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MGA ENTERTAINMENT, INC. V. MATTEL, INC.

Bryant’s employment agreement may not have assigned his ideas for the names “Bratz” and “Jade” to Mattel at all, and the district court erred by holding that it did so unambiguously. Even if Bryant did assign his ideas, the district court abused its discretion in transferring the entire Bratz trademark portfolio to Mattel. We therefore vacate the constructive trust, UCL injunction and declaratory judgment concerning Mattel’s rights to the Bratz trademarks. The district court may impose a narrower constructive trust on remand only if there’s a proper determination that Mattel owns Bryant’s ideas.

The district court also erred in holding, at summary judgment, that the employment agreement assigned works created outside the scope of Bryant’s employment. We therefore vacate the copyright injunction. On remand, Mattel will have to convince a jury that the agreement assigned Bryant’s preliminary sketches and sculpt, either because the agreement assigns works made outside the scope of employment or because these works weren’t made outside of Bryant’s employment. And, in order to justify a copyright injunction, Mattel will have to show that the Bratz sculpts are virtually identical to Bryant’s preliminary sculpt, or that the Bratz dolls are substantially similar to Bryant’s sketches disregarding similarities in unprotectable ideas.

Nothing we say here precludes the entry of equitable relief based on appropriate findings. Because several of the errors we have identified appeared in the jury instructions, it’s likely that a significant portion—if not all—of the jury verdict and damage award should be vacated, and the entire case will probably need to be retried. We express no opinion on this issue here, except to say that any further proceedings must be consistent with our decision.

America thrives on competition; Barbie, the all-American girl, will too.

EQUITABLE RELIEF VACATED. Each party shall bear its own costs.

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Sensient Technologies Corp. v. SensoryEffects Flavor Co.

Sensient Flavors appeals the district court'1 grant of summary judgment in favor of SensoryEffects Flavor Company, formerly known as SensoryFlavors. On appeal, Sensient Flavors contends the district court erred in concluding the SensoryFlavors mark was not "used in commerce" as defined by the Lanham Act, 15 U.S.C. § 1127. Sensient Flavors also asserts the district court erroneously held the SensoryEffects Flavor Company name was not likely to cause confusion to customers. Finally, Sensient Flavors argues the district court erred by holding its mark was "relatively weak" and not entitled to protection under the Missouri dilution statute. We affirm the district court's grant of summary judgment.

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MGE UPS Systems Inc v. Power Protc Svc LLC, et al

MGE UPS Systems, Inc. (“MGE”) appeals the district court’s Federal Rule of Civil Procedure 50(a) dismissal of its Digital Millennium Copyright Act (“DMCA”) claim against Power Maintenance International, Inc. (“PMI”); General Electric Company (“GE”); GE Consumer and Industrial, Inc.; and GE Industrial Systems, Inc. (collectively, “GE/PMI”). MGE also appeals the district court’s denial of prejudgment interest on MGE’s damages award. GE/PMI cross-appeals on four grounds: (1) whether the district court erred in dismissing GE/PMI’s Rule 50(a) motion because MGE failed to present evidence of damages, or in the alternative, whether the district court erred in dismissing GE/PMI’s Rule 50(b) motion because the $4.6 million jury award was not a reasonable calculation of damages; (2) whether MGE impermissibly double-recovered damages; (3) whether the parties had a tolling agreement in place that permitted MGE to recover damages prior to December 17, 2001; and (4) whether the district court erred in granting MGE injunctive relief against GE/PMI.

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Wyers v. Master Lock Co.

Master Lock Company LLC (“Master Lock”) appeals from a final judgment of the United States District Court for the District of Colorado in favor of Philip W. Wyers and Wyers Products Group, Inc. (collectively, “Wyers”). A jury found that Master Lock failed to show by clear and convincing evidence that claims 15, 19, 21, and 24 of U.S. Patent No. 6,672,115 (the “’115 patent”), claim 1 of U.S. Patent No. 7,165,426 (the “’426 patent”), and claims 1, 9, and 11 of U.S. Patent No. 7,225,649 (the “’649 patent” or the “seal patent”), would have been obvious. The district court denied Master Lock’s renewed motion for judgment as a matter of law (“JMOL”). Wyers v. Master Lock Co., No. 06-cv-00619-LTB, 2009 WL 1309774 (D. Colo. May 8, 2009) (“JMOL Order”). We reverse, as we find that the claims in the patents-in-suit would have been obvious as a matter of law.

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Dan Tana v. Dantanna's

This trademark infringement action concerns two restaurants, situated on opposite sides of the country, that share very similar names. Dan Tana, owner of Dan Tana’s restaurant in Hollywood, California (“Plaintiff”), brought this action against the two limited liability companies that own and operate the Dantanna’s restaurants in Atlanta, Georgia—Great Concepts, L.L.C., and Dantanna’s CNN Center, LLC (“Defendants”). Plaintiff’s complaint alleges that David Clapp, founder of the Dantanna’s restaurants and managing member of the Defendants, intentionally selected and registered as a federal trademark a name for his restaurants that is confusingly similar to the name of Plaintiff’s restaurant in Hollywood. The claims forming the basis of Plaintiff’s complaint are false designation of origin, a theory of federal trademark infringement arising under § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a) (Count I); deceptive trade practices under Georgia’s Uniform Deceptive Trade Practices Act, O.C.G.A. § 10-1-370 et seq. (Count II); fraud pursuant to O.C.G.A. § 23-2-55 (Count III); and the unauthorized appropriation of likeness, an invasion-of-privacy tort recognized under Georgia law (Count IV).

The district court granted summary judgment in favor of Defendants on all counts. Plaintiff now appeals, arguing that triable issues of fact remain as to whether there is a likelihood of confusion between the two restaurants and whether Defendants intentionally appropriated the name of his restaurant. Because we conclude that Plaintiff has not adduced sufficient evidence giving rise to a genuine issue of material fact on the issue of likelihood of confusion or Defendants’ knowing appropriation of his likeness, we affirm the district court’s grant of summary judgment in favor of Defendants.

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Love v. Sanctuary Records Group, Ltd.

This appeal presents the question, inter alia, of whether the Lanham Act and California’s common law right of publicity apply extra-territorially to events occurring in Great Britain. Under the circumstances presented by this case, we conclude that such claims are not viable, and we affirm the judgments entered by the district court.

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Mindys Cosmetics, Inc. v. Dakar

Plaintiff-appellee Mindys Cosmetics, Inc. (“Mindys”) is a cosmetics company owned and operated by members of the Dakar family. Defendant-appellant Kia Kamran (“Kamran”) is an attorney. In 2007, Kamran registered two of Mindys’ trademarks in Sonya Dakar’s name. Israel and Natan Dakar brought suit in the name of Mindys against Sonya Dakar, Donna Dakar, and Kamran. Kamran moved under California’s anti-SLAPP statute, Cal. Civ. Proc. Code § 425.16, to strike the claims against him. The district court denied the motion. Kamran brings an interlocutory appeal of the district court’s denial. We affirm.

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Sabinsa Corp. v. Creative Compounds, LLC

Sabinsa Corporation appeals the District Court’s judgment in favor of Creative Compounds, LLC, on Sabinsa’s trademark infringement and unfair competition claims. The District Court found that there was no likelihood of confusion between Sabinsa’s mark, ForsLean, and Creative Compounds’s mark, Forsthin, both of which refer to Coleus forskohlii extract, an ingredient used in weight management products. Because the District Court erred in its findings on the Lapp factors and its ultimate finding on likelihood of confusion, we will reverse the judgment. Further, because the undisputed facts weigh heavily in favor of Sabinsa so that any reasonable fact finder, weighing the Lapp factors properly, would find that Sabinsa had demonstrated a likelihood of confusion, we conclude that there is no need to remand for a re-weighing by the District Court of the Lapp factors. We therefore remand this case for entry of judgment in favor of Sabinsa.

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