J. Winget (collectively “Venture”), pursuant to Federal Rule of Civil Procedure 60, sections (b)(2) and (b)(3). Venture Indus. Corp. v. Autoliv ASP, Inc., No. 99-75354 (E.D. Mich. July 15, 2005) (Judge Avern Cohn).1 We conclude that the district court did not err in denying Autoliv’s request under Rule 60(b)(2), but that the district court erred in failing to address whether Venture’s use at trial of financial statements containing false information constituted “fraud, misrepresentation, or other misconduct” warranting relief under Rule 60(b)(3). Accordingly, we affirm in part, vacate in part, and remand.

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Acadia Tech., Inc. v. US

The appellants, importers of computer parts, contend that their imported goods were taken without just compensation, in violation of the Fifth Amendment, when the government seized their goods upon importation and did not return them for a period of more than four years. The Court of Federal Claims held that the appellants failed to state a claim on which relief could be granted. Acadia Tech., Inc. v. United States, 65 Fed. Cl. 425 (2005). We affirm.

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Pennington Seed, Inc. v. Produce Exch. No. 299

Pennington Seed, Inc. and AgResearch Limited (collectively “Pennington”), the patentees, originally filed suit against the University of Arkansas (“the University”)1 for infringement and conversion of U.S. Patent No. 6,111,170 (“the ’170 patent”). The United States District Court for the Western District of Missouri dismissed the Original Complaint due to the University’s Eleventh Amendment immunity. Pennington Seed, Inc. v. Produce Exch. No. 299, No. 04-4194-CV-C (W.D. Mo. Nov. 29, 2004) (“November Order”). Concurrent with that dismissal, the court granted Pennington’s motion to file its First Amended Complaint against Gary George, the Chairman of the Board for the University System; B. Alan Sugg, President of the University System; John White, Chancellor of the University of Arkansas at Fayetteville; and Charles West, a professor at the University (collectively “the University Officials”) for infringement of the ’170 patent, deprivation of federal rights, and conversion. The district court subsequently dismissed the First Amended Complaint based on Eleventh Amendment immunity and lack of personal jurisdiction. Pennington Seed, Inc. v. Produce Exch. No. 299, No. 04-4194-CV-C (W.D. Mo. June 1, 2005) (“June Order”). Pennington now appeals the court’s dismissal of both complaints. We affirm.

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Serio-US Indus., Inc. v. Plastic Recovery Techs. Corp.

Serio-US Industries, Inc. (Serio-US) sued Plastic Recovery Technologies Corp. (PRT) in the United States District Court for the District of Maryland for infringement of claims 1-3 of United States Patent Number 5,094,358 (’358 patent) and claim 1 of United States Patent Number 5,662,364 (’364 patent). PRT counter-claimed against Serio-US for state law tortious interference and unfair competition, and Lanham Act violations (§ 43(a)). Following a jury trial, the trial court entered a judgment of non-infringement in favor of PRT. Serio-US Indus., Inc. v. Plastic Recovery Tech., Corp., No. WDQ-03-1382 (D. Md. Oct. 19, 2004). In addition, the trial court denied PRT’s motion for judgment as a matter of law (JMOL) on its counter-claims of Lanham Act violations, tortious interference, and unfair competition. The trial court also denied PRT’s motion for attorney fees under 35 U.S.C. § 285 and 15 U.S.C. § 1117(a). In its appeal, Serio-US asserts the trial court committed error in admission of particular evidence and on claim construction; PRT cross-appeals the trial court’s denial of its JMOL and 35 U.S.C. § 285 motion. Because the record adequately supports the trial court’s claim construction and other rulings, this court affirms.

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Tegic Communications Corp. v. Bd. of Regents of the Univ. of Texas Sys.

Tegic Communications Corporation appeals the decision of the United States District Court for the Western District of Washington, dismissing a declaratory judgment action against the Board of Regents of the University of Texas System (herein "the University") on the ground that this suit is barred by the Eleventh Amendment to the United States Constitution. We affirm the dismissal.

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Eolas Techs., Inc. v. Microsoft Corp.

RADER, Circuit Judge.
On remand from an earlier decision of this court, Eolas Techs. Inc. v. Microsoft Corp., 399 F.3d 1325 (Fed. Cir. 2005) (Eolas I), the United States District Court for the Northern District of Illinois denied Microsoft Corporation’s (Microsoft’s) motion seeking to have the case reassigned to a different judge. Eolas Techs. Inc. v. Microsoft Corp., No. 99 C 0626 (N.D. Ill. Oct. 26, 2005) (opinion and order denying motion to reassign) (Denial Order). Microsoft petitioned this court for permission to appeal the district court’s denial. This court granted that petition. Eolas Techs. Inc. v. Microsoft Corp., Misc. No. 811, slip op. (Fed. Cir. Jan. 18, 2006). Because this court defers to the law of the regional circuit on the issue of reassignment and Seventh Circuit Rule 36 requires reassignment, this court reverses the district court’s denial of Microsoft’s motion to reassign the case.

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